Associated Mills, Inc. v. Regina Co., Inc., 87 C 10319.
| Decision Date | 23 December 1987 |
| Docket Number | No. 87 C 10319.,87 C 10319. |
| Parties | ASSOCIATED MILLS, INC., Plaintiff, v. The REGINA CO., INC. and Appliance Company of America, Defendant and Counterclaimants. |
| Court | U.S. District Court — Northern District of Illinois |
Charles A. Laff, Martin L. Stern, Joseph F. Schmidt, Laff, Whitesel, Conte & Saret, Bruce M. Friedman, Michael M. Large, Laser, Schostok, Kolman & Frank, Chicago, Ill., for plaintiff Associated Mills, Inc.
Robert E. Wagner, Linda A. Kuczma, Wallenstein, Wagner, Hattis & Strampel, Ltd., Chicago, Ill., Walter G. Marple, Jr., Rosemary H. Yeoh, Anderson, Russell, Kill & Glick, P.C., New York City, for defendant and counterclaimants — The Regina Co., Inc. and Appliance Co. of America.
Plaintiff, Associated Mills, Inc. ("AMI"), filed an emergency motion for a temporary restraining order barring the defendant and counterclaimants, The Regina Co., Inc. and Appliance Corporation of America (collectively, "Regina") from prosecuting an action subsequently filed by Regina in the United States District Court for the District of New Jersey. For the reasons set forth below, AMI's motion for a temporary restraining order is denied and this action is dismissed.
AMI is an Illinois corporation which manufactures, distributes, and sells housewares, including whirlpool spas. Regina is a New Jersey corporation which also manufactures, sells, and distributes whirlpool appliances. In promoting its "HomeSpa Collection," Regina uses certain packaging and advertisements which are protected by a copyright registered with the United States Copyright Office as No. TX 1 982 352.
On December 1, 1987, counsel for Regina sent a letter to the president of AMI expressing the belief that AMI's packaging and advertisements for its "POLLENEX Whirlpool Hot Spa" infringed Regina's copyright for its "HomeSpa Collection." In the letter, Regina's counsel also demanded that AMI cease and desist distribution of the infringing packaging and advertisements and that AMI destroy all infringing packaging and advertisements, as well as all means of reproducing the infringing materials.
In response to Regina's letter, on December 2, 1987, counsel for AMI telephoned counsel for Regina. According to Regina, during that telephone conversation, the parties reached an accord whereby Regina agreed to give AMI a couple of weeks to evaluate its position in exchange for AMI's promise that it would not file a preemptive declaratory judgment action against Regina in Illinois. AMI disputes that the parties reached such an accord.
Nevertheless, on December 3, 1987, AMI filed the instant complaint against Regina seeking, among other relief, a declaratory judgment that AMI's packaging and advertisements do not infringe Regina's copyright. In response, on December 7, 1987, Regina filed an answer, a counterclaim, and a motion for a preliminary injunction. The counterclaim contained multiple counts, including a count for copyright infringement. The motion sought to enjoin AMI from infringement of Regina's copyright pending a trial on the merits.
Regina's motion for a preliminary injunction was scheduled for hearing on December 9, 1987. Because a criminal trial was in progress, the Court continued the motion generally, ordered the parties to resume settlement negotiations, and set the matter for a status hearing on January 29, 1988. The Court also granted Regina leave to file a motion to transfer the action to New Jersey in the interim.
Six days later, on December 15, 1987, Regina filed an action against AMI in the United States District Court for the District of New Jersey ("the New Jersey action"). In the complaint filed in New Jersey, Regina asserted claims against AMI identical to those contained in the counterclaim filed by Regina in Illinois.
After receiving notice of the New Jersey action, AMI filed the instant emergency motion for a temporary restraining order against Regina. In its motion, AMI seeks to restrain Regina from prosecuting the New Jersey action. Regina claims that AMI's motion should be denied and the Illinois action should be dismissed.
AMI filed this declaratory judgment action in anticipation of an infringement action by Regina. The issue before this Court is whether the infringement action, filed by Regina twelve days after AMI filed the instant declaratory judgment action in Illinois, should proceed. This Court believes that it should.
The Seventh Circuit recently addressed this issue under circumstances virtually identical to those present in this case in Tempco Elec. Heater Corp. v. Omega Engineering, Inc., 819 F.2d 746 (7th Cir.1987). In Tempco, the plaintiff filed a declaratory judgment action in Illinois the same day it received a letter from the defendant demanding that the plaintiff cease the alleged...
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