Von Holdt v. A-1 Tool, No. 04 C 4123, Slip Op. (N.D. Ill. Aug. 18, 2010) (Manning, J.).
Judge Manning, having granted in part plaintiff’s motion for reconsideration, decided to maintain supplemental jurisdiction over plaintiffs’ remaining state law claims despite having granted defendants summary judgment as to plaintiffs’ federal patent infringement and Computer Fraud and Abuse Act (“CFAA”) claims. Plaintiffs’ state law claims – trade secret, tortious interference and breach of fiduciary duty claims – were “loosely” connected to plaintiffs’ CFAA claim because they were based upon the alleged theft of plaintiffs’ confidential information by a former employee.

Continue Reading Loosely Related State Law Claims Sufficient for Supplemental Jurisdiction

Von Holdt v. A-1 Tool Corp., No. 04 C 4123, Slip Op. (N.D. Ill. May 17, 2010) (Manning, J.).
Judge Manning granted defendants (collectively “A-1 Tool”) summary judgment as to plaintiff’s (collectively “Plas-Tool”) patent claims based upon a lack of notice and as to the plaintiff’s Computer Fraud and Abuse Act (“CFAA”) claims, and chose not to exercise supplemental jurisdiction over the remaining state law claims. A-1 Tool sought summary judgment of a lack of pre-suit notice of the alleged patent infringement. The issue was dispositive because Plas-Tool’s patent expired before the suit was filed. So, pre-suit-notice – actual or constructive – was required in order for Plas-Tool to have any damages.
Plas-Tool’s general statements that they would sue A-1 Tool if it ever infringed Plas-Tool’s patents did not create actual notice. And the alleged patent knowledge of Plas-Tool’s former employee who joined A-1 Tool could not be imputed to A-1 Tool for purposes of actual notice. A-1 Tool’s burden was to make an evidentiary showing that could lead a reasonable person to find that Plas-Tool complied with the marking requirements by marking substantially all of Plas-Tool’s relevant product. Plas-Tool did not meet its burden of proof. Plas-Tool’s only evidence of marking compliance was testimony from Plas-Tool’s 30(b)(6) witness. The witness testified that Plas-Tool’s policy was to mark its products, but had no recollection of what specifically was marked. And the Court held that evidence of a company policy to mark without any other evidence of marking compliance was insufficient to overcome summary judgment. Beyond the 30(b)(6) testimony, Plas-Tool’s only marking evidence was having sent a customer two molds including patent markings. But when the molds were returned, one of them had the patent marking covered up, suggesting the product was made from the mold had not been marked. The Court, therefore, granted A-1 Tool summary judgment on Plas-Tool’s patent claims for lack of notice.
The Court also granted A-1 Tool summary judgment on Plas-Tool’s CFAA claim. Plas-Tool alleged that its former employee improperly accessed and damaged CAD files related to the patented products. But Plas-Tool was not able to identify any damage to the allegedly accessed files and the CFAA was not designed to deal with disgruntled former employees that took electronic files as they left. Also, Plas-Tool was unable to show the required $5,000 in damages within one year of the alleged damage. The loss Plas-Tool was able to show was not related to fixing damaged files, as required by the CFAA. Plas-Tool’s alleged damage was related to a forensic review that allegedly showed that the former employee tampered with the files.
Having granted summary judgment on the federal patent claim and the CFAA claim, the Court declined to exercise supplemental jurisdiction over Plas-Tool’s state law claims.

Continue Reading Evidence of Marking Required for Constructive Notice

Cassetica Software, Inc. v. Computer Sciences Corp., No. 09 C 0003, Slip Op. (N.D. Ill. Jun. 18, 2009) (Kendall, J.).
Judge Kendall granted defendant CSC’s Fed. R. Civ. P. 12(b)(6) motion to dismiss. Plaintiff Cassetica asserted patent infringement, breach of contract, violation of the Computer Fraud and Abuse Act (“CFAA”), and related state law claims based upon CSC’s alleged continued use of Cassetica’s NotesMedic software after the end the parties’ contract for the software. The Court dismissed each claim as follows:
* Copyright Infringement: Cassetica’s copyright claim was dismissed because Cassetica could not recover its claimed statutory damages. Cassetica registered its copyright after CSC’s alleged infringement began. It did not matter that CSC’s alleged infringement allegedly continued after the registration.
* Breach of Contract: Because CSC’s alleged breach occurred after the contract terminated there was no longer a contract to be breached and, therefore, no claim.
* CFAA: There was no “damage” as defined by the CFAA. The CFAA defines damages as harm to a computer system’s data. But Cassetica alleged copying of electronic information, not that any of its data was lost or harmed. Otherwise, Cassetica only made bare allegations that its data was harmed without any factual statement.
* Other State Law Claims: Cassetica’s conversion, trespass to chattels and unjust enrichment claims were all preempted by the copyright law because each state law claim was based upon the alleged downloads of the NotesMedic software.

Continue Reading Copyright Statutory Damages: Infringement Must Start After Registration

Here are some interesting IP-related posts and because everyone (at least in Chicago) still seems to have last week’s election on their minds, the first is election related:
* The MTTLR Blog’s Dorothy Eshelman has an interesting post on whether the use of debate clips by, among others, the candidates involved is fair use — click here to read it. I agree with Eshelman’s conclusion that it is probably not fair use. And I agree that debate footage should be dedicated to the public domain, at least on a limited basis. It would be an easy matter for debate commissions to require that for the privilege of filming the debate networks agree that their footage be available in the public domain so long as it is not used near in time to the debate itself (perhaps within an hour) and so long as clips are limited to no longer than a few minutes or one question and set of answers.
* The MTTLR Blog’s Sherri Nazarian looks at the application of the Computer Fraud and Abuse Act (“CFAA”) to hacking VP candidate Sarah Palin’s email and argues that the CFAA needs to be modernized — click here to read the post. Nazarian explains that the email hacking was not enough to trigger the CFAA, enacted in 1984. Perhaps it is time to update the 24 year old CFAA to meet the massive changes in technology.

Continue Reading Post-Election IP News

MPC Containment Sys., Ltd. v. Moreland, No. 05 C 6973, 2008 WL 2875007 (N.D. Ill. Jul. 23, 2008) (Aspen, Sen. J.).*
Judge Aspen granted in part and denied in part defendants’ summary judgment motion regarding plaintiffs’ copyright, Lanham Act, trade secret and related state law claims.** Plaintiffs and defendants both design, manufacture and sell flexible fuel storage tanks. Corporate defendant MIL was formed by at least individual defendants John and Lawrence, both of whom previously worked for plaintiffs in various capacities and later worked for MIL in direct competition with plaintiffs over, at least, a United States Air Force contract.
Trade Secret Misappropriation
The Court held that plaintiffs’ pricing and warranty provisions were not trade secrets and, therefore, granted summary judgment in defendants’ favor. But the Court held that there was a question of fact as to whether plaintiffs’ tank designs were trade secrets. Additionally, the Court noted that the question of whether sufficient efforts were used to maintain secrecy of the alleged trade secrets was a question of fact for jurors in all, but the most extreme cases. Because plaintiffs identified several precautions taken to protect their trade secrets, the Court denied summary judgment. The fact that tank designs were provided to plaintiffs’ independent contractors without confidentiality did not warrant summary judgment for defendants. There are circumstances where independent contractors have independent, professional duties of confidentiality regardless of whether agreements were signed.
Copyright Infringement
Defendants argued that plaintiffs’ copyrighted fuel tank drawings were not original, as required for copyright ownership, because defendant John authored the drawings, not plaintiffs. The Court held that there was a question of fact as to the ownership because the parties disputed John’s employment status when he made the drawings. If John was an employee, plaintiffs owned the copyrights based upon the work for hire doctrine.
The Court also found a question of fact as to the degree of creativity employed in making plaintiffs’ drawings. A comparison of plaintiffs’ drawings and defendants’ drawings, which defendants alleged plaintiffs copied, left a question of fact as to whether plaintiffs’ drawings showed sufficient differences to rise to the level of creativity.
Compute Fraud and Abuse Act (“CFAA”)
The Court granted defendants summary judgment as to CFAA § 1030(a)(4) because plaintiffs did not respond to defendants’ claims and, therefore, waived their defenses. But the Court found questions of fact as to the two other charged sections of the CFAA, §§ 1030 (a)(2)(c) and (a)(5). First, there was a question of fact as to whether defendant John was authorized to access the documents he allegedly misappropriated. While John may have received the documents at issue during the normal course of his employment with plaintiffs, there was a dispute as to whether John exceeded his authorization by allegedly breaching his duty of loyalty to plaintiffs.
Additionally, there was a question of fact as to whether John passively received all accused documents by email or “accessed” the documents pursuant to the CFAA actively by email or otherwise.
Illinois Deceptive Trade Practices Act (“IDTPA”)
The IDTPA only provides for injunctive relief, not monetary damages. As a result, the IDTPA only addresses ongoing harms. The Court, therefore, granted defendants’ summary judgment as to defendants’ past acts. The Court also explained that it would not grant an IDTPA injunction to eliminate an existing commercial advantage, as courts sometimes do in trade secrets cases.
* Click here for more on this case in the Blog’s archives.
** This post does not cover some of the non-IP specific state law claims.

Continue Reading Pricing and Warranty Agreement Provisions Were Not Trade Secret

Arience Builders, Inc. v. Baltes, No. 08 C 921, 2008 WL 2580166 (N.D. Ill. Jun. 17, 2008) (Bucklo, J.).
Judge Bucklo denied defendant’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s Computer Fraud and Abuse Act (“CFAA”) claim challenging whether plaintiff sufficiently pled a “transmission.” The Court held that plaintiff’s allegations that defendant used “a code and/or command” to “delete and/or change” plaintiff’s computer and electronic files constituted a transmission. The allegations went well beyond simply pressing a delete key, which the Seventh Circuit held was not a CFAA transmission in Airport Ctrs., LLC v. Citrin, 440 F.3d 418, 419 (7th cir. 2006).

Continue Reading Plaintiff Alleges Sufficient Actions for “Transmission” in a Computer Fraud and Abuse Act Claim

Medline Indus., Inc. v. Strategic Comm. Sol’ns., No. 07 C 2783, __ F. Supp.2d __, 2008 WL 2091141 (N.D. Ill. May 5, 2008) (Castillo, J.).
Judge Castillo dismissed some defendants for lack of personal jurisdiction (the wrong defendants) and denied defendant Strategic Commercial Solutions (“SCS”). Fed. R. Civ. P. 12(b)(6) motion to dismiss. Plaintiff Medline alleged that defendants violated its trademark and related federal and state laws by selling “Medline Savings” packages with telemarketers.
Personal Jurisdiction
The Court did not have personal jurisdiction over the Wong defendants. The Wong defendants, all individuals, did not direct any of their allegedly infringing and fraudulent calls to Illinois residents. Their only contacts with Illinois were calls to and from Illinois banks regarding processing payments and refunds. These secondary contacts were not sufficient to create personal jurisdiction.
SCS similarly did not have sufficient contacts with Illinois. But Fed. R. Civ. P. 4(K)(2) provided for national, and therefore, there was personal jurisdiction in Illinois because SCS argued it was not subject to jurisdiction in any U.S. state or territory.
Telemarketing and Consumer Fraud and Abuse Act
SCS argued that Medline could not bring its Telemarketing and Consumer Fraud and Abuse Act claim because it was not a “private person” that was “adversely affected” by the telemarketing as required by the Act. But the Court held that while Medline was not an aggrieved consumer, the alleged unfair use of Medline’s trademarks could have caused Medline the harm it alleged.
Trademark Infringement
The Court noted that it was not aware of a similar case in which a party was accused of trademark infringement for using marks in telemarketing. But SCS’s alleged use of Medline’s marks was a use in commerce.

Continue Reading Using a Trademark in Telemarketing is a Use in Commerce

e360Insight, LLC v. Comcast Corp., No. 08 C 340, Slip Op. (N.D. Ill. Apr. 10, 2008) (Zagel, J.).
Judge Zagel granted defendant Comcast judgment on the pleadings, dismissing plaintiff e360Insight’s (“e360”) Computer Fraud and Abuse Act, First Amendment, and related state law claims. e360, an Internet marketer and accused email spammer, alleged that Comcast harmed e360 by unjustifiably blocking all or most of e360’s emails from Comcast’s customer email accounts. Comcast stopped e360’s emails with filtering software that identified and stopped emails from e360 addresses.
Comcast argued that the Good Samaritan clause of the Communications Decency Act, 47 U.S.C. § 230(c)(2), provided Comcast absolute immunity from e360’s claims because Comcast voluntarily filtered e360’s emails to restrict access to what Comcast believed was objectionable content. The Court held that the Good Samaritan clause provided absolute immunity for ISPs that filtered for objectionable material. The Court also held that Judge St. Eve’s and the Seventh Circuit’s recent Chicago Lawyers’ Committee v. Craigslist opinions – click here for more on those cases – were not applicable. Those opinions limited the clause’s protection for ISPs that chose not to filter. Because Comcast filtered, it enjoyed absolute protection. The Court also held that e360’s compliance with Congress’s spam prevention laws, 15 U.S.C. §§ 7701-13 (Controlling the Assault of Non-Solicited Pornography and Marketing Act of 2003 (“CAN-SPAM”) was irrelevant. Regardless of compliance with CAN-SPAM, the Good Samaritan clause still allowed the ISP to make a good faith judgment that e360’s emails were objectionable. And e360 did not sufficiently plead Comcast’s lack of good faith in determining that the emails were objectionable.
Eric Goldman at the Technology & Marketing Law Blog has a good post on this case and several other district court cases considering § 230(c) defenses. – click here for his post.

Continue Reading Section 230 Gives Filtering ISPs Absolute Immunity

United States Gypsum Co. v. LaFarge N. Am., Inc., No. 03 C 6027, 2007 WL 1100804 (N.D. Ill. Apr. 3, 2007) (Hart, J.).

Judge Hart granted in part and denied in part the parties’ cross-motions for summary judgment.  This case was a dispute over technology related to gypsum wallboard manufacturing and included patent infringement, trade secret misappropriation, breach of contract, Stored Communications Act ("SCA"), Computer Fraud and Abuse Act ("CFAA") and various related state tort claims.  The Court first looked at plaintiff’s patent infringement claims regarding methods for making gypsum board and resolved the parties’ claim construction disputes.  The Court then turned to defendants’ argument that plaintiff was estopped from claiming infringement by equivalents because it failed to expressly refer to the doctrine of equivalents in its complaint or in its contention interrogatory responses.  The Court held that it was sufficient to allege infringement and cite Section 271 in a complaint.  And as to waiver for failure to disclose equivalents in its interrogatory responses, the Court held that defendants had shown no prejudice from plaintiff’s failure to disclose equivalents and that while plaintiff did not use the term equivalents in its responses, it did state that it contended defendants infringed the patents even if defendants processes did not meet timing requirements in the claims.  As a result, plaintiff was not barred from arguing infringement pursuant to the doctrine of equivalents.Continue Reading Trade Secret Identifications Must Be Specific, Blanket Assertions Are Insufficient