R. David Donoghue

Latest Articles

Sullivan & Survivor Music, Inc. v. Bickler, No. 18 C 3770, Slip Op. (N.D. Ill. Jan. 25, 2019) (Lee, J.). Judge Lee denied defendant Bickler’s, the former lead singer of the band Survivor, Fed. R. Civ. P. 12(b)(2) & (6) motion to dismiss plaintiffs’ (collectively “Survivor”) Lanham Act claims related to the alleged misuse of its SURVIVOR trademarks. Personal Jurisdiction Bickler’s royalty-based interactions with Survivor did not create general or specific jurisdiction. Furthermore, Survivor offered no evidence that Bickler directed his alleged use of the SURVIVOR marks at Illinois. And Bickler no longer lived in Illinois. But Bickler’s contract-based interactions…
Chicago Mercantile Exchange Inc. v. ICE Clear US, Inc., No. 18 C 1376, Slip Op. (N.D. Ill. Feb. 1, 2019) (Kennelly, J.). Judge Kennelly granted defendants’ (collectively “ICE”) Fed. R. Civ. P. 12(b)(6) motion to dismiss and motion to strike paragraphs of the complaint in this Lanham Act and breach of contract case involving plaintiff CME’s SPAN trademarks related to a method of assessing portfolio risk. The legal principle that a trademark owner may not transfer its duty to supervise and police its marks, does not prevent contractual obligations requiring a licensee to use best efforts to protect the mark’s…
Gabriel Fuentes has been appointed as the Northern District of Illinois’ newest magistrate judge. Before going to Northwestern Law, Fuentes was a journalist for the Los Angeles Times and Chicago Tribune. After law school, he served as an assistant U.S. Attorney before becoming a partner at Jenner & Block, where he handles antitrust criminal defense and civil cases. Judge Fuentes was “looking for a chance to focus my career back on public and government service,” and “was very humbled” to have been selected. Welcome to the Northern District bench Judge Fuentes.…
Mon Ros Int’l. for General Trading & Contracting, W.L.L. v. Anesthesia USA, Inc., No. 17 C 7365, Slip Op. (N.D. Ill. Jan. 8, 2019) (Castillo, C.J.). Chief Judge Castillo granted in part plaintiff Mon Ros’ contempt motion in this Lanham Act trademark case involving Mon Ros’ ANESTHESIA marks for use with contact lenses. The Court previously entered a temporary restraining order (TRO) and then a permanent injunction preventing defendants from selling contact lenses using the ANESTHESIA marks and from claiming ownership over the marks. Of particular note, the Court held as follows: The Court was “troubled” by evidence that defendants…
Lothan Van Hook DeStefano Arch. LLC v. SB Yen Mgm’t. Group, Inc., No. 18 C 275, Slip Op. (N.D. Ill. Dec. 10, 2018) (Lee, J.). Judge Lee denied defendants’ Fed. R. Civ. P. 12(b)(1) motion to dismiss for lack of subject-matter jurisdiction, but granted defendants’ motion to compel mediation and arbitration, and stayed this architectural copyright case pending such proceedings. Subject-Matter Jurisdiction Noting the complexity of determining whether a claim was based in contract or copyright, the Court noted that the Seventh Circuit had squarely addressed the present situation in Nova Design Build, Inc. v. Grace Hotels, LLC, 652 F.3d…
Perfect Brow Art, Inc. v. Glitzy Brows, No. 18 C 4594, Slip Op. (N.D. Ill. Nov. 15, 2018) (Guzman, J.). Judge Guzman granted defendants’ (collectively “Glitzy Brows”) Fed. R. Civ. P. 12(b)(2) motion to dismiss plaintiff Perfect Brow Art’s first amended complaint for lack of personal jurisdiction in this Lanham Act trademark, trade dress, false designation of origin and unfair competition case involving brow threading. Of particular note, the Court held as follows: Aside from the parties’ employment agreement, the only relevant evidence Perfect Brow Art submitted was the Illinois choice of law provision in the agreement, which did contain…
Zebra Techs. Corp. v. Tpenex Medical, LLC, No. 18 C 4711, Slip Op. (N.D. Ill. Dec. 13, 2018) (Ellis, J.). Judge Ellis granted defendants’ motion to stay this patent and Lanham Act case pending an earlier case defendants filed in the Eastern District of Missouri against plaintiffs (collectively “Zebra”) involving a covenant not to sue in an agreement involving plaintiff Laser Band and defendant Ward Kraft. Of particular note, the Court held as follows: Zebra was not prejudiced by a stay: It had already delayed as long as two years in bringing suit; It had not sought a preliminary injunction;…
February patent filings continued relatively steadily from January. Frequent filers included Coding Technologies, eCeipt, Internet Media Interactive, and Landmark Technology. As usual, I prepared the report in partnership with and using Docket Navigator and its powerful database.  Docket Navigator is a valuable resource, and the place to go if you want to keep track of new patent litigation filings or want to know what is happening in particular cases, how your judge has historically handled a particular type of motion, or a particular plaintiff’s litigation history.  Finally, please let me know if you have thoughts about the report or changes…
Flair Airlines, Ltd. v. Gregor LLC, No. 18 C 2023, Slip Op. (N.D. Ill. Sep. 17, 2018) (Guzman, J.). Judge Guzman granted in part plaintiff’s Fed. R. Civ. P. 12(b)(6) motion to dismiss certain of defendants’ counterclaims in this case involving Lanham Act trademark infringement and deceptive trade practices, copyright and related state law claims. This post only addresses the motion as to declaratory judgment copyright ownership claims, not the related state note claims because they do not add anything of interest related to intellectual property issues. The Court granted the motion to dismiss as to the DJ copyright ownership…
Kapoor v. National Rifle Association of Am., No. 18 C 4252, Slip Op. (N.D. Ill. Oct. 23, 2018) (Lee, J.). Judge Lee granted in part defendant National Rifle Association’s (“NRA”) Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction or, in the alternative to transfer to the Eastern District of Virginia pursuant to 28 U.S.C. §1404(a) in this copyright dispute involving plaintiff Kappor’s Chicago-based Cloud Gate sculpture, commonly known as the Bean. The Court acknowledged that the Bean was located in Chicago and that the alleged infringing video of the Bean was necessarily taken in Chicago.…
Clarivate’s Karl Doane wrote the below article focusing upon trade dress and industrial design searching and its increasing import. If you have an article you would like published on the Chicago IP Litigation blog, please reach out. I am glad to consider submissions. Infringement on the rise: 35% of brands suffer Industrial Design infringement By: Karl Doane, Senior Product Manager, CompuMark The ongoing globalization of markets and the ease to reach consumers online, has resulted in more and more trademarks being filed to take advantage of commercial opportunities. Today, there are more trademarks than ever before and according to the…
The Northern District and the Chicago Chapter of the Federal Bar Association are seeking nominations – no later than March 15, 2019 – for outstanding pro bono and public interest representation in civil and criminal matters before the Court. Factors considered include: dedication to pro bono or public interest work; outstanding achievement resulting from the representation of a large group of indigents, successful representation in a difficult case, outstanding negotiation and settlement skills in achieving a result without trial; extraordinary number of hours committed to pro bono work; or other distinguished performance. Nominations must be based upon work in the…
After Magistrate Judge Mason’s retirement and Magistrate Judge Rowland’s nomination to the district court, the Northern District has selected Jeffrey Cummings and Sunil Harjani to become magistrate judges. Both have strong, diverse experience and will be excellent additions to the bench. And kudos to the Northern District for moving so quickly while the Court is already overburdened. Here are some details about the background of our newest magistrates: Jeffrey Cummings, who takes the first open magistrate position, began his career as a clerk for Judge Ann Claire Williams, then on the Northern District and now on the Seventh Circuit. Since…
Flair Airlines, Ltd. v. Gregor LLC, No. 18 C 2023, Slip Op. (N.D. Ill. Jan. 17, 2019) (Guzman, J.). Judge Guzman denied plaintiff’s Fed. R. Civ. P. 12(b)(6) motion to dismiss certain of defendants’ counterclaims in this case involving Lanham Act trademark infringement and deceptive trade practices, copyright and related state law claims. Of particular note, the Court held as follows: Defendants’ breach of contract claim were sufficiently pled because they identified parties to the alleged joint venture. Open-ended references to additional identified members did not doom the claims, but no unnamed parties would be included in any future judgment.…
As they do most years, patent filings increased after a slow holiday / year-end season as NPEs returned to work. Frequent filers included Anuwave, Coding Technology, Flectere, Hawk Technologies, Internet Media Interactive, Secure Cam, Soundview Innovations, and Uniloc. As usual, I prepared the report in partnership with and using Docket Navigator and its powerful database.  Docket Navigator is a valuable resource, and the place to go if you want to keep track of new patent litigation filings or want to know what is happening in particular cases, how your judge has historically handled a particular type of motion, or a…
Life After Hate, Inc. a/k/a ExitUSA v. Free Radicals Project, Inc., No. 18 C 6967, Slip Op. (N.D. Ill. Jan. 10, 2019) (Cole, Mag. J.). Magistrate Judge Cole granted plaintiff’s motion for a protective order limiting discovery to information reasonably relevant to plaintiff’s motion for preliminary injunction in this Lanham Act counterfeiting, infringement and deceptive trade practices case. As an initial matter, the Court noted that because the parties had not conducted the required Fed. R. Civ. P. 26(f) conference, full discovery could not have started yet. If defendant wanted to conduct broad discovery, at a minimum it would need…