January 23, 2015

Indiana Copyright Law: Court Orders SVT to Provide Video to EEOC Despite Copyright Concerns

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Hammond, Indiana - Magistrate Judge Paul R. Cherry of the Northern District of Indiana, Hammond Division, ordered SVT, LLC d/b/a Ultra Foods ("SVT") to produce a copyrighted training video to the Equal Employment Opportunity Commission ("EEOC") in ongoing gender-discrimination litigation.

In 2010, Tiffany Swagerty was rejected from a position as a night crew stocker at SVT's Ultra Foods operation in Merrillville, Indiana. She complained to the EEOC contending that SVT's hiring manager had told her that women that were not usually hired for night positions. The subsequent investigation by the EEOC corroborated Swagerty's assertions. The EEOC later sued SVT for violations of Title VII seeking injunctive relief and, on behalf of Swagerty and other similarly rejected female applicants, monetary damages.

In this current opinion in the matter of Equal Employment Opportunity Commission v. SVT, LLC d/b/a Ultra Foods, the court ruled on several discovery disputes between the parties. Among those issues was whether SVT must produce to the EEOC copies of a copyrighted "stocking video" or whether, in order to obtain a copy, the EEOC must bear a portion of the cost of the materials.

Specifically, as part of its discovery requests, the EEOC asked SVT to provide "all documents containing job descriptions for all stocker positions ... including hiring criteria, requirements, and responsibilities created." SVT objected to providing one piece of responsive material - a stocking DVD that was shown to overnight stockers during orientation - on copyright grounds. SVT stated that, while it had made "in-house copies" of the video, it would not be able to produce a copy of the materials to the EEOC and that it would cost $700 for the EEOC to order and purchase a set of the DVDs. Instead of providing the DVD, SVT offered to have counsel for the EEOC either share in the cost of the DVDs or, in the alternative, to view the DVDs at counsel for SVT's office during the breaks of depositions. EEOC refused this offer and filed a motion to compel the production of the video.

The court was not persuaded that either of SVT's proposals was sufficient. The court stated instead that SVT had offered an "unclear ... explanation of when and how it obtained the original and/or copies of the DVDs, the nature and extent of any copyright that might exist, and what the costs ... were expended for." Consequently, the court granted the EEOC's motion to compel, holding that SVT had "not met its burden of demonstrating that the cost of this discovery should be shifted" and ordered SVT to produce the copyrighted material to the EEOC without cost to the EEOC.

Continue reading "Indiana Copyright Law: Court Orders SVT to Provide Video to EEOC Despite Copyright Concerns" »

January 22, 2015

Trademark Law: Update of Trademark Manual of Examining Procedure

On January 17, 2015, the United States Patent and Trademark Office issued the January 2015 Trademark Manual of Examining Procedure ("TMEP"), which incorporates changes made in accordance with the following rules:

• Renaming of Express Mail® to Priority Mail Express®, published October 22, 2014 at 79 FR 63036;

• Reduction of Fees for Trademark Applications and Renewals, published December 16, 2014 at 79 FR 74633; and

• Miscellaneous Changes to Trademark Rules of Practice and the Rules of Practice in Filings Pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, published January 16, 2015 at 80 FR 2303.

For a listing of all the changes, see the "Changes in the TMEP January 2015 Edition" document that is posted as part of the TMEP.

January 21, 2015

Open Wi-Fi and Copyright: DMCA Safe Harbors

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As explained in Monday's blog post, in general a network operator should not be liable for its users' activity as long as the operator merely acts as a passive conduit for Internet traffic. However, network operators who remain worried about the risk of liability for copyright infringement can consider another option: the safe harbors provided by the Digital Millennium Copyright Act ("DMCA").

In order to foster online expression and commerce, Congress crafted a set of safe harbors from copyright liability to provide "greater certainty to service providers concerning their legal exposure for infringements that may occur in the course of their activities."

Under the DMCA, "service provider" includes "an entity . . . providing [] connections for digital online communications." The definition of a service provider is broad, and includes those who do not operate communications equipment themselves. In one case, for example, a federal appeals court held that a payment processor for online content was a DMCA "service provider" even though it didn't operate the alleged infringer's Internet connection or transmit any infringing material. Congress also intended that the term cover "subcontractors" of Internet service providers. Arguably, this definition covers the providers of open Wi-Fi, such as municipalities, cafes, and libraries.

The statute also clarifies the outer limits of a service provider's obligations by, for example, making it clear that a service provider need not monitor its service or affirmatively seek facts indicating infringing activity in order to enjoy the safe harbor.

Under the DMCA, a network operator is sheltered from liability for "transmitting, routing, or providing transfers for" its users' traffic if:

1. A "person other than the service provider" initiates the transmission.

2. The transmission is "carried out through an automatic technical process without selection of the material by the service provider . . . ."

3. The service provider does not choose the recipient of the transmission, other than to route the traffic automatically.

4. The service provider does not keep copies longer than necessary to transfer the traffic, and it cannot make copies available to anyone other than the recipient.

5. The service provider does not modify the content of the message.

In short, ISPs qualify for this safe harbor if they act as passive conduits for network traffic.

In addition, there are two threshold requirements that service providers must meet in order to qualify the DMCA safe harbors. First, the provider must adopt a policy to terminate service for "subscribers and account holders" who are repeat infringers. Second, the operator must accommodate[] and not interfere with standard technical measures" that copyright owners employ to protect their works, such as a watermark in a copyrighted image.

A few final notes on the DMCA: First, falling outside the safe harbors does not make you liable for infringement. Compliance with the requirements of the safe harbors is optional for service providers, not mandatory. The increased certainty provided by the safe harbors, however, creates a strong incentive for service providers to take advantage of them, if it makes sense for their operation. Second, the DMCA safe harbors only apply to copyright infringement (not trademark or patent infringement, or other causes of action). Most service providers, however, also enjoy broad immunity from state law causes of action as well as most federal civil claims under Section 230 of the Communications Decency Act.

As a practical matter, this means that network operators have choices when, for example, they receive a complaint that someone is using their network to engage in infringing activities. Usually such complaints will identify the alleged infringer via some form of internet protocol ("IP") address. If it is possible for the network operator to terminate a user associated with that address, and the operator has a repeat infringer policy, it can follow that policy. If the operator does not track users in a way that makes it possible to terminate any particular user (e.g., a network that allows anonymous use, and/or assigns IP addresses in a highly dynamic fashion, such that it is not feasible to tie an IP address to any particular user), it can either ignore the notice or respond by explaining why it cannot comply with the request. Of course, either approach may invite further complaints but should not change the bottom line: a network operator is unlikely to be held liable for the infringing activities of its users unless it knows about and contributes to those activities, or controls and financially benefits from them. Operators must determine for themselves what legal risks they are prepared to incur.

This edited article was provided by the Electronic Frontier Foundation, a nonprofit group which advocates for innovators and users of technology. The article has been licensed under the Creative Commons Attribution License.

This should not be taken as legal advice specific to any individual network operator. If you want such advice, please consult a copyright attorney.

January 19, 2015

Open Wi-Fi and Copyright: A Primer for Network Operators

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Open networks provide Internet access to the public. Users do not need to subscribe - they simply connect their devices, often over a wireless connection. For instance, the City of San Francisco recently deployed a free, public Wi-Fi network along a three-mile stretch of Market Street. Similarly, the Open Wireless Movement encourages owners of home Wi-Fi hotspots to open their networks to the public.

Operators of open networks may worry that they could be liable if people use their networks to engage in copyright infringement. This blog post generally explains the scope and limits of secondary liability for the acts of users, and additional steps network operators may choose to take to further limit any legal risk.

This post should not be taken as legal advice specific to any individual network operator.
If you want such advice, please consult a copyright lawyer.

1. What is Copyright Infringement?

Let's begin with some basics. First, you can only be held liable for the acts of your users if they have themselves violated copyright law. To have a "secondary" violation, there must first be a "primary" or "direct" violation.

A. Direct Infringement

Copyright infringement occurs when somebody violates one of the exclusive rights of the copyright holder. For instance, if a user downloads a copy of a movie without permission from the copyright holder, she may be liable for copyright infringement.

Copyright is a "strict liability" rule, which means that it doesn't much matter whether or not the user thought she was breaking the law.

To be liable for direct infringement, a person must have committed some voluntary act that caused the infringement to occur. This is called the "volitional conduct" doctrine, and it's an important one for network operators because it distinguishes between service providers that act as passive conduits for network traffic, on the one hand, and providers that actively control the information users post and access on their networks. If you are nothing more than a conduit for information packets, you shouldn't be legally responsible if those packets happen to contain infringing material. As a federal district court in California explained back in 1995:

Where the infringing subscriber is clearly directly liable for the same act, it does not make sense to adopt a rule that could lead to the liability of countless parties whose role in the infringement is nothing more than setting up and operating a system that is necessary for the functioning of the Internet. Such a result is unnecessary as there is already a party directly liable for causing the copies to be made.

Several federal appellate courts have followed the district court's ruling.

B. Secondary Liability

So, odds are that a court would not hold a network operator directly liable for copyright infringement based on the acts of users. But that doesn't end the analysis, because a copyright holder might try to claim that a service provider is indirectly responsible for the infringing acts of its users. This is called "secondary" liability.

Copyright law recognizes two types of secondary liability: "contributory" infringement and "vicarious" infringement.

Contributory infringement occurs when the second party (1) knows of the infringement and (2) "induces, causes, or materially contributes to the infringing conduct of another. For instance, a record store that sold blank tapes and encouraged customers to use its coin-operated "Make-a-Tape" machine to copy prerecorded tapes was held liable for contributory infringement. An ISP that actively and knowingly encouraged its users to use its service to download popular movies, without authorization, might be found liable on this theory.

Liability for contributory infringement depends largely on the ISP's degree of control over the information its users transmit. In one leading case, an ISP hosted its users' Usenet messages and distributed them to other Usenet servers around the world. The court held that the ISP could be liable only if the copyright holder could prove (1) that the ISP was aware of the infringing material and (2) that the ISP nonetheless continued to store and distribute the material.

A network operator could be vicariously liable for the acts of its users if it "(1) has the right and ability to control the infringer's acts and (2) receives a direct financial benefit from the infringement." For instance, in a Second Circuit case, the owner of a dance hall was vicariously liable for copyright infringement where it hired an orchestra to play at the hall and profited from the performance, even though it did not know the orchestra didn't have permission to play some of the music it chose.

This kind of liability depends on whether the ISP has the right and ability to control its users' acts and whether the ISP received a direct financial benefit from a specific user's infringing activities. If the ISP provides equal service to all of its users, it will be difficult to establish that it is benefiting from a specific user's activities. If it is a noncommercial service, of course, the "direct financial benefit" prong will be even harder to prove.

In short, a network operator is unlikely to be held liable for the infringing activities of its users unless it knows about and assists those activities, or controls and financially benefits from them.

The safe harbors available to network operators by the Digital Millennium Copyright Act ("DMCA") will be discussed in a future blog post.

This edited article was provided by the Electronic Frontier Foundation, a nonprofit group which advocates for innovators and users of technology. The article has been licensed under the Creative Commons Attribution License.

This should not be taken as legal advice specific to any individual network operator.  If you want such advice, please consult a copyright attorney.

January 16, 2015

IU Maurer School of Law Names Norman J. Hedges to Direct Intellectual Property Clinic

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Bloomington, Indiana - The Indiana University Maurer School of Law has selected a prominent intellectual property lawyer to serve as the first full-time director of its intellectual property law clinic.

Norman J. Hedges (pictured) will join the law school today as a clinical associate professor of law. He comes to Bloomington with over 16 years of experience in patent practice in Indianapolis, including 10 years in the Indianapolis office of Faegre Baker Daniels, where he was named partner in 2007. He has been a member of the law school's adjunct faculty since 2014.

"We are delighted that Norm will be joining our faculty full-time," said Mark D. Janis,  Robert A. Lucas Chair of Law and director of the school's Center for Intellectual Property Research. "He brings a wealth of practical experience that will be invaluable in building our clinic as it expands to provide pro bono IP services to our state's most innovative start-up businesses."

"As a graduate of the law school, I am honored to be returning as a faculty member," Hedges said. "The center's IP clinic is on the forefront of providing hands-on learning opportunities to the law school's students while helping Indiana businesses grow, and I'm privileged to be a part of it."

Established in January 2014, the intellectual property clinic provides pro bono patent, trademark and intellectual property law counseling.

January 15, 2015

Indiana Trade Secret Law: Federal Prosecutors Drop All Charges Against Scientists Accused of Theft of Lilly Trade Secrets

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Indianapolis, Indiana - All federal criminal charges against Guoqing Cao and Shuyu Li, who were formerly employed by Eli Lilly and Company ("Lilly"), were recently dropped by federal prosecutors, who stated that "additional information" had been received that altered "the investigative facts initially relied upon by the government" in its case against Cao and Li.

This federal indictment was brought in 2013 in the Southern District of Indiana. Defendants Cao and Li, two doctoral-level scientists, were charged with multiple counts of theft. At issue was intellectual property belonging to Indiana-based Lilly valued at $55 million. Counts one through three of the indictment, as well as counts five through ten, were listed as theft of trade secrets and aiding and abetting. Count four alleged conspiracy to commit theft of trade secrets.

In the initial proceedings, the United States maintained that Defendants were traitors who had conveyed "American trade secrets" - specifically, "crown jewels" in the form of many millions worth of intellectual property belonging to Lilly - to Jiangsu Hengrui Medicine Co., Ltd., a company located in Shanghai, China.

A second indictment was later filed by the United States modifying the initial charges. Under the new indictment, Defendants faced no counts of trade-secret theft. Instead, they were charged with one count each of wire fraud, aiding and abetting, and conspiracy to commit wire fraud. As a result of this change, the court ordered that the Defendants be released from lockdown, noting that the earlier allegation - that Lilly's "crown jewel" trade secrets had been stolen and provided to China - had been a critical factor in justifying the Defendants' incarceration.

The nature of this new "additional information" recently received by the U.S. Department of Justice that prompted prosecutors to drop all charges is not entirely clear. Contentions by defense attorney Alain Leibman include that "Lilly provided bad information to the government," and that "information originally alleged to be confidential and proprietary was actually not confidential and proprietary." David Hensel, also serving as a criminal defense attorney in the case, added that Lilly's handling of computer data may have amounted to "spoliation of evidence material to the defense."

January 14, 2015

Trademark Law: TTAB to Hold External Stakeholder Forum

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Alexandria, Virgina - The Trademark Trial and Appeal Board ("TTAB") will host an external stakeholder forum (please see below) on January 29, 2015, from 1 to 3 pm, to discuss issues related to its e-filing system or ESTTA (Electronic System for Trademark Trials and Appeals).

The United States Patent and Trademark Office ("USPTO") is in the process of redesigning its IT systems to take advantage of new technology that will allow end-to-end electronic processing of trademark matters. The new system, known as Trademark Next Generation ("TMNG"), will significantly increase the functionality and flexibility of the USPTO's systems, including those used by TTAB, but the TTAB-related aspects of TMNG, particularly for trial cases, will deploy later than those related to examination and appeals. In the interim, TTAB is considering potential updates to ESTTA that it considers crucial to its stakeholders. The goal of the forum is to gain stakeholder input as to capabilities considered to be critical, both for the purpose of enhancing ESTTA functionality in the near term and to assist TTAB in planning for the aspects of TMNG that will impact TTAB.

Some areas that TTAB has identified for discussion are:Difficulties encountered with attachments to filings, both in terms of pre-filing review and resolution of images in the Trademark Trial and Appeal Board Inquiry System ("TTABVUE") following submission.

• Expansion of list of grounds on the ESTTA cover page for purposes of initiating opposition and cancellation proceedings.

• Modification of the consent motion form to allow filers to control resetting of dates that have not yet lapsed.

• Implementation of a "saved" feature (similar to the one available in the Trademark Electronic Application System) that will allow more than one author to contribute to the filing before submission.

This is only a preliminary list of topics for discussion and the TTAB welcomes any additional suggestions or issues that its stakeholders wish to explore.

The forum will be open to anyone who wishes to attend in person and also will be available in webinar format. The TTAB asks that you register your intent to attend by sending an e-mail with your contact information to TTABRSVP@uspto.gov. Please indicate whether you intend to attend in person or via the web.

Webinar instructions are available here. Additional information is available on the TTAB's webpage.

Continue reading "Trademark Law: TTAB to Hold External Stakeholder Forum" »

January 13, 2015

Indiana Patent Litigation: Federal Circuit Overturns Trial Court's Award of Enhanced Damages for Patent Infringement

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Washington, D.C. - The U.S. Court of Appeals for the Federal Circuit ruled on the patent infringement litigation between Zimmer of Warsaw, Indiana and Stryker of Kalamazoo, Michigan. The Federal Circuit upheld the jury's finding that Zimmer had infringed three of Stryker's patents but overturned the decision of the Western District of Michigan to triple the damage award, reducing the award from $228 million to $70 million, and vacated the district court's award of attorneys' fees.

Stryker and Zimmer are the two principal participants in the market for orthopedic pulsed lavage devices. A modern, orthopedic pulsed lavage device is a combination spray-gun and suction-tube, used by medical professionals to clean wounds and tissue during surgery.

In 2010, Stryker Corp, Stryker Puerto Rico, Ltd. and Stryker Sales Corp. (collectively, "Stryker"), sued Zimmer, Inc., Zimmer Surgical, Inc. and Zimmer Orthopaedic Surgical Products of Warsaw, Indiana (collectively, "Zimmer") alleging that Zimmer's line of Pulsavac Plus pulsed lavage devices infringed three of Stryker's patents - U.S. Patent No. 6,022,329 ("the '329 patent"), U.S. Patent No. 7,144,383 ("the '383 patent") and U.S. Patent No. 6,179,807 ("the '807 patent"). A jury awarded $70 million in damages and the district court increased that figure by approximately $2.4 million to reflect sales made by Zimmer during a time period that had not been considered by the jury.

Stryker also moved for enhanced damages under 35 U.S.C. § 284, alleging willful patent infringement by Zimmer. Under § 284, "the court may increase the damages up to three times the amount found or assessed" at trial. For this determination, the court referred to Read Corp. v. Portec, Inc.. In Read, the Federal Circuit had held that the "paramount determination in deciding to grant enhancement and the amount thereof is the egregiousness of the defendant's conduct based on all the facts and circumstances." In evaluating the egregiousness of the defendant's conduct, courts typically rely on the nine Read factors, which are:

1. whether the infringer deliberately copied the patentee's ideas or design;

2. whether the infringer investigated the scope of the patent and formed a good faith belief that it was invalid or not infringed;

3. the infringer's conduct during litigation;

4. the infringer's size and financial condition;

5. closeness of the case;

6. duration of the infringing conduct;

7. remedial actions, if any, taken by the infringer;

8. the infringer's motivation for harm; and

9. whether the infringer attempted to conceal its misconduct.

The district court found that all nine Read factors favored substantial enhancement of the jury's award and trebled both the jury's award of $70 million and the court's award of supplemental damages.

In the current opinion, the Federal Circuit affirmed the jury's findings that Stryker's patents were valid and had been infringed by Zimmer, as well as the jury's award of damages to Stryker but reversed the district court's judgment that Zimmer's infringement was willful.

To establish willfulness, the patentee has the burden of showing "by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent." If and only if the patentee establishes this "threshold objective standard" does the inquiry then proceed to the question of whether the objectively defined risk was either known or so obvious that it should have been known to a party accused of patent infringement.

The Federal Circuit noted that the district court had failed to undertake the required objective assessment of Zimmer's specific defenses to Stryker's claims. The Federal Circuit then considered the question of objective recklessness, which "will not be found where the accused infringer's position is susceptible to a reasonable conclusion of no infringement." The court held that the objective standard showed that Zimmer had presented reasonable defenses to all of the asserted claims of Stryker's patents. Consequently, Zimmer was found not to have acted recklessly and the decision to award enhanced damages was reversed.

Because the appellate court reversed the trial court's determination that the infringement of the patents had been willful - and because district court's award of attorneys' fees was based on that determination - the Federal Circuit vacated district court's finding that the case was exceptional as well as the award of attorneys' fees and remanded the issue to the trial court for further consideration.

Continue reading "Indiana Patent Litigation: Federal Circuit Overturns Trial Court's Award of Enhanced Damages for Patent Infringement" »

January 9, 2015

High Court Will Decide Whether to Overrule Brulotte Doctrine

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Washington, D.C. - The U.S. Supreme Court granted certiorari in a case asking whether its decision in Brulotte v. Thys Co., 379 U.S. 29 (1964), that a licensee's obligations are absolved after the expiration of a patent, should be overruled. Kimble v. Marvel Ent. Inc., U.S., No. 13-720.


Ninth Circuit Decision

In this case, Kimble held a patent on a glove that allows its wearer to shoot pressurized foam string from the palm, mimicking a gesture of the comic-book hero "Spider-Man." (Patent No. 5,072,856). Kimble met with Marvel's predecessor to discuss his glove invention, which was then covered by his pending patent application. When Marvel began manufacturing a similar toy called the "Web Blaster," Kimble sued in 1997 for patent infringement and for breach of contract based on an alleged oral agreement to compensate him for any use of his ideas.

The district court granted summary judgment to Marvel on the patent-infringement claim, but a jury later found that Marvel had breached a contract with Kimble. Both parties appealed, but they settled while the appeals were pending. As part of the settlement, Marvel agreed to purchase the patent in exchange for a lump-sum payment and a running royalty on Marvel's future sales of the product. The settlement agreement had no expiration date, although the patent expired on May 25, 2010, and the parties read the contract as requiring Marvel to continue paying royalties for sales that occurred after the patent expired.

When a dispute under the settlement agreement arose, Kimble filed a new suit for breach of contract. Marvel removed the suit to federal district court and filed a declaratory judgment counterclaim under Brulotte. In a report and recommendation, the magistrate judge agreed with Marvel that, in light of Brulotte, Kimble is precluded from recovering royalties for post-expiration sales, and the district court adopted the magistrate judge's report and recommendation.

The Ninth Circuit affirmed but acknowledged the criticism of Brulotte.

Solicitor General Brief

The Supreme Court invited an amicus brief from the Solicitor General, who advised the Court not to review this case. According to the brief, Brulotte is not rooted solely or even primarily in principles of "competition law," but instead reflects the Court's interpretation of the Patent Act and the policies of the federal patent laws. Those laws and policies promote the public's unfettered access to patented inventions after the expiration of the patent term, the Solicitor General's brief argued. It said that Kimble identified no serious practical harm that warrants overturning Brulotte, and that this case is not a suitable vehicle for that extraordinary step.

To read the petition for certiorari, click here; to read the opposition brief, click here; to read the Solicitor General's brief, click here; to read the Ninth Circuit opinion, click here.

January 8, 2015

Indiana Trademark Law: If You Have Been Sued for Trademark Infringement

How does a trademark infringement lawsuit begin?

A trademark lawsuit begins when the trademark owner files a complaint with a court alleging trademark infringement. Among other things, the complaint names the parties involved and sets forth the allegations that form the basis of the lawsuit. Trademark owners who decide to sue may file their complaint in either state court or federal court, depending on the circumstances. However, in most cases, the trademark owner, as plaintiff, will choose federal court. Even when a plaintiff chooses state court, it may be possible for the defendant to have the case "removed" to federal court.

Frequently, either before or at the time a complaint is filed, the trademark owner or the owner's trademark attorney may send you a letter or otherwise contact you to make claims about the owner's trademark rights and demand that you take certain actions, such as ceasing use of your mark.

What are my options to respond to the suit?

Your duty to respond to a complaint is triggered when the plaintiff formally "serves" the complaint on you, along with a "summons," which is a court notice requiring you to appear before the court and respond to the complaint by a certain date. If you are sued, you must formally respond to the complaint, either by filing a document called an "answer" with the court, or by filing a motion based on one of the grounds set forth in Rule 12 of the Federal Rules of Civil Procedure, if any apply. You must file the answer or any applicable Rule 12 motion within the time period set by the court's rules and serve a copy on the plaintiff. If you fail to timely file an appropriate response to the complaint, the court may enter a default judgment against you and order you to pay damages or perform other remedial actions.

These are only the first steps of a trademark litigation process that can be very complicated. If you are sued for trademark infringement, an attorney experienced in trademark litigation can assist you in deciding the best course of action, which may include one or more of the following options:

• Challenging the claimed trademark;

• Denying that the trademark owner has proved infringement;

• Asserting a defense to the alleged infringement; and/or

• Negotiating a settlement of the lawsuit by, for example, agreeing to take certain actions to avoid likelihood of confusion.

When considering options, keep in mind that litigation is usually expensive and time-consuming, and it can take years before a court delivers a decision. And, even when a court reaches a decision, it may be appealed to higher courts, resulting in additional time and expense.

What if the trademark is not federally registered, or the registration expired or was cancelled?

Federal registration is not required to establish trademark rights. Even if a trademark registration expires or is cancelled, the trademark owner may continue to have "common law" rights in the mark. Common law rights arise from actual use of a mark for particular goods or services and may allow the common law user to successfully challenge another party's use in court.

How can I use USPTO records to find out more information about the claimed trademark and who owns it?

You can use the Trademark Electronic Search System (TESS) to search the United States Patent and Trademark Office ("USPTO") database of applications and registrations. If you know the application serial number or registration number for the particular mark, you may use the Trademark Status and Document Retrieval (TSDR) system to view/download relevant application and registration records.

How can I challenge a trademark registration or application?

Several options exist to challenge another party's trademark registration or application, depending on the particular circumstances and grounds for challenging:

• You may challenge a trademark registration issued by the USPTO by filing a petition to cancel the registration with the Trademark Trial & Appeal Board ("TTAB").

• You may challenge an application for trademark registration at the USPTO by filing an opposition with the TTAB within 30 days after it is published in the Official Gazette.

• You may file a declaratory judgment lawsuit, asking a court to declare that your mark does not infringe the trademark owner's mark, and/or that the trademark owner's mark is invalid.

• If you are already a defendant in an infringement lawsuit, you may assert an "affirmative defense" and/or a counterclaim against the plaintiff challenging the validity of the plaintiff's trademark.

Practice Tip: If you are personally sued for trademark infringement, you may represent yourself pro se. However, if a corporation has been sued, only an attorney may represent it in court. An Indiana attorney with trademark expertise can help advise you about the various options available to challenge trademark registrations and applications.

The information presented on this site does not constitute legal advice. It should not be considered to replace advice from an Indiana trademark attorney.

January 7, 2015

Patent Office Issues 186 Patents To Indiana Citizens in December 2014

The U.S. Patent Office issued the following 186 patent registrations to persons and businesses in Indiana in December 2014, based on applications filed by Indiana patent attorneys:

Patent No. Title
D720,489 Light
D720,433 Faucet spout
D720,343 Stand
8924909 Microelectromechanical system design and layout
8924332 Forecasting hotspots using predictive visual analytics approach
8923670 Molded optical structure for optical transceiver

Continue reading "Patent Office Issues 186 Patents To Indiana Citizens in December 2014" »

January 5, 2015

202 Trademark Registrations Issued to Indiana Companies in December 2014

The U.S. Trademark Office issued the following 202 trademark registrations to persons and businesses in Indiana in December 2014 based on applications filed by Indiana trademark attorneys:

Reg. No. Word Mark Click to
 View
4663945 SMART SUPPORT LIVE
4663882 ALEXANDER DALLAS LIVE
4663777 PHASE SEPARATION LIVE
4663776 FAZE SEPARATION LIVE
4663633 DIGAROO LIVE
4663559 DEMAND COMMAND LIVE

Continue reading " 202 Trademark Registrations Issued to Indiana Companies in December 2014" »

January 2, 2015

Indiana Patent Litigation: Eli Lilly Sues Sandoz Inc. Alleging Infringement of Patented ALIMTA

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Indianapolis, Indiana - In conjunction with co-counsel, an Indiana patent attorney for Eli Lilly and Company of Indianapolis, Indiana sued in the Southern District of Indiana alleging infringement by Sandoz Inc. of Princeton, New Jersey of ALIMTA®, Patent No. 7,772,209, which was issued by the U.S. Patent Office.

ALIMTA, which is licensed to Lilly, is a chemotherapy agent used for the treatment of various types of cancer. ALIMTA is composed of the pharmaceutical chemical pemetrexed disodium. It is indicated, in combination with cisplatin, (a) for the treatment of patients with malignant pleural mesothelioma, or (b) for the initial treatment of locally advanced or metastatic nonsquamous non-small cell lung cancer. ALIMTA also is indicated as a single agent for the treatment of patients with locally advanced or metastatic nonsquamous non-small cell lung cancer after prior chemotherapy. Additionally, ALIMTA is indicated for maintenance treatment of patients with locally advanced or metastatic nonsquamous non-small cell lung cancer whose disease has not progressed after four cycles of platinum-based first-line chemotherapy. One or more claims of the '209 patent cover a method of administering pemetrexed disodium to a patient in need thereof that also involves administration of folic acid and vitamin B12.

This Indiana patent infringement lawsuit arises out of the filing by Defendant of an Abbreviated New Drug Application ("ANDA") with the U.S. Food and Drug Administration ("FDA") seeking approval to manufacture and sell generic versions of ALIMTA prior to the expiration of the '209 patent. Defendant filed as a part of that ANDA a certification of the type described in Section 505(j)(2)(A)(vii)(IV) of the Food, Drug and Cosmetic Act, 21 U.S.C. § 55(j)(2)(A)(vii)(IV), with respect to the patent-in-suit, asserting that the claims of the patent-in-suit are invalid, unenforceable, and/or not infringed by the manufacture, use, offer for sale, or sale of Defendant's ANDA products.

In its complaint, filed by an Indiana patent lawyer, Lilly states that Defendant intends to engage in the manufacture, use, offer for sale, sale, marketing, distribution, and/or importation of Defendant's ANDA products and the proposed labeling therefor immediately and imminently upon approval of the ANDA i.e., prior to the expiration of the patent-in-suit. Lilly asserts that Defendant's actions constitute and/or will constitute infringement of the patent-in-suit, active inducement of infringement of the patent-in-suit, and contribution to the infringement by others of the patent-in-suit.

The complaint lists a single claim: Infringement of U.S. Patent No. 7,772,209. Lilly asks the court for the following relief:

(a) A judgment that Sandoz has infringed the '209 patent and/or will infringe, actively induce infringement of, and/or contribute to infringement by others of the '209 patent;

(b) A judgment ordering that the effective date of any FDA approval for Sandoz to make, use, offer for sale, sell, market, distribute, or import Sandoz's ANDA Products, or any product the use of which infringes the '209 patent, be not earlier than the expiration date of the '209 patent, inclusive of any extension(s) and additional period(s) of exclusivity;

(c) A preliminary and permanent injunction enjoining Sandoz, and all persons acting in concert with Sandoz, from making, using, selling, offering for sale, marketing, distributing, or importing Sandoz's ANDA Products, or any product the use of which infringes the '209 patent, or the inducement of or contribution to any of the foregoing, prior to the expiration date of the '209 patent, inclusive of any extension(s) and additional period(s) of exclusivity;

(d) A judgment declaring that making, using, selling, offering for sale, marketing, distributing, or importing of Sandoz's ANDA Products, or any product the use of which infringes the '209 patent, prior to the expiration date of the '209 patent, infringes, will infringe, will actively induce infringement of, and/or will contribute to the infringement by other of the '209 patent;

(e) A declaration that this is an exceptional case and an award of attorneys' fees pursuant to 35 U.S.C. § 285; and

(f) An award of Lilly's costs and expenses in this action.

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December 29, 2014

Indiana Trademark Litigation: Bettie Page, LLC Sues Vibes Base

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Indianapolis, Indiana - An Indiana trademark attorney for Bettie Page, LLC of Indianapolis, Indiana ("BPL") sued in the Southern District of Indiana alleging that Vibes Base Enterprises, Inc. of El Monte, California ("Vibes Base") committed unfair competition under federal, California and Indiana common law. BPL has asked the court for the cancellation of a federal trademark registration belonging to Vibes Base.

BLP claims that it is the exclusive owner of the name, likeness, voice, right of publicity and endorsement, worldwide trademarks, copyrights and other intellectual property related to the late model Bettie Page. Among its intellectual property holdings are trademark registrations for BETTIE PAGE, trademark numbers 2,868,613 and 2,868,614 which have been registered by the U.S. Patent and Trademark Office.

Vibes Base develops, manufactures and markets lines of apparel products and accessories under various brand names, including "Bette Paige." In May 1999, Sand K. Inc. obtained federal trademark registration number 2,244,182 for the mark BETTE PAIGE for women's clothing. Sand assigned that mark to Vibes Base in 2011.

In March 2014, BPL filed a federal trademark application for the BETTIE PAGE trademark for "computerized on-line retail store services in the field of clothing..." and similar uses. The USPTO refused registration of this trademark on the grounds that a likelihood of confusion existed between BETTIE PAGE, for which Plaintiff had applied, and the trademark BETTE PAIGE, which had previously been registered.

Plaintiff contends that the registration and/or use of the BETTE PAIGE trademark is an illegal use of the Page intellectual property, including the right of publicity.

In this complaint, filed by an Indiana trademark lawyer, the following counts are asserted:

• Count I: Unfair Competition Under 15 U.S.C. §1125(A)
• Count II: Unfair Competition Under Cal. Bus. & Prof. Code §17200 et seq.
• Count III: Common Law Unfair Competition
• Count IV: Unjust Enrichment
• Count V: Right of Publicity Infringement Under Cal. Civ. Code §3344.1
• Count VI: Request for Declaratory Judgment of No Trademark Infringement
• Count VII: Declaration that Defendant's Registration is Invalid (Non Compliance with 15 U.S.C. §1052(c))
• Count VIII: Declaration that Defendant's Registration is Invalid (False Designation of Origin, Sponsorship or Endorsement)

BPL asks the court to cancel Vibes Base's BETTE PAIGE trademark; for an award of actual damages; for treble damages for willful and/or intentional use of an unauthorized trademark; for an award of attorneys' fees and expenses; to order Vibes Base to destroy or surrender to BPL all unauthorized products, including all products that Vibes Base is able to recall; and, in the alternative, to declare that BPL's trademark, as contained in its trademark application, is not confusingly similar to the BETTE PAIGE trademark.

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December 23, 2014

Indiana Patent Litigation: Lilly Sues Amneal on Allegations of Patent Infringement of Axiron

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Indianapolis, Indiana - In conjunction with co-counsel, an Indiana patent attorney for Eli Lilly and Company of Indianapolis, Indiana, Eli Lilly Export S.A. of Geneva, Switzerland (collectively, "Lilly") and Acrux DDS Pty Ltd. of West Melbourne, Australia sued for patent infringement in the Southern District of Indiana alleging that Amneal Pharmaceuticals LLC of Bridgewater, New Jersey, infringed its patented product Axiron®, for which Plaintiffs claim patent protection under Patent Nos. 8,435,944; 8,419,307; 8,177,449 and 8,807,861, which have been issued by the U.S. Patent Office.

Lilly is engaged in the business of research, development, manufacture and sale of pharmaceutical products. Acrux is engaged in the development and commercialization of pharmaceutical products. They sell their products worldwide. Amneal is a pharmaceutical company that develops, manufactures, markets and distributes generic pharmaceutical products for sale in the United States.

Lilly is the holder of approved New Drug Application No. 022504 for the manufacture and sale of a transdermal testosterone solution made at a concentration of 30 mg/1.5L, which it markets under the trade name "Axiron®." This drug is used to treat males for conditions associated with a deficiency or absence of endogenous testosterone.

This action relates to the Abbreviated New Drug Application ("ANDA") submitted by Amneal to the U.S. Food and Drug Administration ("FDA") for approval to market a generic version of Lilly's Axiron product. Defendant certified to the FDA that, in its opinion, the patents-in-suit were invalid, unenforceable and/or would not be infringed by the commercial manufacture, use or sale of the generic version of Axiron described in the ANDA.

Plaintiffs contend that the submission of the ANDA to the FDA constitutes infringement by Defendant of the patents-in-suit. In the complaint, patent lawyers for Lilly and Acrux assert sixteen separate counts related to patent infringement. Among the allegations listed for the patents-in-suit are counts of "Direct Infringement," "Inducement to Infringe," "Contributory Infringement" and for declaratory judgment.

The complaint asks for an injunction to stop Defendant from producing the generic version of Axiron until the expiration of Lilly's patents-in-suit. In addition, Lilly asks that the court declare the patents to be valid and enforceable; that Defendant infringed upon all of the patents-in-suit by, inter alia, submitting Defendant's ANDA to obtain approval to commercially manufacture, use, offer for sale, sell or import its generic version of the drug into the United States; that Defendant's threatened acts constitute infringement of the patents-in-suit; that FDA approval of Defendant's generic drug be effective no sooner than the expiration date of the patent-in-suit that expires last; and that this is an exceptional case. Plaintiffs also ask for costs and attorneys' fees.

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