Sullivan & Survivor Music, Inc. v. Bickler, No. 18 C 3770, Slip Op. (N.D. Ill. Jan. 25, 2019) (Lee, J.). Judge Lee denied defendant Bickler’s, the former lead singer of the band Survivor, Fed. R. Civ. P. 12(b)(2) & (6) motion to dismiss plaintiffs’ (collectively “Survivor”) Lanham Act claims related to the alleged misuse of … Continue Reading
Flair Airlines, Ltd. v. Gregor LLC, No. 18 C 2023, Slip Op. (N.D. Ill. Sep. 17, 2018) (Guzman, J.). Judge Guzman granted in part plaintiff’s Fed. R. Civ. P. 12(b)(6) motion to dismiss certain of defendants’ counterclaims in this case involving Lanham Act trademark infringement and deceptive trade practices, copyright and related state law claims. … Continue Reading
Flair Airlines, Ltd. v. Gregor LLC, No. 18 C 2023, Slip Op. (N.D. Ill. Jan. 17, 2019) (Guzman, J.). Judge Guzman denied plaintiff’s Fed. R. Civ. P. 12(b)(6) motion to dismiss certain of defendants’ counterclaims in this case involving Lanham Act trademark infringement and deceptive trade practices, copyright and related state law claims. Of particular … Continue Reading
LimeCoral, Ltd. v. CareerBuilder, LLC, No. 15 C 7484, Slip Op. (N.D. Ill. Mar. 9, 2017) (Der-Yeghiayan, J.). Judge Der-Yeghiayan granted defendant CareerBuilder’s Fed. R. Civ. P. 56 motion for summary judgment as to plaintiff LimeCoral’s copyright, breach of contract and unjust enrichment claims. The Court also denied LimeCoral’s Rule 56 motion for partial summary … Continue Reading
VitalGo, Inc. v. Kreg Therapeutics, Inc., No. 16 C 5577, Slip Op. (N.D. Ill. Dec. 21, 2017) (Dow, J.). Judge Dow granted in part defendants’ (collectively “Kreg”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s (collectively “VitalGo”) claims and Fed. R. Civ. P. 12(f) motion to strike portions of its complaint in this copyright … Continue Reading
Monster Energy Co. v. Peng, et al., No. 17 C 414, Slip Op. (N.D. Ill. Oct. 23, 2017) (Dow, J.). Judge Dow granted plaintiff Monster Energy’s motion for summary judgment, granting final judgment, a permanent injunction and attorney’s fees in this Lanham Act dispute involving defendants’ use of Monster Energy’s Claw Icon Mark and copyrighted … Continue Reading
Kosten v. Kosten, No. 16 C 6666, Slip Op. (N.D. Ill. Dec. 14, 2016) (Kennelly, J.). Judge Kennelly denied in part defendant’s Fed. R. Civ. P. 12(b) motion to dismiss plaintiff’s state law claims in this case involving copyright claims and generally relating to the sale of the parties’ Garden Row sauce business. While only … Continue Reading
Kay Bros. Enters., Inc. v. Parente¸ No. 16 C 387, Slip Op. (N.D. Ill. Oct. 3, 2016) (Ellis, J.). Judge Ellis granted in part third party defendant R.A. Mifflin Architects (“Mifflin”) Fed. R. Civ. P. 12(b)(6) motion to dismiss defendants’ third party claims against Mifflin in this copyright dispute involving custom architectural plans. According to … Continue Reading
Culver Franchising Sys., Inc. v. Steak ‘n Shake Inc., No. 16 C 72, Slip Op. (N.D. Ill. Aug. 5, 2016) (Feinerman, J.). Judge Feinerman granted defendant Steak ‘n Shake’s Fed. R. Civ. P. 12(b)(6) motion to dismiss without prejudice plaintiff Culver’s claims that Steak ‘n Shake infringed Culver’s copyrights by copying Culver’s television commercial in … Continue Reading
Great Eastern Entertainment Co. v. Naeemi, No. 14 C 4731, Slip Op. (N.D. Ill. Nov. 5, 2015) (Leinenweber, Sen. J.). Judge Leinenweber denied defendant’s Rule 11 motion in this trademark and copyright dispute regarding alleged sale of unauthorized plush toys and backpacks at anime conventions. As an initial matter, the Court held that Rule 11 … Continue Reading
Porter v. Team One Lacrosse LLC, No. 15 C 523, Slip Op. (N.D. Ill. May 15, 2015) (Lee, J.). Judge Lee denied defendants (collectively “Team One”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s copyright infringement claims as barred by the three year statute of limitations, 17 U.S.C. § 507(b). Plaintiff and Team One … Continue Reading
Kinsey v. Jambow, Ltd., No. 14 C 2236, Slip Op. (N.D. Ill. Dec. 4, 2014) (St. Eve, J.). Judge St. Eve granted in part plaintiffs’ motion for default judgment in this music copyright case involving three reggae songs. The Court awarded plaintiffs $22,500 in statutory damages, a permanent injunction and their reasonable attorney’s fees. Of … Continue Reading
Ali v. The Final Call, Inc., No. 13 C 6883, Slip Op. (N.D. Ill. Jun. 19, 2015) (Feinerman, J.). Judge Feinerman granted defendant Final Call’s motion to strike one line of plaintiff’s errata sheet and denied plaintiff’s motion for summary judgment of liability in this copyright dispute involving plaintiff’s portrait of Minister Louis Farrakhan, titled … Continue Reading
Malibu Media, LLC v. Funderburg, No. 13 C 2614, Slip Op. (N.D. Ill. Apr. 24, 2015) (Dow, J.). Judge Dow granted plaintiff Malibu Media’s motion for default judgment in this copyright case regarding pornographic movies. Malibu Media sufficiently pled copyright infringement: 1) Malibu Media owned a copyright in the movie; and 2) defendant downloaded “bits” … Continue Reading
Panoramic Stock Images, Ltd. d/b/a Panoramic Images v. John Wiley & Sons, Inc., No 12 C 10003, Slip Op. (N.D. Ill. Sep. 2, 2014) (Feinerman, J.). Judge Feinerman granted in part plaintiff Panoramic’s partial summary judgment motion and denied defendant Wiley’s partial summary judgment motion as to Panoramic’s fraud and contributory copyright infringement claims in … Continue Reading
Francescatti v. Germanotta p/k/a Lady Gaga, No. 11 C 5270, Slip Op. (N.D. Ill. June 17, 2014) (Aspen, Sen. J.). Judge Aspen granted defendants’ Fed. R Civ. P. 56 motion for summary judgment because no reasonable trier of fact could find defendant Lady Gaga’s song “Judas” substantially similar to plaintiff’s song “Juda.” Local Rule 56.1 … Continue Reading
John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, No. 12 C 1446, Slip Op. (N.D. Ill. June 24, 2013) (Keys, Mag. J.). Judge Keys granted plaintiff’s motion to clarify the Court’s order that plaintiff produce documents related to two copyrighted, scientific articles that plaintiff alleges that defendants infringed by using them … Continue Reading
Woltmann v. Chicago Gridiron, LLC, No. 11 C 5994, Min. Order. (N.D. Ill. Apr. 11, 2012) (Norgle, J.). Judge Norgle awarded defendant Chicago Gridiron its costs pursuant to Fed. R. Civ. P. 68 in this copyright case. Chicago Gridiron had a right to its costs pursuant to Rule 68 because it made plaintiff a $5,000 … Continue Reading
Heartland Angels, a Chicago based, early-stage private equity capital investment network, is sponsoring a new educational series on Intellectual Property in the 21st Century.
The first in the series will be a panel discussion on February 7, 2011, starting at 6:30pm in the Chicago offices of Drinker, Biddle and Reath LLP, 191 N. Wacker Drive, Suite 3700. The panel will consider answers to the question: Are the copyright laws out of touch in the new reality of digital on-line media?
David Frey, J.D, Partner, Drinker, Biddle and Reath LLP
Ed Lee, J. D., Professor, Chicago-Kent College of Law
Daliah Saper, J.D., Saper Law
Tim McCarthy, J.D., Senior Counsel of Clark Hill (Moderator)
Space is limited and pre-registration is required. Registration and inquiries by e-mail only to: Ron@heartlandangels.com. There will be a $10 charge (payable by cash or check only) at the door.
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The Northern District of Illinois continued its historically busy intellectual property docket in 2010. The most interesting statistic is a huge jump in patent filings this year -- 250 patent cases filed this year, nearly double 2009's 137 filings. And that is after a slight dip in filings from 2008 to 2009. I will discuss the 2010 filings in more detail in a post later this month, but even correcting for false patent marking suits, not all of which are included in the 250 filings because plaintiffs did not uniformly identify false marking cases as patent cases on civil cover sheets filed with the complaints, there was a significant increase in patent filings. That fits with my prediction in late 2008 that the Northern District's new Local Patent Rules would drive cases to Chicago.*
Trademark cases continued their slow growth, showing a slight increase over 2009. Finally, copyright cases increased, after falling off sharply in 2009. This chart shows the number of yearly patent, trademark and copyright cases filed in the Northern District during calendar years 2006 through 2009 (data gathered from the Stanford IP Clearinghouse and Pacer):
Northern District IP FilingsCase Type
* Click here for much more on the Local Patent Rules in the Blog's archives.
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Donovan v. Quade, No. 05 C 3533, Slip Op. (N.D. Ill. Oct. 15, 2009) (Nolan, Mag. J.)
Judge Nolan granted in part defendants/counterplaintiffs' motion for summary judgment in this copyright suit. Initially, the Court deemed admitted all of plaintiff's properly supported supplemental statements of material fact because defendants failed to factually support their denials of the facts pursuant to Local Rule 56.1(b)(3)(B). The plaintiff and individual defendant were co-authors of the well-known play Late Night Catechism ("LNC") and its primary character "Sister" a fictional Roman Catholic nun. The individuals founded defendant QDE in 2000 as a vehicle for producing LNC. The individual defendant also made plays that were derivative works of LNC and licensed them separately from QDE. Plaintiff also made derivative works, but only licensed them through QDE.
False Designation of Origin and Deceptive Trade Practices
The Court granted summary judgment as to plaintiff's false designation of origin and deceptive trade practice claims because plaintiff did not respond to defendants' summary judgment arguments as to those claims.
Deprivation of Copyright Revenues
Because the Court held that the parties were not governed by a partnership agreement, copyright law governed any revenues from LNC. The issue, therefore, was whether plaintiff's plays were derivative of the parties' joint work LNC. First, the Court held that LNC was a joint work of the parties. The parties' copyright application identified the parties as joint authors, and plaintiff failed to put forth sufficient evidence to counter the presumption created by the application.
The Court also held that plaintiff's later plays were derivative of LNC. Defendants put forth evidence that plaintiff's plays all included the Sister character and, therefore, were based upon and derivative of LNC. Plaintiff's "answers, conclusory denials" were not sufficient to overcome plaintiff's evidence. Because the parties were joint authors of LNC and because plaintiff's subsequent plays involving the Sister character were derivative of LNC, defendant was granted summary judgment regarding the demand for an accounting.
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Poparic v. Lincoln Square Video, No. 08 C 3491, Slip Op. (N.D. Ill. Jun. 25, 2009) (Kocoras, J.).
Judge Kocoras granted defendant Taste of Europe's Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. Plaintiff alleged that Taste of Europe sold a single copy of plaintiff's copyrighted movie in its Indiana store and argued only that the Court had general jurisdiction over Taste of Europe, without addressing specific jurisdiction. Taste of Europe presented evidence that it was an Indiana-based business that did not advertise in Illinois or conduct any business in or with Illinois. Plaintiff did not present any evidence of Taste of Europe's Illinois connections, but sought jurisdictional discovery. The Court, however, found that it lacked personal jurisdiction, holding that jurisdictional discovery was not appropriate where plaintiff had identified no evidence showing Illinois connections to overcome Taste of Europe's proofs.
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I have noticed that my news updates tend to be patent-focused, so today they focus on trademarks and copyrights:
IP Law & Business (subscription required to access the article) has an interesting article in the February/March 2009 issue identifying Justice Ginsburg as the Supreme Court's "champion of copyright holders" because of recent opinions supporting broader copyrights. The article also identifies Justice Breyer, based on dissents in the same cases, as leading the cause for narrower copyrights. And the article predicts that the Supreme Court is trending toward a narrower view of copyrights.
Seattle Trademark Lawyer Michael Atkins has a timely post (click here to read it) that traces the March Madness trademark back to the Illinois high school basketball playoffs, as early as the 1940s. The NCAA and the Illinois High School Association have since pooled their rights and both have a license to use the marks.
Victoria Pynchon has a great series of posts looking at laches in trademark law based upon a recent Ninth Circuit decision -- click here and here.
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2008 was another busy IP year for the Northern District of Illinois. Once again, there was an increase in patent case filings, and the Northern District continues to be among the top five patent dockets in the country and the most active district court in the Seventh Circuit by far. Trademark cases were steady, with only two fewer filings than in 2007. And as with its patent docket, the Northern District's trademark docket continues to be one of the five most active in the country. Finally, copyright cases continued a relatively steep decline. But despite the decline, the Northern District maintains one of the most active copyright dockets outside of California and the Southern District of New York. This chart shows the number of yearly patent, trademark and copyright cases filed in the Northern District during calendar years 2006 through 2008 (data gathered from the Stanford IP Clearinghouse):
2008 Northern District IP Case Filings
Case Type 2006 2007 2008
Patent 126 141 151
Trademark 136 130 128
Copyright 194 123 81
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