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Cascades Computer Innovation, LLC v. Samsung Elecs. Co., Nos. 11 C 4574 & 11 C 6235, Slip Op. (N.D. Ill. Sep. 14, 2014) (Kennelly, J.).

Judge Kennelly granted in part defendants Samsung’s and HTC’s motions for summary judgment of patent exhaustion based upon a prior settlement agreement that plaintiff Cascades Computer Innovation (“Cascades”) previously …

Morningware v. Hearthware Home Prods., Inc., No. 09 C 4348, Slip. Op. (N.D. Ill. Nov. 16, 2009) (St. Eve, J.).
Judge St. Eve denied defendant Hearthware’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Morningware’s Lanham Act unfair competition and product disparagement claims, as well as related state law claims. Hearthware allegedly bought Morningware’s trademarks as Google AdWord keywords so that when a Google user searched for Morningware’s trademarks, a Hearthware “sponsored link” showed up above the standard search results, along with the following text written by Hearthware:
The Real NuWave® Oven Pro Why Buy an Imitation? 90 Day Gty.
Hearthware did not dispute that the MORNINGWARE mark was protectible or that it was owned by Morningware. Instead, Hearthware argued that purchasing “Morningware” as an AdWord keyword was not a “use” in commerce. The Court noted that although the Seventh Circuit had not decided the issue, courts have largely adopted a broad reading of “use” that included AdWords purchases. But in this case, the Court could not decide the issue without fact-finding which was not appropriate in a Rule 12(b)(6) motion. The Court, therefore, denied the motion to dismiss.
Hearthware also argued that purchasing AdWords could not create customer confusion. But the Court held that Morningware pled sufficient facts to show initial interest confusion which is actionable pursuant to the Lanham Act, even if the confusion is only brief and the customer is aware of the true source of the goods by the time a purchase is made.
The Court also held that Hearthware’s alleged “Why Buy an Imitation” advertisement text was sufficient for a disparagement case as a fact-finder could determine that the text could lead a consumer to believe that Morningware’s product was an imitation of Hearthware. Morningware’s state law claims survived the motion to dismiss for the same reasons as the Lanham Act claims.
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Continue Reading Google AdWords Purchase May be a Lanham Act “Use”

Here are several IP posts that you should check out:
* The MTTLR Blog’s Lauren Strandbergh has an interesting post (click here for it) about the implications of the Google Book’s settlement and how the Book Rights Registry — a Copyright Clearance Center or ASCAP-like entity that will, among other things, distribute proceeds from out-of-print books to the authors or rights holders — will change the publishing industry. Strandbergh raises the right questions, but we will only get answers as we ee how the system works.
[UPDATE:] Speaking of the Copyright Clearance Center and ASCAP, the WSJ Law Blog has a post today (click here to read it) based upon this WSJ story (subscription required for the full text) about two new companies that are aggregating patents and guaranteeing never to assert those patents against their members. It is not clear from the story if they plan to assert them against non-members, but it is an interesting move in the struggle between non-practicing entities and corporations that feel targeted by patent litigation. I believe there have been industry-specific versions of these companies in Europe for some time. As I understand some of those entities, the do assert their patents against non-members to help fund operations.
* Victoria Pynchon offers advice for dealing with those uncomfortable Thanksgiving political conversations with family and friends at her Settle It Now Negotiation blog — click here to read it. The advice translates well for unwinable conversations with opposing counsel.
* This week’s Blawg Review is up at LawyerCasting — click here to read it. It provides lots of advice for lawyers dealing with the tough economic times.
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Continue Reading IP News & Advice — Thanksgiving Edition

Here are some IP stories that will give you weekend reading and viewing:
* UCLA Professor Doug Lichtman launched the IP Colloquium, a series of podcasts focused on the most pressing IP issues of the day. Lichtman tells me he aspires for the IP Colloquium to become National Public Radio for IP lawyers. Lichtman is well on his way. In his first episode, Lichtman discusses copyright issue with the Electronic Frontier Foundation’s Fred von Lohmann. And if the content is not enough, Lichtman has also secured CLE credit in several states.
* IPTABlog has a comprehensive post — click here to read it — on Google’s settlement with the Association of American Publishers over the Google Book Search. The post links to much of the media coverage, as well as the settlement agreement. Also, check out the WSJ Law Blog’s post on the settlement’s impact on related cases (click here to read it) and Madisonian’s take on the issues springing from the settlement (click here to read that post).
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Continue Reading IP Legal News

Vulcan Gold, LLC v. Google, Inc., No. 07 C 3371, 2008 WL 2959951 (N.D. Ill. Jul. 31, 2008) (Manning, J.)
Judge Manning granted in part defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss, dismissing plaintiffs’ RICO claims. The Court previously dismissed plaintiffs’ complaint with leave to refile – click here to read the Blog’s post on that opinion. The Court held that plaintiffs did not sufficiently plead an enterprise. Plaintiffs only alleged that the defendants were contractually related within Google’s adsense program. And the alleged contractual relationship did not show consensual decisionmaking or joined purpose. Plaintiffs’ RICO claims were, therefore, dismissed.
The Court denied defendants’ motion to dismiss the unjust enrichment and civil conspiracy claims. Fed. R. Civ. P. 9(b) heightened pleading standards did not govern the claims because they were both based upon trademark infringement, not fraud.
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Continue Reading No Heightened Pleading for Trademark-Based Unjust Enrichment Claim

Illinois Computer Research, LLC v. Google Inc., No. 07 C 5081 (N.D. Ill.) (Pallmeyer, J.).
The parties in this case filed a Stipulation of Dismissal this week — click here to read it. Of course, details of the settlement were not disclosed. But this appears to close what had been a very contentious dispute — click here to read the Blog’s coverage of the case.
One other note about the case, I had been meaning to cover plaintiff’s motion to strike some of defendant’s pleadings for using variations of the term “shell corporation,” arguing that the term is derogatory in a manner similar to the “patent troll” moniker. Judge Pallmeyer ruled on the motion in a Minute Order stating that the Court would no longer use the terms, but denying the motion to strike. Because the Minute Order does not provide much analysis and because the issue was already covered very well by Joe Mullin at The Prior Art blog — click here to read Mullin’s post — I will not do a separate post on the motion. But if you are interested in the historical, legal use of the term, the pleadings on the motion are an excellent information source.
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Continue Reading ICR v. Fish & Richardson Update: Case Settled

Managing Intellectual Property published its annual list of the fifty most powerful people in the international IP community (hat tip to Patent Docs for pointing it out). Click here for the list (subscription or two week free trial sign up required). There were two honorees with Chicago connections:
Rhonda Steele (#8) — Steele is both the president of INTA and Asia-Pacific marketing properties manager for Mars. While Steele does not necessarily work in Chicago or on Chicago-specific IP, Mars makes Fun Size versions of its 3 Musketeers, Snickers and Milky Way candy bars in Chicago.
Jim Malackowski (#34) — Malackowski is a founder of Chicago-based Ocean Tomo, as well as its president and CEO. Among other things, Ocean Tomo is well known for its patent auctions (at leas the last several of which have each totalled more than $10M in sales), IP valuation services and damages expert work.
These IP luminaries share the honor with Second Life avatars (#1), the PTO’s Director John Dudas (#4), the Federal Circuit’s Judge Michel (#9), Harry Potter (#14),and blogger and Google copyright counsel William Patry, of the Patry Copyright Blog.
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Continue Reading Chicago Connections to Managing IP’s Top 50

LimitNone v. Google, Inc., No. 08 C 4178 (Manning, J.).
Last month I posted that LimitNone, a Chicago company, sued Google for trade secret misappropriation seeking $1B — click here for that post. Earlier this week, Google removed the case to the Northern District, arguing that LimitNone’s Illinois Consumer Fraud and Deceptive Business Practices Act (“ICFA”) claim sounded in copyright and, therefore, was preempted by the Copyright Act creating federal question jurisdiction (click here for Google’s removal papers).
In its complaint, LimitNone alleged that Google entered a nondisclosure agreement with LimitNone to review LimitNone’s gMove software — software that helps Microsoft Outlook users migrate data to the Google platform. Google allegedly assured LimitNone that it would not offer a competing product. But after receiving LimitNone’s trade secrets, including its software code, and promoting the $19 gMove software, Google allegedly began offering a free, competing software package which allegedly used LimitNone’s trade secrets. LimitNone has not filed any responsive papers or pleadings yet, but I will keep you updated if LimitNone challenges the removal.
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Continue Reading Removal Papers Argue Consumer Fraud Act Claim Sounds in Copyright

The Chicago Tribune’s Jessica Guynn reported last week (click here to read the article) that a Southern District of New York judge ordered Google to produce information about YouTube user’s viewing habits. Viacom sued YouTube and its parent Google, alleging copyright infringement based upon the alleged infringing posting of Viacom’s copyrighted content on YouTube. Guynn reports that privacy advocates are concerned about the ruling. But Guynn also quotes Viacom’s General Counsel Michael Fricklas saying that “unequivocally that this information will not be used” outside of the lawsuit.
The WSJ Law Blog also has a great post about the order — click here for the post — explaining the type of information that Google was ordered to disclose:
Viacom wants records from a YouTube database that records each time a video is watched and pairs that with two kinds of information about people who viewed it: log-in names (for YouTube users that have accounts), and IP addresses (for YouTube users without accounts).
For those concerned about the production, there is nothing to be worried about. Virtually every federal case involving sensitive information is governed by a protective order preventing use or disclosure of the information outside of the litigation. And in virtually all of those cases the parties honor the protective order and the information is not disclosed or used besides in the litigation.
[UPDATE:] Randy Picker at the University of Chicago Faculty Law Blog has an interesting post questioning how the information could be kept or produced by Google differently to avoid disclosing identities along with the viewing information, and whether the information is covered by the Video Privacy Protection Act of 1988 (enacted after Judge Bork’s video rental records were obtained during Senate confirmation hearings):
So Viacom has a legitimate interest in seeing YouTube’s viewing records. But of course viewers have a privacy interest in those records as well. Exactly how many views have I contributed to The Evolution of Dance, the, I gather, most-viewed video on YouTube (currently at 91,619,702 views)? (I have watched only because I teach copyright, not because it is quite funny.)
This isn’t abstract or speculative. Indeed, after the release of some information regarding then-Judge Bork’s viewing habits came out in his Supreme Court confirmation hearings, Congress passed the Video Privacy Protection Act of 1988, codified at 18 USC 2710. (See the background page on this provided by the Electronic Privacy Information Center.)
I am unaware of any decisions assessing whether an online video provider like YouTube is covered by the VPPA, but it is written in sufficiently media-neutral terms that it appears that YouTube would be covered. If so, that triggers a number of obligations. The VPPA requires the destruction of records containing personally identifiable information “as soon as practicable, but no later than one year from the date the information is no longer necessary for the purpose for which it was collected.” Personally identifiable information is, unsurprisingly, a defined term and “includes information which identifies a person is having requested or obtain specific video materials or services from a videotape service provider.”
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Continue Reading Google Ordered to Produce YouTube Information