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

Bajer Design & Marketing, Inc. v. Base4 Group, Inc., No. 08 C 02296, Slip Op. (N.D. Ill. Nov. 12, 2008) (Coar, J.).
Judge Coar entered the parties consent judgment, holding that defendant Base4 infringed plaintiff Bajer Design’s patents and trademarks, as well as granting judgment for Bajer Design as to its related state law claims. The Court also awarded Bajer Design damages equal to slightly more than 20% of Base4’s gross sales. Finally, the Court permanently enjoined Base4 from making, using or selling the infringing product and from using Bajer Design’s POP-UPS! and POP OPEN trademarks, absent a license from Bajer Design.

Continue Reading Court Enters Patent & Trademark Consent Judgment

American Taxi Dispatch, Inc. v. American Metro Tax & Limo Co., __ F. Supp.2d __, 2008 WL 4616855 (N.D. Ill. Oct. 20, 2008) (St. Eve, J.).
Judge St. Eve permanently enjoined defendants’ (collectively “Metro”) use of trademarks infringing plaintiff American Taxi’s American Taxi marks, and awarded American Taxi damages in the amount of Metro’s gross sales as well as attorney’s fees. American Taxi began using its marks in 1975. Metro incorporated and began using their American Metro Taxi marks in early 2007. American Taxi filed the instant suit for trademark infringement, Lanham Act unfair competition and related state law claims. Metro initially defended itself, but after repeatedly missing deadlines th Court entered a default judgment and allowed American Taxi to submit proofs, which led to this opinion.
Pursuant to Fed. R. Civ. P. 54(c), the award could not exceed in form or amount what was demanded in the pleadings. The Court held that the complaint justified a permanent injunction. American Taxi alleged that Metro’s infringing acts harmed American Taxi’s goodwill, and the Seventh Circuit has held that damage to goodwill can constitute irreparable harm. And American Taxi backed up its complaint with an affidavit detailing actual confusion between the marks. Furthermore, a tailored injunction would not put Metro out of business. In fact, Metro’s owner claimed that Metro had been dissolved. So, the balance of harms weighed in American Taxi’s favor. And finally, there is a public interest in knowing whom they conduct business with, which favored an injunction. The Court, therefore, permanently enjoined Metro and its affiliates, successors and assigns from using its marks or any others that were confusingly similar to the American Taxi marks.
The Court then awarded damages in the amount of Metro’s provable gross sales. The Court focused its analysis on the Seventh Circuit’s recent WMS Gaming, Inc. v. WPC Prods. Ltd. decision in which the Seventh Circuit held that plaintiff need only prove gross sales and then the burden shifts to defendant to prove its costs — click here to read the Blog’s post about that decision. As a result, where defendant is in default, plaintiff’s may be awarded defendant’s gross profits.
Finally, the Court held that the case was exceptional, warranting an award of attorney’s fees. But the Court limited the amount of fees because the request was “less than a model of clarity” and it was not clear from the submission which of the time entries were appropriate.

Continue Reading Default Ends in Injunction & Award of Defendants’ Gross Sales

Hyundai Construc. Equip. U.S.A., Inc. v. Chris Johnson Equip., Inc., No. 06 C 3238, Slip Op. (N.D. Ill. Oct 21, 2008) (Leinenweber, Sen. J.).
Judge Leinenweber, having previously granted plaintiff summary judgment of Lanham Act unfair competition and deceptive trade practices,* enjoined defendant’s continued sale of gray market goods and use of plaintiffs’ trademarks and awarded plaintiffs damages and costs. The Court awarded plaintiffs defendant’s profits from sales of gray market construction equipment (equipment made abroad for sale abroad that was imported to the United States without authority for resale), but the Court held that awarding plaintiffs a multiple of defendant’s actual damages would be inappropriately punitive. Additionally, the Court gave defendant an opportunity to prove its costs before entering a final damages amount.
The Court also entered a permanent injunction. The Court, however, denied plaintiffs’ request that defendant have to provide plaintiffs and the Court a report proving defendants’ compliance with the injunction. Such a requirement was unduly burdensome.
Finally, the Court awarded plaintiffs their costs, but held attorney’s fees were not appropriate because the case was not exceptional. Among other reasons the case was not exceptional, the Court noted evidence that defendants “apparent pains” to warn customers that defendants’ products lacked a warranty and came from overseas. And the Court held that no actual confusion had yet been proven.
* Click here for the prior decision in the Blog’s archives.

Continue Reading Court Awards Injunction, Actual Damages and Costs, Not Attorney’s Fees

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

Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312 (N.D. Ill. Jun. 13, 2008).
The Court held that its May 22 permanent injunction against defendant eSpeed (click here for the Blog’s post on the injunction) was a final judgment, which allowed for appeal to the Federal Circuit. Anyone reading the Blog’s recent posts regarding the Court’s permanent injunction against eSpeed, and eSpeed’s appeal of the injunction as well as plaintiff Trading Technologies’ (“TT”) cross-appeal, might have assumed that the Court had entered a final judgment. eSpeed apparently did because it filed an appeal of the permanent injunction to the Federal Circuit (click here for the Blog’s post on the issues on appeal). TT filed its broader appeal shortly thereafter (which eSpeed objected to as untimely because the Court had not entered a final judgment on anything beyond the permanent injunction), but disagreed that the Court had entered a final judgment on any issue. TT, therefore, also filed an emergency motion requesting that the Court vacate its permanent injunction, rule on the parties’ cross-motions for attorney’s fees (the Court now has ruled on those motions, click here for the Blog’s post about that decision) and then reenter the permanent injunction along with final judgment.*
This may seem like irrelevant procedural posturing, but TT explains the appellate rules implications in its emergency motion:
The rules state that the first-filed notice of appeal is the appellant, but when both parties file an appeal on the same day, the plaintiff is deemed the appellant. F.R.A.P. 28.1. Where there is a cross-appeal, the appellant has the advantage of having higher word limits in its briefs and also files the first brief focused solely on the issues it seeks to appeal. The general rule is that a plaintiff, like TT here, has the right to be an appellant if it wants to appeal an issue.
The Court did not directly rule on TT’s motion, but effectively decided it by entering this Minute Order stating that its May 22 permanent injunction was a final judgment effective May 22. The Clerk, who subsequently entered final judgment on all issues effective May 22, and the parties — eSpeed filed a notice of appeal of all issues rather than its initial appeal of just the injunction — treated the final judgment as relating to all matters before the Court, which makes both parties’ appeals timely. According to TT’s above analysis, because TT filed its appeal after but on the same day as eSpeed, TT will be appellant and eSpeed will be the cross-appellant.
For those concerned that the Blog might be silent about this case for months, have no fear. The related cases continue and I will continue blogging about both the related cases and the appeal.
* Click here for TT’s emergency motion, click here for eSpeed’s response, and click here for TT’s reply. Also, click here for much more on this case in the Blog’s archives.

Continue Reading Trading Technologies v. eSpeed: Final Judgment

Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 2008-1392 & 1393 (Fed. Cir.).*
As Judge Moran predicted, the parties have appealed this case to the Federal Circuit.* The parties’ appeals were consolidated, leaving a single appeal with a substantial number of issues. The great, new Patent Appeal Tracer* reported that plaintiff Trading Technologies (“TT”) is appealing at least the following decisions (click here to read Tracer’s post on the cross-appeals):
Claim constructions, specifically constructions of “static price axis” and “order entry region” (click here and here and here for the Blog’s posts regarding claim construction opinions);
Summary judgment of noninfringement of most of defendant eSpeed’s software packages, including the following titles: Dual Dynamic, eSpeedometer, and modified eSpeedometer programs (click here for the Blog’s post regarding this opinion);
Partial summary judgment for TT regarding prior use (click here for the Blog’s post regarding this opinion); and
Judgment as a matter of law overturning the jury’s willfulness finding (click here for the Blog’s post regarding this opinion).
And eSpeed is appealing, at least, the following decisions:
The permanent injunction regarding certain of eSpeed’s software packages (click here for the Blog’s post regarding the Court’s permanent injunction).
* Thanks to Patent Tracer for linking to the Blog’s TT v. eSpeed coverage. Click here to read much more about this case in the Blog’s archives.

Continue Reading Trading Technologies v. eSpeed: The Appeals Begin

Nat’l. Spiritual Assembly of the Baha’is of the U.S.A. Under the Hereditary Guardianship, Inc. v. Nat’l. Spiritual Assembly of the Baha’is of the U.S.A., Inc., ___ F.Supp.2d ___, 2008 WL 1839078 (N.D. Ill. Apr. 23, 2008) (St. Eve, J.).
Judge St. Eve denied defendant the National Spiritual Assembly of the Baha’is of the United States’ (the “NSA”) motion to hold non-parties Franklin D. Schlatter, Joel B. Marangella, the Provisional National Baha’i Council (“PNBC”), the Second International Baha’I Council (d/b/a Baha’is Under the Provisions of the Covenant)(“SIBC”), and the Baha’i Publishers Under the Provisions of the Covenant (“BPUPC”)(collectively the “Alleged Contemnors”) in contempt for violating the 1966 permanent injunction against plaintiff The National Spiritual Assembly of the Baha’is of the United States Under the Hereditary Guardianship, Inc.’s (the “NSA-UHG” or “UHG”) use of the NSA’s trademarks. Shortly after the injunction was entered, the NSA-UHG dissolved. NSA argued that its former officers, Schlatter and Marangella, remained bound by the injunction. But the Court held that officers or agents of an entity that are not personally named in an injunction are only bound while acting for the named entity or a subsequent entity formed to avoid the injunction. Schlatter’s and Marangella’s alleged contempt, therefore, is dependent on their new entity PNBC’s status.
The Court held that PNBC was not in privity with NSA-UHG. NSA-UHG followed the directives of its spiritual leader, Mason Remey. PNBC, however, followed the directives of its spiritual leader Marangella, not Remey. Furthermore, Marangella specifically instructed PNBC and its members not to violate the injunction. PNBC, Schlatter and Marangella, therefore, were not in privity with NSA-UHG and not bound by the injunction.
Similarly, non-parties Jensen, SIBC and BPGPC were not in privity with NSA-UGH, even though they admitted to being successors-in-interest to Remey. Jensen disassociated themselves from the NSA-UGH and Remey several years before the injunction was issued.

Continue Reading Former Officers Not Bound by Company’s Injunction

Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. May 22, 2008) (Moran, Sen. J.).*
After a jury held that certain of defendants’ (collectively “eSpeed”) products willfuly infringed two of plaintiff Trading Technologies’ (“TT”) futures trading software patents (the Court previously reversed the willfulness finding), the Court entered a permanent injunction preventing future sales of the infringing software — a previous opinion granted summary judgment of noninfringement of eSpeed’s current software and all software except that sold during a six month period shortly after TT’s patents issued. The Court looked at each of the four standard injunction elements, as required by the Supreme Court in eBay Inc. v. MercExchange, LLC.
Irreparable Harm
The Court held that TT would be irreparably harmed by any continued sales of infringing product because TT’s successful business was built around its patented technology and, therefore, direct competitors with infringing products irreparably harmed TT. The Court agreed with eSpeed that general claims of competition were insufficient pursuant to eBay, but the Court held that TT’s direct competition assertions were supported by trial testimony.
Inadequate Remedy at Law
eSpeed argued that TT’s numerous licenses proved that monetary damages could compensate TT, as the eBay district court held after remand. but the Court distinguished eBay. eBay was premised upon a combination of plaintiff MercExchange’s:
willingness to license;
choice not to practice the patent;
failure to seek preliminary injuctive relief; and
consistent, clear statements that it desired monetary damages.
In contrast, TT manufactured a patented product and only licensed as an alternative to litigation. And the Court acknowledged TT’s concern that providing monetary damages after trial without an injuction would force a compulsory license on TT.
Balance of Hardships
The Court held that TT would be more harmed without an injunction than eSpeed would be harmed by an injunction. eSpeed no longer made or sold the infringing software, so an injunction would cause eSpeed little or no harm. Furthermore, eSpeed manufactured numerous non-infringing products. So, the extent of any harm was further minimized.
Public Interest
eSpeed argued that the public interest weighed against granting injunctions regarding patents in reexamination. But TT’s patents had since been upheld in the reexam. So, the only public interest factor was enforcement of TT’s patent rights.
For these reasons, the Court entered a permanent injunction. Click here to read the Permanent Injunction Order.
* Click here to read much more about this case in the Blog’s archives and click here for this opinion.

Continue Reading Trading Technologies v. eSpeed: Permanent Injunction

Brian Higgins’s Maryland IP Law Blog post about the progeny of In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007), inspired me to do follow up posts identifying Northern District cases discussing recent major IP decisions. The first looks at cases discussing eBay Inc. v. MercExchange, L.L.C., 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006). Here they are:*
Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3446144 (N.D. Ill. Nov. 29, 2006) (St. Eve, J.). — Granting a permanent injunction in a case between competitors.
Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, 2007 WL 1017751 (N.D. Ill. Mar. 30, 2007) (Moran, J.). — Granting a preliminary injunction in a case between competitors and holding that in eBay the Supreme Court limited the automatic presumption of irreparable harm based upon infringement.
For further analysis of post-eBay decisions, check out my post about Michael Smith’s analysis (click here) and my post discussing Ray Nimmer’s thoughts on the potential for compulsory licensing regimes because of eBay (click here).
* A brief note on methodology: this was not a thorough study and does not include cases that granted or denied injunctions without discussion. For a more comprehensive list of decisions nationwide (updated through the end of 2007) go to the Fire of Genius.

Continue Reading Injunctions Post-eBay