River Light V, L.P. v. Zhangyali, No. 15 C 5918, Slip Op. (N.D. Ill. Aug. 22, 2016) (Shah, J.).

Judge Shah granted plaintiffs (collectively “Tory Burch”) summary judgment and awarded statutory damages of $100,000, a permanent injunction and attorney’s fees in an amount to be determined in this Lanham Act dispute involving counterfeit Tory

Bulgari, S.P.A. V. Zou Xiaohong, No. 15 C 5148, Slip Op. (N.D. Ill. Oct. 15, 2015) (Coleman, J.).

Judge Coleman granted in part plaintiff Bulgari’s motion for summary judgment of trademark infringement, a permanent injunction and its attorney’s fees and costs regarding Bulgari’s BVLGARI marks used in relation to counterfeit rings.

It was undisputed

Luxottica USA LLC v. The Partnerships & Unincorporated Assocs., No. 14 C 9061, Slip Op. (N.D. Ill. Jun. 18, 2015) (Leinenweber, J.).

Judge Leinenweber granted plaintiff Luxottica’s motion for summary judgment, statutory damages, permanent injunction and attorney’s fees in this Lanham Act false designation of origin dispute regarding online sales of counterfeit Ray-Ban eyewear.

Kinsey v. Jambow, Ltd., No. 14 C 2236, Slip Op. (N.D. Ill. Dec. 4, 2014) (St. Eve, J.).

Judge St. Eve granted in part plaintiffs’ motion for default judgment in this music copyright case involving three reggae songs. The Court awarded plaintiffs $22,500 in statutory damages, a permanent injunction and their reasonable attorney’s fees.

Healix Infusion Therapy, Inc. v. HHI Infusion Servs., Inc., No. 10 C 3772, Slip Op. (N.D. Ill. Jan. 27, 2011) (Zagel, J.).
Judge Zagel granted in part defendants’ motion to dismiss plaintiff Healix Infusion Therapy’s (“Healix”) complaint, which included copyright infringement, trademark infringement and tortious interference claims, all related to the parties’ competition for medical infusion services, as follows:
Copyright
The Court dismissed Healix’s claims for statutory damages on its copyright claims. The record showed that Healix filed for its copyright registrations after defendants began the alleged infringements, and more than three months after first publication. As a result, statutory damages were not recoverable. Healix could only receive actual damages. Furthermore, the Court denied Healix’s request to amend its pleadings to include a demand for actual damages because Healix had already filed four complaints in the case and never sought actual damages.
Trademark
Although sparse, Healix’s trademark claims were sufficiently plead. Defendants argued that Healix had not pled use in commerce. But it was sufficient that Healix pled that Defendants displayed Healix’s marks to the public and that Defendants allegedly copied Healix’s marks with intent to use them in selling Defendants services to the consuming public.
Tortious Interference
The Court took Defendants’ motion to dismiss Healix’s tortious interference claim under advisement, in favor of a fully briefed summary judgment motion on the issue that more fully set out the relevant facts.
The Court denied the defendant’s motion to dismiss defendant Metro Infectious Disease Consultants (“Metro”). Defendants argued that Metro was never specifically accused to have committed any acts in the complaint. Instead, Healix defined as a single entity three defendants, including Metro. But the Court held that it was sufficient in this instance for Healix to group Metro with two other defendants and make all allegations against Metro as part of the defined entity.

Continue Reading Allegations of Defendant’s Acts as a Group Sufficient to Plead Copyright and Trademark Infringement

Flava Works, Inc. v. Wyche d/b/a DGSource.com, No. 10 C 748, Slip Op. (N.D. Ill. Jun. 28, 2010) (Gottschall, J.).
Judge Gottschall denied plaintiff Flava Works’ motion for default judgment based upon Flava Works’ proof of damages. Flava Works accused defendants (collectively “DGSource”) of copyright infringement and Lanham Act false designation of origin based upon a series of websites that allegedly used and sold Flava Works’ copyrighted content. DGSource never answered the complaint, and the Court entered a default order. In response, Flava Works submitted a proof of damages seeking approximately $1.3M. As an initial matter, the Court held that because both claims stem from the same operative facts, Flava Works was required to choose either copyright or Lanham Act damages. Flava Works also had to choose actual or statutory damages to the extent it chose copyright damages.
With respect to actual damages, the difference between the copyright and Lanham Act claims was that the Lanham Act provided for trebling damages. Regardless of the calculation, Flava Works’ estimates of its losses and DGSource’s profits were “conclusory” and provided without context. For example, Flava Works did not set out how much of DGSource’s website content was infringing and, therefore, would be relevant to a damages calculation.
Flava Works was not required to present evidence if it chose statutory damages, but without evidence the Court was required to adjust the award down, and the Court noted that it would benefit from additional evidence. The Court also noted that Flava Works was only entitled to statutory damages as to the two registered copyrights.
Finally, Flava Works did not prove the elements necessary for a permanent injunction. And Flava Works offered no authority for its requested remedy of transferring DGSource’s domain names to Flava Works.

Continue Reading Plaintiff Must Choose Between Lanham Act or Copyright Damages in Default Judgment

Here are several items from around the web that are worth your attention:
The latest edition of Doug Lichtman’s IP Colloquium is available here and it is another excellent listen. The program looks at copyright’s statutory damages regime through the lens of music downloading. Lichtman moderates an impressive group of experts and stakeholders in the debate. It would be worth the time, even if CLE credit was not available, but it is.
Congratulations to Victoria Pynchon of the IP ADR Blog and Settle It Now on her move to ADR Services — click here to read Pynchon’s post about the move.
The Alternative Patent Dispute Resolution Project at San Diego’s Thomas Jefferson School of Law has an interesting survey up about how ADR should be used in patent cases. No results yet, but I will discuss them here when they are made available. The survey follows up a survey done ten years ago by IPWatchdog’s Gene Quinn. Click here to take the survey.

Continue Reading IP News: ADR & Copyright Damages

Rudnicki v. WPNA 1490 AM, No. 04 C 5719, Slip Op. (N.D. Ill., Jul. 24, 2008) (Moran, Sen. J.).
Judge Moran denied plaintiff’s motion in limine to preclude defendants from arguing non-registration of plaintiff’s allegedly copyrighted works. Plaintiff argued that his certificate of registration was conclusive proof that his works were registered. But plaintiff only deposited six of his works with his applications. In response, plaintiff argued that deposit of a representative sample was all that was necessary for registration, and all that was necessary for statutory damages.
The Court, however, held that the mandatory registration requirement, and its exceptions pursuant to 17 U.S.C. § 407, was separate from the registration-deposit requirement, pursuant to 17 U.S.C. § 408. The registration-deposit requirement did not provide exceptions for works first published outside the United States, such as plaintiff’s works. Because § 408 required deposit for all of plaintiff’s works, and because plaintiff had not identified if any of the six works plaintiff deposited was at issue in this case, the Court denied plaintiff’s motion.

Continue Reading Copyright Mandatory Registration and Registration-Deposit Requirements are Separate

Lorillard v. Montrose Wholesale Candies & Sundries, Inc., No. 03 C 5311 & 4844, 2008 WL 1775512 (N.D. Ill. Apr. 17, 2008) (Aspen, J.).
Judge Aspen adopted Magistrate Judge Cole’s Report and Recommendation, denying defendants’ Fed. R. Civ. P. 59(e) motion to alter the Court’s judgment against defendants – click here to read more about that Report and click here to read more about this case in the Blog’s archives. The Court awarded plaintiff Lorillard $2.5M in statutory damages for defendants’ sales of counterfeit cigarettes using Lorillard’s trademarks. Defendants objected to, among other things, a statutory damages award in excess of $1M. Defendants argued that 15 U.S.C. § 1117(c)(2) only allowed $1M in statutory damages per type of goods sold. Because this case only involved one type of goods, cigarettes, defendants argued statutory damages could not exceed $1M. But the Court held that the limitation was $1M per counterfeit mark per type of good. Because Lorillard alleged five counterfeit marks were used, the statutory damages limit was $5M.

Continue Reading Counterfeiting Statutory Damages are up to $1M/Trademark

Lorillard Tobacco Co. v. Montrose Wholesale Candies & Sundries, Inc., No. 03 C 5311 & 4844, 2007 WL 2580491 (N.D. Ill. Sep. 10, 2007) (Cole, Mag. J.).
Judge Cole recommended awarding plaintiff $2.5M in statutory damages. The Court had previously entered a Fed. R. Civ. P. 37(b) default judgment against defendants for sales of counterfeit Newport cigarettes in violation of the Lanham Act.* The Court recommended that a damages hearing was not necessary because of defendants’ four year pattern of avoiding discovery obligations leading to a default judgment, including failing to produce damages documents. Having actively avoided producing the information for four years, defendants were not now entitled to seek opportunities to present evidence in their defense. Furthermore, the Court reported that a $2.5 M award was reasonable. $2.5M was half of plaintiff’s estimate of defendants’ infringing sales and it was half of the potential $1M statutory award for each of the five marks defendants infringed.
* For more on this case, see the Blog’s archives.

Continue Reading $2.5M Statutory Damages Award Set Without Hearing