Jones Day v., No. 08 C 4572 (N.D. Ill.) (Darrah, J.).
As I have described in earlier posts (click here and here) plaintiff Jones Day sued defendants, and two individuals associated with the website (collectively “Blockshopper”), for allegedly using Jones Day’s service marks and linking to its website in at least two articles discussing Chicago real estate transactions of Jones Day associates. Jones Day claims service mark infringement, Lanham Act false designation of origin, Lanham Act dilution, and state law deceptive trade practices and unfair competition. Plaintiff also moved for a temporary restraining order (“TRO”). The parties stipulated to a TRO which the Court entered ordering defendants not to: 1) use Jones Day’s service mark; 2) use any content from or link to Jones Day’s website; or reference Jones Day in Blockshopper headlines. Blockshopper has a deadline of this Friday, September 19, to file a motion to dismiss
It is not surprising that the suit has gotten a lot of interest in the legal blogosphere. Here are some of the most significant posts:
Consumer Law & Policy Blog — considering the merits of the claims.
Legal Blog Watch — questioning the PR ramifications of the suit.
While I generally save my commentary for the opinions, there is one point that needs to be made. Many bloggers are using an alleged quote from Judge Darrah (I did not hear it and have not seen a transcript of the hearing, so cannot confirm it) warning Blockshopper that defending the suit would be very expensive. Unless the comment was made in a hostile or aggressive manner, which I very much doubt and which has not been suggested in the posts I have seen, that is simply a statement of legal reality. Defending federal intellectual property cases has become expensive, very expensive. And defense costs are a factor in the calculus of every defendant’s business decisions about a law suit.

Continue Reading Jones Day v. Blockshopper: Lighting the Legal Web on Fire

Jones Day v., No. 08 C 4572, Order (N.D. Ill. Aug. 18, 2008) (Darrah, J.).*
Judge Darrah entered the parties stipulated temporary restraining order (“TRO”). 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 discuss Chicago real estate transactions of plaintiff’s associates. Plaintiff claimed service mark infringement, Lanham Act false designation of origin, Lanham Act dilution, and state law deceptive trade practices and unfair competition and sought a TRO – click here for the Blog’s earlier post on the case.
The Court entered the parties’ stipulated TRO, ordering defendants not to:
Use reproductions or imitations of plaintiff’s service mark;
Use any content from or link to plaintiff’s website; or
reference plaintiff in its headlines.
Defendants were also ordered to remove any website content already on the site that would violate the TRO if written after its entry.
As you would expect, other blogs and mainstream media have noticed the case. At Legal Blog Watch, Robert J. Ambrogi just wrote about the dispute (click here), noting my post and discussing an article by Lynne Marek that will appear in next week’s National Law Journal — click here (subscription required). According to the NLJ story, plaintiff asked only $10,000 to settle the case, but defendants rejected the offer, explaining:
Bending to the law firm’s demands to stop coverage of the firm’s lawyers would strangle the company’s business model of using public records and publicly available Internet information, he said. Blockshopper, founded by former newspaper industry professionals, considers itself a next generation media outlet entitled to First Amendment protections just like any other news organization, he said.
Ambrogi sums up the issue at the heart of the dispute well:
In this age of electronically enhanced transparency, this whole dust-up reflects a sentiment I encounter time and again: “We like our public records to be public — just not too public.
* Click here for the Order.

Continue Reading Blockshopper Stipulates to Temporary Restraining Order

Tomorrow is the first anniversary of the “new” electronic data discovery (“EDD”) rules.* In fact, the EDD rules were not new, they were intended to be a codification of the basic rules already in use by the various district courts. Despite that, a study conducted by LexisNexis at the October Association of Corporate Counsel 2007 Annual Meeting in Chicago found that corporate counsel continue to struggle with implementation of the rules and confusion about what the EDD rules required. For example, 70% of respondents believed that electronic files had to be produced in their native formats. In fact, you simply must work with opposing counsel to decide what format to produce the files in, either their native formats or some chosen standard format. This confusion should not have surprised anyone. Even in IP circles, lawyers rarely fully understand a company’s IT infrastructure and the IT people rarely understand the legal process. This disconnect can be very dangerous when it comes to meeting EDD obligations.
If your company is still struggling with the EDD rules or, worse, avoiding them completely, you can solve your problems with some relatively simple actions. First, take a breath, open your copy of the Federal Rules and read them thoughtfully and then set up a meeting with the head of your company’s IT infrastructure, the head of your company’s legal department or litigation staff and an outside counsel with EDD experience. Working together, come up with a general plan for gathering and preserving the appropriate information as cases arise. Pay special attention to how your plan fits with the company’s overall data retention policies (yes, your company should have data retention policies and the policy should be followed carefully) and how to suspend any periodic or automatic data removal when a litigation hold needs to be instituted. Once you have a plan, meet periodically to update it and to ensure that it is being followed. If you are prepared for EDD, it is an excellent litigation tool. If you are not, it is a potential disaster.
For more on EDD, check out these blogs:
Alextronic Discovery
Dennis Kennedy
EDD Update
E-Discovery Team
E-discovery 2.0
Electronic Discovery Blog
Electronic Discovery Law (another LexBlog blog)
Ride the Lightning
Sound Evidence
Hat tip to the EDD Blog Online via Legal Blog Watch for identifying the LexisNexis survey..
* Tomorrow is also the date that the next set of changes to the Federal Rules becomes effective. Fortunately, these changes are focused on making the rules more readable instead of adding or changing obligations. But once you are prepared for the EDD rules, you should still turn back to your copy of the Federal Rules and read through the revisions.

Continue Reading Happy Anniversary Electronic Data Discovery Rules!

The Seventh Circuit has launched a wiki. The Wiki is intended to focus on the most difficult portion of practice for those not regularly practicing in a particular jurisdiction — procedure. The site is largely broken down by the Seventh Circuit’s Rules and allows for practitioners to create an account and add their insights into the implementation of each rule. It is already an excellent resource. Much of the early content focuses on briefing requirements. For example, after the break is a portion of the wiki regarding the formatting of headings that gives insight into what the Seventh Circuit judges might prefer.
Perhaps the Northern District should consider a wiki.

Continue Reading 7th Circuit Wiki

In January, Cisco’s General Counsel Mark Chandler gave a speech at Northwestern’s Securities Regulation Institute that made major headlines.  Because several in-house friends and colleagues have mentioned it to me recently, I thought it was worth a post.  Anyone involved in the private practice of law should take the time to read it.  It highlights an issue that is critical to achieving a client’s desired results and to developing a strong relationship between a client and its outside counsel — aligning the interests of the counsel to those of the client.  Chandler’s speech resonates with me because when I was in-house, I struggled to align my outside counsel’s interests with those of my company.  It seems that it should be an easy task, but many outside counsel do not get it. Continue Reading Cisco’s GC Speech is Heard Around the Country

The new blog Trial Lawyer Resource Center looks like it will be a great resource and it represents many of the best aspects of legal blogging — experts in a field gathering to share their insights and to engage readers in conversation.  It has no specific relation to IP, but appears to be worth reading

Mader v. Motorola Inc., No. 92 C 8089, 1999 WL 519020 (N.D. Ill. Jul. 14, 1999) (Manning, J.).

This opinion intersects with IP only to the extent that you consider the opinion a derivative work based on its use of Beatles and Pink Floyd song titles and quotes.  But it does highlight a fun area of legal writing — the use of song lyrics in judicial opinions.  A recent law review article,  [Insert Song Lyrics Here]: The Uses and Misuses of Popular Music Lyrics in Legal Writing, by Professor Alex Long analyzes the use of music in legal writing (Bob Dylan is the most cited artist in judicial opinions, followed by Paul Simon and Bruce Springsteen). (Note: If my wife were a federal district judge, you might see a sharp increase in judicial citations to Judas Priest and KISS. Thankfully – at least for the sake of good musical taste – she is not, although she would otherwise make a great judge.)Continue Reading Rocking Out in the Northern District