Judge Manning held that defendants’ (collectively “Hometown Realtors”) failure to answer was based upon excusable neglect and vacated default judgments against Hometown Realtors:
• Hometown Realtors had good cause for not answering – they claim not to have been served;
• Hometown acted quickly and diligently hiring counsel and seeking to vacate the default upon learning of the suit; and
• Hometown Realtors set out facially plausible defenses in proposed answers.
The Court did, however, set an evidentiary hearing to determine whether Hometown Realtors were ever served; unless plaintiff Century 21 chose to re-effect service.

Continue Reading Defendant’s Judgment Vacated for Excusable Neglect

Judge Manning mooted defendant Groh’s objections to the Magistrate Judge’s failure to award attorney’s fees for a voluntary dismissal in this copyright and trademark action. After a brief discovery period, plaintiff Zander moved pursuant to Fed. R. Civ. P. 15 to amend its complaint deleting its copyright claim and adding a Lanham Act claim. The Magistrate Judge treated the deletion of the copyright claim as a Fed. R. Civ. P. 41(a)(2) voluntary dismissal, dismissing the claim with prejudice. The Magistrate Judge did not award attorney’s fees for defending the copyright claim, however, to avoid chilling voluntary dismissals and the resulting reduction in legal fees for both sides.
The Court ordered further briefing to resolve whether the deletion of the copyright claim should be treated pursuant to Fed. R. Civ. P 15 or 41.
In the interest of judicial economy, the Court reserved a decision regarding whether attorney’s fees were appropriate until the Court decided whether the dismissal was by amendment or as a Rule 41(a)(2) voluntary dismissal.

Continue Reading Must Decide Form of Dismissal Before Considering Fees

Judge Manning dismissed plaintiff Millenium TGA’s case against a Doe defendant identified by its computer IP address (“Doe”) for lack of personal jurisdiction. Doe was not an Illinois resident. And Millenium TGA offered no proof that Doe’s actions in allegedly using Bit Torrent to download copyrighted video files were targeted at Illinois. Being part of a Bit Torrent “swarm” that downloaded a video did not rise to the level of targeting Illinois.

Continue Reading Swarming Does Not Create Jurisdiction

Millennium TGA, Inc. v. Doe, No. 10 C 5603, Slip Op. (N.D. Ill. Aug. 24, 2011) (Manning, J.).
Judge Manning held in abeyance Doe defendant’s motion to quash a subpoena issued to its alleged internet service provider and Doe’s motion to dismiss the case for lack of personal jurisdiction. Plaintiff Millennium TGA reasoned that the subpoenaed information would allow it to show that Doe’s actions were directed at Illinois and within the Courts’ jurisdiction.
The Court was “troubled” by Millennium TGA’s claims that it needed jurisdictional discovery, as opposed to discovery only seeking Doe’s identity. Millennium TGA already filed a complaint alleging jurisdiction upon information and belief. The Court, therefore, ordered Millennium TGA to file a brief detailing how the information it sought was necessary. And the Court held the motions in abeyance pending that brief. The Court also warned Millennium TGA that it would initiate sanctions proceedings if Millennium TGA had not met its Fed. R. Civ. P 11 obligations.

Continue Reading Potential Sanctions for Early Discovery Inconsistent With Pleadings

Light Speed Media Corp. v. Does 1-1000, No. 10 C 5604, Slip Op. (N.D. Ill. Mar. 31, 2011) (Manning, J.).
Judge Manning dismissed without prejudice 999 of the 1,000 Doe defendants in this copyright infringement suit accusing unknown individuals of using BitTorrent to download copyrighted material without sufficient permissions. As in prior cases in the Northern District (click here for similar decisions), the Court held that the Doe defendants were not properly joined pursuant to Fed. R. Civ. P. 20(a)(2)(A) because the use of a common internet service provider or network does not create sufficient commonality of action or transaction to warrant permissive joinder. The Court also held that joinder did not serve judicial interests or economy. A case with 1,000 Doe defendants could generate hundreds of factually dissimilar motions, just at the initial phase of the litigation.
The Court’s decision to sever was bolstered by its concerns about whether venue was proper. There was nothing to indicate that plaintiff or any Doe had contacts with Illinois. The Court, therefore, dismissed without prejudice each of the Does except the one individual who had been identified, although not yet named. Plaintiff was given seven days from the Order to notify the parties and their Internet Service Providers. Finally, the Court denied as premature the identified individual’s motion to dismiss for lack of personal jurisdiction. The motion was premature until the individual was actually named in the suit.

Continue Reading Another Case Dismissing Hundreds of Doe Copyright Defendants as Improperly Joined

Millennium TGA, Inc. v. Does 1-800, No. 10 C 5603, Slip Op. (N.D. Ill. Nov. 30, 2010) (Manning, J.).
Judge Manning sua sponte severed each Doe defendant in this copyright suit over alleged use of copyrighted materials via BitTorrent, except for one Doe IP address. And the Court granted that Doe’s motion to quash the subpoena.
The Court previously granted plaintiff leave to subpoena Internet Service Providers (“ISP”) to obtain identities associated with certain IP addresses – unique strings of numbers that can often be associated with a single computer or location. Plaintiff had met the Fed. R. Civ. P. 20(a)(2)(A) joinder requirements because it could not show that the Does acted in concert. Furthermore, the case in its current position could leave the Court with dozens or hundreds of factually unique motion to dismiss, quash or sever. And there was no indication that venue was proper. Plaintiff had no connection to Illinois, and it was not clear that any Doe did either.

Continue Reading Court Severs 800 Doe Defendants in Copyright Suit

Wayne Cable v. Agence France Presse, No. 01 C 8031 (N.D. Ill. July 20, 2010) (Manning, J.).
Judge Manning denied defendant Agence France Presse’s (“AFP”) motion to dismiss plaintiff’s copyright, Lanham Act, Digital Millennium Copyright Act (“DMCA”) and related state law claims. Plaintiff took a series of photos of a Chicago-area home for a realtor that included images of the home next-door owned by President and Mrs. Obama. AFP allegedly reproduced those images and distributed them over the internet after first removing plaintiff’s copyright notice and an embedded link to plaintiff’s website.
The Court held that the alleged removal of plaintiff’s copyright notice and website link could fall within the scope of altering “copyright management information” in violation of the DMCA.
Plaintiff’s Lanham Act claim, allegedly a reverse passing-off claim, was not preempted by the Copyright Act pursuant to the Supreme Court’s decision in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003). In Dastar, the Supreme Court held that the Lanham Act claim would have been sustained if defendant had repackaged plaintiff’s videos as its own. That is what plaintiff alleged AFP did with plaintiff’s photographs. Similarly, the Court did not dismiss plaintiff’s state law claims which allegedly rose and fell with plaintiff’s Lanham Act claim.

Continue Reading Court Allows Claims Regarding Photos of Obama Home to Proceed

Von Holdt v. A-1 Tool, No. 04 C 4123, Slip Op. (N.D. Ill. Aug. 18, 2010) (Manning, J.).
Judge Manning, having granted in part plaintiff’s motion for reconsideration, decided to maintain supplemental jurisdiction over plaintiffs’ remaining state law claims despite having granted defendants summary judgment as to plaintiffs’ federal patent infringement and Computer Fraud and Abuse Act (“CFAA”) claims. Plaintiffs’ state law claims – trade secret, tortious interference and breach of fiduciary duty claims – were “loosely” connected to plaintiffs’ CFAA claim because they were based upon the alleged theft of plaintiffs’ confidential information by a former employee.

Continue Reading Loosely Related State Law Claims Sufficient for Supplemental Jurisdiction

Von Holdt v. A-1 Tool, No. 04 C 4123, Slip Op. (N.D. Ill. Aug. 3, 2010) (Manning, J.)
Judge Manning granted in part plaintiffs’ motion to reconsider the Court’s opinion granting defendants summary judgment on plaintiffs’ patent claims and dismissing plaintiffs’ related state law claims for lack of supplemental jurisdiction.
The Court reversed its supplemental jurisdiction decision because Illinois law barred the refiling more than once of a claim that was voluntarily dismissed. Presented with the “new” fact that plaintiffs had previously filed suit in state court, the Court vacated its prior decision and ordered plaintiffs to brief whether the Court should retain jurisdiction over the state law claims.
The Court, however, did not reverse its summary judgment of noninfringement. On that Plaintiffs agreements were a “rehash” of its prior agreements.

Continue Reading Court Reconsiders Supplemental Jurisdiction to Assert Tort Claims

Von Holdt v. A-1 Tool Corp., No. 04 C 4123, Slip Op. (N.D. Ill. May 17, 2010) (Manning, J.).
Judge Manning granted defendants (collectively “A-1 Tool”) summary judgment as to plaintiff’s (collectively “Plas-Tool”) patent claims based upon a lack of notice and as to the plaintiff’s Computer Fraud and Abuse Act (“CFAA”) claims, and chose not to exercise supplemental jurisdiction over the remaining state law claims. A-1 Tool sought summary judgment of a lack of pre-suit notice of the alleged patent infringement. The issue was dispositive because Plas-Tool’s patent expired before the suit was filed. So, pre-suit-notice – actual or constructive – was required in order for Plas-Tool to have any damages.
Plas-Tool’s general statements that they would sue A-1 Tool if it ever infringed Plas-Tool’s patents did not create actual notice. And the alleged patent knowledge of Plas-Tool’s former employee who joined A-1 Tool could not be imputed to A-1 Tool for purposes of actual notice. A-1 Tool’s burden was to make an evidentiary showing that could lead a reasonable person to find that Plas-Tool complied with the marking requirements by marking substantially all of Plas-Tool’s relevant product. Plas-Tool did not meet its burden of proof. Plas-Tool’s only evidence of marking compliance was testimony from Plas-Tool’s 30(b)(6) witness. The witness testified that Plas-Tool’s policy was to mark its products, but had no recollection of what specifically was marked. And the Court held that evidence of a company policy to mark without any other evidence of marking compliance was insufficient to overcome summary judgment. Beyond the 30(b)(6) testimony, Plas-Tool’s only marking evidence was having sent a customer two molds including patent markings. But when the molds were returned, one of them had the patent marking covered up, suggesting the product was made from the mold had not been marked. The Court, therefore, granted A-1 Tool summary judgment on Plas-Tool’s patent claims for lack of notice.
The Court also granted A-1 Tool summary judgment on Plas-Tool’s CFAA claim. Plas-Tool alleged that its former employee improperly accessed and damaged CAD files related to the patented products. But Plas-Tool was not able to identify any damage to the allegedly accessed files and the CFAA was not designed to deal with disgruntled former employees that took electronic files as they left. Also, Plas-Tool was unable to show the required $5,000 in damages within one year of the alleged damage. The loss Plas-Tool was able to show was not related to fixing damaged files, as required by the CFAA. Plas-Tool’s alleged damage was related to a forensic review that allegedly showed that the former employee tampered with the files.
Having granted summary judgment on the federal patent claim and the CFAA claim, the Court declined to exercise supplemental jurisdiction over Plas-Tool’s state law claims.

Continue Reading Evidence of Marking Required for Constructive Notice