Aguila Records, Inc. v. Nueva Generacion Music Group, Inc., No. 07 C 3399, Slip Op. (N.D. Ill. Nov. 4, 2009) (Der-Yeghiayan, J.).
Judge Zagel granted in part and denied in part plaintiffs’, collectively “Aguila Records”) motion for a preliminary injunction in this trademark and copyright infringement dispute. Aguila Records, a music management and recording agency, was in a dispute with defendants’ musical group Alacranes Musical (“Alacranes”). Based upon that dispute, Aguila Records sought a preliminary injunction preventing defendants’ use of the Alacranes word mark and scorpion logo.
Likelihood of Success
Because the parties agreed that the Alacranes marks were protectable and that there was a likelihood of confusion if two groups used the marks, the only likelihood of success issue was whether Aguila Records owned the marks. The Court held that the proof of ownership was at best “in conflict” and that the agreements were contradictory.
Irreparable Harm
The Court held that a preliminary injunction against performing using the Alacranes Musical mark would irreparably harm defendants who would be forced to negotiate with Aguila Records for rights to use the name or change their name, but it was undisputed that the band’s success was intertwined with its name. Alternatively, if the Court did not grant an injunction defendants would continue performing using the name and would likely continue to grow in popularity and earn additional income, which would be lost to Aguila Records. But that harm would not be irreparable because it could be repaid financially.
While Aguila Records did not demonstrate a strong likelihood of success, it did demonstrate a “greater than negligible chance of winning.” The Court, therefore, enjoined defendants from using the marks on compact disks, other recording media and merchandise such as t-shirts and hats, all uses for which Aguila Records had trademark registrations. But the Court did not enjoin the use of the marks for live performances because Aguila Records did not have registered marks for live performances and the balance of harms tipped in defendants’ favor for live performances.

Continue Reading Greater than Negligible Likelihood of Success Sufficient for Preliminary Injunction

Zimnicki v. Neo-Neon Int’l., Ltd., No. 06 C 4879, Slip Op. (N.D. Ill. Jul. 30, 2009) (Norgle, J.).
Judge Norgle denied plaintiff’s motion for an antisuit injunction. Plaintiff filed copyright, trademark and unjust enrichment claims against defendant based upon the alleged use of plaintiff’s North Pole Village brand and decorative holiday lighting products. Defendant then filed a declaratory judgment action in China seeking a determination that defendant, who filed Chinese copyrights on designs similar to those covered by plaintiff’s US copyrights in suit, owned the disputed designs. The Court explained that there is a circuit split on the standard for antisuit injunctions that the Seventh Circuit had not weighed in on. The First, Second, Third, Sixth and District of Columbia take the “conservative approach” requiring that the foreign action to be enjoined would prevent US jurisdiction or threaten a vital US policy, and that the domestic interests outweigh concerns of international comity. The Fifth and Ninth Circuits take the “liberal” approach which requires only that the injunction is “necessary to prevent duplicative and vexatious foreign litigation and to avoid inconsistent judgments.”
Because the Seventh Circuit has not chosen an approach, most district courts in the circuit follow the more “lax” liberal approach. But in this case, the Court did not need to make that determination because plaintiff’s claim did not meet either standard because the issues in suit were not the same. Plaintiff’s instant suit asserted its US intellectual property. Defendant’s Chinese suit, on the other hand, sought a declaratory judgment that defendant owned its Chinese intellectual property, not plaintiff. Because the Chinese suit would not make determinations about plaintiff’s US intellectual property, neither litigation’s outcome would be dispositive of the other. Furthermore, plaintiff did not present evidence that the relevant Chinese intellectual property laws were the same or similar to the US Copyright or Lanham Acts.

Continue Reading No Antisuit Injunction When Suits Assert Different Countries’ Intellectual Property

Bajer Design & Marketing, Inc. v. Whitney Design,, Inc., No. 09 C 1815, Slip Op. (N.D. Ill. Jun. 26, 2009) (Zagel, J.).
Judge Zagel denied defendant Whitney Design’s (“Whitney”) Section 1404(a) motion to transfer plaintiff Bajer Design & Marketing’s (“Bajer”) patent infringement case to the Eastern District of Missouri, where Whitney filed a declaratory judgment case after being served with Bajer’s complaint. Although Bajer was not a Chicago-based company, its choice of forum still deserved significant deference because the alleged injury occurred in Chicago. Bajer filed the complaint after identifying the accused infringement at the International Housewares Show in Chicago. Whitney argued that the accused infringement occurred in the St. Louis area where Whitney researched and designed the accused clothes hampers. But the Court held that the point of sale, Chicago, was the situs of the injury.
Whitney also argued that convenience of the parties weighed in favor of transfer because all of its documents and people were in the St. Louis area. But the Court held convenience weighed against transfer because the parties could transfer documents electronically and, in any event, the documents would have to be sent to the parties’ counsel across the midwest. And the convenience of third parties also weighed against transfer. The only third party, the inventor, lived in Iowa almost equidistant from Chicago and St. Louis.
Finally, the interests of justice did not weigh in favor of transfer. Whitney argued that time to trial in the Eastern District of Missouri was significantly faster than in the Northern District of Illinois. But the Court held that those statistics were irrelevant because they were for all cases, not split up by case types.
The Court denied Bajer’s preliminary injunction motion seeking to enjoin the Eastern District of Missouri case. Because that court stayed its case pending the Northern District of Illinois’s decision on the transfer motion, there was no need to enjoin a stayed case.

Continue Reading Point of Sale was Situs of Injury in Motion to Transfer Analysis

DeVry Inc. v. Int’l Univ. of Nursing d/b/a Robert Ross Int’l Univ. of Nursing, No. 06 C 3364, Slip Op. (N.D. Ill. Jun. 30, 2009) (Guzman, J.).
After a bench trial, Judge Guzman issued findings of facts and conclusions of law, holding plaintiffs Ross University marks infringed and enjoining defendants from using the Ross name in conjunction with medical or nursing schools. Plaintiffs operated the Ross University School of Medicine and the Ross University School of Veterinary Medicine, both off which plaintiffs bought along with the related trademarks from Robert Ross. Both institutions are offshore and cater to US students. Ross later associated himself with defendant, after which defendant, an offshore nursing school, began using the Ross name. Defendant claimed plaintiffs’ claims were moot because defendant stopped using the Ross name. But the Court held that an injunction could be appropriate to guarantee that the misconduct does not restart after the case.
The Court held that defendants’ “Robert Ross International University of Nursing” mark was confusingly similar to plaintiffs’ “Ross University” marks for the following reasons:
* Defendant’s marks were “strikingly similar” to plaintiffs’ in both appearance and suggestion;
* Both sets of marks represent offshore medical institutions;
* The parties promote their institutions and hire faculty and staff through the same channels; and
* There have been numerous instances of actual confusion.
Having held that plaintiffs’ mark was infringed, the Court held that injunctive relief was appropriate. Plaintiffs were irreparably harmed because of the ongoing actual confusion between the parties’ marks and plaintiffs’ inability to control its image when confusion occurs. Furthermore, the balance of hardships weighed in favor of plaintiffs. Plaintiffs faced “potential devastation” if an injunction was not issued, but defendant’s only harm was Ross’s temporary inability to use his name in connection with offshore medical services. And the public would not be harmed by an injunction. In fact, the injunction would serve the public interest by clarifying the source of medical education services for consumers.

Continue Reading Court Enjoins Trademark Use After Bench Trial

Lettuce Entertain You Enters., Inc. v. Leila Sophia AR, LLC d/b/a Lettuce Mix, No. 09 C 2582, Slip Op. (N.D. Ill. Jun. 8, 2009) (Lefkow, J.).
Judge Lefkow denied plaintiff Lettuce Entertain You Enterprises’ (“LEYE”) motion for a temporary restraining order against defendants’ use of a banner reading “Let us be!” flanked by images of lettuce heads (the “Banner”) on a building in which defendants plan to open a salad bar restaurant to be named “Lettuce mix.” LEYE filed this suit seeking the removal of a “Lettuce mix” sign (the “Sign”) defendants placed on the same building. As an effort at resolving the dispute, defendants replaced the Sign with the Banner. After the Banner appeared, LEYE made the instant motion for a temporary restraining order, arguing that the Banner infringes LEYE’s LETTUCE trademarks used in connection with LEYE’s operation of more than seventy restaurants throughout the Chicago area and nationwide. The Court held that LEYE did not meet its burden as to the first prong of the TRO analysis, LEYE’s likelihood of success on the merits, and, therefore, the Court did not consider the remaining two elements, whether an adequate remedy at law existed and whether LEYE would have been irreparably harmed if the injunction was not granted.
The Court held that defendants’ Banner was a fair use of LEYE’s trademarks and that, therefore, LEYE did not have a likelihood of success on the merits of its Lanham Act claims. Defendants were not using the Banner’s combination of the phrase “Let us be!” (which the parties agreed sounded like “Lettuce”) and the lettuce images as a service mark. “Lettuce mix” may have been a service mark, but “Let us be!” and the lettuce images were used to draw attention to this case and were meant to say “Hey, Lettuce Entertain You, leave us alone!” And the use of the “let us”/lettuce pun was intended to parody LEYE’s use of “lettuce” in place of “let us” throughout LEYE’s website and other materials. The Court explained that the Banner was not used to identify defendants’ services, but to make a statement of protest:
The [B]anner thus conveys a message from its authors, the proprietors of the unopened restaurant, to the owners of the LETTUCE marks, essentially saying, “Leave us alone!” Even if potential customers viewing the [B]anner do not know or learn of the dispute, it is clear at first glance that the banner is being used to communicate a message of protest.
The Court also noted that this decision had no bearing upon the question of whether defendants’ Lettuce mix restaurant name infringed LEYE’s LETTUCE marks.

Continue Reading Protest/Parody Use of Mark is Fair Use

Miyano Machinery USA, Inc. v. MiyanoHitec Mach., Inc., No. 08 C 526, Slip Op. (N.D. Ill. Sep. 5, 2008) (Kendall, J.)
Judge Kendall granted a preliminary injunction against defendants’ (collectively “MiyanoHitec”) continued use of plaintiff Miyano Machinery’s (“MMU”) MIYANO trademarks. MMU proved a sufficient likelihood of success on its trademark infringement claims. Despite the fact that Miyano was the surname of the individual defendants, it was protectible. While personal names are not generally protectible, MMU’s Miyano marks had acquired secondary meaning, making them protectible. And individual defendants originally consented to MMU registering the marks.
MMU’s “Winged M” mark was not abandoned when MMU changed the font of the Miyano name in the mark. And MMU showed a likelihood of confusion. MMU’s and MiyanoHitec’s marks were very similar and were used on similar products – lathes – that were to be sold in similar channels. MMU also offered evidence of a few acts of actual confusion. And the evidence showed that MiyanoHitec likely intended to benefit from the likely consumer confusion.
The Court also found that MMU would be irreparably harmed without an injunction because trademark infringement is presumed to create irreparable harm. In contrast, the injunction would cause MiyanoHitec minimal or no harm. MiyanoHitec had not sold any product yet, had previously used a different name, and was aware of MMU’s trademark claim before choosing its marks.
Finally, the public interest was served by preventing trademark infringement and the resulting consumer confusion. The Court, therefore, granted MMU a preliminary injunction against MiyanoHitec.

Continue Reading Trademark Preliminary Injunction Granted

Liquid Dynamics Corp. v. Vaughan, No. 08 C 6934, Slip Op. (N.D. Ill. Oct. 20, 2008) (Conlon, J.).
Judge Conlon denied plaintiff’s objections to the Magistrate’s Report and Recommendations and denied plaintiff’s contempt motion. In a prior case, a jury found plaintiff’s patent valid and willfully infringed. The Court trebled plaintiff’s damages, awarded plaintiff attorney’s fees, and entered a permanent injunction preventing defendant from making, using or selling any of 47 mixing systems, or colorable imitations thereof, at issue in the case. Plaintiff brought a second case alleging infringement of 22 additional mixing systems and then filed a contempt motion arguing that the 22 new mixing systems were imitations of the original 47. After an extensive evidentiary hearing, the Magistrate found questions of fact as to whether the 22 mixing systems were colorable imitations of the enjoined systems and, therefore, denied the contempt motion. After a de novo review, the Court affirmed the Magistrate’s Recommendation The 22 new mixing systems were not exact duplicates of the enjoined systems and there were questions of fact as to whether the differences were sufficiently minimal to make the new systems colorable imitations. The contempt motion was, therefore, denied, but the infringement case continued.

Continue Reading Questions of Fact re Alleged Enjoined Imitations Prevent Contempt

Here are several stories that did not warrant a full post, or that were so well done by another blogger that there was no point in recreating the wheel:
The Federal Circuit upheld Judge Coar’s preliminary injunction in Abbott v. Sandoz, No. 05 C 5373 — click here to read the Federal Circuit’s opinion and here to read the Blog’s prior posts on the case. Dennis Crouch at Patently-O has a good post explaining the central issue of the case — a defendant’s burden of proof regarding invalidity in the likelihood of success analysis. Judge Newman wrote the majority decision with Judge Gajarsa dissenting. Crouch sees the case as a “good vehicle” for en banc review of the preliminary injunction standard.
Ocean Tomo is holding its 8th IP auction at home in Chicago this Wednesday and Thursday.
Michael Sadowitz at the MTTLR Blog has a great post (click here to read it) discussing one of the big post-eBay unknowns, who sets post-verdict damages when a permanent injunction is not issued, judges or juries. Sadowitz looks at a string of Eastern District of Texas cases letting juries set post-verdict damages. Sadowitz also notes that the few courts that have looked at the issue have split as to whether post-verdict damages can be severed from the damages portion of the trial.
Finally, having mastered all things drug and device related, the Drug & Device Law blog has moved into the patent realm, with some excellent analysis by their colleagues Kevin McDonald and Larry Rosenberg of Jones Day. The post (click here to read it) discusses a recent Federal Circuit decision which held that cash payments made to settle Hatch-Waxman patent litigations do not violate antitrust laws, under certain conditions:
On October 15, 2008, the Federal Circuit joined the growing list of federal courts to hold that the use of cash payments to settle Hatch-Waxman patent litigation does not violate the antitrust laws as long as (1) the settlement excludes no more competition than would the patent itself and (2) the claim for patent infringement and/or validity is not a “sham,” that is, not “objectively baseless.” In In re Ciprofloxacin Hydrochloride Antitrust Litigation, No. 08-1097, 2008 WL 4570669 (Fed. Cir. Oct. 15, 2008), a unanimous panel of the United States Court of Appeals for the Federal Circuit affirmed the summary judgment granted to Bayer by the United States District Court for the Eastern District of New York, holding that Bayer’s settlement of patent litigation with a generic pharmaceutical manufacturer did not violate the antitrust laws.

Continue Reading IP Legal News

Mintel Int’l. Group Ltd. v. Neergheen, No. 08 C 3939, 2008 WL 2782818 (N.D. Ill. Jul. 16, 2008) (Dow, J.).
Judge Dow granted plaintiff a limited temporary restraining order (“TRO”) in this trade secret and non-compete case. After defendant gave plaintiff his notice of resignation from plaintiff’s marketing department, plaintiff began monitoring defendant’s computer use. This monitoring allegedly showed that defendant copied, emailed or printed various pieces of confidential information, including plaintiff’s client and vendor lists. Defendant then allegedly used those documents, in violation of defendant’s employment agreements, with defendant’s new employer, plaintiff’s alleged competitor.
The Court held that plaintiff had shown at least some likelihood of success regarding its trade secret misappropriation and Computer Fraud and Abuse Act claims based upon the alleged copying, emailing or printing of plaintiff’s client lists and other strategic documents. The Court also held that plaintiff showed a strong likelihood of success on elements of its breach of the non-compete and employment agreement claims. But the Court noted that it appeared likely that some provisions of the agreements were not enforceable.
The Court determined that plaintiff’s alleged harm would be irreparable – the use of plaintiff’s trade secret documents would result in lost sales and clients. Because plaintiff had shown a likelihood of success on the merits and irreparable harm, the Court entered a TRO. The Court ordered defendant and his agents not to use, reference or copy any documents misappropriated from plaintiff, and to return any such documents to plaintiff. The Court also enjoined defendant from soliciting any of plaintiff’s customers or clients whom defendant had contact with during the previous twelve months. And the Court enjoined defendant from soliciting plaintiff’s employees. The Court also ordered defendant to produce forensic copies of any of his personal computers.
But the Court did not enjoin defendant from working for his new employer. The Court noted that a TRO was an extraordinary remedy. And based on the available evidence, the Court was unwilling to use a TRO to end defendant’s employment, even for a limited period.

Continue Reading Court Enjoins Competition, Not Employment

Jones Day v., No. 08 C 4572 (N.D. Ill.) (Darrah, J.).
Plaintiff Jones Day sued defendants, and two individuals allegedly associated with the website, for allegedly using plaintiff’s service marks and linking to plaintiff’s website in at least two articles that allegedly discuss Chicago real estate transactions of plaintiff’s associates. Plaintiff claims service mark infringement, Lanham Act false designation of origin, Lanham Act dilution, and state law deceptive trade practices and unfair competition – click here for the complaint. Plaintiff also moved for a temporary restraining order (“TRO”) – click here for the TRO motion. In addition to the use of its service marks, plaintiff alleged that defendants used pictures of plaintiff’s associates that appear to be identical to pictures on plaintiff’s website.
A January 2007 Chicago Tribune article described defendants’ website as one that provides details surrounding Chicago-area real estate transactions using a Cook County list of home sales and internet research, noting that subjects of some posts do not like the stories:
But BlockShopper goes beyond the basic who-what-and-how-much, revealing tantalizing tidbits such as what the parties do for a living and what the sellers originally paid for the property, plus satellite maps and even photos of the property and the parties.
The TRO hearing was noticed for Tuesday, August 19. I will keep you updated as decisions are issued.

Continue Reading Law Firm Sues Seeking Temporary Restraining Order