Judge Darrah granted pro se defendant summary judgment as to plaintiff’s copyright claims and dismissed plaintiff’s remaining state law claims for lack of jurisdiction.  As an initial matter, the Court treated those portions of defendant’s response that disputed facts in plaintiff’s Local Rule 56.1 statement of facts as a Local Rule 56.1 response, but treated other, uncontested facts as admitted.  Plaintiff failed to offer any proof of her copyright registration or her application for registration.  But the Court took judicial notice of plaintiff’s registered copyright that the Court found on the Copyright Office website.

Having found that plaintiff had a registered copyright, the Court turned to defendant’s allegedly infringing use.  Plaintiff, however, offered no evidence of defendant’s unauthorized use.  Plaintiff hired defendant to edit her manuscript and defendant did so.  Because defendant’s use was related to editing the manuscript, there was no infringing use.  And as the Court lacked diversity jurisdiction over the state law claims, the Court dismissed them without prejudice to refile them in state court.

 Judge Dow granted plaintiff ImageCube’s Fed. R. Civ. P. 41(a)(2) motion to dismiss all claims without prejudice in this nearly eight year-old patent litigation involving alloyed and non-alloyed powders.  The Court previously granted summary judgment of non-infringement regarding the alloyed powders and certified its decision for immediate appeal.  After the Federal Circuit affirmed the decision, the parties attempted to settle the case and came close, but were not quite able to resolve their disputes.  As a result of that, ImageCube sought dismissal of all claims without prejudice so that it could reassert its non-alloyed powder claims at a later date, presumably if defendant MTS’s sales became more significant.  MTS opposed dismissal without prejudice, instead asking that all claims be dismissed with prejudice except for MTS’s claim for attorney’s fees pursuant to 35 U.S.C. Section 285. 

 The Court noted that it was in a “less advantageous position” than the parties to predict the future of their claims.  As a result, the Court dismissed all of the claims without prejudice.  That way the parties would be free to assert their claims should conditions warrant it, but the Court also noted that issue and claim preclusion would likely bar relitigation of previously decided claims.

Judge Guzman granted defendant’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s Lanham Act false designation of origin and false advertising claims, as well as plaintiff’s Illinois Deceptive Trade Practices Act claims.  Plaintiff alleged that defendant falsely claimed on his website that he designed numerous prominent buildings, including the Shanghai Tower and the Houston Ballet Center.  Citing Datastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), the Court held that “origin” as used in the Lanham Act referred to the producer of goods, not the author of a work.  Because plaintiff’s claims were based upon authorship, they were dismissed.

Judge Kendall decided the parties’ cross-motions for summary judgment in plaintiff Trading Technologies’ (“TT”) patent infringement case involving futures trading software.  The Court agreed to decide isolated issues, including claim construction, ahead of schedule to expedite overall case resolution.  The Court made the following key rulings:

• The TT claims were not invalid for lack of written description based upon the use of a default quantity.  The patent referenced a default quantity, and a user inputting that quantity was also described.   
• The Court granted defendant’s motion finding that any claims of TT’s ‘411 patent that sought to cover automatically varying price axes would not be supported by the specifications and would be invalid.
• The prosecution history, estoppel from an earlier patent as to the “static price axing” flowed to all of the progeny of that patent.

Magistrate Judge Cole held that a Verizon Power Point presentation related to an RFP for some of the accused products was admissible in this patent litigation involving couplers. Initially, the document was authentic pursuant to FRE 901 at least because:

• A Verizon declaration established its authenticity; and
• Defendants’ counsel failed to challenge its authenticity for three years after its first use in plaintiff’s damages expert report.

Having held it was sufficiently authenticated, the Court considered whether the presentation was inadmissible hearsay.  The Court held that Verizon’s statement was an FRE 803(b) verbal act, but because plaintiff’s certification of the Power Point was too late, not leaving defendant time to test the veracity of the Power Point it was inadmissible.  But the Court did allow plaintiff’s expert to use the documents because defendants did not timely challenge plaintiff’s expert’s reliance upon the Power Point.  At the eve of trial was too late.

Judge Leinenweber granted the Royal defendants’ motion to transfer the claims against them to the Northern District of Ohio, and consolidated the remaining claims against defendant ACCO, in this patent dispute involving various aspects of paper shredders.  There were five pending cases:

• Royal filed two declaratory judgment cases against plaintiff Fellowes in the Northern District of Ohio.  Both were the first-filed suits on the respective patents-in-suit.
• Fellowes responded to those suits by filing patent infringement suits against Royal.  ACCO was also a party to the suits, as well as another Fellowes brought against ACCO on additional patents.  This case is also interesting as one of the last cases where plaintiffs may file against unrelated parties in a single suit.
• Fellowes also filed an additional suit against Royal in this District regarding anti-jitter technology in paper sensors.

The Court transferred all claims against Royal for the following reasons:

• Royal’s first-to-file position was given some weight.
• Royal, as a competitor of ACCO selling unrelated products, was misjoined in the second Fellowes suit.  And discovery efficiencies from a combined suit did not outweigh the joinder rule.
• The location of witnesses and documents weighed in favor of transfer.
• While maximum efficiency would result from consolidating all five cases, it would have come at a cost to Royal.

Left with just Fellowes’ claims against ACCO, the Court consolidated the ACCO cases because they involved the same parties and three related patents.  Furthermore, neither party opposed consolidation.

Judge Darrah denied plaintiff’s application to proceed in forma pauperis and dismissed plaintiff’s complaint for failure to state a claim. Courts are required to dismiss a complaint when plaintiff seeks in forma pauperis status along with a complaint that fails to state a claim. Plaintiff’s complaint appears to sound in patent, trademarks and copyright. But it was “devoid of any substantive allegations” and, therefore, had to be dismissed.

Judge Dow denied plaintiff’s motion for a preliminary injunction to prevent further alleged infringement of plaintiff’s photographs and denied defendant John Wiley & Sons’ motion to dismiss plaintiff’s fraud claim. There is not an automatic rule that ongoing copyright infringement warrants an injunction. Instead, plaintiff must meet its burden as to each factor.

Plaintiff showed a likelihood of success on the merits that: 1) he has copyrighted works; 2) John Wiley & Sons only had a limited right to use them; and 3) some were used without any license. But plaintiff could not show irreparable harm. Plaintiff was in the business of licensing photographs and any harm could be remedied with money damages. The Court did, however, note that plaintiff would be in a strong position to recover his attorneys’ fees should he succeed on the merits because of the ongoing nature of the alleged violation. But without irreparable harm, there could be no preliminary injunction.

Motion to Dismiss

Plaintiff’s fraud claim was premised upon request letters for plaintiff’s photographs and later uses of those photographs. The required intent to deceive was pled only on information and belief. Plaintiff’s contentions were “barely” sufficient, but were sufficient. It was not clear whether the alleged acts were just broken promises or intentional, fraudulent acts.

It will be no surprise to anyone who has tried cases or spent time on a jury what Judge St. Eve found – jurors given the instruction largely complied with it.  Jurors largely try to do what is asked of them and they usually do it well.

The only issue I see with Judge St. Eve’s findings is that reproducing them depends upon crafting a good, understandable jury instruction.  As with any jury instruction, it should be as simple and understandable as possible, while remaining sufficiently detailed.  One critical issue is to sufficiently identify the social media outlets without unintentionally excluding any outlets.  But the pattern  instructions St. Eve uses balances all of that well:

[Before Trial:] . . . . Until you retire to deliberate, you may not discuss this case with anyone, even your fellow jurors. After you retire to deliberate, you may begin discussing the case with your fellow jurors, but you cannot discuss the case with anyone else until you have returned a verdict and the case is at an end. I hope that for all of you this case is interesting and noteworthy. I know that many of you use cell phones, Blackberries, the internet and other tools of technology. You also must not talk to anyone about this case or use these tools to communicate electronically with anyone about the case. This includes your family and friends. You may not communicate with anyone about the case on your cell phone, through e-mail, Blackberry, iPhone, text messaging, or on Twitter, through any blog or website, through any internet chat room, or by way of any other social networking websites, including Facebook, My Space, Linkedin, and YouTube.

[At the Close of the Case:] During your deliberations, you must not communicate with or provide any information to anyone by any means about this case. You may not use any electronic device or media, such as a telephone, cell phone, smart phone, iPhone,  Blackberry or computer; the internet, any internet service, or any text or instant messaging service; or any internet chat room, blog, or website such as Facebook, My Space, Linkedin, YouTube or Twitter, to communicate to anyone any information about this case or to conduct any research about this case until I accept your verdict.

Judge Dow affirmed Magistrate Judge Brown’s order entering a protective order in this copyright case involving stock photographs used in textbooks. There were three key holdings:

1. It was proper to allow defendant’s print run quantities and distribution to be treated as confidential – without ruling on the confidentiality of any particular document.
2. It was proper to allow party to initially file confidential documents under seal, along with redacted public copies, to allow the Court to probe the confidentiality.
3. Excluding the use of confidential information in future, related matters was also proper. The parties can always seek to modify the provision should circumstances warrant it.