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Plaintiff Gets to Present Damages Calculation Despite Missing Deadline / Unfair Competition Claims Dismissed
Nanochem Solutions v. Global Green Products, Case No. 10-5686, Slip Op. (N.D. Ill. Sept. 10, 2013)(Hart)
At issue in this opinion are (1) a motion in limine, and (2) a motion for summary judgment, both filed by defendant Global Green Products.
In their motion-in-limine, Global Green sought to block Nanochem from introducing any damages calculation at trial because it had originally claimed damages based on a reasonable royalty, but shifted to lost profits at the very end of the case. In fact, it had never unveiled its damages calculation (as required by Rule 26(a)(1)) until it responded to Global Green’s motion-in-limine. Nonetheless, as the date for the final pre-trial order has not yet been set, the Court determined that Global Green was not prejudiced, and therefore, Nanochem will be allowed to present its damages calculation.
Also in their motion-in-limine, Global Green claimed that the damages calculation presented by Nanochem is not a legally proper way to calculate lost profits. The Court essentially ruled that the proper venue to raise this issue is a rule 50 motion for JMOL. In addition, Nanochem will be able to revise its damages calculation (if needed) in the final pretrial order, in jury instructions, and in trial briefs.
Global Green had better luck with its motion for summary judgment. In particular, Global Green challenged count VI (unfair competition based on the Lanham Act) and VII (unfair competition based on Illinois law), and was successful in having both dismissed. The mark asserted by Nanochem (A-5D) was determined to be descriptive; i.e., not distinctive, and without secondary meaning (otherwise referred to as acquired distinctiveness). Under longstanding precedent – no distinctive mark (acquired or inherent), no cause of action for unfair competition. Accordingly, the Court granted summary judgment on both claims.
Timelines v. Facebook, 11-CV-6867, Slip Op. (N.D. Ill. Apr. 1, 2013)(Darrah)
Back in 2011, Timelines sued Facebook for trademark infringement based on Facebook’s new timeline feature. Facebook moved for summary judgment, and Judge Darrah has now denied Facebook’s motion – this case is set for trial on April 22, 2013.
In particular, Facebook attempted to establish that Timelines mark was (1) generic, (2) merely descriptive without any showing of secondary meaning, (3) fair use, and (4) non-use of “timelines” as a trademark. The Court rejected all of these defenses. Highlights are:
- The Court indicated that the Timelines’ registered mark is entitled to a presumption of validity.
- Facebook’s survey, which showed that 68% of respondents felt that “Timelines” was generic, was insufficient to establish genericness at summary judgment.
- Timelines has more than a thousand users, which can indicate a sizable group for which the mark would indicate a source.
- Timelines also contended that its mark was merely suggestive, and the Court found this to be an issue of fact.
- The Court also determined that Facebook did not establish, as a matter of law, that it not use the term “Timelines” as a trademark, and therefore, Facebook’s non-use and fair use defenses failed at the summary judgment stage.
The trial should make for an interesting show.
Ashland, Inc., which owns the well known brand Valvoline, has sued Specialty Lube, Inc., a Centralia oil change shop, as well as its owner for trademark infringement, unfair competition, unjust enrichment, trademark dilution, and deceptive business practices. Apparently, Ashland sent investigators to Specialty Lube twice, and found that the oil which was placed in their cars, which was supposed to Valvoline was a counterfeit instead.
The Case Number is 13-CV-95 (S.D. Ill).
Recording Artist Who Sold 1.7 Million Singles Must Submit Affidavit to Support In Forma Pauperis Filing
Chriswell v. Big Score Entertainment, 11-CV-861, Slip Op. (N.D. Ill. Jan. 28, 2013)(Chang)
Chriswell uses the stage name Eryka Kane, and apparently has been somewhat successful as she has sold 1.7 million singles. Big Score Entertainment has begun to promote an artist under the name Arika Kane, and filed a trademark under that name as well. Chriswell filed an Opposition before the TTAB and a trademark case in the Northern District. When she filed the trademark case, she apparently lacked the $350 filing fee, and, in lieu of paying the filing fee, filed an in forma pauperis petition. The Defendants moved to dismiss her action partially based on an allegedly fraudulent petition – in particular, how could she have no money if she has actually sold as many records as she claims?
Judge Chang refused the motion to dismiss. However, he did require Chriswell to file a sworn affidavit summarizing how she is paying her attorney prosecuting her opposition before the TTAB.
American Academy of Implant Dentristry v. American Dental Implant Association, 12-CV-2935, Slip Op. (N.D. Ill. Jan. 22, 2013)(Zagel)
Judge Zagel recited the 7th Circuit’s traditional test for determining whether a motion to transfer should be granted, in deciding to grant a motion to transfer to the Southern District of Florida. In particular, Judge Zagel considered (1) the plaintiff’s choice of forum, (2) the situs of material events; (3) the relative ease of access to sources of proof; (4) the convenience of witnesses; and (5) the convenience of the parties. Per the Court, “[t]he plaintiff’s choice of forum generally is given substantial weight when it is the district in which the plaintiff resides.”
In this case, the Defendant’s contacts with Illinois were tenuous at best, and the Court observed that personal jurisdiction over the Defendant would “by no means be assured.” Based on this, the Court determined the factors merited transfer.
Design Ideas v. The Yankee Candle Company, 10-CV-3217, Slip. Op. (C.D. Ill. Jan. 11, 2013)(McCuskey)
Design Ideas had originally sued the Yankee Candle Company for copyright infringement over glass sculptures sold by both parties. The Copyright Office had previously determined that plaintiff’s sculptures were not entitled to copyright protection. To make matters worse, plaintiff had alleged that it held a valid copyright registration.
The Court determined that, given that defendant had prevailed in the underlying case, it was entitled to its attorneys fees. In addition, given the misrepresentation by both plaintiff and plaintiff’s counsel regarding the registration, at least some of these fees were to come from plaintiff’s attorneys. Accordingly, plaintiff’s counsel were ordered to pay $10,000 of the $118,305 fee award, and were held jointly liable with plaintiff for another $10,000.
True Religion Apparel, which makes and sells extraordinarily expensive blue jeans, has sued a large number of web sites that it accuses of operating a large counterfeiting ring. True Religion alleges that the “Defendants attempt to avoid liability by going to great lengths to conceal both their identities and the full scope of their criminal counterfeiting operation.”
More to come. The case number is N.D. Ill. 13-CV-580.