Lefkow

Subscribe to Lefkow via RSS

Heathcote Holdings Corp. v. L’Oreal USA, Inc., No. 11 C 1921, Slip Op. (N.D. Ill. Aug. 9, 2011) (Lefkow, J.).
Judge Lefkow granted defendant L’Oreal’s motion to transfer plaintiff’s false patent marking case involving boxes of hair dye to the S.D. New York, L’Oreal’s home district. Generally, plaintiff’s Heathcote’s choice of forum would be given deference, but in false marking cases the United States is the real party in interest. So, the qui tam plaintiff’s chosen forum is given little deference. The situs of material events was New York, where the accused packaging was designed and where the relevant employees reside. L’Oreal’s witnesses and documents were more likely in New York than Illinois.
The convenience of the parties also weighed in favor of New York. Heathcote did not identify any employees that would have to travel to New York for the case, whereas L’Oreal’s relevant employees were in New York. Furthermore, Heathcote’s only business was litigation and therefore the travel would not distract Heathcote from its business.
The interests of justice weighed in favor of transfer. There were already four false marking cases against L’Oreal or its subsidiaries that had been transferred to the S.D. New York. And the potential consolidation of those cases would benefit the parties and judicial economy.
…
Continue Reading False Marking Case Transferred to District Where Defendant Already Faces Four False Marking Cases

The patent pilot program started this month in the Northern District and across the country. The pilot program is a ten-year look at ways to handle patent cases more effectively. The main component of the pilot program is judges in pilot districts, including the Northern District, self-selecting as patent judges. Patent cases will continue to be randomly assigned to all Northern District judges. But when a non-patent judge is assigned a patent case that judge will have thirty days to order reassignment of the case. When reassignment is ordered, the case will be randomly reassigned to one of the patent judges. There will also be patent-related education and programs offered for the patent judges across the country.
One unanswered question about the pilot program remains: If a non-patent judge was assigned a patent case less than thirty days before the program kicked off on September 19, can the non-patent judge order the patent case reassigned pursuant to the pilot program? I have not seen it happen yet, but I suspect it could over the next week or two.
The Northern District issued the following list of judges who have self-selected as patent judges:
Chief Judge James F. Holderman
Judge Ruben Castillo
Judge John W. Darrah
Judge Gary S. Feinerman
Judge Virginia Kendall
Judge Matthew F. Kennelly
Judge Joan Humphrey Lefkow
Judge Rebecca R. Pallmeyer
Judge Amy J. St. Eve
Judge James B. Zagel
…
Continue Reading Northern District of Illinois Patent Program Begins

First Step Child Care Center, Inc. v. KASI Designs, Inc., No. 10 C 7372, Slip Op. (N.D. Ill. Mar. 24, 2011) (Lefkow, J.).
Judge Lefkow remanded plaintiff’s state claims involving the building of a child care center to state court. Defendant removed the case from state court alleging that it would bring copyright counterclaims. But defendant never asserted its counterclaims, and even if it had counterclaims cannot create original jurisdiction.
…
Continue Reading Federal Counterclaim Cannot Create Original Jurisdiction

Lettuce Entertain You Enters., Inc. v. Leila Sophie AR, LLC, No. 09 CV 2582, Slip. Op. (N.D. Ill. Feb. 26, 2010), (Lefkow, J.).
Judge Lefkow granted plaintiff Lettuce Entertain You (“LEYE”) a preliminary injunction against defendants’ use of the name “Lettuce Mix” in their salad bar restaurant in Lincoln Park. LEYE argued that the defendants’ “Lettuce Mix” name would infringe its family of “Lettuce” marks for use in restaurant services.
Likelihood of Success
LEYE’s Lettuce marks were not generic as used for restaurant services. While some of LEYE’s meals included lettuce, LEYE was not in the business of lettuce sales. And defendant’s intent to use its Lettuce Mix name was sufficient for use in commerce.
The Court held there was a likelihood of confusion. Both parties marks focus upon “lettuce” and use it as a pun for “let us.” This is true even though LEYE’s logo, which includes a waiter opening a covered a dish was different from defendant’s logo. Additionally the parties’ services in the restaurant industry were similar.
Both parties used the marks in the same area and manner. They directly compete for restaurant customers, and at least one of LEYE’S 70 restaurants is within one mile of Lettuce Mix. To the extent both parties cater to patrons seeking inexpensive, casual meals, the patrons are assumed to use a lesser degree of care, even though some of LEYE’s restaurants are more expensive.
LEYE’s family of Lettuce markers was strong, and defendants’ argument to the contrary was their genericness argument that the Court previously denied.
LEYE, however, did not provide evidence of actual confusion, although actual confusion is not required. And there was no evidence that defendants intended to pass themselves off as affiliated with LEYE. Finally, defendants’ was not a fair use because lettuce was not descriptive of their service.
Irreparable Harm
Trademark infringements are presumed to result in irreparable harm. LEYE would, therefore, have been irreparably harmed by any trademark infringement from defendants.
Balancing Harm
Defendants would not suffer significant harm from the injunction given that they had already stopped using the allegedly infringing name. And any loss of defendants’ goodwill would be attributable to their own actions.
Public Interest
The public interest would not be harmed by the preliminary injunction. Enforcement of trademarks serves the public good, and LEYE had shown a “substantial” likelihood of confusion.
…
Continue Reading Court Enters Preliminary Injunction as to Plaintiff’s “Lettuce” Marks

President Obama announced a couple of nominations this week impacting the Northern District of Illinois and the national patent bar.
First, President Obama appointed WilmerHale partner Edward DuMont to the Federal Circuit. DuMont clerked for the Seventh Circuit’s Judge Posner and was an Assistant to the Solicitor General where he briefed and argued Supreme Court cases. DuMont currently has an appellate practice with a considerable focus on patent and intellectual property issues (click here for DuMont’s firm bio). DuMont also spent a year working for a law firm in Bangkok, Thailand. DuMont’s Supreme Court and varied appellate experience make him a very interesting choice to take Judge Michel’s place on the Federal Circuit bench.
Second, President Obama has nominated the Northern District’s Deputy U.S. Marshall Senior Inspector Darryl McPherson to become the Northern District’s next U.S. Marshall. McPherson has served as a Deputy U.S. Marshall since 1999 and won a Special Recognition award for his service as lead Deputy Marshall for Judge Lefkow.
Both nomination must be confirmed by a vote of the U.S. Senate.
…
Continue Reading President Obama Makes Northern District of Illinois & IP Nominations

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.
…
Continue Reading Location of Family Major Factoring in Determining Citizenship

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.
…
Continue Reading Seventh Circuit American Jury Project

Integrated Genomics, Inc. Kyrsides, No. 06 C 6706, 2008 WL 63065 (N.D. Ill. Mar. 4, 2008) (Lefkow, J.).
Judge Lefkow dismissed defendant Ivanova for lack of subject matter jurisdiction, held that the Court had subject matter jurisdiction over defendant Kyrsides, and denied defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s claims based upon preemption. Plaintiff alleged that defendants’ breached their non-compete agreements and otherwise named plaintiff when defendants resigned from plaintiff, where they worked with genome software, and joined plaintiff’s competitor in similar roles. Defendants each argued that plaintiff had not sufficiently pled diversity jurisdiction because plaintiff had not shown that $75,000 or more was in controversy. In response, plaintiff alleged that they lost customers to defendants’ new employer after defendants resigned. But that was insufficient because plaintiff did not allege that defendants were responsible for, or the cause of, those lost customers. The Court, therefore, dismissed defendant Ivanova. But for Kyrisides, plaintiff also relied upon an email sent from Kyrsides to plaintiff’s employees explaining Krysides’s view that his resignation cost plaintiff a very large number of contracts. Kyrsides statements were sufficient proof that the amount in controversy exceeded $75,000.
The Court held that a motion to dismiss was not the appropriate vehicle for deciding the scope of the relevant non-compete agreements. The scope of a non-compete was fact-intensive and best determined after additional discovery.
Finally, the Court held that plaintiff’s claims were not preempted by the Illinois Trade Secret Act (“ITSA”). While the claims could encompass trade secret information, they were based upon the broader category of confidential information. Because the claims were potentially broader than trade secrets, they were not preempted.
…
Continue Reading Jurisdiction: Amount in Controversy Must be Tied to Alleged Wrongs

Judges Coar, Gettleman, Kennelly and Lefkow are continuing their joint trial call (started in 2007, click here for the Blog’s post about it).* Each judge is contributing cases to the call, apparently at the judge’s discretion. The cases in the call will be tried in order by one of the five judges, although not necessarily the judge originally assigned the case. Each trial is expected to last no longer than five days and the attorneys and parties for a case on the call are expected to be ready for trial, including producing witnesses, on 48 hours notice. So far, I do not believe any IP cases have been put on the joint call. And I suspect that the five day trial limit will remove at least the typical patent case from the joint call, although plenty of trade secret, trademark and copyright cases could end up on it.
* Judge Bucklo was a part of the joint call last year, but is not listed this year.
…
Continue Reading N.D. Ill. 2008 Joint Trial Call

Ty, Inc v. Softbelly’s, Inc., No. 00 C 5230, 2007 WL 734394 (N.D. Ill. Mar. 6, 2007) (Lefkow, J.).

Judge Lefkow granted plaintiff’s, Ty, motion to make the case exception and grant it attorneys’ fees and expenses.  A jury previously returned a verdict against defendant, Softbelly’s, for violations of the Lanham Act and common law…