Milo Enters. v. Bird-X, Inc.
| Decision Date | 24 March 2022 |
| Docket Number | 18 C 6315 |
| Court | U.S. District Court — Northern District of Illinois |
| Parties | MILO ENTERPRISES, INC, Plaintiff, v. BIRD-X, INC. Defendant. |
Plaintiff Milo Enterprises, Inc. (“Milo”) and Defendant Bird-X, Inc. (“Bird-X”) are both corporations that produce bird repellant products, including balloons intended to scare birds away. Milo markets its own bird repellant balloons under the name VisualScare and describes them as “Scary Eye Balloons.” Bird-X has trademarked its line of bird repellant balloons under the name “SCARE-EYE.”
Unable to resolve their differences, Milo seeks a declaratory judgment that it is not infringing upon Bird-X's trademark, copyright, and trade dress and that Bird-X's “SCARE-EYE” trademark is unenforceable. Milo also filed claims for tortious interference with business relations; unfair competition under the Lanham Act, 15 U.S.C § 1125; violation of 17 U.S.C. § 512(f); and defamation. Bird-X has responded with counterclaims, alleging false designation of origin under the Lanham Act, 15 U.S.C § 1125(a), as well as federal and common law trademark infringement. Each side has moved for summary judgment on certain claims. For the following reasons, Milo's motion is denied, and Bird-X's motion is granted in part and denied in part.
Before considering the facts underlying these motions, the Court must consider which facts have been properly presented for the purpose of summary judgment. Motions for summary judgment in the Northern District of Illinois are governed by Local Rule 56.1. Delapaz v. Richardson, 634 F.3d 895, 899 (7th Cir. 2011) (citation omitted) (quoting Waldridge v. Am. Hoechst Corp., 24 F.3d 918, 924 (7th Cir. 1994)). The Seventh Circuit has “routinely held that a district court may strictly enforce compliance with its local rules regarding summary judgment motions.” Yancick v. Hanna Steel Corp., 653 F.3d 532, 537 (7th Cir. 2011) (quotation omitted). In this case, because the parties have filed cross-motions, each must comply with Local Rule 56.1(a), which governs filings by the moving party, and 56.1(b), which governs filings by the opposing party.
“To be considered on summary judgment, evidence must be admissible at trial, though ‘the form produced at summary judgment need not be admissible.'” Cairel v. Alderden, 821 F.3d 823, 830 (7th Cir. 2016) (citations omitted). For example, the Court cannot consider inadmissible hearsay. Id. What is more, a party filing a motion for summary judgment must include a “statement of material facts as to which the moving party contends there is no genuine issue and that entitle the moving party to a judgment as a matter of law, ” where each paragraph contains “specific references to the affidavits, parts of the record, and other supporting materials relied upon to support the facts set forth in that paragraph.” LR 56.1(a)(3)(B). Failure to properly submit such a statement “constitutes grounds for denial of the motion.” Id.
Here, Milo's Statement of Material Fact does not comply with Local Rule 56.1(a). Indeed, Milo cites only two documents throughout its Statement of Fact: A Declaration by Benjamin Hung (Milo's own attorney), and a Declaration by Michael Liu, Milo's Chief Executive Officer (CEO). See generally Pl.'s Statement of Material Fact (“PSOF”), ECF No. 120; Pl.'s Mot. Partial Summ. J., Ex 2, Decl. of Benjamin Hung (“Hung Decl.”), ECF No. 119-2; Pl.'s Mot. Partial Summ. J., Ex 2, Decl. of Michael Liu (“Liu Decl.”), ECF No. 119-3. But as Bird-X points out, these affidavits are replete with hearsay, improper legal conclusions about the use of copyrighted material and trademarks, and speculation beyond the witnesses' personal knowledge-meaning they would not be admissible at trial. See Def.'s LR 56.1 Statement Material Fact and Resp. PSOF (“DSOF”) at 14-21, ECF No. 126. And Milo, in its own reply brief and response to Bird-Xs' statement of facts, failed to respond to that argument. See generally Pl.'s Resp. DSOF, ECF No. 132. Such “[f]ailure to respond to an argument . . . results in waiver.”[1] Bonte v. U.S. Bank, N.A., 624 F.3d 461, 466 (7th Cir. 2010). Accordingly, all paragraphs relying on affidavits from Hung or Liu are stricken as noncompliant. See, e.g., Bielawski v. Midland Funding LLC, No. 18 C 2513, 2019 WL 4278042, at *3 (N.D. Ill. Sept. 10, 2019) (Lee, J.) (). The remaining paragraphs in Milo's Statement of Material Fact cite no support at all.
Thus, Milo's motion for summary judgment entirely fails to comply with the requirements of Local Rule 56.1(a)(3)(B). Accordingly, Milo's motion for partial summary judgment is denied.
Turning to Milo's response to Bird-X's motion, Local Rule 56.1(b)(3)(B) requires the nonmovant to file a “concise response to the movant's statement that shall contain . . . a response to each numbered paragraph in the moving party's statement, including, in the case of any disagreement, specific references to the affidavits, parts of the record, and other supporting materials relied upon.” See LR 56.1(b)(3)(B). Local Rule 56.1(b)(3)(C) also “requires specifically that a litigant seeking to oppose a motion for summary judgment file a response that contains a separate ‘statement . . . of any additional facts that require the denial of summary judgment.'” Cichon v. Exelon Generation Co., L.L.C., 401 F.3d 803, 809 (7th Cir. 2005) (quoting LR 56.1).
The failure of a nonmoving party to abide by the rule's requirements carries significant consequences. “All material facts set forth in the statement required of the moving party will be deemed to be admitted unless controverted by the statement of the opposing party.” LR 56.1(b)(3); Smith v. Lamz, 321 F.3d 680, 683 (7th Cir. 2003). “This rule may be the most important litigation rule outside statutes of limitation because the consequences of failing to satisfy its requirements are so dire.” Malec v. Sanford, 191 F.R.D. 581, 584 (N.D. Ill. 2000).
Here, too, Milo failed to comply with these procedural requirements. Although Milo filed a response to Bird-X's statement of facts, see Pl.'s Resp. DSOF, that response contains virtually no “specific references to the affidavits, parts of the record, and other supporting materials relied upon.” LR 56.1(b)(3)(B). Rather, nearly all of Milo's denials state only: See, e.g., Pl.'s Resp. DSOF at 3. This response, devoid of citations to the record, is insufficient to constitute a denial under Local Rule 56.1.
Other of Milo's responses to Bird-X's Statement of Facts rely on the same inadmissible affidavits as Milo's own statement of facts and similarly fail to comply with Local Rule 56.1. See Pl.'s Resp. DSOF at 7 (citing Hung Decl.). Accordingly, all statements by Bird-X to which Milo responded in the manner discussed above are deemed admitted as “[un]controverted by the statement of the opposing party.” LR 56.1(b)(3). A handful of Milo's responses do deny Bird-X's statements on the grounds that the statements find no support in the record. See, e.g., Pl.'s Resp. DSOF at 7-9. The Court will review the underlying record for these paragraphs, noting disputes as necessary.
Milo and Bird-X are corporations that sell pest repellant products. DSOF ¶¶ 1-2. Milo sells under a variety of wholesaler names, including the name “Aspectek.” Id. ¶ 1. The company's founder, Michael Liu, is its Director and President, and lives in Canada. Id. ¶ 18. He previously owned and operated Longwell Electronics, a Taiwan-based company that manufactured certain Bird-X products until 2015. Id. ¶ 20. His son, Anthony Liu, is Milo's Chief Executive Officer. Id. ¶ 19.
As relevant here, both Milo and Bird-X sell products marked with renderings of predator eyes which, when inflated and hung, are intended to scare birds away. Id. ¶¶ 9, 24-30. Bird-X has a trademark for its line of frightening visual bird repellants, which are marked as “SCARE-EYE” products. Id. ¶ 7. This trademark is the impetus for much of the instant litigation.
Bird-X has been selling bird repellant products under the SCARE-EYE mark since at least 1987 and sells these products online with both Amazon and Home Depot. Id. ¶¶ 9-10. Milo also sells its bird repellant balloons online, including through Amazon's and Home Depot's websites. Id. ¶¶ 23, 31.
Since at least 2015, Milo has sold a line of balloons under the brand name “VisualScare.” Id. ¶¶ 24-25; see also Seid Decl., Ex E, 9/23/15 Bayona Email, ECF No. 126-1 (). The product description for one balloon in the VisualScare line includes the language “Visualscare Bird Scary Eye Balloons.” See MILO 000022 Amazon Listing at 3, ECF No. 126-9.
In April 2015, an employee of Bird-X, Sales Director Joe Seid submitted a complaint to Amazon about Milo's use of the term “Scary Eye” in its Amazon sales listing, believing that it was an infringement of Milo's “SCARE-EYE” trademark. DSOF ¶ 42. His complaint led Amazon to remove the images from Milo's...
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