EnVerve, Inc. v. Unger Meat Co., No 11 C. 472, Slip Op. (N.D. Ill. Apr. 26, 2011) (Castillo, J.).
Judge Castillo denied plaintiff EnVerve’s motion for preliminary injunction in this copyright infringement action involving advertisements. The Court first held that EnVerve had only shown a minimal likelihood of success on the merits:
EnVerve’s arguments were “very conclusory” and that “brevity [was] fatal.”
There was a significant dispute regarding who owned the copyrights based upon a contract between the parties.
EnVerve’s evidence of copying was an unsupported conclusion that defendant use constituted copying.
EnVerve failed to address defendant’s best argument – that EnVerve’s claim sounded in contract, not copyright.
The Court also held that there was no irreparable harm:
Money damages were an adequate remedy and were readily calculable based upon the contract, EnVerve’s invoices and defendant’s payments.
EnVerve’s claims are reputational harm and defendant’s potential insolvency were too speculative to be considered irreparable harm.

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Peerless Indus., Inc. v. Crimson AV, LLC, No. 11 C 1768, Slip Op. (N.D. Ill. Jun. 10, 2011) (Lefkow, J.).
Judge Lefkow denied plaintiff Peerless’ motion for a preliminary injunction in this patent and tortious interference case involving audio-visual mount equipment. Peerless had a manufacturing agreement with Sycamore Manufacturing (“Sycamore”) which was terminated no later than March 2010. The agreement included a non-compete clause that prevented Sycamore from selling the products it made for Peerless or any similar products, with a very broad definition of similarity. After the March 2010 termination and before the end of the non-compete term, in March 2011, Sycamore began selling similar products to defendant Crimson. The Court held that Peerless had “negligible” likelihood of success because the non-compete clause was likely unenforceable because it was broader than necessary to protect Peerless’ interests. The scope of similar products was far too broad. The scope should have been limited to substantially similar products. Additionally, the definition of similar products was “unworkably difficult to determine.”
Peerless also could not show irreparable harm. As an initial matter, the non-compete term had ended before the date this Opinion issued. An injunction barring Crimson from selling product the agreement now allowed it to sell would have improperly extended the term of the non-compete. Additionally, because the alleged unauthorized sales were complete, the damages were readily quantifiable.

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Flava Works, Inc. v. Gunter d/b/a myVidster.com, No. 10 C 6517, Slip Op. (N.D. Ill. Jul. 27, 2011) (Grady, J.).
Judge Grady granted plaintiff Flava Works’ motion for a preliminary injunction in this copyright case involving adult movies, and ordered the parties to confer on language for the preliminary injunction. Defendants’ myVidster website is a “social video bookmarking” site which allows users to post or link to video content. When a user posts or links to the content, myVidster crawls the website hosting the video to gather data about the video, creates a thumbnail image of the video and embeds the video on the myVidster site.
Likelihood of Success
The Court held that there was a likelihood of success on at least Flava Works’ contributory copyright infringement claim. It could not be “seriously disputed” that third parties have directly infringed Flava Work’s works by posting video content on myVidster. And defendants knew or should have known about the infringement based upon Flava Works’ seven DMCA take down notices outlining instances of the infringement to defendants. In fact, the email exchanges surrounding the notices show that defendants were not cooperative in addressing the notices. And myVidster’s repeat infringer policy was the “epitome” of willful blindness. Furthermore, there was significant evidence that defendants encouraged the infringement. For example, myVidster encouraged sharing of video content without warning of potential copyright infringement issues.
Defendants were not protected by the DMCA’s safe harbor provision. A threshold requirement for safe harbor is that a party adopt and reasonably implement a policy providing for termination of users that are repeat infringers. Defendants policy did not require or directly provide for termination of repeat infringers. And defendants did not consider copyright infringement to be part of the defintion of “infringer.”
Irreparable Harm
Defendants failed to rebut the presumption of irreparable harm in copyright cases. Flava Works’ did not delay in bringing the suit and then the injunction motion. Prior to filing suit, Flava Works attempted to resolve the issue with several DMCA take down notices and the Court would not penalize Flava Works for attempting to avoid litigation.

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Scala’s Original Beef & Sausage Co., LLC v. Alvarez d/b/a Michaelangelo Foods, No. 09 C 7353 (N.D. Ill. Dec. 22, 2009 (Dow, J).
Judge Dow denied plaintiff Scala’s motion for a temporary restraining order (“TRO”) in this Lanham Act case regarding Scala’s and Scala’s Preferred marks for giardiniera.
Likelihood of Success
Scala’s made a “fairly strong showing” that defendants’ (collectively “Michaelangelo Foods”) labels using the marks were likely to cause consumer confusion. Scala’s also met its burden to show some likelihood of success that its trademark license to Michaelangelo Foods was terminable at will, even though the license lacked a termination provision. Finally, Scala’s showed some likelihood of success as to its argument that licensee estoppel barred Michaelangelo Foods’ challenges to Scala’s marks. The Court noted, however, that at the early stages of the litigation it appeared that Michaelangelo Foods might be able to overcome licensee estoppel upon equitable grounds.
Irreparable Harm
Irreparable harm is presumed in trademark cases, and Michaelangelo Foods did not challenge the presumption. Instead, Michaelangelo Foods argued that Scala’s harm was not sufficiently immediate because Scala’s was not selling competing products. But the fact that Scala’s did not make a product, did not eliminate the harm. Scala’s was harmed by not being able to control Michaelangelo Foods’ quality. Additionally, Scala’s was using the marks with other products.
But the Court noted that the facts of this case mitigated the strength of Scala’s irreparable harm. In particular, Scala’s licensed the marks at least in part because Scala’s was unable to consistently pay suppliers or deliver products to its customers. And Michaelangelo Foods took substantial steps to fix those relationships, thereby enhancing the marks’ value.
Balance of Harm
The Court held that Michaelangelo Foods would be harmed by a TRO. A TRO would allow the sale of existing inventory, but individual defendant invested a significant portion of his savings into the business and the business had relatively low profits. A TRO would, therefore, likely do substantial damage to Michaelangelo Foods’ finances. This financial harm combined with Michaelangelo Foods’ efforts to rebuild the marks and the business tipped the balance of harm in Michaelangelo Foods’ favor.
Conclusion
While it was a close call, the Court denied a TRO. In view of the importance of a decision to both parties, the Court set an expedited discovery, briefing and hearing schedule for Scala’s preliminary injunction motion.

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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.

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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.

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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.

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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.

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Bucciarelli-Tieger v. Victory Records, Inc., No. 06 C 4258, Slip Op. (N.D. Ill. May 17, 2007) (Moran, Sen. J.).
Judge Moran granted plaintiffs a preliminary injunction preventing defendants from interfering with plaintiffs’ right to record new music with producers or record labels of plaintiffs’ choice. The Court also denied defendants an opposing preliminary injunction that would have prevented plaintiffs from recording new music with anyone other than defendants. Plaintiffs are members of an Ohio-based band called Hawthorne Heights (collectively “HH”) — in addition to clicking on “Hawthorne Heights” to go to the band’s website, you can also read about them on Wikipedia. HH entered into a contract (the “Agreement”) with defendants to produce and promote four albums. The first album was created and promoted seemingly without incident, but just before release of the second album the relationship soured. HH sent defendants a letter which purported to terminate the Agreement and listed several ways that defendants had allegedly harmed HH. This suit arose from that dispute. Plaintiffs allege breach of contract, as well as copyright and trademark infringement for promotions and sales after the date of HH’s letter allegedly terminating the Agreement and related state law claims. In a prior opinion (discussed in the Blog’s archives), the Court held that the Agreement was not exclusive because it did not contain any exclusivity provisions, which left HH free to record other songs or records with another company during the life of the Agreement. Based upon the Court’s ruling, HH moved the Court for a preliminary injunction confirming that defendants could not interfere with any of HH’s efforts to record new music with a third party. Defendants cross-moved to prevent HH from working with anyone but defendants. The Court held that HH showed a likelihood of success on the merits based upon the Court’s prior ruling that the Agreement was not exclusive. Similarly, the Court held that defendants did not show a likelihood of success in light of the same ruling. Because defendants had no likelihood of success, their motion for a PI was denied. Defendants argued that HH could not base a motion for preliminary injunction upon claims for declaratory relief, but the Court held that numerous courts had granted preliminary injunctive relief based upon claims for declaratory judgment.
The Court found that HH would suffer irreparable harm without an injunction. The parties agreed that bands have a short shelf-life and because without an injunction HH would not be allowed to record new music with parties of its choice in the immediate future, HH would be irreparably harmed without an injunction. The Court also held that despite the non-exclusivity of the Agreement, HH was obligated to produce records with defendants in a timely fashion. HH would be required to record the agreed-upon number of albums with defendants “within a reasonable time.”

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SMC Corp., Ltd. v. Lockjaw, LLC, __ F. Supp.2d __, 2007 WL 983850 (N.D. Ill. Apr. 3, 2007) (Castillo, J.).

Judge Castillo granted plaintiff’s motion for a preliminary injunction, enjoining defendants from breaching the parties’ agreement, unless plaintiff acted in a manner triggering the agreement’s termination provision, and from contacting plaintiff’s customers for any purpose without plaintiff’s consent.  Plaintiff was the exclusive distributor of defendants’ patented Lockjaw pliers in certain Western European countries.  For about eighteen months, plaintiff’s distributed defendants’ pliers without incident.  But then defendants altered payment terms, which was their right if they followed certain procedures.  Plaintiff alleges that defendants did not follow those procedures and based on this dispute the relationship appears to have broken down.  Shortly after defendants altered the payment terms, plaintiff filed this suit seeking, among other things, a declaratory judgment that the agreement is binding and enforceable, and that defendants breached the agreement.  Plaintiff also sought an injunction to prevent the defendants from terminating the agreement and/or contacting plaintiff’s customers.  Relying upon the UCC, the Court found that plaintiff had a likelihood of success on the merits based upon, among other things, the fact that its brief (and cured) nonpayment for two shipments likely did not constitute a breach of the agreement.


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