Judge Jenkins (who became an NDIL judge in February) sanctions against a #ScheduleA plaintiff and its counsel in a #trademark case: https://storage.courtlistener.com/recap/gov.uscourts.ilnd.409127/gov.uscourts.ilnd.409127.122.0.pdf
"[W]hile some attorneys seem to approach Schedule A cases in a 'cut-and-paste' style, their professional obligations apply with equal force as in any other litigation."
(h/t @chicagolawyer.bsky.social)
Back to the decision.
This part is....wow.
Judges do not say things like this lightly:
Plaintiff: “If this is not counterfeiting, nothing is.”
Um, no. This is not counterfeiting. At least not as the Lanham Act defines it.
Okay, so we've seen #ScheduleA plaintiffs argue that a defendant is lying about its own location before. See, e.g., the Austin, Texas arguments in the #BirdRock case.
But wow. This is....a choice:
I won't go into all the details here, but the court's discussion of the Rule 11 safe harbor provision is really interesting.
Tl;dr: It's okay if the defendant didn't technically comply here.
I'll note that it's my sense that most #ScheduleA plaintiffs in the NDIL actually aren't from (and don't purport to be) from Chicago.
And putting the technical venue questions aside, I do think it's worth having this conversation:
Why should the federal court in Chicago be the IP arbiter for the world?
Yes, yes, yes, yes, yes!!
"If a plaintiff seeks extraordinary relief with respect to many defendants, it should expect to put in a corresponding amount of effort."
"Jones cannot avoid sanctions through ignorance of this aspect of trademark law; lawyers must research the law before advancing a legal theory in court."
Yes!
Also: This should be a warning to all the lawyers filing design patent cases based on assumptions about what the law is.
I am delighted to see that this decision ended up on Westlaw, 2023 WL 5748350, and Lexis, 2023 U.S. Dist. LEXIS 157275.
This case needs to be found, read, and cited broadly.
@design_law /1/ The sanctions decision is good as far as it goes, but have you looked at DN 77?
extended the TRO as to the other Defendants so Expeditee could provide additional evidence about which Defendants used the FLAGWIX mark. [Dkt. 55.] On February 15, 2022, the Court later entered a preliminary injunction as to those Defendants. [Dkt. 77.]
@design_law /2/
Given the many lies in P's papers, why was the judge confident that assertions as to the other D's were accurate, thus supporting a PI against them?
And given that P is not, in fact,based in Chicago, why did the judge presume that there was personal jurisdiction in Illinois? The fact that the other D's could not afford counsel (or maybe did not really get notice in time to appear) does not lessen the judge's obligation to protect absent parties
/3/ The judge had already extended the TRO once. Rule 65(b)(2) allows ONE fourteen-day extension. Why did the judge extend it further?
@design_law Lol, reminds me of the time in a patent case that a magistrate told me that my client should have spent a year and $500k to reverse engineer the accused graphics chip, rather than pursue an infringement case based on inferences from our technical expert.
Point is that any competent IP counsel knows about the duty to perform an adequate pre-filing investigation before filing a federal lawsuit.
Sarah Fackrell
Kathleen Lu
PaulAlanLevy
your auntifa liza 🇵🇷 🦛 🦦
Hudson
William Pietri
John Quentin Heywood
HenryPogorzelski