The opinion of the court was delivered by: Sue E. Myerscough United State District Judge
Wednesday, 06 April, 2011 05:17:06 PM
Clerk, U.S. District Court, ILCD
SUE E. MYERSCOUGH, U.S. District Judge:
This matter is before the Court on the Report and Recommendation (d/e 23) entered by Magistrate Judge Byron G. Cudmore on February 3, 2011. Defendant, Nissan North America, Inc. (Nissan), filed its Objections to the Report and Recommendation By Honorable Magistrate Judge Cudmore (Objections) (d/e 24) on February 22, 2011. See 28 U.S.C. § 636(b)(1); Fed.R.Civ.P. 72(b).
In the Report and Recommendation, Judge Cudmore recommends allowing in part and denying in part Nissan's Motion to Dismiss Pursuant to Federal Rule of Civil Procedure 12(b)(6) (Motion to Dismiss) (d/e 16). This Court reviews de novo any part of the Report and Recommendation that has been properly objected to. 28 U.S.C. § 636(b)(1)©. For the reasons set forth below, the Court overrules the Objections and adopts Judge Cudmore's Report and Recommendation.
A. Isringhausen's Corrected Complaint On October 29, 2010, Isringhausen filed its nine-count Corrected Complaint (d/e 13) against Nissan and the following related defendants: Nissan Motor Corp., Ltd.; Nissan Design American, Inc., and Nissan Jidosha Kaisha, Trading as Nissan Motor Co., Ltd. (the related defendants are hereinafter collectively referred to as "the Affiliated Companies"). In its Corrected Complaint, Isringhausen alleges claims for: Trademark infringement under the Lanham Act, 15 U.S.C. § 1114(1) (Count I); Unfair competition under the Lanham Act, 15 U.S.C. § 1125(a) (Count II); Trademark dilution under Lanham Act, 15, U.S.C. § 1125© (Count III); Copyright infringement under the Copyright Act of 1976, 17 U.S.C. §§ 501(a)(1) and 602(a) (Count IV); Trademark dilution under the Illinois Anti-Dilution Act, 765 ILCS 1036/65 et seq. (Count V); Common law unfair competition under Illinois law (Count VI); Trademark infringement under Illinois Trademark Registration and Protection Act, 765 ILCS 1036/60 (Count VII); Unfair competition under the Illinois Deceptive Trade Practices Act, 815 ILCS 510/1 (Count VIII); and Unfair and deceptive practices under the Illinois Consumer Fraud and Deceptive Business Practices Act, 815 ILCS 505/2 (Count IX). The parties are familiar with the specific allegations of each count contained in Isringhausen's Corrected Complaint, and this information is fully set out in the "Statement of Facts" section of Judge Cudmore's Report and Recommendation.*fn1
B. Nissan's Motion To Dismiss Pursuant To Rule 12(b)(6)
On December 1, 2010, Nissan filed its Motion to Dismiss and a Memorandum of Law in Support of Its Motion to Dismiss (d/e 17). In the Motion to Dismiss, Nissan contended that all nine counts of the Corrected Complaint should be dismissed for failure to state a claim upon which relief may be granted. Specifically, Nissan argued that Isringhausen failed to differentiate the acts of the individual defendants and that Isringhausen did not plead a protectable intellectual property interest in its design, as set forth in Paragraph 9 of the Corrected Complaint (the design depicted in Paragraph 9 of the Corrected Complaint is hereinafter referred to as the "Isringhausen Design"). According to Nissan, Isringhausen's protectable intellectual property includes elements besides the Isringhausen Design. These additional elements include photographs and the words "ISRINGHAUSEN IMPORTS" and that the registered trademark includes the words "ISRINGHAUSEN" and "1 ISRINGHAUSEN PRIORITY." Because Isringhausen only claims misuse of the Isringhausen Design, and fails to allege Nissan used any of the additional elements, Nissan argued Isringhausen failed to plead any protectable intellectual property interest.
Additionally, Nissan argued Count V should be dismissed given Isringhausen's allegation that Isringhausen and Nissan are competitors. Finally, Nissan argued Counts VI-IX are preempted by the Federal Copyright Act.
C. Judge Cudmore's Report And Recommendation And Nissan's Objections Thereto
As stated, Judge Cudmore recommends that Nissan's Motion to Dismiss be allowed in part and denied in part. Specifically, Judge Cudmore recommends that Count V of Isringhausen's Complaint be dismissed, but Nissan's Motion to Dismiss should otherwise be denied.
On February 22, 2011, Nissan filed its Objections and an accompanying Memorandum of Law in Support of its Objections to Report and Recommendations by Honorable Magistrate Judge Cudmore (Memorandum in Support of Objections) (d/e 25). In its Objections, Nissan disputes several of Judge Cudmore's findings in the Report and ...