Maui Jim, Inc. v. Smartbuy Guru Enters.
386 F. Supp. 3d 926
E.D. Ill.2019Background
- Maui Jim (plaintiff) — Illinois-based sunglasses maker — sued SmartBuyGlasses entities (SBG, foreign online retailers) for trademark counterfeiting/infringement, false advertising, dilution (Lanham Act), copyright infringement, Illinois deceptive trade practices, and tortious interference. SBG sells many designer brands and sells Maui Jim frames (often fitted with third‑party prescription lenses).
- SBG counterclaimed alleging trade disparagement, defamation, Sherman Act §1 antitrust, California Cartwright Act and UCL claims, violation of Article 101 TFEU (EU antitrust), and unjust enrichment; it also pleaded affirmative defenses including inequitable restraint of trade and unclean hands.
- SBG alleges Maui Jim publicly and to customers/customs officials called SBG a seller of counterfeit/non‑genuine Maui Jim products and used litigation/discovery to identify and terminate SBG suppliers, impairing SBG’s supply and business.
- Maui Jim moved to dismiss many counterclaims under Rule 12(b)(6), moved to dismiss the EU claim on forum non conveniens/international comity grounds, and moved to strike two affirmative defenses under Rule 12(f).
- The court accepted well‑pleaded facts as true and dismissed or sustained claims as follows (key outcomes summarized below).
Issues
| Issue | Maui Jim (plaintiff) argument | SBG (defendant/counterclaimant) argument | Held |
|---|---|---|---|
| Trade disparagement (Illinois UDTPA/common law) | No Illinois nexus; UDTPA requires transaction/circumstances primarily and substantially in Illinois; dismiss | No territorial limits; statements harmed SBG in marketplace | Dismissed with prejudice — SBG failed to allege sufficient connection to Illinois (residence, location of misrepresentations, damages, communications) |
| Defamation (per se) — press release and communications to customers/customs | Some statements are nonactionable opinion or substantially true; alleged press‑release text is innocently construable | Press‑release and statements to customers/customs falsely called SBG a seller of counterfeit goods and caused lost business | Partially granted/partially denied: claims based on communications to customers and customs (¶¶29–30) survive; claims based on the press‑release language (¶28) dismissed with prejudice under innocent‑construction rule |
| Sherman Act §1 (federal antitrust) | SBG fails to plead antitrust injury and fails to define a plausible relevant market (single‑brand market improper) | Alleged restraints on distributors and terminations harmed SBG by restricting its supply and raising prices | Dismissed with prejudice — SBG alleged no cognizable antitrust injury (it is a direct competitor) and failed to plead a plausible relevant market beyond single‑brand Maui Jim sunglasses |
| California Cartwright Act & UCL claims | (MJ) SBG lacks standing/injury and fails to tie claimed injuries to anticompetitive conduct; statute of limitations/connection to California | (SBG) Cartwright standing broader than federal antitrust; injuries from loss of supply and terminations | Dismissed with prejudice — SBG failed to plausibly show injury flowing from unlawful conduct and did not connect conduct to California jurisdiction/harms |
| EU antitrust (Article 101 TFEU) | (MJ) Claim should be dismissed on forum non conveniens / comity grounds — key witnesses/documents and governing law are in EU; adjudication risks difficult/novel EU law issues | (SBG) EU forums are adequate but dismissal is unnecessary; U.S. forum appropriate; overlap with U.S. claims | Dismissed on forum non conveniens — adequate EU forums exist and private/public factors (esp. local interest and application of EU law/comity) favor Europe |
| Unjust enrichment | (MJ) Noerr‑Pennington bars penalizing Maui Jim for filing suit; claim improperly attacks litigation conduct | (SBG) Unjust enrichment alleges conduct beyond suit (e.g., defamatory statements) and links Maui Jim’s enrichment to SBG’s losses | Survives — Noerr‑Pennington does not bar unjust‑enrichment allegations that rest on non‑petitioning conduct (defamation and other business‑harm allegations survive) |
| Motions to strike affirmative defenses (inequitable restraint of trade; unclean hands) | Strike: first defense depends on failed Sherman Act claim and §33(b)(7) fails; fourth defense improperly asserts unclean hands based only on filing suit | SBG: first defense coterminous with Sherman Act; §33(b)(7) may be standalone; unclean hands refers to trademark use/intent beyond suit | First affirmative defense (antitrust misuse/§33(b)(7)) struck with prejudice; fourth (unclean hands) struck without prejudice (claim here alleged only improper filing, which is legally insufficient) |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (pleading must be plausible, not merely conceivable)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (antitrust complaint must plead facts making conspiracy plausible)
- Piper Aircraft Co. v. Reyno, 454 U.S. 235 (1981) (forum non conveniens framework and balancing factors)
- Sinochem Int'l Co. v. Malaysia Int'l Shipping Corp., 549 U.S. 422 (2007) (doctrine allows dismissal on forum non conveniens grounds)
- Brunswick Corp. v. Pueblo Bowl‑O‑Mat, Inc., 429 U.S. 477 (1977) (antitrust injury must be of the type the antitrust laws were intended to prevent)
- Eastman Kodak Co. v. Image Technical Servs., Inc., 504 U.S. 451 (1992) (single‑brand market may rarely be recognized where products are unique or customers locked in)
- Avery v. State Farm Mut. Auto. Ins. Co., 216 Ill. 2d 100 (2005) (Illinois statutes have no extraterritorial effect absent clear intent; UDTPA/consumer transaction nexus factors)
- Bryson v. News Am. Publ'ns, Inc., 174 Ill. 2d 77 (1996) (defamation per se categories and innocent construction doctrine)