Weber-Stephen Prods., LLC v. Char-Broil, LLC, No. 16 C 4483, Slip Op. (N.D. Ill. Oct. 5, 2016) (Gettleman, J.).

Judge Gettleman denied defendant Char-Broil’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction and granted Char-Broil’s corporate parent Bradley’s motion to dismiss on the same grounds. The Court also granted

Halo Creative & Design Ltd. v. Comptoir Des Indes Inc., No. 14 C 8196, Slip Op. (N.D. Ill. Jan. 29, 2015) (Leinenweber, J.).

Judge Leinenweber granted defendants’ (a Canadian company and an individual Canadian citizen) motion to dismiss pursuant to forum non conveniens arguing that plaintiff’s (a Hong Kong entity) copyright infringement claims should

Heathcote Holdings Corp., Inc. v. Leapfrog Enters., Inc., No. 10 C 1471, Slip Op. (N.D. Ill. Dec. 27, 2010) (Coar, J.).
Judge Coar transferred plaintiff Heathcote’s false patent marking case to the Northern District of California. Because Heathcote was a relator standing in the shoes of the federal government, Heathcote’s chosen forum was given little deference. All of defendant’s witnesses — party and non-party alike — were located in California. Additionally, the relevant evidence was located in defendant’s California offices. And Heathcote was unlikely to have much relevant evidence. The Court, therefore, transferred the case.

Continue Reading False Marking Plaintiff’s Chosen Form Not Given Deference

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.
Standing
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

Hope Family Vineyards Pty, Ltd., v. Hope Wine, LLC, No. 08 C 3246, Slip Op. (N.D. Ill. Jul. 11, 2008) (Lindberg, J.).
Judge Lindberg granted defendant’s §1404(a) motion to transfer to the Central District of California. Plaintiff was an Australian entity with its principal place of business in Australia. Its only direct connection to the Northern District was that its exclusive U.S. distributor was headquartered in Illinois. The distributor, however, was not a party to the suit. The Court therefore, gave plaintiff’s choice of forum minimal deference.
Defendant was a California entity with its principal place of business in the Central District of California. While defendant sold its wine on the internet, 90% of its sales were in California, and only 5% over the internet. Of that 5%, only four sales were to Illinois, including one to plaintiff’s distributor. Based on these facts, the alleged harm and confusion occurred in California, not Illinois.
Finally, transfer would increase the ease of access to the evidence because defendant, its documents and witnesses were all in California, and plaintiff would have to travel from Australia regardless of which district court heard the case.

Continue Reading Australian Plaintiff’s Case Transferred to Defendant’s Home District

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
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

Palantir.net, Inc. v. Palantir Techs., Inc., No. 07 C 4271, Min. Order (N.D. Ill. Nov. 27, 2007) (Guzman, J.).*
Judge Guzman granted defendant’s motion to transfer this Lanham Act case to the Northern District of California (“N.D. Cal.”) pursuant to 28 U.S.C. Section 1404(a). Defendant’s principal place of business was in the N.D. Cal. and defendant had an earlier-filed case against plaintiff pending in the N.D. Cal. The Court, therefore, held that the convenience of the parties and the witnesses, as well as the interests of justice, were best served by transferring the case to the N.D. Cal.
* Click here for a copy of the case.

Continue Reading First-Filed Case Dictates Transfer

Morton Grove Pharms., Inc. v. Nat’l. Pediculosis Assoc., __ F. Supp.2d __, 2007 WL 4259422 (N.D. Ill. Nov. 30, 2007) (Bucklo, J.).
Judge Bucklo granted in part defendants Fed. R. Civ. P. 12(b)(2) motion to dismiss and denied defendants’ motion to transfer the case to the Eastern District of Michigan. Plaintiff manufactures a line of lotions and shampoo which are FDA-approved for treating lice and scabies. Defendants are a Michigan non-profit group, Ecology Center, Inc., and related individuals (collectively the “Center”), as well as the National Pediculosis Association. The Center mailed two newsletters related to passage of Michigan legislation to approximately 19,000 addresses of which 44 were in Illinois. 99% of the Center’s donors were from Michigan, with just .23% from Illinois (18 Illinois-based donors total). The Center’s strongest ties to Illinois consisted of two donations totaling $270,000 from an Illinois-based foundation and an interactive website which accepts donations, although none have come from Illinois. The Court previously held that these contacts did not create general jurisdiction.*
The Court held that the Center’s act of sending even the two newsletters with the allegedly misleading and defamatory statements created specific jurisdiction over the Center. But the Court held that there was not specific jurisdiction over individual defendant William Weil. Weil’s name appeared in the newsletter, but he submitted an affidavit stating that he did not participate in mailing the newsletter and had no knowledge that it was being sent to any Illinois residents.
The Court did not transfer the case to the Eastern District of Michigan because the Center did not show that Michigan was clearly more convenient than the Northern District. Each party’s witnesses were in their preferred jurisdiction – the plaintiff’s in Illinois and the Center’s in Michigan – and the interests of justice are served by keeping the case in the Northern District. While median times to trial in both districts were comparable, plaintiff’s related, pending case in the Northern District made the Northern District the correct court to hear the case, even though the Court had severed the related case from this one.
* For discussion of the Court’s previous personal jurisdiction decision in this case, click here.

Continue Reading Two Newsletters to Illinois Residents Create Specific Jurisdiction

Jewel Am., Inc. v. Combine Int’l., Inc., No. 07 C 3596, 2007 WL 4300589 (N.D. Ill. Nov. 30, 2007) (Guzman, J.).
Judge Guzman denied defendants’ 28 U.S.C. § 1404(a) motion to transfer this copyright case to the Eastern District of Michigan. Plaintiff argued that its choice of forum should be given deference because its relevant subsidiary was an Illinois entity with its place of business and all of its operations in Illinois. But the Court looked to the residence of the named plaintiff, not the plaintiff’s subsidiary. Because the named plaintiff was a New York entity, plaintiff’s chosen forum was not given deference. Further, the situs of material events was Michigan. Defendants were Michigan entities and the alleged infringement and related planning occurred in Michigan. The Court discounted the location of documents because, “[i]n this age of faxing, scanning and overnight courier services, however, the location of documentary evidence is largely irrelevant.”
No party identified a third party witness that would be required to testify. And convenience of the parties tipped slightly to plaintiff whose subsidiary’s business would be disrupted if its main employees and key witnesses had to travel from Illinois to Michigan for court proceedings and depositions. Based upon these factors, the Court held that defendants had not shown that the Eastern District of Michigan was clearly more convenient and denied the motion.

Continue Reading Named Plaintiff Controls Transfer Determination

Abbott Labs. V. Church & Dwight, Inc., No. 07 C 3428, 2007 WL 3120007 (N.D. Ill. Oct. 23, 2007) (Kennelly, J.).
Judge Kennelly denied defendant Church & Dwight’s (“C&D”) 28 U.S.C. Section 1404(a) motion to transfer this patent case to the District of New Jersey, where a related case between the parties was pending, and granted C&D’s motion to dismiss a claim that the New Jersey Court previously dismissed for lack of standing. In New Jersey, C&D sued plaintiff Abbott Laboratories (“Abbott”) alleging infringement of patents covering lateral flow immunology devices, and pregnancy and ovulation testing methods. Abbott counterclaimed alleging infringement of three patents, including U.S. Patent No. 6,534,320 (the “‘320 patent”). The New Jersey Court ultimately dismissed Abbott’s counterclaim, holding that Abbott was a nonexclusive licensee of the ‘320 patent and, therefore, lacked standing. The New Jersey Court also held that standing could not be cured by Abbott’s effort to involuntarily join its licensor Inverness pursuant to Fed. R. Civ. P. 19. Based upon the New Jersey Court’s ruling, this Court held that issue preclusion prevented Abbott from re-litigating its standing to sue. Unless Abbott revised its license agreement with Inverness, giving Abbott additional rights, the New Jersey Court’s ruling was preclusive. The Court, therefore, dismissed Abbott’s ‘320 patent infringement claim.
The Court denied C&D’s motion to transfer the case to New Jersey. The Court gave Abbott’s choice of forum deference. And the Court gave little weight to the parties’ ongoing New Jersey patent suit because the New Jersey Court dismissed Abbott’s counterclaims before making any substantive rulings. The New Jersey Court, therefore, would not have been in a better position to decide any issues in the case.

Continue Reading Prior Standing Ruling is Preclusive Absent License Revisions