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Deckers Outdoor Corp. v. Does 1-55, No. 114 C 10, Slip Op. (N.D. Ill. May 24, 2011) (Darrah, J.)
Judge Darrah dismissed without prejudice plaintiff’s motion for a default judgment in this Lanham Act case about the UGG mark. The Court held that it would not exercise personal jurisdiction over the Does based solely on interactive websites without additional facts as to whether the websites were aimed at Illinois.
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Continue Reading Jurisdictional Facts Regarding Website Activity Required Before Default

The patent pilot program started this month in the Northern District and across the country. The pilot program is a ten-year look at ways to handle patent cases more effectively. The main component of the pilot program is judges in pilot districts, including the Northern District, self-selecting as patent judges. Patent cases will continue to be randomly assigned to all Northern District judges. But when a non-patent judge is assigned a patent case that judge will have thirty days to order reassignment of the case. When reassignment is ordered, the case will be randomly reassigned to one of the patent judges. There will also be patent-related education and programs offered for the patent judges across the country.
One unanswered question about the pilot program remains: If a non-patent judge was assigned a patent case less than thirty days before the program kicked off on September 19, can the non-patent judge order the patent case reassigned pursuant to the pilot program? I have not seen it happen yet, but I suspect it could over the next week or two.
The Northern District issued the following list of judges who have self-selected as patent judges:
Chief Judge James F. Holderman
Judge Ruben Castillo
Judge John W. Darrah
Judge Gary S. Feinerman
Judge Virginia Kendall
Judge Matthew F. Kennelly
Judge Joan Humphrey Lefkow
Judge Rebecca R. Pallmeyer
Judge Amy J. St. Eve
Judge James B. Zagel
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Continue Reading Northern District of Illinois Patent Program Begins

Neutral Tandem, Inc. v. Peerless Network, LLC, No. 08 C 3402, Slip Op. (N.D. Ill. Dec. 2, 2010) (Darrah, J.).
Judge Darrah granted plaintiff Neutral Tandem summary judgment as to defendants’ (collectively “Peerless Network”) inequitable conduct claim. Peerless offered no clear and convincing evidence that the inventor knew of the allegedly withheld prior art, referred to as the “Phase II Order.” The fact that the inventor was involved in the proceeding’s from which the Phase II Order issued was not sufficient. Those proceedings lasted eleven years and resulted in thirteen orders. And the inventor testified that he did not remember the Phase II Order. Furthermore, similarities between a paragraph of the Order and a statement made during prosecution was not sufficient. Finally a petition filed with the FCC by the inventor referencing the Order was not sufficient because he testified it was written by his outside counsel and he had not reviewed the petition.
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Continue Reading Defendant Cannot Show Knowledge of Prior Art Necessary for Inequitable Conduct

Eva’s Bridal Ltd. v. Halanick Enters., Inc., No. 07 C 1668, Slip Op. (N.D. Ill. Aug. 4, 2010) (Darrah, J.)
Judge Darrah granted in part defendants’ (collectively “Halanick”) motion to reconsider the Court’s summary judgment decisions in this trademark dispute. Initially, the Court overturned its decision that Sarniti could not file a proper claim in light of the Court’s earlier decision allowing the same claim.
The Court also reversed its decision regarding plaintiffs’ trademark claims. Plaintiffs exercised new control over defendants’ use of the marks. Proof of plaintiff paying sales tax and keeping tabs on sales were insufficient. As such, plaintiffs’ license is a “naked license”.
Finally, the Court declined to exercise supplemental jurisdiction over the state law claims.
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Continue Reading Proof of Paying Sales Tax and Tracking Sales are not Enough Control for Trademark Licensing

MPH Techs. Oy v. Zyxel Coms. Corp., No. 10 C 684, Slip Op. (N.D. Ill. Jul. 16, 2010) (Darrah, J.).
Judge Darrah granted defendants’ 28 U.S.C. § 1404(a) motion to transfer this patent case to the Northern District of California. Venue was proper in both districts. Plaintiff’s choice of forum was only given slight weight because the Northern District of Illinois was not plaintiff’s home forum and had only a weak connection to the case. The convenience of witnesses weighted in favor of transfer. All of defendants’ employee witnesses were in the Northern District of California and, more importantly, half of the non-party witnesses were in the Northern District of California. Three of plaintiff’s four witnesses were in its home country – Finland. Access to proofs is given little deference in light of wide-spread use of digital discovery, but still leaned slightly in favor of transfer because defendants’ documents were largely in California.
The situs of material events was neutral because it is largely irrelevant in patent cases. The convenience of parties weighed in favor of transfer. Plaintiff’s inconvenience in traveling from Finland to Chicago or to Northern California was not significantly different.
The interests of justice weighed slightly in favor of transfer because defendants’ employees had a greater interest in the case than Illinois citizens did. Otherwise, the Courts were similarly capable of handling patent cases and had comparable times to resolution, with only a few months difference in each category.
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Continue Reading Patent Case Transferred to District With Witnesses and Documents

AutoZone, Inc. v. Strick, No. 03 C 8152, Slip Op. (N.D. Ill. Jun. 9, 2010) (Darrah, J.).
Judge Darrah granted in part defendants’ bill of costs after defendants prevailed in a trademark infringement trial – click here for much more on the case in the Blog’s archives. The Court awarded deposition transcript fees, but only up to the then applicable Northern District costs – $3.30 per page for an original transcript and $.83 per page for a copy. Because defendants did not show they were reasonably necessary, the Court did not award costs for condensed transcripts, word indexes, or delivery charges.
The Court awarded costs for daily trial transcripts because they were necessary for direct and cross-examinations during trial and post-trial findings of fact. The Court awarded photocopying costs at $.10 per page only to the extent defendants showed the purposes of the copying. Finally, the Court awarded the costs of making the defendants’ trial exhibits, excluding shipping costs.
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Continue Reading Court Awards Costs to Prevailing Party

Eva’s Bridal Ltd. v. Halanick Enterprises, Inc., No. 07 C 1668, Slip Op. (N.D. Ill. May 19, 2010) (Darrrah, J.).
Judge Darrah granted in part defendants’ and denied plaintiffs’ summary judgment motions in this Lanham Act case over the use of the name “Eva’s Bridal.” The Court granted defendants’ summary judgment as to plaintiffs’ trademark infringement claim because plaintiffs presented no evidence that they federally registered the “Eva’s Bridal” trademark.
Plaintiffs’ Lanham Act unfair competition and trademark dilution claims did not require a federally registered trademark. But because the mark was not registered, plaintiffs had the burden of proving ownership of the mark. Plaintiffs created at least a question of fact as to ownership with evidence that plaintiffs’ business was a continuation of the original use of the mark. And because the mark was based upon a first name and not a last name the mark was not necessarily descriptive. The Court, therefore, held there was a question of fact as to whether the mark was descriptive.
Defendants agreed that plaintiffs abandoned the mark by licensing it without maintaining any quality control. Plaintiffs, however, presented sufficient evidence of control to create a question of fact.
Defendants’ argument that plaintiffs had not shown a likelihood of confusion was not relevant to a dilution analysis. And defendants’ argument that the Eva’s Bridal mark was not famous failed because it was not developed. Defendants’ argument was a single sentence without elaboration or support.
There was also a question of fact as to defendants’ laches and acquiescence claims. Plaintiffs cited evidence that during the alleged delay the parties engaged in various negotiations and defendants made various payments.
Finally, the Court denied plaintiffs’ summary judgment motion. Plaintiffs failed to comply with Local Rule 56.1(a)(3) requiring a statement of uncontested material facts supported by admissible evidence. Plaintiffs’ statements were largely taken verbatim from its amended complaint, were largely irrelevant to the summary judgment issues and were largely not supported by cites to the record. The Court, therefore, denied plaintiffs’ motion without analyzing it on the merits.
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Continue Reading Summary Judgment Denied for Failure to Comply With Rule 56.1 Statement of Facts

Alta Mere Indus., Inc. v. DBC Window Tinting, Inc., No. 10 C 266, Slip Op. (N.D. Ill. May 6, 2010) (Darrah, J.).
Judge Darrah granted defendant Impact’s Fed. R. Civ. 12(b)(2) motion to dismiss plaintiff Alta Mere’s Lanham Act claims regarding its marks related to automotive window tinting and alarm systems. Impact operated a local Texas business and had no other identified Illinois contacts. Alta Mere argued that the Court had specific jurisdiction over Impact because of Impact’s interactions with other defendants who were Alta Mere franchisees, as well as two letters allegedly sent to Impact warning that a franchise agreement governing defendant Cader’s use of the Alta Mere marks were governed by Illinois law.
The Court considered jurisdiction over each defendant separately and, therefore, did not consider the other defendants’ Illinois contacts in analyzing jurisdiction over Impact. Impact alleged that it never received Alta Mere’s letters. But even if Impact had received them, correspondence sent to a defendant outside the forum could not alone create jurisdiction. The letters were “random, fortuitous, or attenuated contacts.”
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Continue Reading Letter Sent Outside Illinois Cannot Create Jurisdiction

AutoZone, Inc. v. Strick, No. 03 C 8152, Slip Op. (N.D. Ill. Mar. 8, 2010) (Darrah, J.).
Judge Darrah, after a bench trial, held that defendant’s use of his Oil Zone and Wash Zone marks did not create a likelihood of confusion with plaintiff AutoZone’s Auto Zone trademarks.*
Likelihood of Confusion
Only one of the seven likelihood of confusion factors weighed in AutoZone’s favor – the strength of AutoZone’s mark. But the strength of the mark was outweighed by the dissimilarity of both the marks and the services offered by the parties. Apart from the common use of the word “zone” there was little similarity between plaintiff’s AutoZone and defendant’s Oil Zone/Wash Zone. And while AutoZone sells auto parts, defendant performs automatic services.
Laches
AutoZone’s four-year delay exceeded the analogous Consumer Fraud and Deceptive Business Practices Act three-year statute of limitations. The fact that defendant’s alleged infringement “fell through the cracks” and was not acted on for four years, was not a sufficient excuse for the delay. And defendant was prejudiced by AutoZone’s delay based upon defendant’s four years of advertising the Oil Zone/Wash Zone names.
* Click here for more on this case in the Blog’s archives.
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Continue Reading Four Year Delay Creates Laches in Lanham Act Case

SPSS Inc. v. Nie, No. 08 C 66 (N.D. Ill.) (Darrah, Jr.).
The parties recently settled this trademark dispute shortly before trial. For more on the parties’ history and the settlement, click here for Chicago Tribune reporter and Chicago Law blogger Ameet Sachdev’s reporting on the case in the Tribune, and click here for more coverage of the case in the Blog’s archives.
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Continue Reading Parties Settle Trademark Dispute on Eve of Trial