United States District Court, N.D. Illinois, Eastern Division.
CORRECTED MEMORANDUM OPINION AND ORDER
MATTHEW F. KENNELLY United States District Judge.
USA, Inc., (“Bodum”) has sued A Top New Casting
Inc., (“A Top”) for trade dress infringement.
Bodum alleges that A Top infringed Bodum’s
CHAMBORD® trade dress. Bodum asserts claims for violation
of the Lanham Act, 15 U.S.C. § 1125(a) (Count 1), common
law unfair competition (Count 2), and violation of the
Illinois Deceptive Trade Practice Act (Count 3). In response,
A Top has filed a two-count counterclaim, seeking a
declaratory judgment of invalidity, unenforceability, or
noninfringement of Bodum's trade dress. Bodum has moved
to dismiss the counterclaim under Federal Rule of Civil
Procedure 12(b)(6). For the following reasons, the Court
grants Bodum’s motion.
Court starts with the basic background allegations in
Bodum's complaint. Bodum sells designer specialty
housewares, including nonelectric French press coffeemakers
under the federally registered trademark CHAMBORD®.
Bodum’s CHAMBORD® coffeemaker has a unique
appearance that, Bodum alleges, consumers recognize as
originating from Bodum. The metallic stand, handle design,
and dome-shaped lid are some examples of what Bodum cites as
CHAMBORD’s® allegedly distinctive characteristics.
sells and promotes household goods, including nonelectric
coffeemakers, throughout the United States. Bodum alleges in
its complaint that A Top promoted and advertised a
nonelectric French press coffeemaker, the SterlingPro French
Coffee Press, that looks confusingly similar to Bodum’s
CHAMBORD® coffeemaker. Bodum alleges that A Top
deliberately adopted a confusingly similar design to
capitalize on Bodum’s goodwill. As indicated earlier,
Bodum asserts claims of trade dress infringement, unfair
competition, and violation of the Illinois Uniform Deceptive
Trade Practices Act.
has filed a two-count counterclaim against Bodum. In count
one, A Top asks for a declaratory judgment that Bodum's
trade dress is invalid and unenforceable. In count two, A Top
asks for a declaratory judgment that it has not infringed any
of Bodum’s trade dress rights. Bodum has moved to
dismiss the counterclaim under Rule 12(b)(6).
argues that A Top’s counterclaim should be dismissed
because it essentially is nothing more than the mirror image
of Bodum's claims that A Top infringed a valid trade
dress. Bodum argues that adjudication of Bodum’s claims
alone will resolve the parties' dispute and that the
counterclaim adds nothing to the case.
purpose of a declaratory judgment is to "clarify [ ] and
settl[e] the legal relations at issue" and to
"terminate and afford relief from the uncertainty,
insecurity, and controversy giving rise to the
proceeding." Tempco Elec. Heater Corp. v. Omega
Eng'g, Inc., 819 F.2d 746, 749 (7th Cir. 1987).
"It is well settled that the federal courts have
discretion to decline to hear a declaratory judgment action,
even though it is within their jurisdiction."
Id. at 747. "Where the substantive suit would
resolve the issues raised by the declaratory judgment action,
the declaratory judgment action 'serve[s] no useful
purpose" because the controversy has 'ripened'
and the uncertainty and anticipation of litigation are
alleviated." Amari v. Radio Spirits, Inc., 219
F.Supp.2d 942, 944 (N.D. Ill. 2002) (quoting Tempco,
819 F.2d at 749).
declaratory judgment may be refused if "it is being
sought merely to determine issues which are involved in a
case already pending and can be properly disposed of
therein." Yellow Cab Co. v. City of Chicago,
186 F.2d 946, 950 (7th Cir. 1951). That is the case here. A
Top's counterclaim essentially presents nothing more than
the flip side of Bodum's claims. The counterclaim adds
nothing to the case beyond the issues that Bodum's claims
call upon the Court to adjudicate.
argues that the counterclaim should not be dismissed because
it involves a dispute that will remain alive even after
Bodum’s claims are disposed of. For example, A Top
argues, if the Court rules that A Top has not infringed
Bodum's trade dress, the issue of the validity of that
trade dress will remain unadjudicated absent the
counterclaim. Conversely, if the Court finds Bodum's
trade dress invalid or unenforceable, the issue of
infringement will not necessarily be adjudicated through
Bodum’s claims. Either way, A Top argues, it may remain
vulnerable to future litigation relating to Bodum's trade
problem with A Top's argument is that a finding in its
favor on either infringement or validity will end the
parties' present dispute, which is the only controversy
properly before the Court. The theoretical possibility of a
future controversy involving Bodum's trade dress and some
other A Top product does not change things. In this regard, A
Top is essentially seeking an inappropriate advisory opinion,
that is, "a decision that does not resolve an actual
case or controversy." People of State of Ill. ex
rel. Barra v. Archer Daniels Midland Co., 704 F.2d 935,
941 (7th Cir. 1983). Indeed, A Top argues that the Court
should find Bodum’s trade dress was invalid to preclude
it from claiming infringement against any of A Top’s
future products or those of other competitors. See
Def.'s Opp’n to Pl.'s Mot. to Dismiss at 5. A
Top may not, however, obtain a declaratory judgment that
"would merely determine a collateral legal issue
governing certain aspects of . . . pending or future
suits." Calderon v. Ashmus, 523 U.S. 740, 747
(1998). "Rather than use the mark, get sued, and fight
it out in court, [A Top is] saying, 'We would like to use
the mark, but before we do, we want a court to say we may do
so safely.'" Windsurfing Int'l Inc. v. AMF
Inc., 828 F.2d 755, 758 (Fed. Cir. 1987). That would be
an inappropriate advisory opinion.
A Top's counterclaim is the mirror image of Bodum's
claim and is therefore unnecessary. If there is more to the
counterclaim than that, it seeks to obtain an ...