A Chicago federal judge has ruled a suburban doctor, who is suing another doctor for allegedly taking advantage of the coincidence of having the same name as the first doctor to abet criminal opioid distribution, has sufficient “niche” name recognition to proceed with his case.
The Aug. 1 decision was issued by Judge Sara Ellis, of U.S. District Court for the Northern District of Illinois. The ruling favored Dr. Jay Joshi in his action against Dr. Jay K. Joshi, which was filed in August 2018.
Jay Joshi, the plaintiff, said he focuses on pain management, running National Pain Centers in suburban Vernon Hills, Hoffman Estates and Elk Grove Village.
The other Dr. Joshi was from Burr Ridge, practicing in the Chicago area and Indiana through Prestige Clinics, until his medical license was revoked, according to records. He reported July 1 to federal prison to serve 15 months for illegally dispensing opioids.
The plaintiff Joshi alleged the other Joshi is an “opportunistic physician cum business person,” who hijacked plaintiff’s good name to “deceive patients” and turn his practice into a “lucrative pill mill." The consequences have been “devastating” for him, especially because he has been at the forefront of the fight against reckless opioid prescriptions, plaintiff said.
The plaintiff alleged defendant engaged in unfair competition, unjust enrichment, trademark infringement and trademark dilution. Defendant moved to dismiss the suit.
The judge found enough substance to the competition, enrichment and infringement allegations for those counts to survive her review. Ellis said plaintiff plausibly argued his name has the status of a trademark, which is needed for the suit to go forth, and adequately alleged defendant sowed confusion around that trademark by misappropriating plaintiff’s credentials, which included giving interviews to journalists who wrongly believed he was the plaintiff.
“This confusion alone suggests that Plaintiff’s name acquired the qualities of a mark,” Ellis said.
However, Ellis tossed the trademark dilution count, applying the criteria of the Federal Trademark Dilution Act.
“It may well be true that Plaintiff has become ‘famous in the field of pain medicine.’ But Congress specifically amended the FTDA to eliminate ‘niche fame' and instead ‘uses the general consuming public’ as the benchmark. National or even international publicity is not enough,” Ellis said, quoting plaintiff's words and from a 2012 opinion by the U.S. Court of Appeals for the Federal Circuit.
As an example, Ellis pointed to a suit by the University of Texas concerning alleged misuse of its longhorn logo, in which a federal appellate court found the logo only had “niche fame,” despite millions of dollars in licensing royalties, retail sales of nearly $400 million and the logo’s display during nationally televised games.
A status hearing is set for Dec. 10.
Bortz Law Firm, of Chicago, is representing plaintiff.
Defendant is represented by the Chicago firm of Flachsbart & Greenspoon.