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Morningware, Inc v. Hearthware Home Products

September 4, 2012


The opinion of the court was delivered by: Amy J. St. Eve, District Court Judge:



On July 20, 2009, Plaintiff Morningware, Inc. ("Morningware"), filed its Complaint against Hearthware Home Products, Inc. ("Hearthware"), alleging that Hearthware had commercially disparaged Morningware's goods, had committed the common-law tort of unfair competition, and had violated the Deceptive Trade Practices Act of Illinois, as well as the unfair-competition and product-disparagement provisions of the Lanham Act. (R. 1.) Separately, Hearthware brought an action against Morningware alleging that the latter had infringed U.S. Patent No. 6,201,217 ("the '217 Patent"). (IBC-Hearthware, Inc. v. Morningware, Inc., No. 09- CV-4903 (N.D. Ill.) (R. 1).) The Court consolidated both cases on August 26, 2009. (Id. (R. 19).)

Since that time, both parties have amended their pleadings to assert additional claims and counterclaims against one another. Several of Hearthware's counterclaims are at issue in the pending motion. Hearthware has asserted the following counterclaims: infringement of the '217 Patent (Count I); trade dress infringement under the Lanham Act (Count II)*fn1 ; violation of the Illinois Uniform Deceptive Trade Practices Act ("Illinois UDTPA") (Count III); common law unfair competition (Count IV); false representations under the Lanham Act (Count V); false advertising under the Lanham Act (Count VI); common law misappropriation (Count VII); and violation of the Illinois Consumer Fraud and Deceptive Businesses Practices Act (the "Illinois Consumer Fraud Act") (Count VIII). (R. 107.) Before the Court is Morningware's motion for summary judgment on Counts III and V-VIII. For the following reasons, the Court grants the motion in part and denies it in part.


I. Northern District of Illinois Local Rule 56.1

"For litigants appearing in the Northern District of Illinois, the Rule 56.1 statement is a critical, and required, component of a litigant's response to a motion for summary judgment. The purpose of the local rule is to make the summary judgment process less burdensome on district courts, by requiring the parties to nail down the relevant facts and the way they propose to support them." Sojka v. Bovis Lend Lease, Inc., 686 F.3d 394, 398 (7th Cir. 2012). Local Rule 56.1 assists the Court by "organizing the evidence, identifying undisputed facts, and demonstrating precisely how each side propose[s] to prove a disputed fact with admissible evidence." Bordelon v. Chi. Sch. Reform Bd. of Trs., 233 F.3d 524, 527 (7th Cir. 2000). "The Rule is designed, in part, to aid the district court, 'which does not have the advantage of the parties' familiarity with the record and often cannot afford to spend the time combing the record to locate the relevant information,' in determining whether a trial is necessary." Delapaz v. Richardson, 634 F.3d 895, 899 (7th Cir. 2011) (citation omitted).

Local Rule 56.1(a)(3) requires the moving party to provide "a statement of material facts as to which the moving party contends there is no genuine issue." Cracco v. Vitran Exp., Inc., 559 F.3d 625, 632 (7th Cir. 2009). "The opposing party is required to file '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.'" Id. (citing N.D. Ill. R. 56.1(b)(3)(B)). Pursuant to the Local Rules, the Court will not consider any additional facts proposed in the nonmoving party's Local Rule 56.1(b)(3)(B) response, but must rely on the non-movant's Local Rule 56.1(b)(3)(C) statement of additional facts. See Ciomber v. Coop. Plus, Inc., 527 F.3d 635, 643 (7th Cir. 2008). The Court disregards Rule 56.1 statements and responses that do not cite to specific portions of the record, as well as those that contain factual or legal argument. See Cracco, 559 F.3d at 632 ("When a responding party's statement fails to dispute the facts set forth in the moving party's statement in the manner dictated by the rule, those facts are deemed admitted for purposes of the motion."); Cady v. Sheahan, 467 F.3d 1057, 1060 (7th Cir. 2006) ("statement of material facts did [] not comply with Rule 56.1 as it failed to adequately cite the record and was filled with irrelevant information, legal arguments, and conjecture"); Bordelon, 233 F.3d at 528 (the requirements for responses under Local Rule 56.1 are "not satisfied by evasive denials that do not fairly meet the substance of the material facts asserted"); Cichon v. Exelon Generation Co., L.L.C., 401 F.3d 803, 809-10 (7th Cir. 2005) ("A district court does not abuse its discretion when, in imposing a penalty for a litigant's non-compliance with Local Rule 56.1, the court chooses to ignore and not consider the additional facts that a litigant has proposed.").

II. The Parties Failed to Comply with Local Rule 56.1

As was the case with Morningware's motion for summary judgment on Counts I-V of its First Amended Complaint,*fn2 both parties' Local Rule 56.1 statements contain significant problems. Several of Morningware's "statements of material facts" are either unsupported by any citation to the evidence or they are not statements of fact at all, but rather legal argument or legal conclusions. (See, e.g., R. 302, Morningware's Statement of Undisputed Facts Pursuant to Local Rule 56.1(a)(3) In Support of Its Motion for Summary Judgment on the Third and Fifth through Eighth Claims for Relief of Hearthware's First Amended Counterclaims ("Morningware's SOF") ¶¶ 10-13, 15, 17, 19, 21-23, 25-30, 35-37.)

In addition, most of Hearthware's Local Rule 56.1(b)(3)(C) additional statements of material fact fail to comply with the local rules because they contain improper argument and legal conclusions, and most do not contain citations to evidence in support of the asserted statements. (See, e.g., R. 346, Hearthware's Local Rule 56.1 Statement of Additional Material Facts That Require Denial of Morningware's Motion for Summary Judgment on Counterclaims III, V-VIII ("Hearthware's Add'tl SOF") ¶¶ 7-23.) As explained above, the purpose of Local Rule 56.1 statements is to identify the relevant admissible evidence supporting the material facts, not to make factual or legal arguments. See Cady, 467 F.3d at 1060; Judson Atkinson Candies, Inc. v. Latini-Hohberger Dhimantec, 529 F.3d 371, 382 n.2 (7th Cir. 2008) ("It is inappropriate to make legal arguments in a Rule 56.1 statement of facts."). As such, the Court will not deem these "facts" as true.

It appears that the parties simply cut and pasted portions of their briefs into their Rule 56.1 statements of fact and responses thereto. This is not only impermissible, it also does not assist the Court in deciding the motions. See Dal Pozzo v. Basic Machinery Co., Inc., 463 F.3d 609, 613 (7th Cir. 2006) ("An advocate's job is to make it easy for the court to rule in his client's favor . . . ."). Counsel's failure to comply with Rule 56.1 results in the very brief explanation of undisputed material facts below.


Hearthware is a corporation organized under Illinois law, with its principal place of business at 1795 North Butterfield Road, Libertyville, Illinois. (Hearthware's Addt'l SOF ¶ 2.) Morningware is a corporation organized under Illinois law, with its principal place of business at 1699 Wall Street, Mount Prospect, Illinois. (Id. ¶ 3.) The Court has subject matter jurisdiction pursuant to 15 U.S.C. § 1121(a) and 28 U.S.C. §§ 1331, 1338(b), and 1367(a). (Id. ¶ 4.) Venue is proper in this District pursuant to 28 U.S.C. § 1391(b) and (c). (Id. ¶ 6.)

The design of Morningware's HO-1200 Oven ("Morningware's Oven") has not changed since 2003. (Morningware's SOF ¶ 8.) The instruction manual and recipe book for Morningware's Oven states that "[u]nless a user sets a specific cooking temperature, the . . . Oven automatically cooks food at the highest temperature of 400° F. (Id. ¶ 16.)


Summary judgment is appropriate "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). A genuine dispute as to any material fact exists if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S. Ct. 2505, 2510, 91 L. Ed. 2d 202 (1986). In determining summary judgment motions, "facts must be viewed in the light most favorable to the nonmoving party only if there is a 'genuine' dispute as to those facts." Scott v. Harris, 550 U.S. 372, 380, 127 S. Ct. 1769, 167 L. Ed. 2d 686 (2007). The party seeking summary judgment has the initial burden of establishing that there is no genuine dispute as to any material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986). After "a properly supported motion for summary judgment is made, the adverse party 'must set forth specific facts showing that there is a genuine issue for trial.'" Anderson, 477 U.S. at 255 (quotation omitted). ...

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