Coar

Subscribe to Coar via RSS

Here is some recent Northern District news:
Judge Coar recently updated his case management procedures (click here to read them) to state that pursuant to Local Rule 5.2(e), parties are no longer to provide courtesy copies of electronically filed papers to Judge Coar’s chambers, except for papers pertaining to Fed. R. Civ. P. 56 or Local Rule 56.1 (summary judgment papers).
Magistrate Judges Brown (Eastern Division — Chicago) and Mahoney (Western Division — Rockford) are both up for reappointment in early 2008. Pursuant to federal law, the Court has established a citizen’s panel to consider their reappointments. Members of the bar, as well as the general public, are requested to forward comments regarding the reappointments no later than January 18, 2008, to:
Magistrate Judge Advisory Panel
c/o Mr. Michael W. Dobbins
Clerk of Court
U.S. District Court
219 South Dearborn St. — Rm. 2050
Chicago, IL 60604
…
Continue Reading Northern District News

RRK Holding Co. v. Sears, Roebuck & Co., No. 04 C 3944, Min. Order (N.D. Ill. Sep. 10, 2007) (Coar, J.).*
Judge Coar denied the parties’ damages motions in limine.* First, the Court held that defendant Sears, Roebuck & Co. (“Sears”) could have its damages expert Catherine Lawton testify regarding her analysis of a hypothetical September 2001 negotiation between the parties. Plaintiff RRK Holding (“RRK”) argued that the misappropriation began in March 2000, not when Sears began selling its product in September 2001. As a result, Sears contended that Lawton’s September 2001 hypothetical negotiation should not be allowed into evidence. But the Court held that the timing of the misappropriation was a question of fact for the jury and, therefore, allowed Lawton’s testimony.
Second, the Court held that Sears could introduce the 2003 sale of some of RRK’s assets for $17M as part of Sears’s damages case. The Court held that the value of the sale was relevant to RRK’s alleged injury based upon the alleged misappropriation.
Third, the Court held that RRK could introduce damages calculations including periods beyond the “head start” period (the time it would have taken for Sears to reverse engineer RRK’s combination tool). The head start period was disputed, preventing the Court from fixing a time for the period, and any alleged harm would be resolved by a jury instruction explaining how the jury should calculate damages relative to the head start period.
Finally, the Court denied RRK’s motion for sanctions pursuant to 28 U.S.C. § 1927. RRK argued that Sears’s March 2007 production, two years after fact discovery closed, of documents dated 1999 was “unreasonable and vexatious” and should be sanctioned. But the Court held that Sears’s explanation that the documents were found when it replaced its litigation counsel and new counsel ran additional searches rendered the delay “negligen[t] and reckless[],” but not in bad faith. The Court, therefore, did not impose sanctions.
* Click here for a copy of the opinion and click here for more about this case in the Blog’s archives.
…
Continue Reading “Negligence and Recklessness” Does Not Warrant Discovery Sanctions

Kelley v. Chicago Park District, No. 04 C 7715, Slip Op. (N.D.Ill. Sep. 14, 2007) (Coar, J.).
Judge Coar ordered the parties to submit further briefing regarding whether plaintiff Chapman Kelley’s (“Kelley”) work of art “Wildflower Works” (“WW”) was copyrightable as a sculpture pursuant to the Copyright Act and the Visual Artists Rights Act (“VARA”). Kelley originally installed his WW in Chicago’s Grant Park in 1984 pursuant to a permit from the City of Chicago. WW was an installation of wild flowers in two elliptical shapes surrounded by gravel — click here for pictures from Kelley’s website — that Kelley replanted and tended each year. Chicago periodically renewed the permit until 1994, when Kelley continued his WW pursuant to an oral permit renewal. Then in 2004, Chicago fenced off WW, effectively destroying it. Kelley then brought this suit alleging copyright infringement, violation of VARA and various state law claims.
The Court considered various issues relating to jurisdiction and the validity of the alleged oral permit renewal. But the Court held that it lacked sufficient information to resolve the issue of whether WW was protectable as a sculpture pursuant to the Copyright Act and VARA. The Court struggled with whether a growing, evolving planting of flowers could be considered a sculpture using common dictionary definition. But the Court also acknowledged the artistic value of arranging flowers and plants, which precluded a holding that WW was per se not a sculpture:
to do so would ignore such exquisite examples of living art as topiaries, which are created by clipping and trimming living plants, usually bushes, into exotic shapes.
This is an interesting issue. I appreciate the value of flower arrangements and the beauty of WW specifically, but calling a collection of spontaneously growing, changing plants a sculpture does not fit the traditional definition anymore than calling a football game (a particular arrangement of spontaneously moving living things) a sculpture does. It may be more akin to a choreographed ballet, but flowers cannot follow a pre-set script.
Update: The Court held a two-day bench trial in late September. A minute order indicated that the Court issued preliminary findings at the conclusion of the trial (which appear to have been favorable to Kelley based upon various accounts suggesting that Kelley won the trial), but then ordered the parties to: 1) brief certain issues (presumably including whether WW was copyrightable or otherwise protected by VARA); and 2) provide the Court with proposed findings of fact and conclusions of law. Those filings were delayed by settlement efforts which appear to have fallen through. The requested briefing is now set to be completed in mid-January with the Court’s decision to follow without further hearing. I will keep you posted on the outcome. But if you want more information on the case before early 2008, click here for the Final Pretrial Order which gives a sense of the disputed issues and the CV’s of the experts.
…
Continue Reading Can Flowers be Sculpture?

As promised last week, the jury instructions are now available — click here for a copy. Additionally, although the verdict form is not available electronically, the Court’s minute order (click here for a copy) gave some additional detail. The jury found for plaintiff RRK on each of eleven counts and awarded damages as follows:
Damages Award RRK’s Actual Losses $11,664,105
Sears’s Unjust Enrichment $1,688,136
Punitive Damages $8,011,344
Total Damages $21,363,585
For more on this case, click here for the Blog’s archives.
…
Continue Reading RRK v. Sears: Jury Instructions

RRK Holding Co. v. Sears, Roebuck & Co., No. 04 C 3944, 2007 WL 495254 (N.D. Ill. Feb. 14, 2007) (Coar, J.).
The Chicago Sun-Times is reporting that a jury returned a $21.5M verdict, including $8M in punitive damages, Monday for plaintiff RRK Holding Co. (“RRK”) in its Illinois Trade Secret Act (“ITSA”) suit against defendant Sears, Roebuck & Co. (“Sears”). RRK alleged that, pursuant to a nondisclosure agreement, it disclosed to Sears its plans for a next generation “combination tool” which consisted of a rotary saw, also called a spiral saw, which could be converted into a plunge router. But after negotiations broke down over price, Sears allegedly took RRK’s plans and used them to make Sears’s Craftsman “All-in-One” tool. Sears has said it will appeal the verdict. The Court’s docket has not been updated yet with a verdict form or jury instructions, but I will post them when they become available, likely next week.
For more on this case, click here for the Blog’s archives.
…
Continue Reading Jury Returns $21.5M Trade Secret Verdict

Mullen v. Society of Stage Directors & Choreographers, No. 06 C 6818, 2007 WL 2892654 (N.D. Ill. Sep. 30, 2007) (Coar, J.).
Judge Coar granted in part defendant United Scenic Artists’ (“USA”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs’ declaratory judgment (“DJ”) claims and denied all defendants’ motions seeking dismissal of plaintiffs’ defamation claim. Plaintiffs are the various production heads of the Chicago production of the musical “Urinetown!” (“Chicago Production”). The Chicago Production was performed pursuant to a license from Blue Dog Entertainment, LLC. But despite that license, plaintiffs each received a cease and desist letter from counsel for defendants (the heads of production of the Broadway Urinetown! production (“Broadway Production”) and their unions USA and the Society of Stage Directors & Choreographers (“SSDC”). The letter warned that plaintiffs willfully copied copyrighted aspects of the Broadway Production and attempted to pass off the Chicago Production as the award-winning Broadway Production. Defendants demanded an accounting of revenues from the Chicago Production in order to calculate damages. Defendants also held a press conference during which they publicly stated that the plaintiffs “plagiarized” the Broadway Production. Plaintiffs responded by filing suit seeking declaratory judgments that the Chicago Production did not infringe any of plaintiffs’ copyrights and that it was not Lanham Act passing off. And based upon the press conference, plaintiffs included a defamation claim.
The Court dismissed plaintiffs’ copyright infringement DJ claim against USA because USA held no copyrights related to Urinetown! or the Broadway Production. So, USA could not have filed a copyright infringement action against plaintiffs. The Court also dismissed plaintiffs’ Lanham Act DJ claim against USA. While USA may have been able to show the generalized harm necessary for prudential standing based upon the alleged harm to its members who produced the Broadway Production, it could not show the specific injury required for Article III standing, because that alleged injury was to its members not USA.
The Court, however, denied the defendants’ Rule 12(b)(6) motion to dismiss and Fed. R. Civ. P. 12(c) motion for judgment on the pleadings regarding plaintiffs’ defamation claim. First, defamation claims do not trigger the Fed. R. Civ. P. 9(b) heightened pleading standards because they do not involve fraud or mistake. Second, defendants’ alleged wrongful accusation that plaintiffs plagiarized the Broadway Production is defamation per se because originality and integrity are core values of theatre:
It is beyond doubt that statements consisting of false accusations of plagiarism against professionals in industries where the measure of the quality of work centers on creativity, originality and integrity (i.e. – authors, journalists, artists, thespians, publishers, producers and directors of fine arts productions, etc.) are capable of imputing such persons lack ability or otherwise prejudice such persons in their professions.
Furthermore, the Court held that it was “absurd” to argue that “plagiarism” had an innocent meaning:
[Plagiarism] is not capable of any meaning that would not impugn Plaintiffs’ ability or not prejudice them in their profession.
…
Continue Reading Plagiarism is Defamation Per Se

Minemyer v. R-Boc Reps., Inc., No. 07 C 1763, 2007 WL 2461666 (N.D. Ill. Aug. 24, 2007) (Coar, J.).
Judge Coar denied individual defendant Timothy Grimsley’s (“Grimsley”) motion to dismiss for lack of personal jurisdiction. Grimsley argued that all of his involvement in allegedly infringing plaintiff’s patented couplers was undertaken within the scope of his employment for defendant Dura-Line and, therefore, was protected by the fiduciary shield doctrine. But the Court disagreed. The parties provided conflicting evidence regarding whether Grimsley was an officer of Dura-Line and Grimsley’s level of control over Dura-Line’s coupler business. Additionally, the parties provided conflicting evidence regarding whether Grimsley was aware that Dura-Line’s couplers infringed plaintiff’s patents, but continued to market and sell them despite that knowledge, acts which would go beyond the scope of his employment because of his knowledge of their illegality. The Court, therefore, held that based on the current evidence the fiduciary shield doctrine was not available to Grimsley. But the Court acknowledged that further evidence may reverse that analysis and allowed Grimsley to refile his motion should discovery present that additional evidence.
…
Continue Reading Conflicting Evidence Prevents Use of Fiduciary Shield Doctrine

Abbott Laboratories and Andrx Pharmaceuticals have settled their Northern District patent litigation over Andrx’s efforts to sell a generic version of Abbott’s extended release antibiotic Biaxin XL, Case No.05 C 1490 (discussed at length in the Blog’s archives). According to IP Law360 (subscription required), the settlement includes an agreement that Andrx will not market a generic version of Biaxin XL for, presumably, the remainder of Abbott’s patent term.
…
Continue Reading Abbott & Andrx Settle Biaxin Litigation

Central Mfg.., Inc. v. George Brett, __ F.3d __, Slip Op. (7th Cir. Jul. 9, 2007).
The Seventh Circuit upheld Judge Coar’s cancellation of plaintiff’s “Stealth” mark for use with baseball bats. The result is not that surprising in light of the fact that plaintiff had not been able to provide any evidence that it used the Stealth mark for baseball bats prior to defendant, and Hall of Famer, George Brett’s and his company Brett Brothers Sports International’s first sale of a Stealth bat in 1999 (plaintiff filed a mark application for Stealth in connection with baseball bats in 2001). Additionally, according to the Seventh Circuit plaintiff is controlled by Leo Stoller who is, according to the Seventh Circuit, a “hyperactive trademark litigator.” The Seventh Circuit also discussed the frivolous nature of most of Stoller’s cases:
In fact, Stoller’s cases have generally proven so frivolous and wasteful of court resources that since this appeal was filed the Northern District of Illinois has enjoined him or any of his companies from filing any new civil action in the district’s courts without first obtaining the court’s permission.
Stoller has appealed the Executive Committee’s injunction, and the Executive Committee has already denied Stoller’s first request to file a new case in the Northern District.
But the result is not what is most interesting about the Seventh Circuit’s opinion.** What is most interesting, is that the opinion is written in a manner that makes it sufficiently interesting and understandable for non-lawyers to read. First, it starts with a two page discussion of George Brett’s famous “Pine Tar Incident,” in which a Brett home run that was the go-ahead run for his Kansas City Royals was canceled and the game lost for the Royals when Yankees manager Billy Martin pointed out to the umpire that Brett’s bat had pine tar extending more than 18 inches, against Major League Baseball’s rules. The Seventh Circuit even cites YouTube clips (which have since been removed at the MLB’s request) of broadcasts of the game. And at page 13 of the opinion, the Seventh Circuit takes the rare, bold step of using an exclamation point in explaining that Central’s actions in filing suit were “oppressive” and, therefore, warranted awarding attorneys fees and costs:
Central’s actions qualify on all counts!
I am generally not a fan of the exclamation point in legal writing, but used in moderation it can be both effective and powerful. And it creates an informality that makes the opinion more accessible to those without legal training, which Blog readers know I think is very important.
* You can read a copy of the opinion here and more about plaintiff’s other Northern District cases in the Blog’s archives.
** You can read more about the substance of the case and the baseball connection (including the fact that MLB took had the YouTube clips cited by the Seventh Circuit taken down) at the FileWrapper, the TTABlog, the Technology Law Update, and the Technology & Marketing Law Blog.
…
Continue Reading Strike Two for Plaintiff’s “Stealth” Mark, But a Home Run for Readable Opinions

Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2007 WL 1549498 (N.D. Ill. May 24, 2007) (Coar, J.).
Judge Coar denied defendant Sandoz, Inc.’s (“Sandoz”) motion to stay the Court’s preliminary injunction pending appeal to the Federal Circuit pursuant to Fed. R. Civ. P. 62(c). The Court previously granted plaintiff Abbott’s motion for a preliminary injunction (you can read more about that decision and related cases in the Blog’s archives). The PI enjoined defendant Sandoz from selling a generic version of Abbott’s patented extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL). Sandoz argued that the PI should be stayed pending appeal because of conflicting Federal Circuit law regarding the Court’s claim construction and because of the Supreme Court’s KSR decision.
First, Sandoz argued that two different Federal Circuit panels had issued differing rulings construing the claims at issue. Judge Coar rejected this argument because the construction relied upon in the PI ruling was the Federal Circuit’s second, broader claim construction. The Court explained that the “only rational assumption” was that the second panel was aware of the constructions in the first, but relied upon something different in the record or identified a fact missed by the first panel. Further, the Court predicted that the Federal Circuit would not retreat from its second opinion to its first, prior opinion.
Second, the Court held that the KSR decision did not change its analysis of Sandoz’s likelihood of success on its obviousness argument. The Court provided a detailed explanation of KSR and its reasoning, but differentiated the current case because the Court held that one of the limitations in the Abbott claims did not exist in Sandoz’s cited combination of prior art references. Because the references did not disclose one of the elements of the claims, whether or not the Court used a strict application of the Federal Circuit’s teaching, suggestion or motivation test did not change the outcome of its analysis. Both the Federal Circuit’s and the Supreme Court’s standards required that all elements be disclosed by the combined prior art references.
Finally, the Court held that Sandoz had not provided sufficient evidence that it would be irreparably harmed. Sandoz argued that if it could not enter the market at the same time as other generics, which are not subject to PI’s, pharmacists would be reluctant to later restock their shelves with Sandoz’s generic version of the drug. But the Court reasoned that the lure of generics is their prices, not their brand recognition, so Sandoz should have no trouble re-entering the market at a later date should it prevail.
…
Continue Reading Neither Federal Circuit Split Nor KSR Warranted Stay of a Preliminary Injunction Pending Appeal