O.A. Cargo, Inc. v. OA Cargo Chicago, No. 12 C 5763, Slip OP. (N.D. Ill. Mar. 13, 2014) (Zagel, J.).

Judge Zagel awarded damages in this Lanham Act case after he and Judge Conlon entered default judgment against the defendants.

Pursuant to its “considerable discretion” to award damages based upon a default judgment, the

Judge Conlon entered an award of plaintiff Lucasfilm’s attorney’s fees and costs in this trademark dispute. The Court previously entered a default judgment and permanent injunction against defendant Skywalker Outdoor. Skywalker objected to Lucasfilm’s 21 hours spent drafting its complaint. The Court, however, held that 21 hours was not unreasonable to fashion a complaint, nor was having three attorneys prepare or revise the complaint unreasonable.

Continue Reading Lucasfilms Strikes Back Getting Attorney’s Fees

Lucasfilm Ltd. v. Skywalker Outdoor, Inc., No. 10 C 733, Slip Op. (N.D. Ill. Mar. 11, 2011) (Conlon, J.).
Judge Conlon denied defendant Skywalker Outdoor’s motion to modify or vacate the default judgment entered in favor of plaintiff Lucasfilm in this Lanham Act dispute. Skywalker Outdoor did not answer Lucasfilm’s complaint and then did not attend the hearing on Lucasfilm’s default motion. The Court entered default judgment after that hearing. First, Skywalker Outdoor received sufficient notice of the hearing – more than the required ten days pursuant to Fed. R. Civ. P. 55(b)(2). Furthermore, Skywalker Outdoor’s claim that it believed its counsel would attend the hearing was irrelevant. Counsel’s inattentiveness is not excusable neglect pursuant to Fed. R. Civ. P. 60(b)(1).

Continue Reading Counsel’s Inattentiveness is Not Excusable Neglect

Liquid Dynamics Corp. v. Vaughan, No. 08 C 6934, Slip Op. (N.D. Ill. Oct. 20, 2008) (Conlon, J.).
Judge Conlon denied plaintiff’s objections to the Magistrate’s Report and Recommendations and denied plaintiff’s contempt motion. In a prior case, a jury found plaintiff’s patent valid and willfully infringed. The Court trebled plaintiff’s damages, awarded plaintiff attorney’s fees, and entered a permanent injunction preventing defendant from making, using or selling any of 47 mixing systems, or colorable imitations thereof, at issue in the case. Plaintiff brought a second case alleging infringement of 22 additional mixing systems and then filed a contempt motion arguing that the 22 new mixing systems were imitations of the original 47. After an extensive evidentiary hearing, the Magistrate found questions of fact as to whether the 22 mixing systems were colorable imitations of the enjoined systems and, therefore, denied the contempt motion. After a de novo review, the Court affirmed the Magistrate’s Recommendation The 22 new mixing systems were not exact duplicates of the enjoined systems and there were questions of fact as to whether the differences were sufficiently minimal to make the new systems colorable imitations. The contempt motion was, therefore, denied, but the infringement case continued.

Continue Reading Questions of Fact re Alleged Enjoined Imitations Prevent Contempt

Heriot v. Byrne, No. 08 C 2272, Slip Op. (N.D. Ill., Jul. 21, 2008) (Conlon, J.).
Judge Conlon denied defendants’ motion to dismiss plaintiffs’ copyright and related state law claims based upon forum non conveniens, Colorado River abstention, and for lack of standing. Plaintiffs alleged that they were co-owners of defendants’ copyrights in the popular books and movies associated with The Secret, a self-help program. Defendants previously filed a suit in Australia seeking a declaratory judgment that defendants owned the copyright in The Secret.
Forum Non Conveniens
The Court held that the Australian Court would not be able to resolve US copyright ownership, and, therefore, was not an adequate forum. Furthermore, much of the evidence for plaintiffs’ unjust enrichment and equitable accounting claims was located in the US, as were the key witnesses.
Colorado River Abstention
Although both suits focused on the same works, the Australian case did not include and would not resolve plaintiffs’ equitable claims for unjust enrichment and the equitable accounting. Because the Australian case would not resolve all issues in the US case, abstention was no appropriate.
The Court held that plaintiffs had standing to make its copyright claims because plaintiffs alleged copyright ownership in their complaint.

Continue Reading Abstention Not Appropriate Because Foreign Action Does Not Address All US Issues

Wound Care Educ. Institute v. Thomas, No. 07 C 6505, Slip Op. (N.D. Ill. Jun. 17, 2008) (Conlon, J.).
Judge Conlon denied defendants’ (collectively “Wound Care Plus”) motion to dismiss plaintiff Wound Care Education Institute’s (“WCEI”) trademark and copyright infringement case for lack of personal jurisdiction, improper venue and forum non conveniens. WCEI provided wound treatment education to health professionals across the country using copyrighted materials, and is largely based in the Northern District. It alleged that Wound Care Plus attended three of its seminars and then began running competing seminars, including at least one in Chicago, using course materials that were substantially similar to or exact copies of WCEI’s copyrighted course materials. Wound Care Plus also operated a website which allowed its customers to register online for the Wound Care Plus seminars.
Personal Jurisdiction
The Court held that it had specific personal jurisdiction over Wound Care Plus, a New York resident, because it advertised its Chicago seminars in national publications seeking to register Illinois customers. Additionally, Wound Care Plus’s website created jurisdiction because it was an active, commercial website that allowed Wound Care Plus’s customers to register for, among others, its Chicago seminar online.
Venue was proper in the Northern District, despite the fact that Wound Care Plus did not reside in Illinois because a substantial part of the events giving rise to WCEI’s claims, the Chicago seminars, occurred within the Northern District.
Forum Non Conveniens
The Court noted that the motion should have been brought pursuant to 28 U.S.C. Section 1404(a), instead of the common law forum non conveniens. Forum non conveniens was inapplicable to this case because the alternate forum was not abroad or a state court.

Continue Reading Chicago Seminars Create Personal Jurisdiction

FM Indus., Inc. v. Citicorp Credit Servs., Inc., No. 07 C 1794, 2008 WL 717792 (N.D. Ill. Mar. 17, 2008) (Conlon, J.).
Judge Conlon granted Citicorp defendants and denied defendant Gelfand summary judgment of copyright infringement. Plaintiff FM Industries (“FMI”) alleged that Gelfand infringed FMI’s copyright in its TUCANS debt-collection software by continuing to use it after Gelfand’s license expired. Gelfand argued that FMI could not prove ownership of the copyright because it could not produce the written assignment. But the Court held that FMI’s deposition testimony was sufficient to create a material question of fact and, therefore, denied summary judgment.
Citicorp was accused of encouraging and inducing its outside attorneys to use the TUCANS software after their licenses expired. But at least in part because FMI failed to respond to Citicorp’s Local Rule 56.1 statements or to submit its own responsive statements of fact, the Court accepted as true Citicorp’s evidence that it told its outside attorneys to stop using TUCANS before licenses expired and that Citicorp was unaware that the attorneys continued using TUCANS.
Practice Tip: I cannot say it enough: you must strictly comply with Local Rule 56.1 Click here to read about other opinions considering Local Rule 56.1

Continue Reading Summary Judgment for Failure to Comply with Local Rule 56.1

CardioNet, Inc. v. LifeWatch Corp., No. 07 C 6625, 2008 WL 567031 (N.D. Ill. Feb. 27, 2008) (Conlon, J.).
Judge Conlon granted in part counter-defendant CardioNet’s Fed. R. Civ. P. 12(b)(6) motion to dismiss counter-plaintiffs’ (collectively, “LifeWatch”) Lanham Act false advertising and related Uniform Deceptive Trade Practices Act (“UDTPA”) and Consumer Fraud and Deceptive Trade Practices Act (“CFA”) claims. LifeWatch alleged that CardioNet improperly acquired one of LifeWatch’s prescription-only heart monitoring devices, the Life Star ACT. The device monitors a person’s heart rate and uses a cell phone to transmit irregular readings to a monitoring station. CardioNet allegedly inspected and tested the device. Then based on its tests, CardioNet allegedly misappropriated LifeWatch’s trade secrets and intentionally made false and misleading statements about the LifeStar ACT in its advertising. LifeWatch’s Lanham Act, UDTPA and CFA claims were all based upon CardioNet’s allegedly false advertising.
LifeWatch identified the allegedly false statements with specificity, but because LifeWatch did not plead who made them or when and where they were made, LifeWatch’s claims did not meet Rule 9(b) heightened pleading standards. The Court, therefore, dismissed the Lanham Act, UDTPA and CFA claims.

Continue Reading Rule 9(b) Pleading Standards for Lanham Act False Advertising Claims

CardioNet, Inc. v. LifeWatch Corp., No. 07 C 6625, 2008 WL 567223 (N.D. Ill. Feb. 27, 2008) (Conlon, J.).
Judge Conlon granted in part defendants’ (collectively, “LifeWatch”) motion to dismiss plaintiff CardioNet’s state law claims as preempted by the Illinois Trade Secrets Act (“ITSA”). CardioNet alleged that LifeWatch improperly obtained one of CardioNet’s prescription-only MCOT remote heart monitoring devices by getting a false prescription for it. LifeWatch then tested the MCOT by, among other things, simulating a heart attack. Based upon the tests, LifeWatch gathered allegedly trade secret information from the MCOT.
The Court held that CardioNet’s conversion claim was preempted to the extent it was based upon gathering trade secret information from the MCOT because conversion of trade secrets is a restatement of misappropriation. But the claim was not preempted as it related to conversion of the MCOT device.
Similarly, CardioNet’s fraud claim was preempted to the extent the alleged fraud was acquiring the trade secret or confidential information, but the claim was not preempted to the extent the alleged fraud was acquiring the MCOT device.
CardioNet’s intentional interference with contract claim was not preempted. The alleged wrong was not the alleged misappropriation, but interference with the contract signed by the patient to get the MCOT.
Finally, CardioNet’s unfair competition claim was preempted. The alleged unfair competition was possession and use of the alleged trade secret information taken from the MCOT, the same acts forming the trade secret claim.

Continue Reading Trade Secret Act Preempts State Claims Based Upon Confidential Information