NuCap Indus., Inc. v. Robert Bosch LLC, NO. 15 C 2207, Slip Op. (N.D. Ill. Oct. 19, 2016) (Gottschall, J.).

Judge Gottschall overruled plaintiff NuCap’s objections to Magistrate Judge Kim’s decision denying NuCap the right to serve additional discovery related to defendant Robert Bosch’s alleged change in position during litigation in this trade secret

Golden v. Nadler Pritikin & Mirabelli, No. 05 C 283, Slip Op. (N.D. Ill. Dec. 21, 2010) (Gottschall, J.).
Judge Gottschall denied plaintiff Golden’s motion to dismiss or for a more definite statement pursuant to Fed. R. Civ. P. 12(b)(6) & (e) in this copyright dispute over real estate listings. Golden was not required to attach a copy of its copyright registration to its complaint. And while it was an “extraordinarily close question whether Golden’s “bare-bones” amended complaint satisfied Twombly, it did plead ownership of a registered copyright and it did plead that defendant allegedly copied the work without consent. Because Golden’s complaint was so bare-bones, defendant’s motion to dismiss was not in bad faith. The Court, therefore, denied Golden’s Fed. R. Civ. P. 11 motion regarding the motion to dismiss.

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Airoom LLC v. Demi & Cooper, Inc., No. 09 C 4205, Slip Op. (N.D. Ill. Jan. 5, 2011) (Gottschall, J.).
Judge Gottschall granted defendants’ Fed. R. Civ. P. 12(b)(1) motion to dismiss for lack of jurisdiction. Plaintiff Airoom accused defendants of infringing its trademarks, as well as related state law claims. Defendants, who were creating and hosting Airoom’s website, stopped when Airoom refused to pay amounts allegedly due pursuant to the parties’ contract hosting the site, causing website visitors to be directed to a generic “text page.”
Airoom claimed Lanham Act violations based upon defendants’ decision not to continue hosting the site. Based upon the “artful pleading” doctrine, the Court held that Airoom’s claims sounded in copyright, not the Lanham Act. The Court, therefore, lacked federal question jurisdiction. And because all parties were Illinois residents, there could not be diversity jurisdiction. Airoom’s case was, therefore, dismissed.

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Flava Works, Inc. v. Wyche d/b/a DGSource.com, No. 10 C 748, Slip Op. (N.D. Ill. Jun. 28, 2010) (Gottschall, J.).
Judge Gottschall denied plaintiff Flava Works’ motion for default judgment based upon Flava Works’ proof of damages. Flava Works accused defendants (collectively “DGSource”) of copyright infringement and Lanham Act false designation of origin based upon a series of websites that allegedly used and sold Flava Works’ copyrighted content. DGSource never answered the complaint, and the Court entered a default order. In response, Flava Works submitted a proof of damages seeking approximately $1.3M. As an initial matter, the Court held that because both claims stem from the same operative facts, Flava Works was required to choose either copyright or Lanham Act damages. Flava Works also had to choose actual or statutory damages to the extent it chose copyright damages.
With respect to actual damages, the difference between the copyright and Lanham Act claims was that the Lanham Act provided for trebling damages. Regardless of the calculation, Flava Works’ estimates of its losses and DGSource’s profits were “conclusory” and provided without context. For example, Flava Works did not set out how much of DGSource’s website content was infringing and, therefore, would be relevant to a damages calculation.
Flava Works was not required to present evidence if it chose statutory damages, but without evidence the Court was required to adjust the award down, and the Court noted that it would benefit from additional evidence. The Court also noted that Flava Works was only entitled to statutory damages as to the two registered copyrights.
Finally, Flava Works did not prove the elements necessary for a permanent injunction. And Flava Works offered no authority for its requested remedy of transferring DGSource’s domain names to Flava Works.

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Card Activation Techs. V. Bebe Stores, Inc., No. 09 C 406, Slip Op. (N.D. Ill. Nov. 20, 2009) (Gottschall, J.).
Judge Gottschall stayed the case pending reexamination of plaintiff’s patent. The fact that the asserted claims were not being reexamined did not weigh against a stay. The reexamined claims were narrower than the asserted claims. So, if the narrower claims were rejected the broader claims could be found invalid as well. And all of the claims used similar language. As a result, the reexam’s prosecution history would, at a minimum, be pertinent to the case. And delay caused by a stay would not prejudice plaintiff because it could be compensated with money damages. Additionally, the Court allowed either party to move to begin full or limited discovery at a status conference eight months after the opinion issued, if the reexam was still pending at that time.

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Lorilland Tobacco Co. v. Elston Self Service Wholesale Grocs., Inc., Case No. 03 C 4753, Slip Op. (N.D. Ill. Oct. 21, 2009) (Gottschall, J.).
Judge Gottschall ruled upon the parties’ motions in limine in this Lanham Act case regarding the alleged sale of counterfeit Newport cigarettes. Of particular interest, the Court denied in part plaintiff’s motion to exclude evidence of the religious belief of any party or witness. In order to ensure that “no anti-Muslim prejudice infect[ed] the jury’s deliberation,” the Court allowed one defendant to state once that he was a Christian. The Court also noted that it would reconsider its order if plaintiff suggested a reasonable way for the Court to resolve the issue in voir dire.
The Court also agreed to read the jury a statement regarding the fact that the health of one defendant prevented his attendance at trial and that the jury should not hold his absence against him or consider it in their deliberations.
* Click here for much more on this case in the Blog’s archives.

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Lorillard Tobacco Co. v. Elston Self Serv. Wholesale Grocs., Inc., No. 03 C 4753, Slip Op. (N.D. Ill. Jun. 9, 2009) (Gottschall, J.).
Judge Gottschall granted in part and denied in part defendants’ motion for summary judgment regarding plaintiff’s Deceptive Trade Practices Act and fraud* claims regarding sales of recirculated Newport cigarettes. Plaintiff claimed that defendants purchased cigarettes from retailers to take advantage of plaintiff’s discount program and resold those recirculated cigarettes to other entities, sometimes recurring a second relate for those purchases. Plaintiff further alleged that some of the recirculated cigarettes were old and stale. But the Court held that the accrued recirculation and sale of record that cigarettes could not make a Deceptive Practices Act claim because of the likelihood of confusion requirement. Like in the trademark law, likelihood of confusion as to origin. But plaintiff did not allege that there was any common confusion regarding that plaintiff was the source of the cigarettes. Confusion as to whether the cigarettes were first or second hand was irrelevant.
* This post does not address the fraud claims.

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