Choon's Design, LLC v. Zenacon, LLC et al

Filing 53

OPINION AND ORDER denying #51 Motion to Reassign Case.. Signed by District Judge Patrick J. Duggan. (MOre)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
CHOON’S DESIGN LLC,
Plaintiff,
v.

Civil Case No. 13-13568
Honorable Patrick J. Duggan

ZENACON, LLC, STEVEN VERONA,
and GEEKY BABY, LLC,
Defendants.
______________________________/
OPINION AND ORDER DENYING PLAINTIFF’S MOTION FOR
REASSIGNMENT OF CASES
This case presently is before the Court on a “Motion for Reassignment of
Cases” filed by Plaintiff Choon’s Design, LLC (“Choon’s Design”) on March 18,
2014. In the motion, Choon’s Design asks this Court to reassign to itself the
various cases Choon’s Design has filed in this District against alleged infringers of
its patent for an invention sold under the trademark Rainbow Loom®. In support
of the motion, Choon’s Design relies on Eastern District of Michigan Local Rule
83.11(b).
Factual and Procedural Background
In late 2011, Choon’s Design introduced its Rainbow Loom product to the
market. (Second Am. Compl. ¶ 8.) The Rainbow Loom is a loom designed to be

used with rubber bands to form links for making bracelets, necklaces, and other
items. (Id.) By the Summer of 2013, the Rainbow Loom was touted as the
“ ‘Summer’s hottest craft craze’ ” and store owners indicated that it was “[t]he
summer obsession” and was “flying off shelves so quickly that stores [couldn’t]
keep them in stock for long.” (Id. ¶¶ 11, 12.)
Choon’s Design has a United States registered trademark for RAINBOW
LOOM and uses the mark in connection with the Rainbow Loom product. (Id.
¶ 14, Ex. B.) Choon’s Design also owns several United States Patents that cover
the Rainbow Loom product. (Id. ¶ 28.) Specifically, on July 16, 2013, the United
States Patent and Trademark Office (“USPTO”) issued United States Patent No.
8,485,565 (“the ‘565 patent”), entitled “Brunnian Link Making Device and Kit.”
(Id. ¶ 29, Ex. E.) On December 31, 2013, the USPTO issued United States Design
Patent No. D696,576 (“the ‘576 design patent”), entitled “Clip for Securing Elastic
Bands.” (Id. ¶ 34, Ex. F.)
According to Choon’s Design, several companies have starting selling
products that imitate the Rainbow Loom product, including Defendants in this
case: Zenacon, LLC and Geeky Baby LLC. (Id. ¶ 15.) Defendant Steven Verona
is the owner of Zenacon and Geeky Baby. (Id. ¶ 6.) Choon’s Design alleges that
Defendants in fact initially sold the Rainbow Loom product alongside Defendants’
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imitating “Fun Loom,” without Choon’s Design permission. (Id. ¶ 21.)
Choon’s Design alleges that Defendants’ Fun Loom infringes one or more
claims of the ‘565 patent. (Id. ¶ 33.) Choon’s Design also alleges that Defendants
use the RAINBOW LOOM mark in connection with the sale of Defendants’
products and have used the mark, or confusingly similar variations thereof, as
domain names for websites to sell similar products without the permission of
Choon’s Design. (See, e.g., id. ¶¶ 23, 26-27.)
The Rainbow Loom product comes with “c-clips” which are used to hold
together the ends of a bracelet or necklace created on the Rainbow Loom product.
(Id. ¶ 13.) The ‘576 design patent relates to these c-clips. The clips “have a unique
and non-functional ‘c’ shaped design, creating a distinctive look and feel for the
clip used to connect rubber bands” and Choon’s Design “exclusively uses this
trade dress design for the c-clips that it sells with the Rainbow Loom.” (Id. ¶¶ 16,
17.) Choon’s Design alleges that the “c-clip trade dress is unique” and that
Defendants copied this trade dress. (Id. ¶¶ 18, 19.)
In response to Defendants’ conduct, Choon’s Design filed this lawsuit on
August 19, 2013, alleging various claims under the United States Patent Act and
Lanham Act and Michigan law. Specifically, in its Second Amended Complaint
filed January 31, 2014, Choon’s Design alleges: (I) direct infringement of the ‘565
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patent; (II) contributory infringement of the ‘565 patent; (III) inducing
infringement of the ‘565 patent; (IV) infringement of the RAINBOW LOOM mark
in violation of the Lanham Act, 15 U.S.C. § 1114; (V) trademark infringement
(specifically, false designation of origin) in violation of the Lanham Act, 15 U.S.C.
§ 1125(a); (VI) trade dress infringement in violation of the Lanham Act, 15 U.S.C.
§ 1125(a); (VII) cyberpiracy in violation of the Lanham Act, 15 U.S.C. § 1125(d);
(VIII) violation of the Michigan Consumer Protection Act, Mich. Comp. Laws
§ 445.903(1); (IX) unfair competition in violation of Michigan common law; and
(X) infringement of the ‘576 design patent. (ECF No. 35.)
Subsequent to the filing of the present lawsuit, Choon’s Design initiated
several additional lawsuits against other alleged infringers of the ‘565 patent which
have been assigned to different judges within this District. As of the filing of the
pending motion, those lawsuits are:
Case No.

Named Defendant(s)

Assigned Judge

Date Filed

13-13569

LaRose Indus., LLC, et al.

Hon. Terrence G. Berg

8/19/13

14-10847

NGS iCommerce Enter. Corp.

Hon. Stephen J. Murphy
III

2/24/14

14-10848

Tristar Products, Inc.

Hon. Victoria A. Roberts

2/24/14

14-11102

Quality Innovations, Inc.

Hon. Robert H. Cleland

3/14/14

The cases are at varying stages of the litigation process. When initiating these

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lawsuits, Choon’s Design did not identify them as possible companion matters to
the above-captioned matter.1
In fact in its pending motion, Choon’s Design acknowledges that the matters
are sufficiently different that they probably cannot be consolidated as companion
matters. (ECF No. 51 at Pg ID 1134.) Nevertheless, Choon’s Design filed the
pending motion because it believes docket and/or judicial efficiency may be best
served if the cases are brought before a single judge. (Id.) Choon’s Design
contends that “similar legal issues may be raised in all of the Pending Suits[]” and
that “[e]ach of the Pending Suits will likely require the court to conduct a
‘Markman hearing’ by which the court determines the proper meaning of Choon’s
Design patent claims.” (Id. at Pg ID 1136, emphasis added.) Choon’s Design
believes that subsections (2) and (3) of Eastern District of Michigan Local Rule
83.11(b) therefore support its request for reassignment.
Analysis
Local Rule 83.11(b), titled “Reassignment of Civil Cases[,]” provides in
relevant part:
(2) To promote docket efficiency, or to conform to the requirement of

1

Eastern District of Michigan Local Rule 83.11 requires counsel to “bring
companion cases to the court’s attention by responding to the questions on the civil
case cover sheet or in the electronic filing system.” E.D. Mich. LR 83.11(7)(C).
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any case management plan adopted by the Court, or upon consent of
the parties, or after notice and hearing, or in the interests of justice, the
Chief Judge may order a civil case to be reassigned, but only with the
consent of the Judge to whom the case was originally assigned and
with the consent of the Judge to whom it is to be reassigned.
(3) To promote judicial efficiency in cases not requiring reassignment
under these Rules, the Judges, after notice to the parties and
opportunity to respond, may jointly order consolidation of some or all
aspects of related cases.
E.D. Mich. Local Rule 83.11(b). The rule does not provide for, nor invite, motions
by counsel. As the rule plainly states, reassignment decisions lie within the
collective discretion of the judges to whom the cases are assigned, and the Chief
Judge with respect to subsection (2). This alone precludes this Court from granting
the pending motion.
In addition, it is not at all evident that bringing the pending cases filed by
Choon’s Design before one judge will promote docket and/or judicial efficiency.
First, Choon’s Design has not identified which claim(s) of its ‘565 patent are
infringed by the defendants in the various matters. As such, it is not apparent that
construction of the same claims will be required in any Markman hearings
conducted in these cases. Relatedly, while Choon’s Design alleges infringement of
the ‘565 patent by all of the defendants it has sued, it also asserts infringement of
one or more other patents and/or trademarks in the pending matters, and not all of

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the cases involve the same additional patents or trademarks.2
Next, the matter pending before this Court involves a larger breadth of
claims than all but one of the other cases brought by Choon’s Design.2 Here,
Choon’s Design alleges numerous claims under the Lanham Act and Michigan law
that are not asserted in the cases pending before Judge Berg, Judge Murphy, or
Judge Roberts. Finally, aside from a potential overlap of the claim(s) that may
need to be construed at Markman hearings, there is no apparent overlap of the
other issues to be litigated in the different lawsuits. Each case involves different
defendants with different products that allegedly infringe upon Choon’s Design’s
Rainbow Loom product. The different defendants do not necessarily use the same
channels to market their alleged infringing products, did not necessarily begin
competing with Choon’s Design at the same time, and their alleged infringement

2

Specifically, the above-captioned matter involves the ‘565 patent and the
‘576 design patent. Choon’s Design does not allege infringement of the ‘576
design patent in any other case. The cases before Judge Murphy, Judge Roberts,
and Judge Cleland involve the ‘565 patent, as well as United States Patent No.
8,622,441. Unlike any of the other cases, Choon’s Design asserts infringement of
United States Trademark Registration No. 4,345,796 in the case assigned to Judge
Cleland.
2

The claims asserted by Choon’s Design in the present matter overlap the
claims it asserts in the case before Judge Cleland. Nevertheless, except for the
‘565 patent, those claims relate to different trademarks or patents than the present
matter.
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has not necessarily caused the same damage(s) to Choon’s Design. As such,
discovery in the various matters is not likely to overlap.
For these reasons, the Court concludes that neither docket nor judicial
efficiency will be served by bringing the lawsuits filed by Choon’s Design before a
single judge.
Accordingly,
IT IS ORDERED, that Plaintiff’s Motion for Reassignment of Cases is
DENIED.
Dated: April 10, 2014

s/PATRICK J. DUGGAN
UNITED STATES DISTRICT JUDGE

Copies to:
Brian S. Tobin, Esq.
Steven C. Susser, Esq.
Amy E. McCracken, Esq.
Hon. Gerald E. Rosen
Hon. Terrence G. Berg
Hon. Stephen J. Murphy
Hon. Victoria A. Roberts
Hon. Robert H. Cleland

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