Morningware, Inc. v. Hearthware Home Prods., Inc., No. 09 C 4348, Slip Op. (N.D. Ill. Sep. 4, 2012) (St. Eve, J.).
Judge St. Eve granted in part plaintiff Morningware’s motion for summary judgment as to defendant Hearthware’s Deceptive Trade Practices Act, Lanham Act and related state law counterclaims.
As an initial matter, the parties’ Local Rule 56.1 statements of fact were deficient in numerous ways:
- Many of both parties’ statements were not properly supported with admissible evidence or contained legal argument instead of factual statements. Any such “facts” were not deemed true.
- The parties appeared to copy and past portions of their briefs into their Local Rule 56.1 statements. That practice was not helpful to the Court.
These deficiencies resulted in a “very brief” recitation of uncontested facts.
Lanham Act False Representation & False Advertising
There were questions of fact as to each of Morningware’s alleged false representations of fact, in particular whether certain statements were false or misleading. As such, summary judgment was not proper.
Deceptive Trade Practices Act
Hearthware’s Deceptive Trade Practices Act claim was based upon the same conduct as in its Lanham Act claim. As such, summary judgment was denied for the same reason.
Common Law Misappropriation
Hearthware’s common law misappropriation claim was based upon allegations that Morningware’s infomercial was designed to mimic Hearthware’s infomercial. This claim was preempted by the Copyright Act. The infomercial was copyrightable and the misappropriation claim amounted to a claim of copying, which is actionable pursuant to the Copyright Act. The Court, therefore, granted Morningware summary judgment on this claim.
LimitNone v. Google, Inc., (Cook County Ct. Jun. 24, 2008).
Last week, LimitNone, a Chicago company, sued Google for trade secret misappropriation seek $1B. LimitNone alleged that Google entered a nondisclosure agreement with LimitNone to review LimitNone’s gMove software — software that helps Microsoft Outlook users migrate data to the Google platform. Google allegedly assured LimitNone that it would not offer a competing product, but after receiving LimitNone’s trade secrets and promoting the $19 gMove software, Google began offering a free, competing software package which allegedly used LimitNone’s trade secrets. LimitNone filed a speaking complaint, for example:
With gMove priced at $19 per copy and Google’s prediction that there were potentially 50 million users, Google deprived LimitNone of a $950m opportunity by offering Google’s competitive product for free as a part of its ‘premier’ Google Apps package
This appears to be an interesting and potentially significant case. I will keep my eye on it and update you as opinions and events occur. For more on the filing, check out:
RRK Holding Co. v. Sears, Roebuck & Co., No. 04 C 3944, Slip Op (N.D. Ill. May 27, 2007) (Coar, J.).
Judge Coar denied defendant Sears, Roebuck & Co.’s ("Sears") Fed. R. Civ. P. 50(b) motion for judgment as a matter of law and Fed. R. Civ. P. 59(a) motion for a new trial or a remittitur. And the Court granted plaintiff RRK Holding Co.’s ("RRK") motion for pre-judgment and post-judgment interest. A jury previously returned a verdict finding Sears liable for breach of a nondisclosure agreement and misappropriation of RRK’s trade secret related to its spiral saw – click here for much more on this case in the Blog’s archives. The jury awarded RRK approximately $21M, including $11.6M in actual damages, $1.6M for unjust enrichment and $8M in punitive damages.
First, Sears argued that RRK offered insufficient evidence showing that Sears’ alleged misappropriation caused RRK’s damages. But the Court held that there was sufficient evidence to support the jury’s verdict. The fact that Sears’s price for its spiral saw was lower than RRK’s explained why customers purchased Sears’s saws over RRK’s, but the trade secret causation was shown by the fact that Sears sold the combination tool instead of selling the components separately.
Second, Sears argued that RRK’s damages should be limited to the traditional “head start” period (an estimate of the time it would take for defendant to develop the trade secret on its own). But the Court held that Illinois law limits injunctive relief to a head start period, but not monetary relief.