S Industries, Inc. v. Jl Audio, Inc.

• Decision Date: 09 December 1998
• Docket Number: No. 96 C 4659.,96 C 4659.
• Citation: 29 F.Supp.2d 878
• Parties: S INDUSTRIES, INC., a Delaware Corporation, Plaintiff, v. JL AUDIO, INC.; Musicar; Accent Marketing; and Wayne Brown, Defendants.
• Court: U.S. District Court — Northern District of Illinois

29 F.Supp.2d 878

S INDUSTRIES, INC., a Delaware Corporation, Plaintiff, v. JL AUDIO, INC.; Musicar; Accent Marketing; and Wayne Brown, Defendants.

No. 96 C 4659.

United States District Court, N.D. Illinois, Eastern Division.

December 9, 1998.

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John C. Valas, Chicago, IL, for Plaintiff.

Martin D. Snyder, Hall Adams, III, Williams & Montgomery, Chicago, IL, Dale Paul DiMaggio, Daniel S. Polley, Malin, Haley, DiMaggio & Crosby, Fort Lauderdale, FL, for Defendants.

MEMORANDUM OPINION AND ORDER

COAR, District Judge.

Before this court are Plaintiff S Industries, Inc.'s ("Plaintiff") and Defendants JL Audio, Inc.'s ("JL"), Musicar's, Accent Marketing's ("Accent"), and Wayne Brown's ("Brown") (collectively, "Defendants") cross-motions for summary judgment as to the remaining four counts of Plaintiff's complaint, which alleges trademark infringement and violation of the Lanham Act § 43, 15 U.S.C. § 1051 et seq., (Counts I-III) and common law unfair competition under the Illinois Consumer Fraud and Deceptive Business/Trade Practices Act, 815 ILCS 505/1 et seq., (Count IV). Count V (counterfeit trademark) has previously been dismissed by Plaintiff. Also before this court is Plaintiff's motion for judicial notice and Defendants' motion to strike. For the following reasons, Defendants' motion for summary judgment is GRANTED as to all remaining counts and Plaintiff's motion for summary judgment is DENIED. Plaintiff's motion for judicial notice is GRANTED in part, DENIED in part, and MOOT in part. Defendants' motion to strike is MOOT.

I. Preface

This has not been a good year for Plaintiff in the Northern District of Illinois, but, then again, Plaintiff has not been a good litigant. This is one of several trademark infringement cases brought by Plaintiff S Industries against various defendants who make a wide range of products. Essentially, if an entity markets a product with some version of the name "Stealth" or otherwise with a "stealth"-like description, Plaintiff has elected to sue that entity. Yet, time and time again, Plaintiff's claims are rebuffed, with judges in this district having granted summary judgment against Plaintiff in four different cases in the year of 1998. S Industries, Inc. v. Stone Age Equipment, Inc., 12 F.Supp.2d 796, 1998 U.S. Dist. LEXIS 9562 (N.D.Ill.1998) (Castillo, J.); S Industries, Inc. v. Centra 2000, Inc., 1998 WL 157067, 1998 U.S. Dist. LEXIS 4682 (N.D.Ill.1998) (Lindberg, J.); S Industries, Inc. v. GMI Holdings, Inc., 1998 WL 67627, 1998 U.S. Dist. LEXIS 1780 (N.D.Ill.1998) (Kocoras, J.); S Industries, Inc. v. Diamond Multimedia Systems, Inc., 991 F.Supp. 1012, 1998 U.S. Dist. LEXIS 596 (N.D.Ill.1998) (Andersen, J.). See also S Industries, Inc. v. World of Weapons, 1997 WL 17796, 1996 U.S. Dist. LEXIS 18245 (N.D.Ill. 1996) (granting a defendant's motion to dismiss on personal jurisdiction grounds) (Kocoras, J.), motion to vacate denied, 1997 WL 17796, 1997 U.S. LEXIS 643 (N.D.Ill.1997). As Judge Shadur aptly noted in 1996, Plaintiff "appears to have entered into a new industry — that of instituting federal litigation." S Industries, Inc. v. Hobbico, Inc., 940 F.Supp. 210, 211 (N.D.Ill.1996).

Much about this case is troubling. Plaintiff's actions in this case and in the several other cases filed throughout this district raise doubts as to the good faith of Plaintiff and its counsel. Additionally, both parties in this case have, at times, acted contrary to the spirit and, in some ways, the letter of the Local Rules and this court's standing orders. Both Plaintiff and Defendants sought to evade the 15-page limit for memoranda by compressing the line-spacing of their memoranda. (Compare Ptf's Mem. in Support of Summary Judgment and Dfts' Mem. in Support of Summary Judgment (approximately 1.5 line spacing) with Dft's Mem. in Support of Motion to Strike (double-spacing).) Plaintiff and Defendants used this compressed line-spacing to give themselves the equivalent of an extra brief apiece between the two cross-motions. Additionally, Plaintiff reduced the type size of its footnotes to attain even more extra space. This behavior is unacceptable and will not be tolerated in the future. The parties are expected to use double-spacing for the body text, to utilize 12-point font for all text in the opinion, and to use one inch margins. If (as was not the case with any of the memoranda thus far submitted), more space is necessary to offer a thorough argument, the party seeking additional pages beyond the 15-page limit may come in on a motion to submit a longer brief. Unless this court grants such a motion, the parties shall limit to themselves to the 15-page limit as set forth in the Local Rules, this opinion, and this court's standing orders.

In addition to its attempt to make an end run around the 15-page limit, Plaintiff also attempted to use its 12(N) Response¹ as a section of additional legal argument. Plaintiff's counsel has sufficient experience in this district to realize that Local Rule 12(N) states that the respondent to a summary judgment motion should include "a concise response to the movant's statement that shall contain: (a) 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...." Local Rule 12(N)(3)(a). Including as much as 2 pages of legal argument (with 1.5 spacing) in a "response" to a single paragraph of the Defendants' 12(M) Statement does not constitute "a concise response." Legal argument is for the Responsive Memorandum — not for the 12(N)(3)(a) Response. Local Rule 12(N)(2). The court will consider Plaintiff's 12(N)(3)(a) to the extent that it follows this rule but will not consider any legal argument contained in it. See Waldridge v. American Hoechst Corp., 24 F.3d 918, 921-22 (7th Cir.1994) (stating that the Seventh Circuit upholds "the strict enforcement" of Local Rules regulating summary judgment motions).

II. Facts

Plaintiff is a Delaware corporation with its principal place of business in Chicago, Illinois. (Dfts' 12(M) Stmt. ¶ 59.) JL Audio, Inc., is a Florida corporation that manufactures and markets audio equipment and sells such products throughout the United States, including within the Northern District of Illinois. (Dfts' 12(M) Stmt. ¶ 60.) Defendants Accent Marketing, Musicar, and Wayne Brown sell products and/or do business within the Northern District of Illinois. (Dfts' 12(M) Stmt. ¶ 61.)

Defendant JL Audio manufactures and markets high-end, custom designed speaker boxes and enclosures under the mark "STEALTHBOX." (Dfts' 12(M) Stmt. ¶ 1.)² JL Audio's housemarks "JL Audio" and/or "JL Audio and Logo Design" also appear on the Stealthboxes sold under the mark "STEALTHBOX," as well as marketing materials used for such products. (Dfts' 12(M) Stmt. ¶ 2.)³ JL Audio's housemarks "JL Audio" and/or "JL Audio and Logo Design" are used in conjunction with the secondary mark "STEALTHBOX" for JL Audio's Stealthboxes. (Dfts' 12(M) Stmt. ¶ 3.) JL Audio is the owner of two federally registered trademarks: U.S. Trademark Registration No. 1,948,910 (the "910 Registration"), which is for use of the mark "JL AUDIO" on Audio and stereo components and accessories, particularly speakers and U.S. Trademark Registration No. 1,956,624 (the "624 Registration"), which is for the use of the mark "JL AUDIO & DESIGN" on stereo components and accessories, namely amplifiers, receivers, tuners, equalizers, and loudspeakers. (Dfts' 12(M) Stmt. ¶ 10.)

Plaintiff cites to four United States Trademark Registrations in its Complaint: U.S. Trademark Registration No. 1,332,378 (the "378 Registration"), which is for use of the mark "STEALTH" on sporting goods, specifically, tennis rackets, golf clubs, tennis balls, basketballs, baseballs, soccerballs, golf balls, crossbows, tennis racquet strings, and shuttlecocks in International Class 28, (Dfts' 12(M) Stmt. ¶ 4); U.S. Trademark Registration No. 1,434,642 (the "642 Registration"), which is for use of the mark "STEALTH" on bicycles, motorcycles, and boats in International Class 12, (Dfts' 12(M) Stmt. ¶ 5); U.S. Trademark Registration No. 1,867,087 (the "087 Registration"), which is for use of the mark "STEALTH and Design" on pool cues, pool tables, darts, billiard balls, cue cases, cue racks, and billiard gloves, in International Class 28, (Dfts' 12(M) Stmt. ¶ 6); U.S. Trademark Registration No. 1,717,010 (the "010 Registration"), which is for use of the mark "STEALTH" on microwave absorbing automobile paint, in International Class 2. (Dfts' 12(M) Stmt. ¶ 7.) Since July 29, 1996 (the date that Plaintiffs Complaint was filed), Plaintiff has attained four more federal registrations for the mark STEALTH: U.S. Trademark Registration No. 2,007,348 (the "348 Registration"), which is for use of the mark "STEALTH SQUAD" on comic books, in International Class 16 (Ptf's Ex. A to Ptf's Motion for Judicial Notice); U.S. Trademark Registration No. 2,024,889 (the "889 Registration"), which is for the use of the mark "STEALTH" on lawn sprinklers, in International Class 21 (Ptf's Ex. A to Ptf's Motion for Judicial Notice); U.S. Trademark Registration No. 2,025,156 (the "156 Registration"), which is for the use of the mark "STEALTH" on metal alloys for use in sporting goods and transportation and window locks, in International Class 6 (Ptf's Ex. A to Ptf's Motion for Judicial Notice); U.S. Trademark Registration No. 1,766,806 (the "806 Registration"), which is for the use of the mark "STEALTH" on fishing tackle floats, in International Class 28 (Ptf's Ex. B to Ptf's Motion for Judicial Notice). Additionally, Cobra Electronics has assigned to Plaintiff, effective on September 1, 1998, its STEALTH federal trademark Registration No. 2,074,780, issued on July 1, 1997, for radar detectors in International Class 9. (Ptf's 12(N) Resp. ¶ 8.)⁴

JL...