Irwin IP Obtains Rare Maximum Statutory Damages Award and Permanent Injunction for Oasis Legal Finance Operating Company, LLC

On September 9, 2020, Honorable Judge Gettleman awarded Irwin IP’s client, Oasis Legal Finance Operating Company, LLC (“Oasis”), the maximum statutory damages on its cybersquatting claim against Gary Chodes and his wholly-owned entity Oasis Disability Group (“ODG”) (Gary Chodes and ODG are referred to collectively as “Chodes”)The court also ordered Chodes to transfer the infringing domain to Oasis, and to cease and desist further use of the name Oasis in connection with any legal funding or similar business.

This latest victory for Oasis is the fourth significant pre-trial victory Irwin IP has achieved for Oasis in its battle with its former Chief Executive Officer.  On February 8, 2018, Judge Gettleman ruled on summary judgment that Oasis’s predecessor transferred the Oasis trademark to Oasis as part of the funding transaction wherein Oasis was formed, and its predecessor (which was controlled by Gary Chodes) did not retain ownership of the mark.  Then, on April 15, 2020, Judge Gettleman granted Oasis’s motion for summary judgment of liability on all but one count of its complaint, including that Chodes was liable for cybersquatting and trademark infringement.  Oasis Leg. Fin. Operating Co., LLC v. Chodes, 17 C 358, 2020 WL 1874097, at *3 (N.D. Ill. Apr. 15, 2020).  Thereafter, Oasis promptlyrequested that the Court award Oasis the maximum in statutory damages for Chodes’ cybersquatting, order transfer of the infringing domain name, and enter a permanent injunction.  While the Court was considering Oasis’s requests, the defendants requested reconsideration of the April summary judgment decision and moved to strike Oasis’s request for relief.  On September 9, 2020, the court struck defendants’ motions as improperly filed and granted Oasis each item of relief it sought.  In assessing the maximum statutory damages, the court explained that two factors were “decisive: the egregiousness of the cybersquatting and the contempt shown for plaintiff and this court.”  The court reiterated both that there was “no question” defendants registered the infringing domain name with bad faith intent to profit from the Oasis marks, and that the defendants displayed an “utter failure” to follow the rules of litigation.

Oasis provides litigation funding, a form of specialty finance in which an entity, such as Oasis, provides money to plaintiffs involved in litigation in exchange for an interest in any future recovery received by the plaintiff.  Oasis is arguably the most well-known brand nationwide for legal funding, having invested millions of dollars every year to promote its Oasis brand.

Lisa Holubar was primarily responsible for the briefing on this matter, with the assistance of Adam Reis and Manon Burns.