Preemption

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Morningware, Inc. v. Hearthware Home Prods., Inc., No. 09 C 4348, Slip Op. (N.D. Ill. Sep. 4, 2012) (St. Eve, J.).

Judge St. Eve granted in part plaintiff Morningware’s motion for summary judgment as to defendant Hearthware’s Deceptive Trade Practices Act, Lanham Act and related state law counterclaims. 

As an initial matter, the parties’ …

Persis Int’l, Inc. v. Burgett, Inc., No. 09 C 7451, Slip Op. (N.D. Ill. Sep. 26, 2011) (Guzman, J.).
Judge Guzman granted in part plaintiffs’ (collectively “Persis”) motion to dismiss defendant Burgett’s counterclaim in this Lanham Act case involving the SOHMER mark. The Court dismissed Burgett’s cancellation proceeding because it was based upon the submission of an allegedly fraudulent document in a separate trademark proceeding.
The Court dismissed two declaratory judgment claims related to a separate mark because they were unrelated to the case and were duplicative of claims in another ongoing case. The Court also dismissed a declaratory judgment claim regarding the SOHMER mark as duplicative of the existing claims and answer.
The Court allowed Burgett’s trademark infringement claim because it alleged that it owned the mark and the relevant tire and even if it later assigned the mark, its right to pursue past damages did not necessarily flow with the assignment. The Court also allowed Burgett’s unfair competition claim. Illinois unfair competition is not preempted by the Lanham Act, although it can be proven with the same or similar facts.
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Continue Reading Unfair Competition Not Preempted by Lanham Act

Schrock v. Learning Curve Int’l, Inc., No. 04 C 6927, Slip Op. (N.D. Ill. Sep. 29, 2010) (Kocoras, J.)
Judge Kocoras denied defendant’s Fed. R. Civ. P. 12(b)(1) motion to dismiss for lack of subject matter jurisdiction and Rule 56 motion for summary judgment in this copyright and contract dispute involving photographs of Thomas & Friends characters – trains from the island of Sodor well-known to those like me with young children.
First, plaintiff’s claims sounded in copyright regardless of whether the Court used the “face of the complaint” test or the “principal and controlling issue” test both of which have been used by the Seventh Circuit. The complaint and the issues expressed in it made clear that copyrights were at the heart of the dispute. The Complaint alleged that plaintiff authored photographs and copyrighted them, entered an agreement with defendants, and that defendant’s use of the photographs violated the agreement.
Second, the Court denied summary judgment as to the contract claim because there was a question of material fact as to whether a binding agreement was formed between the parties and the Court held that in the event the trier of fact determined a valid contract exists, the agreement was not barred by the statute of frauds because plaintiff had fully performed his obligations pursuant to the agreement.
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Continue Reading Contract Claims Sound in Copyright

Cyber Websmith v. Am. Dental Assoc., No. 09 C 6198, Slip Op. (N.D. Ill. Aug. 4, 2010) (Dow, J.).
Judge Dow granted defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s Lanham Act and Illinois Deceptive Trade Practices Act claims. Both were essentially reverse passing off claims – defendants allegedly represented plaintiff’s website templates as their own. And reverse passing off claims based upon copyrighted works rarely survive preemption claims. Pleading consumer confusion was not enough to avoid preemption in this case.
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Continue Reading Passing Off Claims Preempted by Copyright Claims

Viskase Companies, Inc. v. World Pac Int’l AG, No. 09 C 5022, Slip Op. (N.D. Ill. May 10, 2010) (Bucklo, J.).
Judge Bucklo granted declaratory judgment defendants’ (collectively “World Pac”) motion to dismiss declaratory judgment plaintiff Viskase’s state law tort claims as preempted by Viskase’s declaratory judgment patent claims. Patent holders have a basic right to assert their patents. In order to make tort claims based upon patent assertions, therefore, Viskase had to show that defendants acted in bad faith in asserting their patents, both objectively and subjectively. Viskase’s general statement of bad faith did not meet the Twombly/Iqbal pleading standards. Furthermore, defendants need not have stated in their assertion letters to third parties that Viskase objected to defendants’ claims.
The Court had specific jurisdiction over foreign defendant World Pac. World Pac’s filing for U.S. patents and its enforcement letters regarding the patents-in-suite created specific jurisdiction.
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Continue Reading Tort Claims Preempted by Patent Claims Absent Objective & Subjective Bad Faith

Zimnicki v. Neo-Neon Int’l, Ltd., No. 06 C 4879 (N.D. Ill. Nov. 9, 2009) (Norgle, J.)
Judge Norgle denied defendant Neo-Neon International’s (“Neo-Neon”) Fed. R. Civ. P. 12(c) motion for judgment on the pleadings regarding plaintiff’s unjust enrichment claim in this copyright dispute. Plaintiff sued Neo-Neon and others for alleged infringement of plaintiff’s copyrighted decorative holiday lighting products. Plaintiff also asserted an unjust enrichment claim against Neo-Neon alleging that Neo-Neon profited from making, using and selling products based upon plaintiff’s designs. The unjust enrichment claim met the first prong of the preemption test because plaintiff admitted the designs at issue were copyrighted. But the second prong was not met. Neo-Neon’s accused acts occurred outside the US, in China. Because the alleged acts were extraterritorial, they did not fall within the exclusive rights granted to copyright holders pursuant to §106. This was true even though the same acts in the US would presumably have been covered and, therefore, preempted.
* Click here for more on this case in the Blog’s archives.
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Continue Reading Unjust Enrichment Claim Based Upon Non-US Acts Not Preempted by Copyright Act

Cassetica Software, Inc. v. Computer Sciences Corp., No. 09 C 0003, Slip Op. (N.D. Ill. Jun. 18, 2009) (Kendall, J.).
Judge Kendall granted defendant CSC’s Fed. R. Civ. P. 12(b)(6) motion to dismiss. Plaintiff Cassetica asserted patent infringement, breach of contract, violation of the Computer Fraud and Abuse Act (“CFAA”), and related state law claims based upon CSC’s alleged continued use of Cassetica’s NotesMedic software after the end the parties’ contract for the software. The Court dismissed each claim as follows:
* Copyright Infringement: Cassetica’s copyright claim was dismissed because Cassetica could not recover its claimed statutory damages. Cassetica registered its copyright after CSC’s alleged infringement began. It did not matter that CSC’s alleged infringement allegedly continued after the registration.
* Breach of Contract: Because CSC’s alleged breach occurred after the contract terminated there was no longer a contract to be breached and, therefore, no claim.
* CFAA: There was no “damage” as defined by the CFAA. The CFAA defines damages as harm to a computer system’s data. But Cassetica alleged copying of electronic information, not that any of its data was lost or harmed. Otherwise, Cassetica only made bare allegations that its data was harmed without any factual statement.
* Other State Law Claims: Cassetica’s conversion, trespass to chattels and unjust enrichment claims were all preempted by the copyright law because each state law claim was based upon the alleged downloads of the NotesMedic software.
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Continue Reading Copyright Statutory Damages: Infringement Must Start After Registration

Stereo Optical Co., Inc. v. Judy, No. 08 C 2512, 2008 WL 4185689 (N.D. Ill. Sep. 8, 2008) (Kocoras, J.).
Judge Kocoras granted in part defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s copyright, trade secret and related state law claims. The Court noted that the Seventh Circuit required a registered copyright, not just pre-registration, to file a copyright complaint. But the Court held that it was sufficient to allege the registration and did not dismiss the claim because the registration was not attached. The Court did note, however, that the registration requirement was jurisdictional and the motion, therefore, should have been styled a Fed. R. Civ. P. 12(b)(1) motion for lack of jurisdiction.
The Court also denied defendants’ motion to dismiss plaintiff’s trade secret complaints. While plaintiff did not specifically identified the allegedly misappropriated trade secrets they did allege misappropriation of customer lists, vision test methodologies and other information that could be trade secrets.
Finally, the Court dismissed plaintiff’s unjust enrichment claim because it was preempted by the copyright and trade secret claims. The alleged unjust enrichment sought damages for either the alleged copyright infringement or the alleged trade secret misappropriation. Plaintiff’s other state claims, however, required additional elements and were not preempted.
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Continue Reading Allegation of Registration Without Certificate Sufficient for Copyright Claim