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ABBOTT LABS. v. NUTRAMAX PRODS.

February 22, 1994

ABBOTT LABORATORIES, Plaintiff,
v.
NUTRAMAX PRODUCTS, INC., Defendant.



The opinion of the court was delivered by: CHARLES RONALD NORGLE, SR.

 CHARLES R. NORGLE, SR., District Judge:

 Before the court is defendant NutraMax Products, Inc.'s ("NutraMax") motion for judgment on the pleadings as to counts II and III of plaintiff Abbott Laboratories' ("Abbott") second amended complaint pursuant to Fed. R. Civ. P. 12(c). The motion is granted for the reasons stated below.

 FACTS

 Abbott, an Illinois corporation with its principal place of business in North Chicago, Illinois, manufactures prescription pharmaceuticals, medical devices, and other health care products. Among the products Abbott manufactures is a pediatric oral electrolyte solution called "Pedialyte." Abbott sells Pedialyte in distinctive thirty-two ounce transparent bottles. The bottles are square with three and one-half inch side panels. Coursing around the four sides of the bottles immediately above and beneath the wraparound label are two sets of visible indentations. As a forerunner to the bottles at issue, Abbott had also marketed its Pedialyte in an I-V bottle form for use in hospitals and doctors' offices. Although its similarly designed I-V bottle once enjoyed protection under federal patent law as a design patent, Abbott's patent for that bottle has since expired.

 NutraMax is a Delaware corporation with its principal place of business in Glouchester, Massachusetts. NutraMax sells a competing pediatric oral electrolyte solution called "Pediatric Electrolyte." NutraMax markets its product in a bottle and with labeling that Abbott charges infringes upon its trade dress.

 Abbott's second amended complaint alleges claims for trade dress infringement in violation of § 43 (a) (1) of the Lanham Act, 15 U.S.C. § 1125(a) (1), dilution under state law, and misappropriation under state law. In response to the amended complaint, NutraMax filed the present motion for judgment on the pleadings as to counts II and III.

 DISCUSSION

 A Rule 12(c) motion is governed by the same standard as a motion to dismiss under Rule 12(b) (6) of the Federal Rules of Civil Procedure. Craigs, Inc. v. General Elec. Capital Corp., 12 F.3d 686 (7th Cir. 1993). For purposes of considering a motion for judgment on the pleadings, therefore, all of the nonmovant's well pleaded allegations are taken as true, and all contravening assertions of the movant are taken as false. Thomason v. Nachtrieb, 888 F.2d 1202, 1204 (7th Cir. 1989). This is also true for the inferences to be drawn from those allegations. Id. Because a Rule 12(c) motion seeks to determine the merits of the controversy and reach judgment in the case, the court should be reluctant to grant the motion unless it is clear the merits of the claim can be fairly decided summarily. See 5 C. WRIGHT & A. MILLER, FEDERAL PRACTICE & PROCEDURE § 1369.

 Abbott's primary claim is one for trade dress infringement. Under federal trademark law, product configurations and trade dress can enjoy trademark protection. Kohler Co. v. Moen Inc., 12 F.3d 632 (7th Cir. 1993); Abbott Lab. v. Mead Johnson & Co., 971 F.2d 6, 20-22 (7th Cir. 1992). A party who owns a protectible trade dress therefore has the ability to force subsequent entrants into the market to select a trade dress that avoids a likelihood of consumer confusion as to the source or sponsorship of the product. Badger Meter, Inc. v. Grinnell Corp., 13 F.3d 1145, 1994 U.S. App. LEXIS 925, Nos. 92-3950, 92-4074, 93-1373 and 93-1555, slip op. at 16 (7th Cir. Jan. 18, 1994) (citing Forum Corp. v. Forum Ltd., 903 F.2d 434, 439, 440 (7th Cir. 1990)).

 Abbott seeks protection against dilution of its trade dress under Massachusetts law in count II of its complaint. See MASS. GEN. L. ch. 110B, § 12. Nonetheless, NutraMax asserts that Illinois law governs the viability of Abbott's dilution claim. See 765 ILCS 1035/15. Because there exists a conflict between Illinois law and Massachusetts law on the anti-dilution claim, compare EZ Loader Boat Trailers, Inc. v. Cox Trailers, Inc., 746 F.2d 375, 380 (7th Cir. 1984) (commercial competitors cannot sue under the Illinois anti-dilution statute); Filter Dynamics Int'l v. Astron Battery, Inc., 19 Ill. App. 3d 299, 311 N.E.2d 386, 398-99 (1974) (same) with Pignons S.A. de Mecanique de Precision v. Polaroid, 657 F.2d 482 (1st Cir. 1980) (commercial competitors can sue under the Massachusetts anti-dilution statute), the court must first resolve the choice-of-law issue. *fn1"

 Illinois follows the "most significant contacts" approach of the RESTATEMENT (SECOND) OF CONFLICT OF LAWS § 145 in resolving disputes over the choice of law in a tort action. Ingersoll v. Klein, 46 Ill. 2d 42, 262 N.E.2d 593 (1970). This approach requires the court to determine which state possesses the most significant relationship to the issues involved after evaluating the contacts the various states have with the litigation. Koutsoubos v. Casanave, 816 F. Supp. 472, 475 (N.D. Ill. 1993); see Palmer v. Beverly Enters., 823 F.2d 1105, 1107 (7th Cir. 1987); Lyons v. Turner Constr. Co., 195 Ill. App. 3d 36, 551 N.E.2d 1062, 1064-65, 141 Ill. Dec. 719 (1990). In tort actions, the relevant contacts include the location where the tortious act took place, the place of injury, and the domicile and place of business of the parties. Koutsoubos, 816 F. Supp. at 475. The most significant factor is the place of injury. Id.

 Infringement of intellectual property rights sounds in tort. Habitat Wallpaper & Blinds v. K.T. Scott Ltd., 807 F. Supp. 470, 473 (N.D. Ill. 1992). The place of injury usually defines the locus of a cause of action for trade dress infringement and unfair business practices; and the damage to intellectual property rights is usually realized where the owner of the protected rights suffers the damage. Id. Abbott's principal place of business is in Illinois and will thus realize the dilution or misappropriation of its trade dress in Illinois. In addition, although NutraMax's Pediatric Electrolyte originates from Massachusetts, Abbott's claims are based in part on the sale of the Pediatric Electrolyte in this district. The division through which Abbott manufactures and sells its Pedialyte is in Ohio, ...


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