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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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Continue Reading Court Allows One Reference to Defendants’ Religion to Avoid Jury Bias

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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Continue Reading Likelihood of Confusion Same for Deceptive Trade Practices & Trademarks

Connetics Corp. v. Pentech Pharms., Inc., No. 07 C 2230, Slip Op. (N.D. Ill. May 8, 2009) (Gottschall, J.).
Judge Gottschall granted defendants’ motion to amend their answers to include new invalidity and unenforceability affirmative defenses and counterclaims in this ANDA patent case involving plaintiff’s patented pharmaceutical LUXIQ. The Court held that the amended answers and counterclaims were appropriate, although they were sought after the Court’s deadline to amend the pleadings for reasons similar to Judge Lienenweber’s analysis in a motion to amend adding the same defenses and claims in a related case — click here to read the Blog’s post on that opinion. Of particular note, the Court held that the delay at issue is delay of the trial, not a party’s delay in seeking to amend. In this case, the Court had recently extended fact discovery. So, plaintiffs had time to seek discovery on the defenses and counterclaims without delaying the trial date.
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Continue Reading Motion to Amend Pleadings: Relevant Delay is to Trial Date

Welsh v. Big Ten Conf., Inc., No. 08 C 1342, Slip Op. (N.D. Ill. Nov. 21, 2008) (Gottschall, J.).
Judge Gottschall granted defendant the Big Ten Conference’s motion to dismiss plaintiff’s complaint, but denied the Big Ten’s motion for its attorney’s fees. Plaintiff claimed that it presented the Big Ten with a trade secret business plan for a Big Ten television network named the “Big Ten Network.” The Big Ten allegedly told plaintiff it was not interested and then several years later started the Big Ten Network using plaintiff’s trade secrets, including the Big Ten Network name. Plaintiff claimed that the Big Ten violated § 38 of the Lanham Act by filing a false declaration with the PTO stating that the Big Ten had the sole right to use the Big Ten Network mark in commerce. Plaintiff argued that the Big Ten should have disclosed plaintiff’s trade secret rights in the mark. But the Court held that even if plaintiff could establish trade secret rights, the Seventh Circuit had held that it was “far from clear” whether trade secret claims fall within the scope of § 38, which is directed to statements about ownership, as opposed to statements about use in commerce. Additionally, the Court held that plaintiff’s alleged development of the name did not necessarily grant plaintiff any rights in the trademark. Trademark rights are granted based upon use, not discovery or invention. And inclusion in a business plan is not a “use in commerce.” Having dismissed plaintiff’s federal claim and noting that the parties were not diverse, the Court declined to exercise supplemental jurisdiction over the remaining state law claims and dismissed the case.
The Court denied the Big Ten’s request for its fees. First, the case was resolved on a motion to dismiss filed two months after the complaint and while plaintiff’s arguments lost, the theory had not been “squarely rejected by the Seventh Circuit.” As such, plaintiff’s suit could not be deemed “oppressive” as is required for an award of fees.
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Continue Reading Inclusion of Trademark in Business Plan Not a Use in Commerce

BaliJewel, Inc. v. John Hardy Ltd., No. 07 C 3819, 2008 WL 4425886 (N.D. Ill. Sep. 24, 2008) (Gottschall, J.).
Judge Gottschall granted defendant’s motion to dismiss plaintiff’s Lanham Act malicious interference with business relations claim (§ 1125(a)) and related state law claims, and denied defendant’s motion for sanctions pursuant to 28 U.S.C. § 1927. Plaintiff’s malicious interference claim was based upon defendant’s allegedly false letters to plaintiff’s ISPs stating that plaintiff was selling Indonesian folk jewelry that infringed defendant’s copyrights in defendant’s jewelry. But defendant was not accused of using any word or mark that confused defendant’s goods with plaintiff’s. Allegedly false claims of copyright infringement do not constitute a malicious interference claim. And individual letters to ISPs making allegedly false copyright infringement claims do not constitute actionable “commercial advertising or promotion” because the letters were single, private correspondences, as opposed to public dissemination of information. Finally, despite dismissing the claims, plaintiff had not crossed the line from zealous advocacy to sanctionable conduct, that would merit sanctions.
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Continue Reading Individual Letters Not Sufficient for Lanham Act Malicious Interference

The Seventh Circuit instituted a Commission to study the implementation of the ABA Jury Project. The Northern District was heavily represented on the Commission. The following Northern District Judges were members of the Commission: Bucklo, Brown, Coar, Darrah, Denlow, Der-Yeghiayan, Gottschall, Holderman, Kennelly, Lefkow, Moran, Schenkier, St. Eve, and Zagel. The Commission recently published its report — click here to read it. The report describes a two phase analysis. In the first phase, district judges tested the following seven ABA Principles:
1. Twelve-Person Juries;
2. Jury Selection Questionnaires;
3. Preliminary Substantive Jury Instructions;
4. Trial Time Limits;
5. Juror Questions;
6. Interim Trial Statements by Counsel; and
7. Enhanced Jury Deliberations.
Other Principles, such as juror notebooks and allowing jurors to take notes, were already in such widespread use that they were not tested. Click here for the Phase One Project manual detailing the principles, the rationales and authority behind them, and suggested procedures. Phase One resulted in questionnaires from 22 participating federal trial judges, 74 participating attorneys and 303 jurors from 38 trials that used one or more of the seven Principles. Based upon the analysis of Phase One results and questionnaires, the Commission focused Phase Two on the following four Principles:
1. Juror Questions;
2. Interim Trial Statements by Counsel;
3. Twelve-Person Juries; and
4. Preliminary Substantive Jury Instructions.
These Principles were chosen because of Phase One popularity (78% of jurors reported that being able to ask questions increased their satisfaction with the process) and because of a desire to study the Principles more. Click here for the Phase Two manual.
In Phase Two, 108 jurors from 12 trials employing one or more of the Phase Two Principles filled out questionnaires. In addition, 12 attorneys and 4 district judges that participated also filled out questionnaires. The results are interesting, but more importantly create the opportunity to powerfully impact the trial system across the Seventh Circuit in ways that benefit all of the stakeholders in the trial process — the litigants, the jurors, the judge and the judge’s chambers, and the litigators.
All four of the Phase Two Principles showed significant benefits to the trial process. 83% of jurors reported an increased understanding of the facts when allowed to ask written questions through a judge — the questions were reworded to meet evidentiary rules. And 75% of judges and 65% of attorneys thought the questions benefited jurors. Similarly, preliminary substantive jury instructions were found to improve trials by jurors (80%), judges (85%) and attorneys (70%). And the same was true for interim statements to the jury — jurors (80%) and judges (85%). Finally, twelve-person juries were found not to harm efficiency, while increasing juror diversity.
Each of the four Phase Two Principles, as well as several of the additional three Phase One Principles deserve more attention and analysis. So, over the next several weeks I will provide follow up posts discussing the findings of those Principles in greater detail. I will start with the idea of juror questions, which I find particularly important, later this week or early next.
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Continue Reading Seventh Circuit American Jury Project

Tuthill Corp. v. ArvinMeritor, Inc., No. 07 C 2758, 2008 WL 4200888 (N.D. Ill. Sep. 5, 2008) (Gottschall, J.)
Judge Gottschall denied declaratory judgment (“DJ”) defendant ArvinMeritor’s Fed. R. Civ. P. 12(b)(1) motion to dismiss for lack of subject matter jurisdiction. ArvinMeritor sent DJ plaintiff Tuthill Corp. a letter alleging that Tuthill infringed a group of patents to recreational vehicle suspension systems (the “RV patents”). Tuthill responded that its product did not infringe, that the patents were invalid, and that the accused products were not in production yet. Tuthill alleged that the parties had continuing discussions regarding the RV patents. ArvinMeritor claimed that the discussions went dormant as to the RV patents after it received Tuthill’s letter. Tuthill filed this suit after its accused products were put on the market. The Court held that regardless of whether the discussions went dormant, Tuthill’s claim met the Supreme Court’s MedImmune standard, as defined in the Federal Circuit’s SanDisk opinion. And ArvinMeritor never dissolved the controversy by providing Tuthill a covenant not to sue.
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Continue Reading Dormant Infringement Accusation Creates Declaratory Jurisdiction

Little Tikes Co. v. Kid Station Toys, Ltd., No. 08 C 1935, 2008 WL 1805379 (N.D. Ill. Apr. 18, 2008) (Gottschall, J.).
Judge Gottschall denied plaintiff Little Tikes’ Motion for Temporary Restraining Order (“TRO”) to prevent defendant Kid Station Toys, Ltd. (“Kid Station”) from selling Kid Station electric toys using Little Tikes’ trademarks. From 2003 until February 2008, the parties had a license agreement (“Agreement”) pursuant to which Kid Station sold its electric toys using the Little Tikes trademarks. In February 2008, Little Tikes canceled the Agreement pursuant to a provision allowing it to do so for, among other reasons, unsafe toys. Kids Station allegedly had a toy cellphone recalled because it was a potential choking hazard. Kids Station disputed the validity of the termination and continued selling its toys using the Little Tikes trademarks.
The Court held that Little Tikes had shown sufficient likelihood of success on the merits. Its trademarks ownership was undisputed and its success regarding the validity of its Agreement termination was “better than negligible.” Additionally, in the parties’ Agreement, Kids Station stipulated to Little Tikes’ irreparable harm.
But the Court held that Kid Station would be irreparably harmed by a TRO because it would not be able to meet its customer obligations, which would be a serious blow to its business. And, the Court held that Kid Station’s irreparable harm from a TRO outweighed Little Tikes’ irreparable harm without a TRO. While Kid Station may not be able to recover its customers, Little Tikes had already approved Kid Station’s existing toys and could recover royalties for any sales. The Court, therefore, denied the TRO.
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Continue Reading TRO Denied: Defendant’s Harm More Irreparable Than Plaintiff’s

Murata Mfg. Co., Ltd. v. Bel Fuse, Inc., No. 03 C 2934, Order (N.D. Ill. Mar. 5, 2008) (Gottschall, J.).*
Judge Gottschall denied plaintiffs’ summary judgment motion without prejudice for failure to comply with both Local Rule 56.1 and the Court’s Standing Order — the Standing Order further explained that each short, numbered statement of fact required by Local Rule 56.1 should contain one fact and no attorney argument. Despite Local Rule 56.1’s clear requirements and the Standing Order’s directive to strictly comply with Local Rule 56.1, the Court held that nearly one-third of plaintiff’s 145 statements of fact did not comply with the rules:
Many were long;
One contained no facts;
Several focused on an expert’s methodology instead of his results; and
The rest contained inferences, argument, or legal conclusions.
The Court explained that the case’s complexity required strict adherence to Local Rule 56.1:
The court simply does not possess the resources to comb through the parties’ statements of fact in an attempt to sift out usable fact from impermissible argument or inference. … The Standing Order and LR 56.1 are composed in plain English and their meaning is clear; the court properly expects experienced and sophisticated attorneys to adhere to them strictly, particularly given the complex and sophisticated nature of this litigation.
The Court, therefore, used its discretion to deny plaintiff’s summary judgment motion without prejudice for not complying with Local Rule 56.1 and the Standing Order.
Practice Tip: I write this tip frequently, but it merits repetition.** Strict compliance with Local Rule 56.1 is difficult, time consuming, and it goes against many lawyers’ natures to write facts devoid of argument. But strict compliance is the best, and maybe only, way to win, or defeat, summary judgment in the Northern District. And if you write your Rule 56 statements well, you make the Court’s job easier, which can only help your case.
* Click here to read more about this case in the Blog’s archives and here for the order.
** Click here to read about other Local Rule 56.1 opinions.
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Continue Reading Summary Judgment Denied for Failure to Comply with LR 56.1

Murata Mfg. Co., Ltd. v. Bel Fuse, Inc., No. 03 C 2934, Slip Op. (N.D. Ill. Mar. 5, 2008) (Gottschall, J.).*
Judge Gottschall granted plaintiffs’ motion to strike defendants’ allegedly new reverse doctrine of equivalents non-infringement argument, which defendants withdrew in response to plaintiffs’ motion. But the Court denied the motion as to all other allegedly new arguments and as to defendants’ supporting affidavits. The Court held that defendants’ non-infringement arguments were sufficiently set out in their timely expert reports.
The Court also held that defendants’ expert affidavits, submitted with their summary judgment response briefs, were proper. Fed. R. Civ. P. 56(e) specifically permits use of affidavits as support for summary judgment arguments. And defendants’ expert affidavits met the requirements for expert affidavits:
The experts supported their conclusions by showing their reasoning; and
The methodology met Daubert standards.
Finally, it did not matter that discovery was closed and that plaintiffs, therefore, would not be able to test the affidavits in a deposition. Plaintiffs cited no authority for the proposition that post-discovery affidavits were not permitted.
*Click here for more on this case in the Blog’s archives.
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Continue Reading Parties May Rely on Expert Affidavits for Summary Judgment