Justia Civil Procedure Opinion Summaries

Ariel Investments, based in Illinois and doing business nationally, and Ariel Capital, based in Florida, both manage money for clients. Investments has used its name since 1983; Capital only since 2014. In a suit under the Lanham Act, 15 U.S.C. 1125(a), the district court found that Capital was infringing Investments’ trademarks. The Seventh Circuit reversed, finding that the court lacked jurisdiction. Capital does not have a client, property, or staff in Illinois, does not advertise in Illinois, and never has had an agent even visit Illinois. The Lanham Act does not authorize nationwide service of process, so personal jurisdiction depends on state law. A defendant’s knowledge and intent concerning a resident of a state do not justify compelling that person to defend himself there. A state may assert specific jurisdiction, based on a particular transaction, only if the defendant has “a substantial connection with the forum State” that is of the defendant’s creation. ”No matter how one might characterize the relation between Ariel Investments and Ariel Capital, it is easy to describe the relation between Illinois and Ariel Capital: none.” If infringement happened, it occurred in Florida, or some state where people who wanted to do business with Investments ended up dealing with Capital because of the similar names. View "Ariel Investments, LLC v. Ariel Capital Advisors LLC" on Justia Law

Tawas, Michigan hosts an annual festival called “Perchville.” Its Chamber of Commerce obtained federal trademark registration for the term “Perchville,” in 2003. Trading Post allegedly was selling merchandise depicting the term “Perchville.” The Chamber filed suit against Agnello, a Trading Post employee, and obtained an ex parte injunctive order prohibiting sales of t-shirts with the mark, which stated: “this order shall be binding upon the parties to this action, their officers, agents, servants, employees, and attorneys and on those persons in active concert or participation with them who receive actual notice of this order by personal service [or] otherwise.” Agnello appeared at a hearing without an attorney, indicated that he had spoken to Trading Post's partial owner about the lawsuit, but repeatedly stated that he was confused. Agnello consented to a permanent injunction. The judge stated that the order would be binding on anyone acting in concert with Agnello. Trading Post filed suit, challenging the Chamber’s trademark of “Perchville.” The district court found the challenge barred by res judicata because a final determination on the merits occurred in the state court. The Sixth Circuit reversed. There may be circumstances when an employee’s interests are so aligned with his employer as to be in privity for purposes of res judicata, that was not true here. Agnello was an hourly employee given a few days’ notice of an injunction. View "AuSable River Trading Post, LLC v. Dovetail Solutions, Inc." on Justia Law

After the Hatch Chile Company sought to trademark the term “Hatch” for its exclusive use, a chile producing rival, El Encanto, objected. El Encanto argued before the Trademark Trial and Appeal Board ("TTAB," a division of the Patent and Trademark Office (PTO)), El Encanto argued that “Hatch” can’t be trademarked both because it refers to a place and because Hatch Chile used the term in a misleading manner. To prove its case of deception, El Encanto sought to show that Hatch Chile’s products regularly include chiles that weren't even from the Hatch Valley. El Encanto sought documents from Hatch Chile's packers and suppliers over where the Hatch peppers came from. Hatch Chile responded with a motion for a protective order; the packer, Mizkan Americas, Inc., moved to quash El Encanto's subpoena. Hatch Chile and Mizkan argued that before documents could be subpoenaed, a deposition had to be held. Because El Encanto's subpoena failed to seek a deposition, Hatch Chile argued the order had to be quashed. El Encanto replied that it didn’t want to waste everyone’s time with a deposition: documents would suffice to answer its pretty simple question. The district court agreed and granted Mizkan's motion to quash. El Encanto appealed. The Tenth Circuit reversed: "consistent with any of the various statutory interpretations and regulations cited to us, a party to a TTAB proceeding can obtain nonparty documents without wasting everyone’s time and money with a deposition no one really wants." View "El Encanto, Inc. v. Hatch Chile Company, Inc." on Justia Law

Halo, a Hong Kong company that designs and sells high-end modern furniture, owns two U.S. design patents, 13 U.S. copyrights, and one U.S. common law trademark, all relating to its furniture designs. Halo’s common law trademark, ODEON, is used in association with at least four of its designs. Halo sells its furniture in the U.S., including through its own retail stores. Comptoir, a Canadian corporation, also designs and markets high-end furniture that is manufactured in China, Vietnam, and India. Comptoir’s furniture is imported and sold to U.S. consumers directly at furniture shows and through distributors, including in Illinois. Halo sued, alleging infringement and violation of Illinois consumer fraud and deceptive business practices statutes. The district court dismissed on forum non conveniens grounds, finding that the balance of interests favored Canada and that Canada, where the defendants reside, was an adequate forum. The Federal Circuit reversed. The policies underlying U.S. copyright, patent, and trademark laws would be defeated if a domestic forum to adjudicate the rights they convey was denied without a sufficient showing of the adequacy of the alternative foreign jurisdiction; the Federal Court of Canada would not provide any “potential avenue for redress for the subject matter” of Halo’s dispute. View "Halo Creative & Design, Ltd. v. Comptoir des Indes Inc." on Justia Law

A Corp., a Massachusetts plumbing corporation and franchisor, brought a trademark infringement action against All American Plumbing, Inc., an Arizona corporation with its principal place of business in Arizona, alleging that All American was improperly using A Corp.’s “Rooter Man” mark, or one confusingly similar, to advertise its plumbing business on its website. The district court dismissed the complaint, concluding that A Corp. failed to meet its burden to establish either general or specific jurisdiction. A Corp. appealed, challenging the district court’s conclusion as to the exercise of specific jurisdiction. The First Circuit affirmed, holding that A Corp.’s argument for specific jurisdiction failed. View "A Corp. v. All American Plumbing, Inc." on Justia Law

Hampton's contracts with Window World, allowed Hampton to use WW trademarks. WW alerted Hampton that their dealings were subject to the Illinois Franchise Disclosure Act, and that Hampton had 35 days to elect between rescinding the contracts and signing a franchise agreement. Hampton did neither, but filed suit, alleging violation of the Act and fraud. WW sued under the Lanham Act (Suit 2). Hampton returned a waiver of service, but did not hire a lawyer for Suit 2. Hampton dismissed Suit 1, without prejudice, but did not respond to Suit 2. WW successfully moved for default, then for default judgment. All motions and notices were in the electronic filing system, but Hampton was not using that system and did not respond. The court entered a default judgment for $100,000 in damages and costs, and an injunction. Hampton continued calling his business Window World, but did not make payments or pay the judgment. Hampton closed the business, then filed Suit 3, presenting the same claims as Suit 1, and sought to reopen Suit 2 and set aside the judgment. The judge concluded that Hampton’s failure to follow the electronic filings, plus his professed belief that Suits 1 and 2 had been dismissed together, amounted to excusable neglect, but conditioned reopening of Suit 2 on payment of $33,000. Hampton did not pay. The court reinstated the default judgment. Suit 3 was dismissed; Hampton’s claims in Suit 3 were compulsory counterclaims in Suit 2. The Seventh Circuit affirmed. If the suits are separate, claim preclusion blocks Hampton’s current claims; if they are consolidated, law of the case leads to the same outcome. View "Window World of Chicagoland v. Window World, Inc." on Justia Law

This case stemmed from rival claims to the “Stolichnaya” trademarks. FTE and Cristall alleged that defendants unlawfully misappropriated and commercially exploited the Stolichnaya trademarks related to the sale of vodka and other spirits in the United States. Control over the marks in the United States is currently exercised by defendants as successors in interest to a Soviet state enterprise. In a prior suit, FTE brought claims against SPI under section 32(1) of the Lanham Act, 15 U.S.C. 1114, and the court dismissed the claims on the grounds that the Russian Federation itself retained too great an interest in the marks for FTE to qualify as an "assign" with standing to sue. FTE's non-section 32(1) claims were either dismissed or dropped during the course of that litigation. At issue principally in this appeal is whether FTE, an agency of the Russian Federation, has been endowed by that government with rights and powers that give it standing to pursue claims under section 32(1) of the Lanham Act. The court concluded that the district court erred in determining whether FTE’s asserted basis for standing was valid under Russian law. However, the court concluded that the district court correctly dismissed all of FTE's other claims as barred by both res judicata and laches. Accordingly, the court affirmed in part, vacated in part, and remanded for further proceedings. View "Fed. Treasury Enter. Sojuzplodoimport v. Spirits Int’l B.V." on Justia Law

B&B, manufacturer and seller of "Sealtight," sued Hargis, manufacturer of "Sealtite," claiming trademark infringement and unfair competition. Hargis counterclaimed for false advertising and false designation of origin. The jury rejected B&B's claims but found in favor of Hargis on its counterclaims. The Eighth Circuit concluded that the district court properly refused to apply collateral estoppel to the Trademark Trial and Appeal Board's (TTAB) decision concerning likelihood of confusion; rejected B&B's argument that the TTAB's factual findings from a trademark registration case were entitled to deference; and concluded that the district court did not abuse its discretion in excluding the TTAB's decision from the evidence presented to the jury. On remand from the Supreme Court the Eighth Circuit vacated and remanded, holding that the ordinary elements of issue preclusion were met, and the usages of the mark adjudicated before TTAB were materially the same as the usages before the district court. On remand, the district court should give preclusive effect to the decision of the TTAB on likelihood of confusion. View "B & B Hardware, Inc. v. Hargis Indus., Inc." on Justia Law

In April 2011, while its patent application was pending with the USPTO, U.S. Water Services, which “sell[s] water treatment and purification equipment, materials, and services,” especially “to ethanol process technologies,” sued its competitor, ChemTreat, for misappropriation of trade secrets. In October 2011, the USPTO issued the 244 patent covering a method to reduce the formation of insoluble scale deposits during the production of ethanol using enzyme, phytase, in its “pHytOUT® system.”Three days before U.S. Water and ChemTreat settled the misappropriation claim, ChemTreat filed counterclaims requesting declaratory judgments of noninfringement and invalidity of the 244 patent. The suit was filed before the Leahy-Smith America Invents Act, 125 Stat. 284, took effect, so the counterclaims independently did not establish appellate jurisdiction for the Federal Circuit. The district court granted ChemTreat summary judgment as to the noninfringement counterclaim and dismissed the invalidity counterclaim. The Eighth Circuit affirmed. Evaluating the “totality of [the] circumstances,” the district court did not err in finding the misappropriation action, together with U.S. Water’s statements to its customers and supplier, produced an objective, “reasonable apprehension of suit,” and did not err in concluding declaratory judgment subject matter jurisdiction existed. The decision did not constitute an advisory opinion. View "U.S. Water Servs., Inc. v. ChemTreat, Inc." on Justia Law

Slep-Tone Entertainment sued Karaoke Kandy and Polidori under federal and state law for unlawfully selling hard drives bearing Slep-Tone’s registered trademarks without authorization. After trial, the jury answered a single interrogatory finding that the defendants had not infringed Slep-Tone’s trademarks. The district court entered judgment in the defendants’ favor. The Sixth Circuit stayed a separate appeal and remanded to the district court because Slep-Tone’s timely post-judgment motion for findings of fact and conclusions of law under Federal Rule of Civil Procedure 52 was pending before the district court. In a separate appeal, the Sixth Circuit remanded for further proceedings regarding defendants’ a motion for attorney fees under 15 U.S.C. 1117(a) based on the judgment in their favor. The motion was not untimely; the FRCP 52 motion remained pending. The court must determine whether it is necessary to reassess if this case qualifies as “extraordinary.” View "Slep-Tone Entm't Corp. v. Karaoke Kandy Store, Inc." on Justia Law