Sunstar, Inc. v. Alberto-Culver Co., No. 01 CV 736 & 5825, 2007 WL 2410069 (N.D. Ill. Aug. 22, 2007) (Guzman, J.).
Judge Guzman denied defendants’ Fed. R. Civ. P. 59 motion for a new trial and Fed. R. Civ. P. 50(b) motion for judgment as a matter of law and granted plaintiff’s motion for a permanent injunction, among other things assigning all trademarks at issue to plaintiff and enjoining defendants from using plaintiff’s trademarks. The Court held that the jury’s verdict of a breach of contract without a damages award was not inconsistent and, therefore, did not warrant a new trial. The jury was free to find that the contract was breached and to award nominal damages. But because plaintiff did not argue for nominal damages an award of no damages was warranted. Defendants also argued that the jury’s verdict was not supported by the evidence because plaintiff’s survey was not sufficient proof actual confusion. But the Court held that plaintiff’s breach-by-infringement claim only required proof of likely confusion. The jury could have considered the survey sufficient to prove likely confusion. Furthermore, plaintiff introduced fact evidence in addition to the survey which supported the jury’s findings, including the similarity of the marks at issue and the sale of similar products using the marks in the same areas as plaintiff’s trademarked products.
Finally, the Court enjoined defendants from, among other things using plaintiff’s trademarks and required that defendants assign any interest in the marks at issue to plaintiffs. Defendants argued that the Court could not require assignment of the marks to plaintiff because plaintiff never sought transfer of the marks in its complaint. But the Court held that plaintiff was seeking equitable relief that was appropriate in light of the jury’s verdict.

Continue Reading Breach of Contract Verdict Without Damages Award Not Inconsistent

According to Interbrand Ronald is worth more than Mickey. Interbrand has just published its 2007 Best Global Brands, ranking the top 100 brands that: 1) derive at least a third of earnings outside of the brand’s home country; 2) are recognized beyond the brand’s customer base; and 3) have public marketing and financial data. Interbrand also excludes brands that are hard to identify as having brand value separate from their products or services. For example, pharma brands are excluded because Interbrand has determined that consumers focus on products rather than the overarching company branding. That leaves Northern District companies like Abbott Labs out of the running. But the Northern District is still very well represented. For example, McDonald’s jumped one spot this year, surpassing Disney in brand value. Here are the Northern District companies (or at least those very near the Northern District) on the list:
Northern District Top Global Brands 07 Rank 06 Rank Company 07 Brand Value (in USD Millions)
8 9 McDonald’s 29.398
59 59 Wrigley’s 5.777
77 69 Motorola 4.149
86 79 Kraft 3.732
Thanks to the Seattle Trademark Lawyer for identifying the ranking.

Continue Reading Ronald Beats Mickey: Northern District Home to Several Top Global Brands

Hickory Farms, Inc. v. Snackmasters, Inc., No. 05 C 4541, 2007 WL 1576124 (N.D. Ill. May 29, 2007) (Kennelly, J.).
Judge Kennelly denied plaintiff’s motion for reconsideration of the Court’s decision that plaintiff’s “Beef Stick” and “Turkey Stick” marks were generic and the Court’s cancellation of the Beef Stick mark (you can read more about that opinion in the Blog’s archives). The Court denied plaintiff’s argument that it should be given more time, pursuant to Fed. R. Civ. P. 56(f) to conduct a survey to show that the marks are not generic. But the Court reasoned that plaintiff was free to conduct such a survey in the fourteen months of discovery leading up to defendant’s summary judgment motion. Furthermore, in its responsive briefing plaintiff specifically stated that plaintiff would “not seek to delay the briefing of this matter with its own survey at this time.” Instead, plaintiff suggested that it would conduct a survey if the Court denied defendant’s summary judgment motion. The Court held that after these statements, plaintiff’s current request to perform a survey was almost “frivolous.”
The Court also held that plaintiff’s evidence of its advertising investment and market share had not effect on the Court’s ruling that the marks were generic. A company’s marketing and advertising expenditures cannot make a mark less generic. Additionally, the fact that there is another generic term (summer sausage) for beef sticks and turkey sticks does not mean that beef stick and turkey stick cannot also be generic.

Continue Reading Late Requested 56(f) Cannot Save Summary Judgment

Papa John’s Int’l, Inc. v. Rezko, No. 04 C 3131, 2007 WL 1521472 (N.D. Ill. May 21, 2006) (Moran, J.).
Relying on its prior opinion, which included a detailed analysis of the Complaint and notice pleading standards (you can read discussion of that opinion in the Blog’s archives), the Court denied defendants’ various Fed. R. Civ. P. 12(b)(6) motions to dismiss plaintiff’s trade secret and trademark infringement claims. Defendants argued that plaintiff did not sufficiently which defendants were alleged to have performed the acts at issue. But the Court reasoned that defendants had notice of plaintiff’s claims and that notice is all the Federal Rules require. The Court pointed out that it had “covered much of this same ground in much greater detail” in its prior opinion and cautioned that “this case will not go away for any defendant by a motion to dismiss . . . .”

Continue Reading Court Says Case Will Not Be Resolved by Rule 12(b)(6)

Bucciarelli-Tieger v. Victory Records, Inc., No. 06 C 4258, Slip Op. (N.D. Ill. May 17, 2007) (Moran, Sen. J.).
Judge Moran granted plaintiffs a preliminary injunction preventing defendants from interfering with plaintiffs’ right to record new music with producers or record labels of plaintiffs’ choice. The Court also denied defendants an opposing preliminary injunction that would have prevented plaintiffs from recording new music with anyone other than defendants. Plaintiffs are members of an Ohio-based band called Hawthorne Heights (collectively “HH”) — in addition to clicking on “Hawthorne Heights” to go to the band’s website, you can also read about them on Wikipedia. HH entered into a contract (the “Agreement”) with defendants to produce and promote four albums. The first album was created and promoted seemingly without incident, but just before release of the second album the relationship soured. HH sent defendants a letter which purported to terminate the Agreement and listed several ways that defendants had allegedly harmed HH. This suit arose from that dispute. Plaintiffs allege breach of contract, as well as copyright and trademark infringement for promotions and sales after the date of HH’s letter allegedly terminating the Agreement and related state law claims. In a prior opinion (discussed in the Blog’s archives), the Court held that the Agreement was not exclusive because it did not contain any exclusivity provisions, which left HH free to record other songs or records with another company during the life of the Agreement. Based upon the Court’s ruling, HH moved the Court for a preliminary injunction confirming that defendants could not interfere with any of HH’s efforts to record new music with a third party. Defendants cross-moved to prevent HH from working with anyone but defendants. The Court held that HH showed a likelihood of success on the merits based upon the Court’s prior ruling that the Agreement was not exclusive. Similarly, the Court held that defendants did not show a likelihood of success in light of the same ruling. Because defendants had no likelihood of success, their motion for a PI was denied. Defendants argued that HH could not base a motion for preliminary injunction upon claims for declaratory relief, but the Court held that numerous courts had granted preliminary injunctive relief based upon claims for declaratory judgment.
The Court found that HH would suffer irreparable harm without an injunction. The parties agreed that bands have a short shelf-life and because without an injunction HH would not be allowed to record new music with parties of its choice in the immediate future, HH would be irreparably harmed without an injunction. The Court also held that despite the non-exclusivity of the Agreement, HH was obligated to produce records with defendants in a timely fashion. HH would be required to record the agreed-upon number of albums with defendants “within a reasonable time.”

Continue Reading Band Granted a Preliminary Injunction Allowing Choice of Producers

Super Wash, Inc. v. Allen, No. 06 C 50169, Slip Op. (N.D. Ill. Apr. 20, 2007) (Mahoney, Mag. J.).

Magistrate Judge Mahoney recommended dismissing one group of defendants’ ("Genecor defendants") motion to enforce the settlement agreement and the other group’s ("MJR defendants") motion for judgment and sanctions.  Plaintiff alleged that defendants infringed its trademarks

GMAC Real Estate, LLC v. E.L. Cutler & Assocs., Inc., 472 F. Supp.2d 960 (N.D. Ill. Oct. 20, 2006) (Bucklo, J.).

Judge Bucklo held that the Court lacked personal jurisdiction over defendant and dismissed plaintiff’s complaint.  Plaintiff, a franchiser of residential real estate brokerages, brought this suit alleging that defendant, a former franchisee, breached

Allied Ins. Co. v. Bach, No. 05 C 5945, 2007 WL 627635 (N.D. Ill. Feb. 27, 2007) (Leinenweber, J.).

Judge Leinenweber granted declaratory judgment defendants/counter-plaintiffs (collectively "defendants") summary judgment DJ plaintiff/counter-defendant’s ("plaintiff") duty to defend defendants against Lanham Act and related state law claims.  Defendants were sued by third party Acushnet which accused defendants of

Days Inns Worldwide, Inc. v. Lincoln Park Hotels, Inc., No. 06 C 2960, 2007 WL 551570 (N.D. Ill. Feb. 22, 2007) (Der-Yeghiayan, J.)

Judge Der-Yeghiayan granted plaintiff summary judgment on its trademark infringement and Illinois Deceptive Trade Practices Act ("IDTPA") claims, among others.  Plaintiff owns various marks relating to its Days Inn chain (the "Days Inn Marks").  Plaintiff licensed defendants Lincoln Park Hotels, Inc. and Richard Erlich (collectively "LPH") to use the Days Inn Marks in connection with the operation of a hotel in Chicago’s Lincoln Park neighborhood.  In 2005, LPH sold the hotel to defendant Gold Coast Investors ("GCI") without informing plaintiff, in violation of the parties’ license agreement.  GCI continued operating the hotel using the Days Inn Marks without licensing the rights to the marks from plaintiff.  As a result, plaintiff brought the instant action against defendants alleging that, among other things, GCI infringed plaintiff’s Days Inn Marks and LPH contributorily infringed plaintiff’s Days Inn Marks by selling the hotel to GCI with the knowledge that GCI intended to continue using the Days Inn Marks and without informing plaintiff of the sale or removing the Days Inn Marks from the hotel, as required in the parties’ license agreement. 


Continue Reading Seller is Liable for Contributory Infringement Becase Seller Knew Buyer Intended to Use the Property in an Infringing Manner