Chicago IP Litigation

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Viahart LLC v. Partnerships & Unincorporated Assocs. identified on schedule A, No. 19 C 8181, Slip Op. (N.D. I.. Apr. 4, 2022) (Alonso, J.).
Judge Alonso denied plaintiff Viahart’s Fed. R. Civ. P. 60(b)(6) motion to reopen its case and to permit limited jurisdictional discovery in this Doe case involving Amazon sales related to Viahart’s BRAIN FLAKES trademark.
The Court previously granted an ex parte temporary restraining order, granted Viahart’s request for service by alternate means and expedited discovery. The Court then granted a preliminary injunction followed by a default judgment. Thereafter defendant Liyunshop appeared and filed a motion to
Continue Reading Reply Briefs are Not for “Sandbagging”

Rebel Hospitality LLC v. Rebel Hospitality LLC, No. 21-cv-05132, Slip Op. (N.D. Ill. Mar. 16, 2022) (Guzman, J.).
Judge Guzman granted defendant Rebel Hospitality DE’s Fed. R.Civ. P. 12(c) motion to dismiss plaintiff Rebel Hospitality IL’s trademark infringement complaint for lack of personal jurisdiction in this case about REBEL HOSPITALITY marks.
As an initial matter, Rebel Hospitality IL waived any timeliness argument by not contesting the issue in its response brief. Rebel Hospitality DE answered the complaint and included a personal jurisdiction affirmative defense, but did not file a Rule 12(b)(2) motion at that time, as it technically should have
Continue Reading Trademark Infringement Alone Does Not Create Personal Jurisdiction

Benefit Cosmetics LLC, No. 20-cv-02552, Slip Op. (N.D. Ill. Mar. 28, 2022) (Wood, J.).
Judge Wood denied defendant Oxygen Ocean’s motion to set aside the parties’ settlement agreement in this trademark dispute involving plaintiff Benefit Cosmetics’
This was a Doe trademark case. Oxygen Ocean engaged with the Court and then was voluntarily dismissed allegedly based upon a settlement agreement. Oxygen Ocean, however, subsequently argued that it had not entered into the agreement alleging that the agreement was negotiated by counsel who lacked authority to settle the case or bind Oxygen Oceans. But the Court held that the agreement was valid
Continue Reading Court Upholds Agreement in Face of Allegations that Defendant Did Not Enter It

Art Akiane LLC v. Art & Soulworks LLC, No. 19-cv-02952, Slip Op. (N.D. Ill. Sep. 16, 2021) (Chang, J.).
Judge Chang ruled on the parties’ choice of law dispute between Colorado and Illinois law in this intellectual property dispute.
Federal courts apply the forum’s choice of law rules. Illinois uses the forum’s law, unless there is a conflict with another state’s law. Illinois also uses its own law for procedural issues. The party seeking a choice of law determination has the burden of proving that there is a conflict between the laws. Where there is a conflict, Illinois follows the
Continue Reading Illinois Law Applies Over Colorado Based Upon Situs of Events

Peng v. The Partnerships and Unincorporated Assocs. Identified on Schedule “A,” No. 21 C 1344, Slip Op. (N.D. Ill. Sep. 14, 2021) (Dow, J.).

Judge Dow converted the previously entered Temporary Restraining Order (TRO) into a Preliminary Injunction (PI) against the challenging defendants in this design patent dispute involving wireless earphone headbands.

As an initial matter, the Court noted that the Supreme Court’s eBay decision removed the presumption of irreparable harm where a plaintiff showed a likelihood of success as to proving patent infringement. But the Court also noted that removal of the presumption did not allow consideration of the
Continue Reading Irreparable Harm Shown by Likely Consumer Confusion From Sales of Likely Infringing Product

H-D U.S.A., LLC v. The Partnerships and Unincorporated Assocs. Identified on Schedule “A,” No. 21 C 3581, Slip Op. (N.D. Ill. Sep. 24, 2021) (Alonso, J.).

Judge Alonso granted plaintiff Harley-Davidson’s motion for preliminary injunction against defendant Amarzon-Automotive Parts (“AAP”) for allegedly selling counterfeit aftermarket chrome LED fog light projectors using Harley-Davidson’s HARLEY-DAVIDSON and DAYMAKER marks.

As an initial matter, the Court explained that the Seventh Circuit recently detailed how likely plaintiff’s success must be in Illinois Republican Party v. Pritzker, 973 F.3d 760, 762 (7th Cir. 2020):

It explained that a “possibility of success is not enough” and “[n]either
Continue Reading Preliminary Injunction Requires a “Strong Showing” of Likelihood of Success

On Thursday, April 28, 2022 from 12:00 p.m. to 1:15 p.m. CT, the IPLAC’s Copyright Committee is hosting a presentation by musicologist Judith Finell on navigating the relationship between technology, music and copyright law.
This virtual event is $15 for members and $45 for non-members.  Please register by clicking here.
Continue Reading Creativity and Copyright: Navigating the Complex Relationship Between Technology, Music & Copyright Law

Northern District of Illinois Moving to NextGen CM/ECF System

On May 2, 2022, the Northern District is slated to update its CM/ECF system to the NextGen CM/ECF. The Northern District’s Clerk, Thomas G. Bruton, sent ECF filers an email outlining the procedure change. Essentially, every filer is now required to have a personal Pacer account – not a single account for a firm, as an example – and you link your existing Northern District CM/ECF credentials to that Pacer account. Districts across the country are all moving to this system which, conveniently, allows for access to each court’s system using
Continue Reading Northern District of Illinois Moving to NextGen CM/ECF System

Got Docs, LLC v. Kingbridge Holdings, Inc., No. 19 C 6155, Slip Op. (N.D. Ill. Oct. 7, 2021) (Guzman, J.).

Judge Guzman granted defendant Kingbridge’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs’ conversion and civil conspiracy claims, and denied plaintiffs’ Fed. R. Civ. P. 12(c) motion for judgment on the pleadings as to certain of defendants’ counterclaims in this trade secret dispute.

With respect to plaintiff’s motion for judgment on the pleadings, the Court held as follows:

  • Defendants’ declaratory judgment counterclaim was not identical to its affirmative defense. The counterclaim and the affirmative defense both claim that plaintiffs

Continue Reading Illinois Law Does Not Allow Conversion Based Upon Intangible Assets

Kolbe v. CZS Holdings LLC d/b/a Pur360, No. 20 C 6886, Slip Op. (N.D. Ill. Oct. 19, 2021) (Kendall, J.).

Judge Kendall granted in part counterclaim plaintiff CZS Holdings’ (“Pur360”) Fed. R. Civ. P. 12(b)(6) motion to partially dismiss counterclaim plaintiff’s (“Kolbe”) breach of contract claim in this trade secret misappropriation case.

As an initial matter, the Court noted that Kolbe’s counterclaim and his response brief were not signed as required by Fed. R. Civ. P. 11. The Court accepted the papers despite that, but warned it would reject future papers that were not properly signed.

Kolbe claimed that his
Continue Reading Oral Contract Claims Dismissed

The Northern District is amending the Local Rule 3.2 notice of affiliates procedure to make it more robust and more meaning, including an ongoing requirement to update. For all civil cases filed on or after January 3, 2022 (the rule is not retroactive), parties must file a Notification of Affiliates as a PDF pursuant to Amended Local Rule 3.2 and disclose their affiliates by adding their names using a new event in Pacer.  Parties are required to manually enter the name of each corporate parent or affiliate (individually) with their first appearance, pleading, petition, motion, response, or other request addressed
Continue Reading Northern District Amends Notice of Affiliates Requirement & Adds Obligation to Update

Caddo Sys., Inc. v. Siemens Aktiengesellschaft (AG), No. 20 C 5927, Slip Op. (N.D. Ill. Oct. 20, 2021) (Cox, Mag. J.).
Magistrate Judge Cox granted plaintiffs’ Fed. R. Civ. P. 37 motion to compel, but limited plaintiffs’ questioning of defendants’ (collectively “Siemens”) Fed. R. Civ. P. 30(b)(6) corporate witness to two hours in this patent case.
The Court required that Siemens produce a corporate witness to testify as to communications between Siemens and third party Microsoft surrounding Microsoft’s license from plaintiffs. Siemens had previously withheld certain communications between Siemens’ and Microsoft’s in-house counsel sending Siemens the relevant license as work
Continue Reading Court Awards Limited Additional Deposition Time, but No Attorney’s Fees

Southall v. Force Partners, LLC, No. 20 C 3223, Slip Op. (N.D. Ill. Aug. 31, 2021) (Chang, J.).
Judge Chang granted in part defendant Force Partners’ Fed. R. Civ. P. 12(b)(6) motion to dismiss in this copyright infringement and Digital Millenium Copyright Act (“DMCA”) claims involving a picture of the inside of a restaurant bar.
Of note, the Court held as follows:

  • Force Partners’ claim that Southall never alleged that the photograph at issue was part of the deposit materials. This was a “classic example” of a defendant demanding too much and a plaintiff who could have easily avoided the

Continue Reading Copyright Notice was Sufficient Copyright Management Information to Survive Motion to Dismiss

Feit Elec. Co. v. CFL Techs., LLC, No. 13 C 9339, Slip Op. (N.D. Ill. Sep. 7, 2021) (Gettleman, J.).
Judge Coleman denied declaratory judgment plaintiff Feit’s motion to certify an interlocutory appeal regarding the Court’s denial of Feit’s and granting of declaratory judgment plaintiff CFL’s cross-motion for summary judgment regarding Feit’s inequitable conduct defense in this patent dispute involving compact fluorescent lamps.
Earlier in the year, the Court rejected Feit’s argument that the patent’s inventor — the infamous Ole K. Nilssen — committed inequitable conduct by:

  • claiming small entity status;
  • not disclosing another litigation to the Patent Office;
  • falsely

Continue Reading Interlocutory Appeal Not Warranted Where Accused Infringer Did Not Prove Intent to Deceive

Ouyeinc, Ltd. v. BAAAAI, et al., No. 20 C 3488, Slip Op. (N.D. Ill. Sep. 13, 2021) (Coleman, J.).
Judge Coleman denied defendants’ Fed. R. Civ. P. 12(b)(1), (2) & (6) motion to dismiss plaintiff Ouyeinc’s Lanham Act trademark infringement, counterfeiting and false designation claims regarding Ouyeinc’s PRO-WAX100 marks for use with wax warming products.
As an initial matter, defendants’ alleged infringement, at least as pled, was done within the United States. So, there were not extraterritoriality issues that would take the claims outside the scope of the Lanham Act.
The Court held that defendants waived their argument that Ouyeinc
Continue Reading Alleged US Sales of Trademarked Goods Subject Foreign Defendants to US Claims

Legat v. Legat Architects, Inc., No. 20 C 6830, Slip Op. (N.D. Ill. Jun. 23, 2021) (Gettleman, J.).

Judge Gettleman granted defendant Legat Architects’ motion to stay plaintiff Legat’s Lanham Act claim pending appeal of Legat’s state law claims for breach of contract and unjust enrichment related to his LEGAT trademark for use with architectural services.

Legat alleges that he sold his architecture business to Legat Architects in 1997 and that Legat Architects have used the name without authorization since 2017. Illinois claim preclusion provides that a final judgment from a court of competent jurisdiction bars later claims between the
Continue Reading State Unjust Enrichment Claims Bar Later Federal Lanham Act Claims