cases involve some of the same issues of fact or law; (3) the cases grow out of the same
transaction or occurrence; or (4) in class action suits, one or more of the classes involved in the
cases is or are of the same.”

Here, Alberto II meets the requirements of LR 40.4(a) for relatedness. It is undisputed
that the Sunstar Action, Alberto I, and Alberto II each arise from a dispute surrounding Sunstar’s
use of the 1999 Mark and the parties’ rights in the Licensed Trademarks. Further, each case has
at its core a claim for breach of the 1980 Agreements, and none are class actions suits. Thus,
LR 40.4(a) is satisfied.

Second, LR 40.4(b) requires that each of the following four criteria be met: “(1) both
cases are pending in this Court; (2) the handling of both cases by the same judge is likely to
result in a substantial saving of judicial time and effort; (3) the earlier case has not progressed to
the point where designating a later filed case as related would be likely to delay the proceedings
in the earlier case substantially; and (4) the cases are susceptible of disposition in a single
proceeding.”

Here, the first and fourth conditions are satisfied. Alberto IJ and the Consolidated Cases
are pending before the United States District Court for the Northern District of Illinois and, had
the cases been brought together in a timely manner, they likely would have been susceptible of
disposition in a single proceeding. The cases, however, fail to satisfy the second and third
conditions of LR 40.4(b).

The Court finds that LR 40.4(b)(3), which requires Movants to show that the
Consolidated Cases have not progressed to the point where designating Alberto IJ as related
would delay the proceedings in the Consolidated Cases substantially, has not been met.

Discovery closed in the Consolidated Cases approximately one year ago; dispositive motions



L

CONCLUSION
For the foregoing reasons, the Court denies without prejudice Movants’ Motion for

Reassignment Based on Relatedness [#0-1].

So Ordered. Entered:-7
onald A. Guzman
United States Judge

Dated: July 2, 2003


1980 Agreements. In response to Sunstar’s complaint, Alberto filed affirmative defenses and
counterclaims, and it initiated Alberto I. (Id. at 5.)

In Alberto I, which was attached to the Sunstar Action as a related case in July 2001,
Alberto complained that Sunstar’s use of the 1999 Mark was a supposed breach of the 1980
Agreements. It sought an injunction preventing Sunstar from using the 1999 Mark or the
Licensed Trademarks and requested termination of the License Agreement. The Consolidated
Cases proceeded through discovery. Then, following the close of discovery, Alberto moved to
amend the Alberto I complaint. Therein, Alberto sought to add counts alleging Sunstar’s failure
to keep the Licensed Trademarks in continuous use in violation of Japanese trademark-use
requirements and alleging Sunstar’s submission of false use certificates in violation of the 1980
Agreements. Jd. at 9. The court denied leave to amend, specifically stating that discovery had
closed and “the date for amendment of the pleadings ha[d] far passed.” (Order denying Pl.’s
Mot. for Leave to Amend Its Compl., Affirmative Defenses, and Countercls. (Oct. 29, 2002) (the
“Oct. 29, 2002 Order”).)

Alberto IJ is presently pending before another judge of this Court. In Alberto II, Alberto
raised issues virtually identical to those contained in its proposed amendment to the Alberto I
complaint, which the court denied leave to amend on October 29, 2002.

By the instant motion, Movants’ seek to reassign Alberto II based on relatedness with the
Consolidated Cases.

DISCUSSION

To reassign a case under LR 40.4, Movants must satisfy the requirements of LR 40.4(a)

and LR 40.4(b). First, LR 40.4(a) provides that “[t]wo or more civil cases may be related if one

or more of the following conditions are met: (1) the cases involve the same property; (2) the



were ruled upon on November 7, 2002. A trial date was initially set in the Consolidated Cases
for November 25, 2002, and they were transferred to this Court on November 14, 2002,
specifically for trial. Although a new trial date has not yet been set, the Consolidated Cases have
progressed to the eve of trial, whereas Alberto I] is merely six months old and pending on
preliminary motions. See Erwin y. City of Chicago, No. 90 C 905, 1998 WL 801830, at *2 (N.D.
Ill. Nov. 12, 1998) (denying reassignment where one case had progressed to the eve of trial but
the other had not); Robinson v. Burlington N.R..R.., No. 95 C 6781, 1997 U.S. Dist. LEXIS 7886,
at *4 (N.D. Ill. June 3, 1997) (denying reassignment where cases were not proceeding at the
same pace); S' Indust. v. GMI Holdings, No. 96 C 2232, 96 C 4140, 1996 U.S. Dist. LEXIS
18285, at *5 (N.D. Ill. Dec. 5, 1996) (same). Should Alberto II be reassigned based on
relatedness to the Sunstar Action and Alberto J at this time, it would inevitably lead to
substantial delay in disposition of these earlier cases.

Next, this Court finds there would be no “substantial” saving of judicial time and effort
as required by LR 40.4(b)(2). To the contrary, because the Consolidated Cases have progressed
to the eve of trial and Alberto II is at the pleadings stage, reassigning Alberto II based on
relatedness would not only delay the proceedings in the Consolidated Cases but it would be an
inefficient use of judicial time. /d, Moreover, a decision rendered in the Consolidated Cases
could collaterally estop relitigation of those issues in Alberto IJ, and the court could apply those
rulings when deciding this latter-filed case. See Research Res. v. Dawn Food Prods., No. 01 CV
1906, 2001 WL 1223556, at *9 (N.D. Ill. Oct. 11, 2001).

Even if Movants could satisfy LR 40.4(b)(2) and (3) on the merits, judges of this Court
have interpreted LR 40.4(c) to impose an obligation on Movants to specifically identify why

each of the four conditions for reassignment under LR 40.4(b) is met. Here, Movants failed to



Minute Order Form (06/97)

. .- United States District Court, Northern District of Hlinois
Name of Assighed Judge Ronald A. Guzman Sitting Judge if Other
or Magistrate Judge than Assigned Judge
CASE NUMBER Co C 736.2% 01C 5825 DATE 7/31/2003
CASE Sunstar, Inc. vs. Alberto-Culver Co., Inc.,et al
TITLE Alberto-Culver Co., Inc.,et al _v. Sunstar, Inc., et al

of the motion being presented.)

[In the following box (a) indicate the party filing the motion, e.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature

MOTION:

DOCKET ENTRY:

qd) Qa Filed motion of [ use listing in “Motion” box above.]

(2) Qa Brief in support of motion due

(3) im Answer brief to motion due___. Reply to answer brief due.

(4) im} Ruling/Hearingon_— set for at

(5) Qo Status hearing[held/continued to] [set for/re-set for]on__setfor__at

(6) Qa Pretrial conference[held/continued to] [set for/re-set for]on__—sset for at_—
(7) a Trialfset for/re-set for]on___—at

~@) oO (Bench/Jury trial] [Hearing] held/continued to___—_—_at

(9) im This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to}

COFRCP4(m) CLocal Rule 41.1 CFRCP41(a)(1) CFRCP41(a)(2).

without prejudice Movants’ Motion for Reassignment Based on Relatedness [0-1].

(dl) @ {For further detail see order attached to the original minute order.]

Ce | {Other docket entry] | ENTER MEMORANDUM OPINION AND ORDER: the Court denies

No notices required, advised in open court,

No notices required.
reqt number of notices

Notices mailed by judge’s staff.

AUG 1 9803

date docketed

Notified counsel by telephone.

ov | Docketing to mail notices.

ak \ initials

Mail AO 450 form. 4ynoo somusid sn

Copy to judge/magistrate judge.

shih id 16 Wr 60
“oni i960 403 C3 M4

Di received in
central Clerk's Office

courtroom
TBK deputy’s
initials

mailing deputy initials



“4

* comply with LR 40.4(c) because Movants’ motion merely asserts conclusions of law without
more. See Davis v. Quebecor World, No. 01 C 8014, 2002 WL 27660, at *3 (N.D. Ill. Jan. 10,
2002) (denying reassignment where movant failed to explain relatedness in sufficient detail to
satisfy LR 40.4(c)); Daniels v. Pipefitters’ Ass’n Local Union No. 597, 174 F.R.D, 408, 411
(N.D. Ill. 1997) (denying reassignment where movant failed to specifically explain how the
conditions for reassignment were met, but rather made general conclusory assertions that the
conditions were met). “This Court will not stray from the holdings of those courts so as to lower
the bar for pleading under LR 40.4(c), which requires [Movants] to explicitly articulate reasons
that satisfy each of the four LR 40.4(b) conditions.” Lawrence E. Jaffe Pension Plan v.
Household Int’l, No. 02 C 5893, 2003 WL 21011757, at *3 (N.D. Ill. May 5, 2003).

Finally, a judge of this Court previously denied Alberto leave to amend its complaint in
the Consolidated Cases. (Oct. 29, 2002 Order.) The recently-filed Alberto I! complaint is
comprised of issues virtually identical to those contained in its proposed amendment to the
Alberto I complaint. Therefore, this Court finds Alberto II is an inappropriate attempt to
circumvent this Court’s Order of October 29, 2002.

Movants in this case have failed to demonstrate how the handling of both cases by this
Court is likely to result in a substantial saving of judicial time and effort and that the
Consolidated Cases have not progressed to the point where designating Alberto IJ as related
would be likely to delay the proceedings in the Consolidated Cases substantially. Further, this

Court will not entertain Alberto’s thinly-veiled attempt to circumvent its Orders.



IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

SUNSTAR, INC.,
Plaintiff,
v.
ALBERTO-CULVER COMPANY, INC.
and BANK ONE CORPORATION f/k/a FIRST
NATIONAL BANK OF CHICAGO,

Defendants.

- and -

ALBERTO-CULVER COMPANY, a Delaware
Corporation,

Plaintiff,

ve

SUNSTAR, INC., a Japanese corporation, SUNSTAR
GROUP COMPANY (f/k/a Alberto-Sunstar Co., Ltd.), a
Japanese corporation, KANEDA, KASAN, KABUSHIKI
KAISHA, a Japanese corporation, and BANK ONE,
NATIONAL ASSOCIATION, as Trustee under Trust
Agreement No. 22-81196, dated February 27, 1980, a

national banking association,

Defendants.

Civil Action No. 01 C 0736

Judge Guzman tt BN

it -_ \ A\}
, Wie
®

Civil Action No. 01 C 5825

Judge Guzman

MEMORANDUM OPINION AND ORDER

This matter is before the Court on Sunstar, Inc. and Kaneda, Kosan, Kabushiki Kaisha’s

Motion for Reassignment Based on Relatedness pursuant to Local Rule 40.4 between Alberto-

Culver Co. v. Sunstar, No. 03 C 0123 (“Alberto IF’) and two previously consolidated cases



” pending before this Court — Sunstar v. Alberto-Culver Co., No. 01 C 0736 (the “Sunstar Action”)
and Alberto-Culver Co. v. Sunstar, No. 01 C 5825 (“Alberto I’) (collectively, the “Consolidated
Cases”). For the following reasons, the Court denies Movants’ motion without prejudice.

BACKGROUND

In February 1980, Sunstar, Inc. (“Sunstar”), Alberto-Culver Company (“Alberto”), and
Bank One, National Association f/k/a First National Bank of Chicago (“Bank One”) entered into
various agreements regarding the sale of Japanese VO5 trademarks (the “1980 Agreements”).
Specifically, Alberto sold and assigned certain Japanese VO5 trademark registrations (the
“Licensed Trademarks”) to Sunstar, to be held in trust by Bank One as Trustee for Sunstar’s
benefit for 99 years. Concurrently, the Trustee granted Sunstar a 99-year exclusive Japanese
trademark license for the Licensed Trademarks in Japan. After the 99-year term of the license
was over, Sunstar would assume full legal title to the Licensed Trademarks. (Sunstar’s Mot. for
Reassignment Based on Relatedness, Ex. E, at 3.)

In 1999, a dispute developed between Sunstar and Alberto regarding whether a particular
mark that Sunstar was using in Japan (the “1999 Mark”) was or was not within the scope of
Sunstar’s license rights under the 1980 Agreements. That dispute gave rise to the Sunstar
Action and Alberto I, which cases currently are pending before this Court and were consolidated
in August 2001. (/d.)

The Sunstar Action was filed in February 2001. In that action, Sunstar asserted various
tort and contract claims against Alberto and Bank One arising from Bank One’s suspension of
Sunstar’s license rights under the 1980 Agreements. The alleged ground for Bank One’s

suspension of Sunstar’s license rights was Sunstar’s use of the 1999 Mark in violation of the