VitalGo, Inc. v. Kreg Therapeutics, Inc., No. 16 C 5577, Slip Op. (N.D. Ill. Mar. 27, 2019) (Dow, J.). Judge Dow granted in part defendant Kerg’s Fed. R. Civ. P. 12(b)(6) & 12(f) motion to strike portions of plaintiff VitalGo’s Second Amended Complaint (SAC) and to dismiss VitalGo’s claims with prejudice in this Lanham Act … Continue Reading
Fair Isaac Corp. v. Trans Union, LLC, No. 17 C 8318, Slip Op. (N.D. Ill. Mar. 27, 2019) (Coleman, J.). Judge Coleman granted in part plaintiff FICO’s Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant Trans Union’s counterclaims in this antitrust, Lanham Act unfair trade practices and related state law claims involving FICO’s credit … Continue Reading
Loggerhead Tools, LLC v. Sears Holdings Corp., No. 12-CV-9033, Slip Op. (N.D. Ill. Sep. 20, 2016) (Darrah, J.). Judge Darrah granted defendant Sears’ summary judgment motion regarding Loggerhead’s fraud claims in this patent, Lanham Act and trade secret case involving the Bionic Wrench. Of particular note, the Court held as follows: Loggerhead could not maintain … Continue Reading
Foodworks USA, Inc. v. Foodworks of Arlington Heights, LLC, No. 10 C 1020, Slip Op. (N.D. Ill. Mar. 19, 2015) (Rowland, Mag. J.). Magistrate Judge Rowland denied defendant’s motion to reconsider the Court’s prior denial in part of a motion for judgment on damages in this Lanham Act case regarding FUEGO marks. However defendant styled … Continue Reading
Slep-Tone Enter. Corp. v. Teddy O’Brian’s, Inc., No. 14 C 3570, Slip Op. (N.D. Ill. Sep. 24, 2014) (Guzman, J.). Judge Guzman granted in part plaintiff Slep-Tone’s Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant’s declaratory judgment of trademark invalidity, cancellation, antitrust and related Lanham Act and state law claims in this trademark dispute … Continue Reading
Beasley v. John Wiley & Sons, Inc., No. 12 C 8715, Slip Op. (N.D. Ill. Sep. 9, 2014) (St. Eve, J.). Judge St. Eve, after previously deferring ruling to allow the parties to work out procedural disputes, granted defendant John Wiley & Sons’ motion for summary judgment as to plaintiff’s fraud and Digital Millennium Copyright … Continue Reading
Judge Dow denied plaintiff's motion for a preliminary injunction to prevent further alleged infringement of plaintiff's photographs and denied defendant John Wiley & Sons' motion to dismiss plaintiff's fraud claim. There is not an automatic rule that ongoing copyright infringement warrants an injunction. Instead, plaintiff must meet its burden as to each factor.
Plaintiff showed a likelihood of success on the merits that: 1) he has copyrighted works; 2) John Wiley & Sons only had a limited right to use them; and 3) some were used without any license. But plaintiff could not show irreparable harm. Plaintiff was in the business of licensing photographs and any harm could be remedied with money damages. The Court did, however, note that plaintiff would be in a strong position to recover his attorneys' fees should he succeed on the merits because of the ongoing nature of the alleged violation. But without irreparable harm, there could be no preliminary injunction.
Motion to Dismiss
Plaintiff's fraud claim was premised upon request letters for plaintiff's photographs and later uses of those photographs. The required intent to deceive was pled only on information and belief. Plaintiff's contentions were "barely" sufficient, but were sufficient. It was not clear whether the alleged acts were just broken promises or intentional, fraudulent acts.
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Golden Golf Lighting, Inc. v. Greenwich Indus., L.P., No. 07 C 1086, Slip Op. (N.D. Ill. Jun. 18, 2010) (Andersen, J.).
Judge Andersen denied defendant Clarin's Fed. R. Civ. P. 8(a), 9(b) and 12(b)(6) motion to dismiss this Lanham Act case regarding Clarin's allegedly fraudulent procurement of a trademark related to folding seats.
First, 15 U.S.C. § 1120 limited recovery to injuries sustained "in consequence" of a trademark registered by fraud or false reasons. The damages need not be to a trademark, as Clarin argued. Plaintiff's alleged damage because its folding chairs were seized at the U.S. border based upon alleged infringement of Clarin's trademark and plaintiffs allegedly lost business based upon the seizure. Those facts were sufficient to plead that Clarin was the proximate cause of plaintiff's alleged damages.
Plaintiffs pled fraud with sufficient particularity by incorporating by reference the fraud-related decision in Specialized Seating v. Greenwich Indus., L.P., 472 F.Supp. 2d 999 (N.D. Ill. 1999). Finally, Plaintiffs did not violate Fed. R. Civ. P. 8(a) or 8(d)(1) by combining two claims into a single count. Notice pleading did not require separate headings for each claim.
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World Wide Sales, Inc. v. Church & Dwight Co., Inc., No. 08 C 1198, Slip Op. (N.D. Ill. Nov. 9, 2009) (Kennelly, J.).
Judge Kennelly granted defendant Church & Dwight ("CD") summary judgment on each of plaintiff World Wide Sales' ("WWS") claims for trademark infringement, Lanham Act unfair competition and fraud on the Patent and Trademark office. WWS claimed that CD infringed and unfairly competed with WWS's Forever Fresh for the Fridge trademark, used with a refrigerator odor elimination product, by using CD's Fridge Fresh mark with its Arm & Hammer refrigerator deodorizer product.
The parties stipulated that CD's mark was protectable for purposes of this motion. The only issue, therefore, was whether there was a likelihood of confusion. Generally, a court would consider whether consumers believed CD's mark referred to WWS's product. But WWS relied upon a theory of reverse confusion, arguing that CD had so saturated the market with its junior mark that consumers believed WWS's products were CD's products. Courts apply the same likelihood of confusion factors in both reverse confusion and confusion cases, although the factors are weighted differently:
Similarity of Products. The products had similar deodorizing uses, but they were presented so differently that there was little chance of consumer confusion.
Degree of Similarity. Beyond both using "Fridge" and "Fresh" the marks were not similar. Among other things, WWS's mark was surrounded by pictures of refrigerated food stored with or without its product, CD's mark was against a yellow-orange background, similar to other Arm & Hammer products without any pictures of food. The factor weighed strongly in CD's favor as it was "extraordinarily unlikely" that consumers would be confused.
Use and Manner of Concurrent Use. The parties' distribution channels were vastly different. WWS offered no evidence of the products being sold in the same store or advertised in the same publication.
Strength of Mark. WWS's mark was descriptive and relatively little had been invested in promoting the mark. As a result, the Court held that the mark was relatively weak.
Consumers' Degree of Care. While the products at issue were relatively inexpensive, the Court still held that there was little chance consumers would confuse the products.
CD's Intent. Because the junior user does not seek to profit from the senior user's mark in reverse confusion cases, CD's intent was irrelevant.
Actual Confusion. WWS offered no evidence of actual confusion.
Based upon the factors, the Court held that no reasonable fact finder could find a likelihood of confusion.
Fraud on the PTO
Because WWS's registration disclaimed the exclusive use of "fridge" and "fresh," no reasonable fact finder could have found that CD lacked a reasonable belief that "fridge" and "fresh" were unprotected words. And therefore, failing to disclose WWS's "Forever Fresh for the Fridge" registration to the PTO during the prosecution of CD's "Fridge Fresh" mark was not fraud.
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24 Hour Fitness USA, Inc. v. Bally Total Fitness Holding Corp., No. 08 C 3853, 2008 WL 4671748 (N.D. Ill. Oct. 21, 2008).
Judge Lefkow granted defendants' Fed. R. Civ. P. 12(b)(1) motion to dismiss plaintiff 24 Hour Fitness's ("24") trade secret misappropriation complaint for lack of subject matter jurisdiction. 24 alleged that defendant Bally Total Fitness ("Bally) and the individual defendant ("Defendant") misappropriated 24's trade secrets when Defendant resigned his position as 24's COO and became Bally's CEO. But defendants argued that the Court lacked subject matter jurisdiction over 24's state law trade secret claims because there was no diversity of citizenship - both 24 and Defendant were California citizens. 24 argued that Defendant was, in fact, a citizen of Illinois because he worked at Bally's Illinois headquarters and because Defendant's contract with Bally required that he move to Illinois before the case was filed.
Looking at the totality of the circumstances, the Court held that Defendant remained a citizen of California, where he had lived while employed by 24. Defendant had put his California home for sale and did have a contract requiring that he become domiciled in Illinois, although the particulars of the contract were disputed. But the most significant factor in the analysis was that Defendant's family remained in California. And Defendant had not purchased or rented a home in Illinois or gotten an Illinois driver's license, bank account or voter registration card.
Finally, the Court denied 24's request to file an amended complaint adding a federal Computer Fraud and Abuse Act claim. A complaint cannot be amended to create subject matter jurisdiction. The case, therefore, had to be dismissed.
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Miyano Machinery USA, Inc. v. MiyanoHitec Machinery, Inc., No. 08 C 526, 2008 WL 236610 (N.D. Ill. Jun. 6, 2008) (Nolan, Mag. J.).
Judge Nolan granted plaintiff's motion to quash defendants' subpoenas of plaintiff's counsel - who represented: 1) plaintiffs and perhaps individual defendants in plaintiffs' earlier trademark prosecution; and 2) plaintiffs in this case. The Court denied defendants' motions to compel production of communications between plaintiffs and plaintiffs' counsel and to pierce the privilege.
Defendants argued that plaintiffs committed fraud on the PTO, and therefore inequitable conduct, when plaintiffs' counsel allegedly knowingly submitted false declarations during prosecution of plaintiffs' trademarks. Defendants based their claims on an allegedly privileged communication between plaintiff and its counsel (Exhibit L) that plaintiffs claimed was inadvertently produced.
The Court held that Exhibit L was inadvertently produced - it was just one document among 22,000 pages and plaintiffs requested its return immediately after discovering its production. Furthermore, Exhibit L was essentially a list of questions from counsel to plaintiffs, by which counsel was making sure he had sufficient information to file the declarations in question - evidence supporting plaintiffs' defense of defendants' inequitable conduct claims.
Finally, while the Seventh Circuit had not ruled on the correct test for whether to allow attorney depositions, the Court followed what it held was the prevailing test in the Northern District, as set forth in Shelton v. American Motors Corp., 805 F.2d 1323, 1327 (8th Cir. 1986):
1. No other available means for obtaining the information;
2. Information is relevant and not privileged; and
3. Information is crucial to the case.
Id. Because plaintiffs identified four other individuals allegedly having the information - some of whom had not been deposed - defendants had not met their burden to depose plaintiffs' counsel.
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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.
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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.
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Ace v. Marn, No. 06 C 5335, 2007 WL 1541747 (N.D. Ill. Apr. 17, 2007) (St. Eve, J.).
Judge St. Eve granted in part and denied in part plaintiff/counterdefendant Ace Hardware Corp.'s ("Ace") Fed. R. Civ. P. 12(b)(6) motion to dismiss defendants/counter-plaintiffs' (collectively "Marn") counterclaims. The Court denied the motion as to Marn's breach of contract claim and dismissed Marn's fraud and tortious interference claims. Ace and Marn entered an agreement (the "Agreement") allowing Marn the right to use certain Ace trademarks and to purchase product for resale from Ace. Marn alleged that Ace and its representatives breached the Agreement, made numerous misrepresentations leading up to the signing of the Agreement and failed to provide promised inventory. Ace argued that Marn's breach of contract claim should be dismissed because it did not identify a specific provision of the Agreement that was breached, citing several Northern District cases. But noted that each of Marn's cases came down before the Seventh Circuit's decision in Kolupa v. Roselle Park Dist., 438 F.3d 713, (7th Cir. 2006). In Kolupa the Seventh Circuit explained the Rule 8(a)(2) requirements:
[i]t is enough to name the plaintiff and the defendant, state the nature of the grievance, and give a few tidbits (such as the date) that will let the defendant investigate. . . . Any district judge (for that matter, any defendant) tempted to write "this complaint is deficient because it does not contain ..." should stop and think: What rule of law requires a complaint to contain that allegation? Any decision declaring "this complaint is deficient because it does not allege X" is a candidate for summary reversal, unless X is on the list in Fed. R. Civ. P. 9(b).
Kolupa at 714-15 (emphasis in original). Based upon the Kolupa decision the Court held that Marn was not required to cite a specific breached section of the Agreement.
The Court dismissed, with leave to amend, Marn's fraud claim because it failed to identify the specific Ace individuals that allegedly made the material false statements or where the statements were made. The Court dismissed Marn's tortious interference claim because Ace is a party to the Agreement and, therefore, cannot tortiously interfere with the Agreement.
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Stafford Trading, Inc. v. Lovely, No. 05 C 4868, 2007 WL 1512417 (N.D. Ill. May 21, 2007) (Coar, J.).
Judge Coar granted in part declaratory judgment plaintiffs' (collectively "Stafford") motion to dismiss and denied Stafford's summary judgment motion. The Court dismissed defendants' fraud and unjust enrichment counterclaims after holding that they were preempted by the Illinois Trade Secret Act. The Court also dismissed defendants' fraudulent concealment. The material fact that Stafford allegedly failed to disclose was the opinion that Stafford owned the RIVAS electronic options trading platform outright. But the Court held that an allegedly withheld opinion could not support a fraudulent concealment claim.
The Court's summary judgment decision turned largely upon whether RIVAS was a computer program protected by copyright or a "methodology" protected as a trade secret. The Court held that it had insufficient evidence to make the determination. Furthermore, neither party briefed the issue of what effect the copyright/methodology would have upon defendants' alleged oral contract between the parties which allegedly made the parties co-owners of RIVAS. The Court denied summary judgment as to defendants' breach of contract counterclaim because the existence of an oral contracts and its terms were both disputed facts. Finally, the Court denied summary judgment as to defendants' trade secret counterclaim because, whether RIVAS was determined to be protected by copyright or trade secret, the parties disputed whether defendants employed sufficient means to protect RIVAS's secrecy.
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Abbott Labs. v. Mylan Pharms., Inc., No. 05 C 6561, 2007 WL 625496 (N.D. Ill. Feb. 23, 2007) (Kendall, J.). Judge Kendall denied plaintiff’s, Abbott, Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant’s, Mylan, antitrust counterclaims. Mylan alleged that two Abbott employees submitted declarations and/or testimony stating the weight and structure of certain oligomers … Continue Reading
Specialized Seating, Inc. v. Greenwich Indus., L.P., 472 F. Supp.2d 999 (N.D. Ill. Feb. 2, 2007) (Holderman, C.J.). Judge Holderman held declaratory judgment defendant’s, Greenwich Industries ("Greenwich"), trademark invalid and held that Greenwich committed fraud on the USPTO while prosecuting its trademarks. Declaratory judgment plaintiff, Specialized Seating ("Specialized"), and Greenwich are competing manufacturers of folding … Continue Reading