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Joshi v. Joshi

United States District Court, N.D. Illinois, Eastern Division

August 1, 2019



          Sara L. Ellis United States District Judge.

         Plaintiff Dr. Jay Joshi, the founder of and sole treating physician at National Pain Centers, LLC (“NPC”), specializes in treating patients with chronic pain. He developed a reputation for his conservative use of opioids to treat patients, as well as his advocacy for educating physicians about responsible treatment practices in the face of the opioid epidemic. Defendant Dr. Jay K. Joshi is a general practitioner at Prestige Clinics (“Prestige”) who happens to have the same name as Plaintiff. Plaintiff alleges that Defendant capitalized on this coincidence by misappropriating Plaintiff's reputation and credentials to bolster his own practice. Plaintiff brought this suit against Defendant[1] for: 1) false designation of origin, sponsorship, or endorsement, and unfair competition under the Lanham Act, 15 U.S.C. § 1125(a), the Illinois Consumer Fraud and Deceptive Business Practices Act, 815 Ill. Comp. Stat. 505/2, the Illinois Uniform Deceptive Trade Practices Act, 815 Ill. Comp. Stat. 510/2, as well as Illinois and Indian common law (Counts I, II, VI, and VII); 2) trademark infringement under the Lanham Act, Illinois common law, and Indiana common law (Counts I, VI, VII); 3) trademark dilution under the Federal Trademark Dilution Act of 1995 (“FTDA”), as amended by the Trademark Dilution Revision Act of 2006, 15 U.S.C. § 1125(c), the Illinois Trademark Registration and Protection Act (“ITRPA”), 765 Ill. Comp. Stat 1036/65, and Illinois common law (Counts III, IV, and V); and 4) unjust enrichment (Count VIII). Defendant moves the Court to dismiss the complaint.

         The Court grants in part and denies in part Defendant's motion. Because Plaintiff has sufficiently pleaded his claim of false designation of origin and unfair competition, as well as for trademark infringement, he may proceed with Counts I, II, VI, VII, and VIII. Plaintiff has not sufficiently alleged his trademark dilution claims, so the Court dismisses Counts III, IV, and V.

         BACKGROUND [2]

         Plaintiff has practiced in the field of pain medicine for eighteen years. He entered medical school when he was sixteen through an accelerated honors program. He then completed an internship in internal medicine at Northwestern University before completing a residency and fellowship at Henry Ford Hospital in Detroit, Michigan. During his fellowship, Plaintiff trained in interventional spine and pain management, and he is now a board-certified anesthesiologist. Plaintiff cultivated his practice and reputation around the conservative use of pain medicine, only prescribing opioids after a thorough evaluation of his patient's needs and exhausting other options. With the rise of the “opioid epidemic, ” Doc. 1 ¶¶ 17-20, Plaintiff has spoken publicly about the dangers of over-prescribing opioids and the need for educating physicians who are not trained in pain management. He has spoken “at over 600 conferences and presentations” on this topic, “including PAINWeek, the largest Pain Management Conference in the United States.” Id. ¶ 19. He has also worked for the Department of Substance Abuse at the World Health Organization in Geneva, Switzerland. In 2011, Plaintiff founded NPC, which operates two clinics and two surgical centers in the Chicago metropolitan area. NPC's “primary stock in trade” is the pain management services and reputation of Plaintiff, who is its sole treating physician. Id. ¶ 16. NPC and Plaintiff have used the name Dr. Jay Joshi prominently in their advertisements and have spent over $1 million to market their services.

         Until recently, Defendant practiced general medicine at Prestige, located in Illinois and Indiana. As a family medicine physician, Defendant did not specialize in any particular area of medicine, nor did he receive training specifically in anesthesiology or pain medicine. At some point, however, Defendant began marketing himself as a pain specialist, utilizing his shared name with Plaintiff and capitalizing on Plaintiff's reputation for pain management. For example, Defendant purposely combined or failed to fix his contact information on Plaintiff's online professional profiles, and he misappropriated Plaintiff's credentials and patient reviews in his marketing. He also “gave interviews to journalists who were trying to get in touch with, and then thought they were speaking with, ” Plaintiff. Id. ¶ 23.

         As a result of Defendant's actions, more people began seeking treatment at Prestige, to the point where Defendant saw thirty to forty pain patients a day. Between April and December 2017, Defendant issued more than 6, 000 prescriptions for controlled substances, and he became one of the leading prescribers of pain medications in the state of Indiana. In January 2018, prosecutors indicted Defendant for illegally prescribing opioids. The indictment alleged that Defendant signed prescriptions without seeing patients, and that he had his staff give out prescriptions while he was on vacation. In July 2018, Defendant pleaded guilty to illegally prescribing opioids. The news on local television stations, online, and in print, including in the Chicago Tribune reported on the indictment and subsequent plea.

         The publicity surrounding Defendant's criminal case took its toll on Plaintiff and NCP. Other physicians stopped referring their patients to Plaintiff because they thought he was the one who had been indicted. People that Plaintiff “ha[d] known for years, even decades” stopped associating with him. Id. ¶ 27. Plaintiff typically gave over fifty presentations a year at different conferences, but “has not received a single invitation to speak” since Defendant's indictment. Id.


         A motion to dismiss under Rule 12(b)(6) challenges the sufficiency of the complaint, not its merits. Fed.R.Civ.P. 12(b)(6); Gibson v. City of Chicago, 910 F.2d 1510, 1520 (7th Cir. 1990). In considering a Rule 12(b)(6) motion to dismiss, the Court accepts as true all well-pleaded facts in the plaintiff's complaint and draws all reasonable inferences from those facts in the plaintiff's favor. AnchorBank, FSB v. Hofer, 649 F.3d 610, 614 (7th Cir. 2011). To survive a Rule 12(b)(6) motion, the complaint must not only provide the defendant with fair notice of a claim's basis but must also be facially plausible. Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009); see also Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). “A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal, 556 U.S. at 678.


         Defendant first argues that Plaintiff cannot state a claim for false designation of origin, sponsorship, or endorsement, and unfair competition under the Lanham Act because Defendant did not use false or misleading representations to convey that Plaintiff endorsed or sponsored Defendant's medical services. Second, Defendant maintains that the Court should dismiss Plaintiff's trademark infringement claims because he does not have a protectable mark in the name Dr. Jay Joshi. Third, Defendant asserts that even if Dr. Jay Joshi is a valid mark, Plaintiff has not sufficiently alleged that it is famous to support his trademark dilution claims. Fourth, Defendant asserts that the Court must dismiss the Illinois trademark dilution claims because Plaintiff and Defendant are competitors.

         Although Defendant moves to dismiss the entire complaint, the parties agree that the Court need not address each count separately. Plaintiff's federal, state and common-law claims are largely analyzed in the same way. IPOX Schuster, LLC v. Nikko Asset Mgmt. Co., 304 F.Supp.3d 746, 759 (N.D. Ill. 2018) (“The Court applies the same analysis for the Lanham Act and common law claims.”); Spex, Inc. v. Joy of Spex, Inc., 847 F.Supp. 567, 579 (N.D. Ill. 1994) (“Claims for unfair competition and deceptive business practices brought under Illinois statutes are to be resolved according to the principles set forth under the Lanham Act.”). Because Plaintiff's unjust enrichment claim depends on the same underlying conduct, the Court considers it as well under the federal analysis. Cleary v. Philip Morris Inc., 656 F.3d 511, 517 (7th Cir. 2011) (“[I]f an unjust enrichment claim rests on the same improper conduct alleged in another claim, then the unjust enrichment claim will be tied to this related claim-and, of course, unjust enrichment will stand or fall with the related claim.”). The Court excludes only Plaintiff's trademark dilution claims, which the Court analyzes differently under federal and state law. Doctor's Data, Inc. v. Barrett, 170 F.Supp.3d 1087, 1100 n.9 (N.D. Ill. 2016). Therefore, with the exception of Plaintiff's dilution claims, the Court “will treat this case as a federal Lanham Act case, analyzing the parties' contentions under the principles and case law of that statute.” TMT N. Am., Inc. v. Magic Touch GmbH, 124 F.3d 876, 881 (7th Cir. 1997).

         Before considering Defendant's arguments, the Court briefly addresses its subject matter jurisdiction to hear NPC's claims. Defendant argues, in a footnote, that because NPC does not own any rights in the name Dr. Jay Joshi, it does not have standing to assert any claims under the Lanham Act. But the only case Defendant cites, Gruen Marketing Corp. v. Benrus Watch Co., specifically states that a party has standing to assert a claim if it has a “reasonable interest to protect, which some courts have characterized as a commercial interest.” 955 F.Supp. 979, 983 (N.D. Ill. 1997) (citation omitted). NPC has ...

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