Monthly Archives: February 2009

Firm wins trademark infringement case

Brinks Hofer Gilson &amp; Lione recently announced that U.S. District Judge Milton I. Shadur ruled in favor of its client, the city of Chicago, in a trademark infringement case, <em>Rudolfo Garcia v. City of Chicago</em>, involving the city’s Graffiti Blasters program.

The Court granted the city’s motion for summary judgment on laches grounds, which asserts that an opposing party has “slept on its rights” because it delayed too long in bringing suit, and is therefore no longer entitled to relief on its original claim. The case was dismissed with prejudice, thus ending the matter.

In October 2007, plaintiff Rudolfo Garcia sued the city of Chicago, claiming infringement of its service mark “Graffiti Blasters,” the name of his business, which removed graffiti from buildings and other sites and was alleged to have been in operation since 1985.  A service mark differs from a trademark in that the mark is used to identify a service rather than a product.

The city showed that Garcia filed this case 14 years after he first became aware of the city’s use of the Graffiti Blasters name and 10 years after he sent a cease and desist letter to the city.  The court noted that the city’s activities in building the GRAFFITI BLASTERS name were “staggering.”  By the time Garcia filed suit, the city had cleaned more than 1,000,000 sites, invested significantly in the promotion of the Graffiti Blasters name and program and had garnered widespread goodwill and renown, according to the firm.

The court found that Garcia’s 10-year silence between his exchange of communications and the commencement of his suit in 2007, coupled with the city’s considerable activities and expenditures in the interim, provided a “poster child for a laches defense,” according to the opinion.

Brinks shareholder Philip A. Jones said the challenge was how best to make the laches defense, and how best to support this defense.

“Through paper discovery we were able to get some good evidence that supported when the plaintiffs first knew of the city’s use of the mark, which was pretty important to the laches defense,” he said.

He said he hopes this case helps people understand that “laches is a valid defense for a trademark case … If you have the facts and can support it when moving through summary judgment, that [defense] can be an effective vehicle for the client.”

Besides Jones, the Brinks attorneys representing the city in this matter were John T. Gabrielides and Joshua Frick.

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Reaching a $2.5 million partial settlement

Judge Christopher Starck approved a $2.5 million partial settlement on Feb. 11. Plaintiff lawyers Patrick A. Salvi and Patrick A. Salvi II of Salvi Schostok &amp; Pritchard<strong> </strong>alleged that Lauralee Pfeifer of Lake Forest, Ill., allowed a chain of events to occur that ultimately led to a car accident involving then-Lake Forest teenager, George Baldwin, now age 22.

During the late afternoon of Nov. 19, 2006, Baldwin’s lawyers claimed that Pfeifer had a duty to supervise the activities occurring in her home after her daughters, ages 16 and 17, invited teenage friends over for a party.

Despite numerous opportunities to step in and stop the beer drinking occurring in an upstairs bedroom, Pfeifer did nothing to prevent the teenagers’ intoxication, according to Salvi Schostok &amp; Pritchard.  When her husband, Brandt arrived at their house, the teenagers in the home scrambled to leave. Continue reading

Q & A with Kurt Stitcher

Today’s Q & A is with Kurt Stitcher, who has been practicing almost 19 years, including time as a partner at three large, international law firms and as an assistant United States attorney. He is currently a partner and chair of the litigation practice group at Levenfeld Pearlstein. He focuses primarily on product liability, mass and toxic tort, white-collar criminal defense and investigations, and complex commercial litigation, including class actions.

What do you find the most interesting about your practice?

In litigation, you are always learning something new.  Although cases may be similar procedurally — and, as you develop expertise, substantively — different factual scenarios and differing legal nuances mean that you never –or, at least, should never– “plateau” on the learning curve. The variety of business and legal problems to be resolved through litigation is endless, as are the ways in which you can solve them, if you take the time to drill down to the essence of the issue and focus on those tasks that will bring the greatest reward to your client.  That variety and that mindset help keep the job fresh, no matter how many times you defend a business against a plaintiff’s lawyer, or an individual against the awesome power of the government.

What makes a good lawyer?

You’re probably better off asking clients this question.  But perhaps that’s the answer.  The lawyer who is able to put himself in the client’s shoes, to understand the client’s business or personal imperatives and constraints, to empathize with what the client is trying to accomplish – offensively or defensively – will be a much better representative of that client than a lawyer who views litigation as a game or as a death match between opposing counsel.

In order to be a good lawyer, you certainly need a high-level skill set – including brains, judgment, a tireless work ethic, and a burning desire to win – but you’ve got to remove your ego from the equation and recognize that you are providing a service to a client who, ultimately, is in the driver’s seat.  And you’ve got to deliver all of this service responsively and with the right value proposition for the client.

What is the biggest legal news right now, and what is its impact?

That’s very hard to say.  In some of my practice areas, tort reform and recent U.S. Supreme Court cases have imposed significant limitations on the ability of plaintiffs to pursue product liability and mass tort cases, especially with respect to pharmaceuticals.  With the shift of power in D.C., however, we may see major legislative efforts to roll back these tort reform victories.  …

Q & A with Kurt Stitcher

Today’s Q & A is with Kurt Stitcher, who has been practicing almost 19 years, including time as a partner at three large, international law firms and as an assistant United States attorney. He is currently a partner and chair of the litigation practice group at Levenfeld Pearlstein. He focuses primarily on product liability, mass and toxic tort, white-collar criminal defense and investigations, and complex commercial litigation, including class actions.

What do you find the most interesting about your practice?

In litigation, you are always learning something new.  Although cases may be similar procedurally — and, as you develop expertise, substantively — different factual scenarios and differing legal nuances mean that you never –or, at least, should never– “plateau” on the learning curve. The variety of business and legal problems to be resolved through litigation is endless, as are the ways in which you can solve them, if you take the time to drill down to the essence of the issue and focus on those tasks that will bring the greatest reward to your client.  That variety and that mindset help keep the job fresh, no matter how many times you defend a business against a plaintiff’s lawyer, or an individual against the awesome power of the government.

What makes a good lawyer?

You’re probably better off asking clients this question.  But perhaps that’s the answer.  The lawyer who is able to put himself in the client’s shoes, to understand the client’s business or personal imperatives and constraints, to empathize with what the client is trying to accomplish – offensively or defensively – will be a much better representative of that client than a lawyer who views litigation as a game or as a death match between opposing counsel.

In order to be a good lawyer, you certainly need a high-level skill set – including brains, judgment, a tireless work ethic, and a burning desire to win – but you’ve got to remove your ego from the equation and recognize that you are providing a service to a client who, ultimately, is in the driver’s seat.  And you’ve got to deliver all of this service responsively and with the right value proposition for the client.

What is the biggest legal news right now, and what is its impact?

That’s very hard to say.  In some of my practice areas, tort reform and recent U.S. Supreme Court cases have imposed significant limitations on the ability of plaintiffs to pursue product liability and mass tort cases, especially with respect to pharmaceuticals.  With the shift of power in D.C., however, we may see major legislative efforts to roll back these tort reform victories.  …

Jenner & Block starts task force

Jenner & Block recently announced the formation of a firm-wide task force that will advise sponsors, master tenants and other principals involved in tenants-in-common (TICs) and Delaware Statutory Trust (DSTs) real estate investments about their immediate and long-range options in today’s real estate and economic downturn.

Tenants-in-common arrangements, often referred to as TICs, have become increasingly popular since 2002, when the IRS ruled that investors in TICs can fulfill the tax-deferral requirements of Section 1031 of the Internal Revenue Code, according to the firm. Section 1031 permits investors to defer capital gains taxes on their properties by exchanging their interests for “like kind” real estate.

Delaware Statutory Trusts, often referred to as DSTs, are alternative investment vehicles that provide similar benefits as TICs. Since 2002, more than $11 billion have been invested nationwide in TIC and DST real estate investment programs by investors desiring to defer their taxable gains under Section 1031, according to the firm.

In recent months, many sponsors of and investors in these programs have been hard hit by the nationwide real estate slump and liquidity crunch, according to the firm.

The industry has encountered declining rents, tenant defaults and bankruptcies, increased vacancies and competition for good tenants, and an increased risk of loan defaults. In addition, many mortgage loans secured by TIC or DST properties will mature over the next few years with substantially lessened potentials for refinancing or sale of the real estate.

Interests in a TIC or DST structure are not liquid investments, so investors can get trapped in a declining market with no way of ending their involvement.

Jenner’s newly formed TIC Workout Task Force is composed of attorneys specializing in tax, real estate, bankruptcy, litigation, and securities matters who are coordinating their efforts to serve clients whose TIC or DST investments are in jeopardy.

Arnie Harrison, co-chair of Jenner & Block’s real estate securities practice and the TIC Workout Task Force, said in this current economy there is a need for lawyers who understand how to help clients who have troubled properties deal with tenants and their lenders.

Harrison said he and the firm bring much experience to the table regarding TICs and DSTs because they’ve represented many, many clients involved in these situations.

“We really understand the business and their business problems and the legal problems that go with this that a law firm not practicing in this area would not know,” he said. “We’ve been representing and assisting our clients in doing this and we thought that if we could formalize a group we would be able to address the needs and people who are not our clients, but who are looking for someone who would not be viewed as involved with the initial transactions. We know what to look for. We know what the issues are.”

Jenner & Block starts task force

Jenner & Block recently announced the formation of a firm-wide task force that will advise sponsors, master tenants and other principals involved in tenants-in-common (TICs) and Delaware Statutory Trust (DSTs) real estate investments about their immediate and long-range options in today’s real estate and economic downturn.

Tenants-in-common arrangements, often referred to as TICs, have become increasingly popular since 2002, when the IRS ruled that investors in TICs can fulfill the tax-deferral requirements of Section 1031 of the Internal Revenue Code, according to the firm. Section 1031 permits investors to defer capital gains taxes on their properties by exchanging their interests for “like kind” real estate.

Delaware Statutory Trusts, often referred to as DSTs, are alternative investment vehicles that provide similar benefits as TICs. Since 2002, more than $11 billion have been invested nationwide in TIC and DST real estate investment programs by investors desiring to defer their taxable gains under Section 1031, according to the firm.

In recent months, many sponsors of and investors in these programs have been hard hit by the nationwide real estate slump and liquidity crunch, according to the firm.

The industry has encountered declining rents, tenant defaults and bankruptcies, increased vacancies and competition for good tenants, and an increased risk of loan defaults. In addition, many mortgage loans secured by TIC or DST properties will mature over the next few years with substantially lessened potentials for refinancing or sale of the real estate.

Interests in a TIC or DST structure are not liquid investments, so investors can get trapped in a declining market with no way of ending their involvement.

Jenner’s newly formed TIC Workout Task Force is composed of attorneys specializing in tax, real estate, bankruptcy, litigation, and securities matters who are coordinating their efforts to serve clients whose TIC or DST investments are in jeopardy.

Arnie Harrison, co-chair of Jenner & Block’s real estate securities practice and the TIC Workout Task Force, said in this current economy there is a need for lawyers who understand how to help clients who have troubled properties deal with tenants and their lenders.

Harrison said he and the firm bring much experience to the table regarding TICs and DSTs because they’ve represented many, many clients involved in these situations.

“We really understand the business and their business problems and the legal problems that go with this that a law firm not practicing in this area would not know,” he said. “We’ve been representing and assisting our clients in doing this and we thought that if we could formalize a group we would be able to address the needs and people who are not our clients, but who are looking for someone who would not be viewed as involved with the initial transactions. We know what to look for. We know what the issues are.”

Finding success on a patent case

After a 10-day jury trial in Beaumont, Texas, Ungaretti & Harris won a major victory for an Ohio-based scale manufacturer, B-Tek Scales, LLC, and its Italian joint venture partner, Bilanciai, in a patent case involving digital scale technology.

B-Tek and Bilanciai were accused of infringing three patents held by Mettler-Toledo, Inc., a figure in the international scale industry.

Rejecting Mettler-Toledo’s claims for $18 million, the jury returned a verdict of no infringement on any of the three patents. The jury also held that two of the patents were unenforceable because they were obvious and involved no protectable invention.

The trial team was made up of partners Lisa C. Sullivan, and Susan G. Feibus, along with associates Amy M. Gardner and Richard H. Tilghman IV. Technical assistants Heidi Goldwater and Jennifer Olejniczak also contributed significantly to the efforts.

Sullivan, who was lead counsel on the case, said the firm received the case in late 2006, and the trial occurred on Jan. 14, 2009.

In some ways the experience was easier than she thought it would be because the team worked so well together, she said. And the trial technology really helped their side stand out to the jury.

But she said everyone worked very hard. For example, for the month of January everyone on the team billed 300 hours.

“I don’t call myself a young attorney anymore because I’ve been out of law school almost 12 years,” she said. “But even at my age it is rare to find someone [at Sullivan’s level] chairing a patent infringement trial. They don’t very often go to trial, and when they do go to trial it’s usually big companies, big law firms, and they’re heavily staffed…

“In the past year the IP department has grown by leaps and bounds and we have a whole department now. I think this kind of does put our firm on the map for doing intellectual property litigation.”

Gardner, who second-chaired the case, said one of the reasons she came to Ungaretti was because she wanted the opportunity to spend more time in court, rather than preparing other people to try cases. And she said she’s gotten that experience.

Besides winning the trial, she said, she enjoyed “getting to meet the jury afterwards because it was really interesting to hear how they deliberated and to hear their thoughts about what they were seeing over the previous two weeks.”

Partner F. Thomas Hecht helped supervise the younger lawyers, and help ensure that the clients’ needs were adequately addressed. An emergency kept him from joining the team in Texas.

The technological presentation was amazing, so much so that the jury commented after the trial about how effective it was, he said.

“They are all very, very bright, all very talented lawyers, but this is a daunting task to undertake a case in front of a jury – particularly one with the complexities that this had,” Hecht said. “Quite frankly I think they did a great job in the courtroom.

“This is not a firm where you can hide out very well. Younger people, particularly, are willing to step up and go to bat, and what’s why they turn out to be very good at what they do.”