Flava Works, Inc. v. Gunter d/b/a myVidster.com, No. 10 C 6571, Slip Op. (N.D. Ill. Sep. 3, 2013) (Grady, Sen. J.).

Judge Grady granted in part plaintiff Flava Works’ Fed. R. Civ. P. 12(b)(6) motion to dismiss defendants’ (collectively “myVidster”) tortious interference and Digital Millenium Copyright Act (“DMCA”) claims in this copyright infringement suit

Peerless Indus., Inc. v. Crimson AV, LLC, No. 11 C 1768, Slip Op. (N.D. Ill. Jun. 27, 2012) (Lefkow, J.).

Judge Lefkow granted defendants’ (collectively “Crimson”) Fed. R. Civ. P. 12(c) motion for judgment on the pleadings as to plaintiff Peerless’s tortious interference and civil conspiracy claims in this patent infringement and related state

OpticsPlanet, Inc. v. OpticSale, Inc., No. 09 C 7934, Slip Op. (N.D. Ill. Jul. 14, 2010) (Shadur, Sen. J.).
Judge Shadur granted in part plaintiff OpticsPlanet’s Rule 12(b)(6) motion to dismiss certain of defendants’ (collectively “OpticSale”) counterclaims in this dispute over trade names. As an initial matter, the Court noted that OpticSale’s tortious interference with prospective business relationships and with prospective economic advantage claims were properly brought as a single federal claim pursuant to Fed. R. Civ. P. 10(b). Furthermore, both counts failed at the hands of the competitor’s privilege. Businesses are free to compete to divert business from their competitors unless, among other exceptions, the competition is solely motivated by spite or ill will. OpticSale made no such allegation in this case. And the Court noted that OpticSale had competed with OpticsPlanet in similar ways.
The Court also dismissed OpticSale’s Sherman Act attempted monopolization claim because there was no indication that OpticsPlanet controlled or could come to control market prices. The Court further noted that the claim improperly sought to turn competition into attempted monopolization.
Finally, the Court dismissed OpticSale’s accounting claim to the extent its scope was reduced by dismissal of the other claims.

Continue Reading Competition Alone Not Enough for Sherman Act or Tortious Interference

Aller-Caire, Inc. v. Am. Textile Co., No. 07 C 4086, Slip Op. (N.D. Ill. Feb. 11, 2009) (Andersen, J.).
Judge Andersen granted in part plaintiff’s motion to strike certain of defendant’s affirmative defenses in this trademark and unfair competition case. Defendant’s competitor’s privilege defense was sufficiently pled, although it alleged no specific facts, because it put plaintiff on notice. Plaintiff knew that the parties were the competitors. The Court struck the remaining two affirmative defenses: 1) plaintiff’s damages were not the proximate result of defendant’s alleged acts; and 2) a reservation of rights to amend the defenses. Neither were affirmative defenses and, therefore, could not be properly pled.

Continue Reading Court Strikes Affirmative Defenses that are not Affirmative Defenses

UTStarcom, Inc. v. Starent Networks, Corp., No. 07 C 2582 Slip Op. (N.D. Ill. Dec. 5, 2008) (Lindberg, Sen. J.).
Judge Lindberg granted in part plaintiff’s motion to dismiss certain of defendant Starent’s counterclaims. Starent’s allegations that specific patentee withheld specific references from the Patent Office were sufficient to meet the Rule 9(b) heightened pleading standards for inequitable conduct. But the Court dismissed Starent’s tortious interference counterclaim to the extent that it was based upon the filing of a law suit because Illinois prohibits tortious interference with prospective economic advantage claims based upon filing law suits. The Court also dismissed Starent’s malicious prosecution counterclaim because Starent did not allege a special injury, such as arrest, seizure of property, taking or interference with property.

Continue Reading Allegations That Specific References Were Withheld Sufficient for Inequitable Conduct Claim

Polyad Co. v. Indopco Inc., No. 06 C 5732, 2008 WL 4287623 (N.D. Ill. Sep. 12, 2008) (Coar, J.).
Judge Coar granted defendant Indopco’s motion for summary judgment regarding plaintiff Polyad’s tortious interference and unjust enrichment claims. I do not normally deal with diversity cases based solely upon state law causes of action, but one of the alleged tortious interferences in this case was Indopco’s allegedly false statements that Polyad’s products may have infringed Indopco’s patents. But the Court held that the evidence only showed that Indopco only suggested that Polyad’s products “may” have infringed patents and suggested that the customer ask Polyad for assurances of noninfringement. Furthermore, Indopco was actually testing Polyad’s products to determine whether they infringed. Ultimately, Indopco’s tests were inconclusive and Indopco did not pursue a patent infringement case. But the possibility of infringement and Indopco’s inconclusive testing were sufficient for a grant of summary judgment in Indopco’s favor.

Continue Reading Warning Customer of Competitor’s Potential Patent Infringement Not Tortious Interference

Aller-Caire, Inc. v. Am. Textile Co., No. 07 C 4086, 2008 WL 4066976 (N.D. Ill. Aug. 28, 2008) (Andersen, J.)
Judge Andersen granted in part and denied in part defendant American Textile Co.’s (“ATC”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Aller-Caire’s trademark infringement case. Aller-Caire allegedly began using its ALLER-CAIRE mark in 1990, but never registered it. ATC registered its ALLER CARE mark in 2006. Both use the marks to market, at least, allergy sensitive pillow and mattress encasements. The Court dismissed Aller-Caire’s trademark count with leave to refile because it did not expressly allege a likelihood of confusion. It was not sufficient that the complaint alleged facts sufficient to infer confusion, plaintiff must plead confusion. The Court did not dismiss Aller-Caire’s tortious interference claim. Aller-Caire’s allegations would have been insufficient pursuant to Illinois law because Aller-Caire did not plead that ATC interfered with Aller-Caire’s business expectancy with a specific third party. But federal pleading requirements governed, and did not require identification of an entity.
Finally, a competitor’s privilege did not defeat Aller-Caire’s tortious interference claim. Competition cannot be tortious interference unless the competition employs wrongful means. Aller-Caire’s allegation that ATC’s alleged trademark infringement was done with malice constituted wrongful means.

Continue Reading Trademark Plaintiff Must Specifically Plead Confusion

Vulcan Gold, LLC v. Google, Inc., No. 07 C 3371, 2008 WL 2959951 (N.D. Ill. Jul. 31, 2008) (Manning, J.)
Judge Manning granted in part defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss, dismissing plaintiffs’ RICO claims. The Court previously dismissed plaintiffs’ complaint with leave to refile – click here to read the Blog’s post on that opinion. The Court held that plaintiffs did not sufficiently plead an enterprise. Plaintiffs only alleged that the defendants were contractually related within Google’s adsense program. And the alleged contractual relationship did not show consensual decisionmaking or joined purpose. Plaintiffs’ RICO claims were, therefore, dismissed.
The Court denied defendants’ motion to dismiss the unjust enrichment and civil conspiracy claims. Fed. R. Civ. P. 9(b) heightened pleading standards did not govern the claims because they were both based upon trademark infringement, not fraud.

Continue Reading No Heightened Pleading for Trademark-Based Unjust Enrichment Claim

Genender Int’l, Inc. v. Skagen Designs, Ltd., No. 07 C 5993, Slip Op. (N.D. Ill. Apr. 14, 2008) (Grady, J.).
Judge Grady denied defendant Skagen’s Fed. R. Civ. P. 12(b)(3) motion to dismiss plaintiff Genender’s declaratory judgment (“DJ”) case. The Court also granted in part Skagen’s Fed. R. Civ. P. 12(b)(6) motion to dismiss, dismissing Genender’s tortious interference claim. Skagen argued that Genender’s DJ suit should be dismissed in favor of Skagen’s later-filed suit for design patent and trade dress infringement filed in the District of Nevada. Skagen argued that dismissal was required by the Seventh Circuit’s standard as set forth in Tempco Elec. Heater Corp. v. Omega Eng., Inc., 819 F.2d 746 (7th Cir. 1987). The Court, however, held that Federal Circuit law controlled because of the design patent claims. And the Federal Circuit explicitly rejected Tempco in Genentech, Inc. v. Eli Lilly & Co., 998 F.2d 931 (Fed. Cir. 1993) (abrogated on other grounds). Instead, the Federal Circuit required that Skagen provide a “sound reason” that proceeding with the DJ would be unjust or inefficient. Skagen provided no such reason and, in fact, Skagen’s counsel agreed at argument that it did not matter whether the case was tried in the Northern District or in the District of Nevada.
The Court dismissed without prejudice Genender’s tortious interference claim. Genender alleged that Skagen interfered with Genender’s business relationship with customer Sears by copying Sears personnel on cease and desist letters. But the claim was deficient because Genender did not allege that it lost any Sears business because of Skagen’s actions.

Continue Reading Federal Circuit Controls Patent DJ Jurisdiction