Specht et al v. Google Inc et al

Filing 373

WRITTEN Opinion entered by the Honorable Harry D. Leinenweber on 10/6/2011: For the reasons stated herein, Plaintiff's Motion for Entry of Judgment under Fed. R. Civ.P 54(b) is granted.Mailed notice(wp, )

Order Form (01/2005)

United States District Court, Northern District of Illinois
Name of Assigned Judge
or Magistrate Judge

Harry D. Leinenweber

CASE NUMBER

09 C 2572

CASE
TITLE

Sitting Judge if Other
than Assigned Judge

DATE

10/6/2011

Specht, et al. v. Google, Inc.

DOCKET ENTRY TEXT

For the reasons stated herein, Plaintiffs’ Motion for Entry of Judgment under Fed. R. Civ. P 54(b) is granted.

O[ For further details see text below.]

Notices mailed by Judicial staff.

STATEMENT
Before the Court is Plaintiffs' motion for entry of judgment under Federal Rule of Civil Procedure 54(b).
For the reasons stated below, there is no just reason to delay entry of a final judgment. Therefore, the
unopposed motion for entry of a Rule 54(b) judgment is granted.
I. BACKGROUND
Plaintiffs filed a five count Second Amended Complaint against Google for: trademark infringement
under the Lanham Act (Count I); unfair competition under the Lanham act (Count II); violation of Illinois
Deceptive Trade Practices Act (Count III); common law trademark infringement (IV); and contributory
infringement (Count V).
Google filed a seven count counterclaim against Plaintiffs for: cancellation of trademark registration
(Count I); fraudulent procurement of registration (Count II); a declaratory judgment of invalidity and
unenforceability of trademark rights due to abandonment (Count III); a declaratory judgment of invalidity and
unenforceability due to fraudulent procurement (Count IV); declaratory judgment of non-infringement (Count
V); unfair competition under the Lanham Act (Count VI); and common law unfair competition (Count VII).
On December 17, 2010, the Court entered summary judgment against Plaintiffs on the entire Second
Amended Complaint and on Counts I and III of Google's counterclaims. On February 24, 2011, the Court
granted Google's motion to dismiss is remaining counterclaims (Counts II, IV, V, VI, and VII) without
prejudice. Plaintiffs filed a notice of appeal.
On August 22, 2011, the Court of Appeals sua sponte dismissed Plaintiffs’ appeal as premature
because of the potential that Google could refile its counterclaims in the future. In response to the dismissal of
their appeal, Plaintiffs have filed this motion pursuant to Rules 54(b) and 60(b) of the Federal Rules of Civil
Procedure.
II. DISCUSSION
Rule 54(b) provides that "[w]hen an action presents more than one claim for relief – whether as a
claim, counterclaim, cross-claim, or third-party claim – or when multiple parties are involved, the court may
09C2572 Specht vs. Google, Inc.

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STATEMENT
direct entry of a final judgment as to one or more, but fewer than all, claims or parties only if the court
expressly determines that there is no just reason for delay."
“Proper entry of judgment under Rule 54(b) requires first that the district court reach a judgment that
is final in the sense that it completely disposes of a separate claim for relief or finally resolves all claims
against a particular party or parties.” United States v. Ettrick Wood Products, Inc., 916 F.2d 1211, 1217 (7th
Cir. 1990). The Court's ruling finally disposed of all claims against Google, and resolved Counts I and III of
Google's counterclaims against Specht. Although Google has only dismissed the remaining counterclaims
without prejudice, both parties agree that Google will not bring those claims again if the Court of Appeals
affirms this Court. Furthermore, because the two counterclaims on which the Court found for Google sought
only declaratory judgment and an order of cancellation of the trademark, no financial penalties or other
calculations remain for this Court perform. Accordingly, there is simply nothing left for this Court to rule on
in this case.
“Once it is established that the court's decision is “final,” Rule 54(b) requires the district court to
expressly find that “there is no just reason for delay” and to expressly direct entry of final judgment.” Id. The
court finds that there is no just reason for delay here, given that Plaintiffs and Defendant agree that the case is
at an end barring reversal or remand on appeal. It would ill serve the interests of justice and judicial efficiency
to require Google to litigate its dismissed counterclaims just to finalize the judgment.
III. CONCLUSION
For the reasons stated above, the court finds that there is no just reason to delay the entry of final
judgment and the appeal of its summary judgment ruling. It therefore grants Plaintiffs’ motion for entry of a
Rule 54(b) final judgment as to all counts of Plaintiffs’ Second Amended Complaint and Counts I and III of
Google's counterclaims.

09C2572 Specht vs. Google, Inc.

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