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`Case: 1:17-cv-08940 Document #: 54 Filed: 09/05/18 Page 1 of 23 PageID #:523
`Case: 1:17-cv-08940 Document #: 54 Filed: 09/05/18 Page 1 of 23 PageID #:523
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF ILLINOIS
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`EASTERN DIVISION
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`No. 17 C 8940
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`Chief Judge Ruben Castillo
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`) )
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`) )
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`) )
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`LARRY FORD BANISTER II,
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`Plaintiff,
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`v.
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`JEFFREY STEWART FIRESTONE,
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`et al.,
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`Defendants.
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`MEMORANDUM OPINION AND ORDER
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`In this case, Larry Ford Banister II (“Plaintiff”) sues Jeffrey Stewart Firestone
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`(“Firestone”), Hongmei Chen a/k/a Lin Liu (“Chen”), and Chengze Liu adda Eric Liu (“Lin”)
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`(collectively “Defendants”) asserting violations of the Copyright Act, 17 U.S.C. § 101 el seq,
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`and related state law claims. (R. 18, Am. Compl.) Firestone moves to dismiss on various grounds
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`and to vacate the preliminary injunction entered by this Court. (R. 28, Mot. to Dismiss; R. 29,
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`Mot. to Vacate.) Plaintiff, in turn, moves to compel Firestone’s responses to discovery. (R. 45,
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`Mot. to Compel.) For the reasons stated below, Firestone’s motions are denied, and Plaintiffs
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`motion is granted in part and denied in part.
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`BACKGROUND
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`Plaintiff is an attorney licensed to practice law by the State of New York. (R. 18, Am.
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`Compl. ll 3.) He is also admitted to the general bar of this District. (Id) Plaintiff focuses his
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`practice on the defense oftrademark claims brought under the Lanharn Act, 15 U.S.C. § 1114 el‘
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`seq. , and he regularly represents Chinese defendants in cases brought in this District by the
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`Chicago-based intellectual property firm Greer, Burns, and Grain (“GBC”). (Id ll 4.) In order to
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`make the public aware of his legal services, he maintains a website at
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`Case: 1:17-cv-08940 Document #: 54 Filed: 09/05/18 Page 2 of 23 PageID #:524
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`wwwtrademarkviolationus. (Id) The website, available in both English and Mandarin, includes
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`a blog comprised of content created exclusively by Plaintiff. (Id)
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`Firestone is an attorney licensed in the State of Illinois and a member of the trial bar in
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`this District. (Id. 1i 5.) He, like'Plaintiff, regularly represents Chinese defendants in trademark
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`infringement cases brought by GBC in this District. (Id) Plaintiff alleges that on or about August
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`31, 2017, Chen and LiuI registered the domain www.gbclegalaid.us. (Id. it 6.) He claims that the
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`website was for a fictitious law firm called “I & L Intellectual Property Law Office,” (id 1] l3),
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`and contained content taken from Plaintiff’s website “in a cut and paste fashion,” (id. W 8-9, 15).
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`This included the “FAQ” section ofPlaintiff’s homepage and his blog spots entitled: “Did I
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`Infringe a Trademark”; “U.S. Trademark Litigation Process; “The Consequences of Not
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`Answering a U.S. Trademark Violation Suit”; “Jurisdiction for U.S. Trademark Violations”; and
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`“Don’t Blame PayPal.” (Id. W 9, 15.) He claims that the copied material even contained his logo
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`and stated that the content had been produced by him for purposes of attorney advertising. (Id.
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`‘H 25.)
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`According to Plaintiff, Defendants “own, operate and/or share interest in the Infringing
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`Website for the purpose of soliciting fees for the purported provision of legal services from
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`defendants in suits filed in this judicial district” by GBC alleging trademark infringement by
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`online retailers. (Id. ll 8.) He claims that Firestone entered into an agreement-with Chen and Liu
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`I At the time the complaint was filed, Plaintiff did not know the identity ofthe individual or individuals
`who had created the website, and instead he identified the Defendants simply as “Does No. 1—10.” (R. 1,
`Compl. at 1.) He suspected, although was unsure, that Firestone might be involved, given that the website
`included some of Firestone’s biographical information and listed his post office box in New York (the
`same address he lists on his filings in this case) as the contact for the website. (R. 5, Pl.’s Decl.; R. S-l,
`Website at 4—16; see also R. 40, Am. Mein. in Supp. of Mot. to Vacate at l4.) Through investigation,
`Plaintiff gained additional information suggesting that the website had been created by Chen and Liu with
`the involvement of Firestone. (See R. 22, Pl.’s Second Decl. fill 2-12.) Thereafter, he filed an amended
`complaint naming each of them as Defendants. (R. 18, Am. Compl.)
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`2
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`

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`Case: 1:17-cv-08940 Document #: 54 Filed: 09/05/18 Page 3 of 23 PageID #:525
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`in which Chen and Liu would solicit clients through the website using the name of the fictitious
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`law firm, and would then refer clients to Firestone, for which Firestone would pay Chen and Liu
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`a portion of the fees he collected. (Id 1] 14.) He further claims that Defendants posted the
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`materials from his website on their own website “for the purpose of making themselves appear
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`knowledgeable in American intellectual property law[.]” (Id ii 20.)
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`Based on these events, Plaintiff filed this action in December 2017 asserting claims under
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`the Copyright Act, as well as the Illinois Consumer Fraud and Deceptive Business Practices Act
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`(“ICFA”), 815 ILL. COMP. STAT. 510/1 et seq. , and the Illinois Attorney Act (“1AA”), 705 ILL.
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`COMP. STAT. 205/1 et seq. (R. 1, Comp]. W 12—27.) A few days after the complaint was filed,
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`Plaintiff moved for a temporary restraining order (“TRO”). (R. 6, Mot. for TRO.) At a hearing
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`held on December 20, 2017, the Court granted Plaintiff s motion and entered a TRO. (R. 11,
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`TRO.) Among other things, the TRO required Defendants to cease using Plaintiff’s copyrighted
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`works and to disable the disputed website. (Id. {[11 1-2.) The TRO also authorized Plaintiff to
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`notify Defendants of these proceedings via email. (Id. 1] 8.) The Court set a further status hearing
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`on January 3, 2018. (R. 10, Order.) At the hearing on January 3, 2018, the Court granted
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`Plaintiff s request to extend the TRO and set a further status on January 18, 2018. (R. 15, Min.
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`Entry.)
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`On January 12, 2018, Plaintiff filed an amended complaint alleging copyright
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`infringement by all Defendants, and violations of the ICFA and 1AA by Chen and Liu. (R. 18,
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`Am. Compl.) Plaintiff seeks monetary damages, inj unctive relief, attorneys’ fees, and other
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`relief. (Id) On that same date, Plaintiff separately moved for entry of a preliminary injunction,
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`which he noticed for January 18, 2018. (R. 19, Mot. for Prelim. Injunction; R. 20, Notice of
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`Motion.) On January 16, 2018, Defendants were served with the summons and complaint. (R. 26,
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`Case: 1:17-cv-08940 Document #: 54 Filed: 09/05/18 Page 4 of 23 PageID #:526
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`Summons Returned Executed.) On January 18, 2018, the Court held a hearing and converted the
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`TRO into a preliminary injunction. (R. 25, Prelim. Inj. Order.) None of the Defendants appeared.
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`(R. 24, Order.)
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`On February 7, 2018, Firestone filed an appearance through counsel. (R. 27,
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`Appearance.) He moved to dismiss the amended complaint on various grounds and separately
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`moved to vacate the preliminary injunction.2 (R. 27, Appearance; R. 28, Mot. to Dismiss; R. 29,
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`Mot. to Vacate.) In his motion to dismiss, he argues that Plaintiff has failed to state a claim and
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`that the Court lacks personal jurisdiction over him. (R. 39, Am. Mem. in Support of Mot. to
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`Dismiss.) In support of the motion to vacate, he argues that Plaintiff has failed to demonstrate an
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`entitlement to preliminary injunctive relief and that the injunction was entered “without due
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`process of notice.” (R. 40, Am. Mem. in Supp. of Mot. to Vacate.) Plaintiff responds that he has
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`adequately stated a claim for relief under federal pleading standards and that the Court can
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`properly exercise personal jurisdiction over Firestone given his contacts with this forum. (R. 41,
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`Resp. to Mot. to Dismiss.) Plaintiff further argues that the preliminary injunction was properly
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`entered and that such relief was necessary given Defendants” ongoing use of his copyrighted
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`material. (R. 42, Resp. to Mot. to Vacate.) Both motions are now fully briefed. (R. 43, Reply in
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`Supp. of Mot. to Dismiss; R. 44, Reply in Supp. of Mot. to Vacate.)
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`In March 2018, Plaintiff moved to compel discovery responses from Firestone, arguing
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`that he had failed to answer Plaintiff 3 request for the production of documents and
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`interrogatories served on him in January 2018. (R. 45, Mot. to Compel.) Firestone filed an
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`opposition to the motion and also filed discovery responses, (R. 49, Resp. to Mot. to Compel;
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`2 Firestcne’s supporting memoranda filed on that date were stricken by the Court for technical reasons,
`(R. 3 8, Min. Entry), but with the Court’s permission, he filed amended memoranda on February 25, 2018.
`(R. 39, Am. Mem. in Supp. of Mot. to Dismiss; R. 40, Am. Mem. in Supp. of Mot. to Vacate.)
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`4
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`Case: 1:17-cv-08940 Document #: 54 Filed: 09/05/18 Page 5 of 23 PageID #:527
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`R. 51-l, Disc. Resps.), but Plaintiff deems his responses inadequate in many respects. (R. 51,
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`Reply in Supp. of Mot. to Compel.) This motion is also ripe for adjudication.
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`ANALYSIS
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`I.
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`Firestone’s Motion to Dismiss
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`A.
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`Failure to State a Claim
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`Firestone first requests that Plaintiff“ 3 copyright claim be dismissed under Federal Rule
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`of Civil Procedure 12(b)(6). (R. 39, Am. Mem. in Supp. of Mot. to Dismiss at 6-9.) To survive a
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`motion to dismiss under Rule 12(h)(6), a complaint must “state a claim to relief that is plausible
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`on its face.” Ball All. Corp. v. Twombly, 550 U.S. 544, 570 (2007). “A claim has facial
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`plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable
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`inference that the defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S.
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`662, 678 (2009). A complaint does not need detailed factual allegations, but “a plaintiff’s
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`obligation to provide the grounds of his entitlement to relief requires more than labels and
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`conclusions, and a formulaic recitation of the elements of a cause of action will not do.”
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`Twombly, 550 U.S. at 555 (citation, internal quotation marks, and alteration omitted).
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`Determining whether a complaint states a plausible claim for relief is “a context-specific task
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`that requires the reviewing court to draw on its judicial experience and common sense.” Ashcroft,
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`556 U.S. at 679. In evaluating a motion to dismiss, the Court must accept the factual allegations
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`in the complaint as true and draw all reasonable inferences in Plaintiffs favor. Tobey v.
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`Chibucos, 890 F.3d 634, 645 (7th Cir. 2018).
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`in support of his motion to dismiss, Firestone argues that “the claims leveled against the
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`Defendant, Firestone, have no factual basis as no relevant and concrete evidence has been
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`tendered” showing that he was involved in the creation or operation of the website. (R. 39, Am.
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`Case: 1:17-cv-08940 Document #: 54 Filed: 09/05/18 Page 6 of 23 PageID #:528
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`Mom. in Supp. of Mot. to Dismiss at 12.) He argues that he was “totally unaware of the existence
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`of the website” and would “never be involved in drafting any infringement as described in the
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`pleadings.” (Id. at 4, 6.) In support he cites to his own affidavit and an affidavit he obtained from
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`Liu taking responsibility for the creation of the website, in addition to a printout of an online
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`“WeChat” exchange he had with Plaintiff approximately a month before this case was filed. (Id.
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`at 46.) He argues that “[a]ny argument that Firestone would hire or be formally involved with an
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`unsophisticated Chinese referral service or a fictive law firm to build an infringing website is not
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`credible.” (Id. at 8.)
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`Firestone misunderstands the nature of a Rule 12(b)(6) motion. In deciding a motion to
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`dismiss under Rule 12(b)(6), the Court must accept Plaintiffs allegations as true and make all
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`reasonable inferences in Plaintiff s favor. Tobey, 890 F.3d at 645. The Court cannot consider
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`evidence outside the complaint, nor is it appropriate for the Court to decide at the pleading stage
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`what actually occurred or whose account is more credible. See FED. R. Ctv. P. 12(d) (providing
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`that the Court cannot consider outside materials when deciding a motion to dismiss under Rule
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`12(b)(6)); Ashcroft, 556 US. at 679 (observing that “a court should assume [the] veracity” of the
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`plaintiff s allegations in deciding a Rule l2(b)(6) motion); Lucas 12. Ferrara Candy Co., No. 13
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`C 1525, 2014 WL 3611130, at *2 n.6 (N.D. lll. July 22, 2014) (rejecting the defendants’ “attack”
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`on the credibility ofplaintiff“s claims, which “misunderstands the posture of a motion under
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`I
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`Rule 12(b)(6), in which a court tests the sufficiency, but not the credibility, of factual
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`assertions”). The sole question is whether Plaintiff’s allegations, taken as true, state a plausible
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`claim for relief. Ashcroft, 556 US. at 678. The Court readily concludes that Plaintiff’s
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`allegations meet that standard.
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`Case: 1:17-cv-08940 Document #: 54 Filed: 09/05/18 Page 7 of 23 PageID #:529
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`The Copyright Act grants copyright owners the exclusive right to reproduce their
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`copyrighted works. 17 U.S.C. § 106(a). To establish a claim for copyright infringement, a
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`plaintiff must show: “(1) ownership of a valid copyright; and (2) unauthorized copying of
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`constituent elements of the worh that are original.” Hobbs v. John, 722 F.3d 1089, 1094 (7th Cir.
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`2013) (citation omitted). Unauthorized copying may be proved with either direct evidence, such
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`as an admission of copying, or more commonly, “by showing that the defendant had the
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`opportunity to copy the original (often called ‘access’) and that the two works are ‘substantially
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`similar,’ thus permitting an inference that the defendant actually did copy the original.” Peters v.
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`West, 692 F.3d 629, 633 (7th Cir. 2012). Plaintiff alleges that he had certain copyrighted material
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`on a publicly available website and that Firestone and the other Defendants “cut and paste[d]”
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`this material onto their own website (including his logo and attorney advertising disclaimer)
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`without his permission for their own financial gain. (R. 18, Am. Compl. 1H] l5, 21—29.) The Court
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`finds these allegations sufficient to state a claim for relief under the Copyright Act.3 Firestone’s
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`denials of wrongdoing and his demand for “evidence” must wait for later stages of the litigation.
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`Firestone makes a cursory reference to the Court’s ability to convert a motion to dismiss
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`into a motion for summary judgment. (R. 39, Am. Mem. in Supp. of Mot. to Dismiss at 10.) It is
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`true that the Court has discretion to take such action. See generally FED. R. CIV. P. 12(d); Hecker
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`v. Deere & Ca, 556 F.3d 575, 582—83 (7th Cir. 2009). But the Court is not required to take this
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`step, and declines to do so here. This case is still in the preliminary stages, and indeed, Firestone
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`3 Firestone raises additional arguments attacking the validity of the state claw claims. (R. 39, Am. Mem.
`in Supp. of Mot. to Dismiss at 14; R. 43, Reply in Supp. of Mot. to Dismiss at I3—l4.) However, he is not
`named as a Defendant in those claims. (R. 18, Am. Compl. ‘lfii 30—41.) He has not filed an appearance as
`counsel on behalf of Chen or Lin (indeed, these Defendants have never appeared or answered), and he has
`no authority to raise arguments on their behalf. See 28 U.S.C. § 1654 (“In all courts of the United States
`the patties may plead and conduct their own eases personally or by counsel[.]”); Lewis v. Leno—Smith Mg.
`Ca, 784 F.2d 829, 830 (7th Cir. 1986) (“{l]t is clear that an individual may appear in the federal courts
`only pro se or through counsel.”). Accordingly, the Court does not address these arguments.
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`7
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`

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`Case: 1:17-cv-08940 Document #: 54 Filed: 09/05/18 Page 8 of 23 PageID #:530
`Case: 1:17-cv-08940 Document #: 54 Filed: 09/05/18 Page 8 of 23 PageID #:530
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`has never even answered the amended complaint. He was obligated to do so in accordance with
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`the Mandatory Initial Disclosure Pilot Program notwithstanding the pendency of his motion to
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`dismiss, but to date no answer has been filed. (See R. 4, Notice of Mandatory Initial Disc.) It is
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`also apparent from Plaintiff’s motion to compel that the parties have only recently begun to
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`engage in discovery, and, for reasons more fully explained below, Firestone’s discovery
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`responses to date have been inadequate. Under these circumstances, the Court declines to convert
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`Firestone’s motion into a motion for summary judgment. The Court did not consider any of
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`Firestone’s outside evidence in deciding whether the amended complaint states a claim under
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`Rule 12(b)(6).4 See FED. R. CIV. P. 12(d).
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`Firestone also argues that dismissal is appropriate because “Plaintiff has not come to
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`court with clean hands.” (R. 39, Am. Mem. in Supp. of Mot. to Dismiss at l.) l-Iis argument is
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`based on a comment Plaintiff allegedly made to him before filing suit, outlined in detail in
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`Firestone’s affidavit, expressing disbelief that Firestone was involved in the website,
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`notwithstanding that Firestone’s biographical information and mailing address in New York
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`appeared on the website. (Id. at 1243.) The “unclean hands” doctrine does not present a viable
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`4 Notably, outside evidence can be considered in connection with deciding whether the Court has personal
`jurisdiction over a defendant. See Siege] v. HSBC Holdings, pic, 283 F. Supp. 3d 722, 728 (ND. 111. 20117)
`(observing that a court may “receive and weigh” affidavits and other outside evidence in determining
`whether it has personal jurisdiction over a party). Therefore, the Court did consider this evidence in
`connection with Firestone’s request for dismissal under Rule 12(b)(2), addressed below.
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`

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`Case: 1:17-cv-08940 Document #: 54 Filed: 09/05/18 Page 9 of 23 PageID #:531
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`basis to dismiss the complaint. Assuming the doctrine applies,5 it “permits courts to deny
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`equitable relief to parties who have themselves engaged in misconduct or acted in bad fait
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`.”
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`FDIC v. Urban P ’ship Bank, No. 17-CV—1517, 2018 WL 2021223, at *7 (ND. Ill. May 1, 2018).
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`But it would not impact a claim for legal remedies, like the monetary damages Plaintiff seeks
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`here. RBS Citizens, NA. v. Sanyou Imp, Inc., No. 11 C 1820, 2011 WL 2712744, at *4 (ND. Ill.
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`July 13, 2011) (“The doctrine of unclean hands applies if a party seeking equitable relief is guilty
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`of misconduct, fraud, or bad faith toward the party against whom relief is sought and the
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`misconduct is connected to the transaction at issue in the litigation. Significantly, the doctrine
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`only applies where the plaintiff seeks equitable relief.” (internal citation omitted)).
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`Additionally, unclean hands is an affirmative defense on which a defendant bears the
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`burden of proof. Maui Jim, Inc. v. SmartBuy Guru Enters, No. 1:16 CV 9788, 2018 WL 509960,
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`at *6 (ND. Ill. Jan. 23, 2018) (observing that “[u]nclean hands .
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`.
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`. is purely an affirmative
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`defense” (citation omitted)); Manley v. Boar/US. Inc. , No. l3-CV—5551 , 2016 WL 1213731, at
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`*4 (N.D. Ill. Mar. 29, 2016) (observing that the unclean hands doctrine is a “properly designated
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`and often raised affirmative defense”). It is inappropriate to dismiss a complaint under Rule
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`12(b)(6) based on an affirmative defense unless the plaintiff “pleads [himself] out of court” by
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`“admitting all the ingredients of an impenetrable defense” in the complaint itself. John K.
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`5 Firestone cites entirely to Illinois case law addressing the unclean hands doctrine related to claims
`arising under Illinois law. (R. 39, Am. Mern. in Supp. of Mot. to Dismiss at l2-l3 .) Here, however,
`Plaintiff is raising a claim against Firestone under the federal Copyright Act. (R. 18, Am. Cornpl. W 21-
`29.) There is a federal corollary to the unclean hands doctrine, but Firestone has not cited any federal
`case, nor could the Court locate any, applying the unclean hands doctrine to a claim under the federal
`Copyright Act. To the contrary, federal courts have questioned the applicability of the doctrine to such
`claims. See Big Daddy Games, LLC v. Reel Spin Studios, LLC, No. 12—CV-449—BBC, 2013 WL
`12233949, at *16-17 (WD. Wis. Apr. 10, 2013) (questioning applicability of the unclean hands doctrine
`to federal copyright claim); Video Views, Inc. v. Studio 2], Ltd, No. 84 C 43 0, 1986 WL 12052, at *3
`(N .D. Ill. Oct. 21, 1986) (finding “some doubt” about whether an unclean hands defense would apply to a
`federal copyright claim). The Court need not resolve this matter since Firestone’s invocation of the
`doctrine does not entitle him to dismissal for the reasons stated above.
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`

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`Case: 1:17-cv-O8940 Document #: 54 Filed: 09/05/18 Page 10 of 23 PageID #:532
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`Maciver Inst. for Pub. Policy, Inc. v. Schmitz, 885 F.3d 1004, 1014 (7th Cir. 2018) (citation and
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`alteration omitted). That is not the case here, as there is nothing in the amended complaint from
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`which the Court could conclude that Plaintiff engaged in misconduct in connection with the
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`infringing website that would preclude him from seeking equitable relief in this case. Indeed,
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`Firestone’s unclean hands argument relies entirely on extraneous information contained in his
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`own affidavit. (See R. 39, Am. Mem. in Supp. of Mot. to Dismiss at 12; R. 28-2, Firestone Aff.)
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`As stated above, this Court cannot consider outside evidence on a Rule 12(b)(6) motion, and the
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`Court has already declined to convert the motion to one for summary judgment. The Court
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`therefore does not consider this evidence,6 and finds no basis to dismiss the amended complaint
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`on grounds of “unclean hands.” Firestone’s request for dismissal under Rule 12(b)(6) is denied.
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`B.
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`Personal Jurisdiction
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`In the same motion, Firestone also moves to dismiss for lack of personal jurisdiction
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`under Rule l2(b)(2). (R. 39, Am. Mem. in Supp. of Mot. to Dismiss at 13-14.) “Personal
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`jurisdiction refers to a court’s power to bring a person into its adjudicative process.” N. Grain
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`Ming, LLC v. Greving, 743 F.3d 487, 491 (7th Cir. 2014) (citation and internal quotation marks
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`omitted). When a defendant moves for dismissal under Rule 12(b)(2), the plaintiff bears the
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`burden of establishing personal jurisdiction. Citadel Grp, Ltd. v. Wash. Reg 7 Med. C172, 536 F.3d
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`757, 760 (7th Cir. 2008). The Court can “receive and weig ” affidavits and other materials
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`6 The Court notes that even if the unclean hands doctrine were properly invoked, Firestone is relying on a
`statement Plaintiff allegedly made to him in November 2017, shortly after Plaintiff first became aware of
`the website; the crux of the statement was that Plaintiff initially did not believe Firestone was involved
`with the infringing website. (See R. 28-2, Firestone Aff. at 2—3 .) Firestone believes this statement proves
`that Plaintiff has no basis to bring a copyright claim against him. (10’) However, in response Plaintiff
`points to evidence he obtained since November 20l7 (which he submitted in support of his motion for
`preliminary injunction), showing that “to Plaintiff’s surprise and continued disappointment, Firestone was
`very much responsible for the infringing site.” (R. 41, Resp. to Mot. to Dismiss at 14; see also R. 22, Pi.’s
`Second Decl.)
`
`10
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`

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`Case: 1:17-cv-O8940 Document #: 54 Filed: 09/05/18 Page 11 of 23 PageID #:533
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`outside the complaint in determining whether personal jurisdiction exists. Siegel v. HSBC
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`Holdings, pic, 283 F. Supp. 3d 722, 728 (N .D. Ill. 2017). If the motion is decided on written
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`materials Without a hearing, the plaintiff need only make a primafacie case of personal
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`jurisdiction. Kipp v. Ski Enter. Corp. of Wise, Inc, 783 F.3d 695, 697 (7th Cir. 2015). The Court
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`must resolve any factual disputes in the plaintiff’s favor. N. Grain Mklg., LLC, 743 F.3d at 491.
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`Because Plaintiff has asserted a federal copyright claim, the Court’s subject matter
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`jurisdiction rests on federal question. 28 U.S.C. § 1331; 28 U.S.C. § 1338. The Copyright Act
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`contains no “special federal rule for personal jurisdiction,” so the Court must “look to the law of
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`the forum for the governing rule.” Advanced Tactical Ordnance Sys, LLC 12. Real Action
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`Paintball, Inc, 751 F.3d 796, 801 (7th Cir. 2014); see also FED. R. CIV. P. 4(k)(l)(A) (providing
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`that a federal court may properly exercise personal jurisdiction over aparty “who is subject to
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`the jurisdiction of a court of general jurisdiction in the state where the district court is located”).
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`Under the Illinois long~arn1 statute, the Court can exercise jurisdiction over a defendant so long
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`as it comports with the Due Process Clauses of the Illinois and federal Constitution. See 735 ILL.
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`COMP. STAT. 5/2—209(c) (“A court may also exercise jurisdiction on any other basis now or
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`hereafter permitted by the lllinois Constitution and the Constitution of the United States”).
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`These two inquiries are coextensive. Mobile Anesthesiologists Chi, LLC v. Anesthesia Assocs. of
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`Hons. Metroplex, PA, 623 F.3d 440, 443 (7th Cir. 2010) (observing that “there is no operative
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`difference” between the requirements of the Due Process Clauses of the Illinois and US.
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`Constitutions). The crux of the inquiry under either Clause is whether a defendant had “certain
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`minimum contacts with [the forum state] such that the maintenance of the suit does not offend
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`traditional notions of fair play and substantial justice.” Id. (citation and internal quotation marks
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`omitted) .
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`ll
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`Case: 1:17-cv-08940 Document #: 54 Filed: 09/05/18 Page 12 of 23 PageID #:534
`Case: 1:17-cv-O8940 Document #: 54 Filed: 09/05/18 Page 12 of 23 PageID #:534
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`What level of contacts are required depends on the type of personal jurisdiction at issue:
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`general or specific. Daimler AG v. Bauman, 571 U.S. 117, 126-27 (2014). General jurisdiction
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`refers to a court’s broad ability to hear “any and all” claims against a defendant whose contacts
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`with the forum are so “continuous and systematic” that he is “essentially at home” in the forum
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`state. Id at 127. Specific jurisdiction refers to Court’s ability to adjudicate a claim pertaining to
`an “activity or an occurrence” that takes place in the forum state. Goodyear Dunlap Tires
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`'
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`Operations, SA. v. Brown, 564 U.S. 915, 919 (2011). Plaintiff does not argue that Firestone, who
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`apparently resides in China and has a mailing address in New York, is “at home” in Illinois, and
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`instead focuses on specific jurisdiction. (R. 41, Resp. to Mot. to Dismiss at Sui 1; R. 28-2,
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`Firestone Aff.)
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`To exercise specific jurisdiction over a defendant, “the defendant’s suit—related conduct
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`must create a substantial connection with the forum State.” Walden v. Ftore, 571 U.S. 277, 284
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`(2014). To analyze this issue, courts look to whether “(1) the defendant has purposefully directed
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`his activities at the forum state or purposefully availed himself of the privilege of conducting
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`business in that state, and (2) [Whether] the alleged injury arises out of the defendant’s forum—
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`related activities.” Tamburo v. Dworkin, 601 F.3d 693, 702 (7th Cir. 2010) (citing Burger King
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`Corp. v. Rudzewicz, 471 U.S. 462, 472 (1985)). In addition, the Court must ensure that haling the
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`defendant into court in the forum would “comport with traditional notions of fair play and
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`substantial justice.” Id. For cases involving an intentional tort, “the inquiry focuses on Whether
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`the conduct underlying the claims was purposely directed at the forum state.” Id. The test for
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`determining whether a defendant has purposefully directed his or her activities at the forum state
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`has three elements. Id. at 703. First, the defendant must have engaged in “intentional conduct (or
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`‘intentional and allegedly tortious’ conduct)” Id. Second, the conduct must have been “expressly
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`12
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`Case: 1:17-cv-08940 Document #: 54 Filed: 09/05/18 Page 13 of 23 PageID #:535
`Case: 1:17-cv-O8940 Document #: 54 Filed: 09/05/18 Page 13 of 23 PageID #:535
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`aimed at the forum state.” Id. And finally, the defendant must know that the effects of the
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`allegedly intentional and tortious conduct “would be feltwethat is, the plaintiff would be
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`injured—in the forum state.” Id. The policy behind the purposeful—direction requirement is to
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`“ensure that an out-of—state defendant is not bound to appear to account for merely random,
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`fortuitous, or attenuated contacts with the forum state.” Id. (citation and internal quotation marks
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`omitted).
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`The Court concludes that these requirements are satisfied. Copyright infringement is a
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`tort, Peters, 692 F.3d at 633, and here Plaintiff alleges that Firestone’s infringement was
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`intentional, (R. 18, Am. Compl. fl 1, 10, 27). Plaintiff has submitted evidence showing that
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`Firestone and the other Defendants used the infringing website to directly target their activities
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`toward defendants in trademark cases brought in this District by the Chicago—based law firm
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`GBC. (R. 22, P1.’s Second Decl; R. 5—1, Website.) Indeed, public court documents reflect that
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`Firestone, an attorney licensed to practice in filinois, has filed appearances on behalf of
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`defendants in trademark cases brought by GBC in this District approximateiy 10 times since
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`2016. See, e.g., Monster Energy Co. v. P ’ships & Unincorporated Ass ’nS, 17 C 414 (ND. Ill.
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`filed Jan. 19, 2017); NBA Props. Inc. v. P ’ships & Unincorporated ASS ’ns, 16 C 11117 (ND. 111.
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`filed Dec. 6, 2016) Burberry Ltd. v. P ’ships & Unincorporated ASS ’ns, 16 C 10949 (ND. 111.
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`filed Nov. 30, 2016); MCM Holding AG 1). P ’SthS (1’: Unincorporated Ass 313, 16 C 10593 (ND.
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`111. filed Nov. 15, 2016); Luxortica Grp. 5111A v. P ’ships & Unincorporated Ass ’ns, 16 C 6850
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`(ND. 111. filed June 30, 2016); Levi Strauss (1’: Co. v. P ’Shnas & Unincorporated Ass ’ns, 16 C
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`4690 (ND. 111. filed Apr. 27, 2016); Richemonr Int’l SA v. P ’ships & Unincorporated ASS ’ns, 16
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`C 4085 (N .D. 111. filed Apr. 6, 2016); Richemont Int’l SA v. Liang, 16 C 1227 (ND. 111. filed Jan.
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`27, 2016); Luxott‘ica Grp. SPA v. Hao Li, 16 C 487 (ND. 111. filed Jan. 14, 2016). Plaintiff
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`Case: 1:17-cv-08940 Document #: 54 Filed: 09/05/18 Page 14 of 23 PageID #:536
`Case: 1:17-cv-O8940 Document #: 54 Filed: 09/05/18 Page 14 of 23 PageID #:536
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`attests that he also regularly represents defendants in trademark cases brought by GBC in this
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`District, and he claims that Defendants’ misuse of his copyrighted materials has injured him by
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`diverting clients who may have otherwise contracted for his services in this District. (R. 5, Pl.’s
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`Decl. '[fil 2, 7.)
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`Under these circumstances, the Court finds it appropriate to exercise personal jurisdiction
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`over Firestone with respect to Plaintiff 5 copyright claim.7 See Burger King Corp. , 471 U.S. at
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`474 (“[Tlhe Due Process Clause may not readily be wielded as a territorial shield to avoid
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`interstate obligations that have been voluntarily assumed”); Illinois v. Hemi Grp., LLC, 622 F.3d
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`754, 758 (7th Cir. 2010) (holding that out—of—state defendant had sufficient contacts with Illinois
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`to justify exercise of personal jurisdiction, Where defendant had “purposefully avail[ed] itself of
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`doing business in Illinois” through maintenance of website); Monster Energy Co. v. Wensheng,
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`136 F. Supp. 3d 897, 906—08 (N.D. Ill. 2015) (concluding that personal jurisdiction existed over
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`nonresident defendant, Where defendant’s alleged trademark violations caused injury to plaintiff
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`in Illinois); Deckers Corp. v. Does 1—500, No. 1:11 CV 00010, 2011 WL 4929036, at *2-3 (N.13.
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`Ill. Oct. 14, 2011) (concluding that personal jurisdiction existed over Chinaubased defendants
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`operating online stores offering to sell counterfeit products to the United States, including
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`Illinois). For these reasons, the motion to dismiss is denied.
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`II.
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`Firestone’s Motion to Vacate
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`In his second motion, Firestone moves to vacate the preliminary injunction pursuant to
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`Federal Rule of Civil Procedure 60(b). (R. 29, Mot. to Vacate at 1.) He argues that Plaintiff is
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`7 The Court makes no determination about whether personaljurisdiction exists over Chen and Liu, as they
`have never appeared in this case. Firestone again purports to raise arguments on their behalf, (R. 43,
`Reply in Supp. of Mot. to Dismiss at 4—5), but as outlined above in footnote 3, he has no authority to do
`so.
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`14
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`Case: 1:17-cv-08940 Docum