October 20, 2014

Indiana Cyberpiracy Litigation: Burns Rent-Alls Sues Aays Rent-All and Michael Sharp

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South Bend, Indiana - An Indiana intellectual property attorney for Burns Rent-Alls, Inc. of Mishawaka, Indiana filed a cyberpiracy lawsuit in the Northern District of Indiana alleging that Michael Sharpe and Aays Rent-All Co., Inc., also of Mishawaka, Indiana, had wrongfully registered and used domain names that would result in confusion with the "BURNS RENT-ALLS" common-law trademark.

Burns Rent-Alls is a fifth-generation family-owned firm that has been in business for over 100 years. It offers goods and services throughout northern Indiana and southwest Michigan under the BURNS RENT-ALLS brand including equipment rentals, convention services, event rentals, portable toilet rentals, costume rentals, and tent and canopy rentals.

Aays Rent-All is, according to Plaintiff, in a similar business and provides rentals throughout northern Indiana and southwest Michigan, including equipment rentals, convention services, event rentals, and tent and canopy rentals.

Burns Rent-Alls claims that, by virtue of its "longstanding and continuous use" of the BURNS RENT-ALLS mark, it owns common law trademark rights to that mark for use in connection with Burns Rent-Alls' goods and services.

Aays Rent-All and Sharpe are accused of registering and using domain names that are confusingly similar to Burns Rent-Alls' Mark, with a bad-faith intent to profit from their use and registration of those domain names. At issue are: (i) burnspartyrentall.com; (ii) burnspartyrental.com; and (iii) burnsrentall.com. Plaintiff contends that Defendants are using these names to redirect Internet traffic intended for the Burns Rent-Alls' website to Aays Rent-All's website. This use, Plaintiff asserts, is likely to cause confusion or mistake, or to deceive consumers into believing that there is an association between Aays Rent-All and Burns Rent-Alls.

Plaintiff also states that it agreed to pay, and did pay, $100 to purchase the burnsrentall.com domain name but that Defendants did not transfer the domain name as allegedly agreed.

In its complaint, Indiana intellectual property counsel for Burns Rent-Alls alleges the following:

  • Count I: Unfair Competition
  • Count II: Cyberpiracy 
  • Count III: Breach of Contract

Burns Rent-Alls requests injunctive relief, including the transfer of the domain names at issue; damages, including treble damages; and costs and attorneys' fees.

Practice Tip:

Plaintiff indicates that it attempted to obtain an agreement from Defendants regarding at least one of the domain names at issue prior to filing this lawsuit. Plaintiff contends that, despite this effort, Defendants continued to use the allegedly infringing website names. This lawsuit for unfair competition, cyberpiracy and breach of contract followed.

Another approach available to a plaintiff in such a situation is to seek a transfer of the domain names under the Uniform Domain-Name Dispute-Resolution Policy ("UDRP"). This policy was established to resolve "The Trademark Dilemma" inherent in the largely unpoliced sales of domain names -- the registration of a trademark without the consent of the trademark owner.

As part of the process of registering a domain name, registrants must, among other things, 1) "represent and warrant" that registering the name "will not infringe upon or otherwise violate the rights of any third party" and 2) agree to have the matter heard as an UDRP proceeding if any third party asserts that the domain name violates its trademark rights.

The UDRP is an administrative procedure. A UDRP limits itself to matters concerning abusive registrations and will not intervene in genuine disputes over trademark rights. To prevail in a UDRP proceeding, for each domain name, the complainant must establish three elements:

  1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
  2. The registrant does not have any rights or legitimate interests in the domain name; and
  3. The registrant registered the domain name and is using it in "bad faith."

Continue reading "Indiana Cyberpiracy Litigation: Burns Rent-Alls Sues Aays Rent-All and Michael Sharp" »

October 16, 2014

Indiana Trademark Litigation: NextEra Sues Nextra for Trademark Infringement

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South Bend, Indiana - A trademark attorney for NextEra Energy, Inc. of Juno Beach, Florida filed an intellectual property complaint in the Northern District of Indiana. Defendant Nextra Technologies, LLC of Granger, Indiana is accused of infringing one or more of NextEra's 132 federally registered trademarks. Nextra is also accused of unfair competition and false advertising.

NextEra is a clean-energy company. It has approximately 42,500 megawatts of generating capacity in 26 states in the United States and four provinces in Canada. Through its affiliates, it provides wind and solar energy goods and services. Its wind-energy services include consulting, developing, construction and installation of wind energy systems, including wind-powered energy-generating turbines and turbine transformers. Its solar-energy systems include solar panels, solar arrays, solar photovoltaic equipment, solar thermal equipment and transformers.

Plaintiff asserts that Defendant Nextra is in a similar business and that it has manufactured, imported, promoted, distributed and/or sold energy products and services - including wind turbine components, solar panels, and energy systems - in the United States. Plaintiff further contends that Nextra's goods and services are offered under "Nextra" mark and that the "Nextra" mark infringes upon NextEra's "NextEra" family of trademarks.

Due to the alleged similarity between the types of goods and/or services offered by the two companies and the marks under which they are offered, NextEra claims that Nextra's sales of energy products and services is likely to cause confusion, mistake and deception among purchasers as to the existence of a relationship between NextEra and Nextra.

In its complaint, filed by a trademark lawyer for NextEra, the following claims are made:

• Federal Trademark Infringement,

• Federal Unfair Competition, and

• Common Law Trademark Infringement and Unfair Competition.

NextEra seeks injunctive relief and damages, including punitive damages, as well as costs and attorneys' fees.

Practice Tip: A finding of trademark infringement requires a "likelihood of confusion." There are seven factors relevant to the likelihood-of-confusion analysis: (1) the similarity between the plaintiff's mark and the allegedly infringing mark in appearance and suggestion; (2) actual confusion; (3) the similarity between the products and services offered by the plaintiff and defendant; (4) the area and manner of use; (5) the degree of care likely to be exercised by consumers; (6) the strength of the plaintiff's mark; and (7) the defendant's intent.

Continue reading "Indiana Trademark Litigation: NextEra Sues Nextra for Trademark Infringement" »

October 15, 2014

Indiana Copyright and Trademark Litigation: Edible Arrangements Sues Edible Creations and Owner

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Fort Wayne, Indiana - An Indiana trademark attorney for Edible Arrangements, LLC ("EA") and Edible Arrangements International, LLC ("EAI") of Wallingford, Connecticut filed an intellectual property complaint in the Northern District of Indiana alleging trademark and copyright infringement by Tom Drummond and Edible Creations, LLC ("EC") of Allen County, Indiana. Defendants are accused of infringing several trademarks (below), which have been issued by the U.S. Trademark Office, as well as a copyrighted work.

Since 1998, EAI has been using the phrase "Edible Arrangements," together with various related design marks, in connection with various food products. Its products include fruit cut to look like flowers as well as other fruit products. EAI operates a franchise network of over 1,200 independent owner-operated franchise locations throughout the United States and internationally. It sublicenses the trademarks at issue in this Indiana litigation to its franchisees.

The other Plaintiff, EA, owns the following trademarks relating to "Edible" and "Edible Arrangements":  

In August 2013, Defendants Edible Creations and the company's owner, Tom Drummond, Filed an application for what Plaintiffs content is a mark that is confusingly similar to one or more of EA's trademarks:  

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In September 2013, Plaintiffs sent a cease-and-desist letter demanding that Edible Creations cease using the mark. It later filed an opposition before the Trademark Trial and Appeal Board ("TTAB") challenging the registration on the grounds of deceptiveness, false suggestion of a connection between Edible Creations and EA, likelihood of confusion, dilution, misdescriptiveness and fraud. Edible Creations did not respond to EA's opposition and the TTAB entered a default against Edible Creations and refused to register Edible Creations' mark.In August 2013, Defendants Edible Creations and the company's owner, Tom Drummond, filed an application for what Plaintiffs contend is a mark that is confusingly similar to one or more of EA's trademarks:

In this lawsuit, Defendants have been accused of continuing to advertise, promote and sell fruit arrangements in Indiana using the phrase "Edible Creations" and "Edible Creations Creator of Edible Floral Arrangements." They have also been accused of violating EA's copyright in a sculpture known as the "Hearts and Berries Fruit Design" by displaying the copyrighted design in print, including on vehicles, and on the internet.

In its complaint, filed by an Indiana trademark and copyright lawyer, Plaintiffs list the following claims:

  • Trademark Infringement
  • False Designation of Origin
    • Trademark Dilution
    • By Blurring
  • By Tarnishment
  • Copyright Infringement
  • Unfair Competition

Plaintiffs seek damages, including punitive damages, as well as injunctive relief.

Practice Tip

Allegations of trademark dilution involve a different analysis from claims of trademark infringement. The first type of trademark dilution is dilution by blurring. An allegation of dilution by blurring requires that the plaintiff prove, among other things, that its mark is "famous." This is not an easy burden, requiring that the mark have "extensive public recognition and renown" within the population of average consumers. There are some marks, such as Chanel, Coke and Microsoft, for which establishing such renown is likely achievable. However, this bar is extremely high. Even trademarks that are very well known, such as Coach, which has been used since 1961 and under which several billion dollars of sales are made annually, have been found to be "not famous" for the purposes of a dilution analysis. Edible Arrangements will have a difficult time proving this claim.

The second type of trademark dilution is dilution by tarnishment. Edible Arrangements will also have a difficult time establishing the elements of this type of trademark dilution. This cause of action is generally brought when the reputation of a well-known mark is harmed by another's use of that trademark or a similar mark within a sexual context. For example, in Kraft Foods Holdings, Inc. v. Helm, 205 F. Supp. 2d 942, 949-50 (N.D. Ill. 2002), the court held that the use of the term "VelVeeda" by a pornographic website tarnished the trademark held by the makers of Velveeta cheese. Courts may also find dilution by tarnishment where a defendant offers inferior products or services. It is unclear that Plaintiffs here have alleged facts sufficient to support a claim of tarnishment.

Continue reading "Indiana Copyright and Trademark Litigation: Edible Arrangements Sues Edible Creations and Owner " »

October 13, 2014

Indiana Teen Indicted for Theft of Intellectual Property Valued More Than $100 Million

District of Delaware - Four members of an international computer hacking ring were

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 indicted for stealing gaming technology and Apache helicopter training software. Two have already pled guilty.

Four members of an international computer hacking ring have been charged with breaking into computer networks of prominent technology companies and the U.S. Army and stealing more than $100 million in intellectual property and other proprietary data. Two of the charged members have already pleaded guilty. The alleged cyber theft included software and data related to the Xbox One gaming console and the Xbox Live online gaming system; popular games such as "Call of Duty: Modern Warfare 3" and "Gears of War 3"; and proprietary software used to train military helicopter pilots.

On September 30, Assistant Attorney General Leslie R. Caldwell of the Justice Department's Criminal Division, U.S. Attorney Charles M. Oberly, III of the District of Delaware and Special Agent in Charge Stephen E. Vogt of the FBI's Baltimore Field Office announced the guilty pleas of two of the defendants.

"As the indictment charges, the members of this international hacking ring stole trade secret data used in high-tech American products, ranging from software that trains U.S. soldiers to fly Apache helicopters to Xbox games that entertain millions around the world," said Assistant Attorney General Caldwell. "The American economy is driven by innovation. But American innovation is only valuable when it can be protected. Today's guilty pleas show that we will protect America's intellectual property from hackers, whether they hack from here or from abroad."

"Electronic breaking and entering of computer networks and the digital looting of identities and intellectual property have become much too common," said U.S. Attorney Oberly. "These are not harmless crimes, and those who commit them should not believe they are safely beyond our reach."

Nathan Leroux, 20, of Bowie, Maryland; Sanadodeh Nesheiwat, 28, of Washington, New Jersey; David Pokora, 22, of Mississauga, Ontario, Canada; and Austin Alcala, 18, of McCordsville, Indiana, were charged in an 18-count superseding indictment returned by a federal grand jury in the District of Delaware on April 23, 2014, and unsealed in September. The charges in the indictment include conspiracies to commit computer fraud, copyright infringement, wire fraud, mail fraud, identity theft and theft of trade secrets. The defendants are also charged with individual counts of aggravated identity theft, unauthorized computer access, copyright infringement and wire fraud.

Today, Pokora and Nesheiwat pleaded guilty to conspiracy to commit computer fraud and copyright infringement and are scheduled for sentencing on Jan. 13, 2015. Pokora was arrested on March 28, 2014, while attempting to enter the United States at the Lewiston, New York, Port of Entry. Pokora's plea is believed to be the first conviction of a foreign-based individual for hacking into U.S. businesses to steal trade secret information.

According to the superseding indictment and other court records, from January 2011 to March 2014, the four men and others located in the United States and abroad allegedly hacked into the computer networks of Microsoft Corporation, Epic Games Inc., Valve Corporation, Zombie Studios and the U.S. Army. The defendants and others allegedly obtained access to the victims' computer networks through methods including SQL injection and the use of stolen usernames and passwords of company employees and their software development partners. Once inside the victims' computer networks, the conspirators accessed and stole unreleased software, software source code, trade secrets, copyrighted and pre-release works and other confidential and proprietary information. Members of the conspiracy also allegedly stole financial and other sensitive information relating to the companies - but not their customers - and certain employees of such companies.

Specifically, the data cyber-theft allegedly included source code, technical specifications and related information for Microsoft's then-unreleased Xbox One gaming console; intellectual property and proprietary data related to Xbox Live, Microsoft's online multi-player gaming and media-delivery system; Apache helicopter simulator software developed by Zombie Studios for the U.S. Army; a pre-release version of Epic's video game, "Gears of War 3;" and a pre-release version of Activision's video game, "Call of Duty: Modern Warfare 3." The defendants also allegedly conspired to use, share and sell the stolen information.

The value of the intellectual property and other data that the defendants stole, as well as the costs associated with the victims' responses to the conduct, is estimated to range between $100 million and $200 million. To date, the United States has seized over $620,000 in cash and other proceeds related to the charged conduct.

In addition to those charged in the United States, an Australian citizen has been charged under Australian law for his alleged role in the conspiracy.

An indictment is merely an allegation, and the defendants are presumed innocent unless and until proven guilty in a court of law.

This case is being investigated by the FBI, with assistance from the Criminal Division's Office of International Affairs, the U.S. Department of Homeland Security's Homeland Security Investigations and Customs and Border Patrol, and the U.S. Postal Inspection Service. The investigation also has been coordinated with the Western Australia Police and the Peel Regional Police of Ontario, Canada.

The case is being prosecuted by Trial Attorney James Silver of the Criminal Division's Computer Crime and Intellectual Property Section and Assistant U.S. Attorney Edward J. McAndrew of the District of Delaware.

Practice Tip:

The Computer Crime and Intellectual Property Section ("CCIPS") of the U.S. Department of Justice ("DOJ") is responsible for implementing the DOJ's national strategies in combating computer and intellectual property crimes worldwide. CCIPS prevents, investigates, and prosecutes computer crimes by working with other government agencies, the private sector, academic institutions, and foreign counterparts.

Section attorneys work to improve the domestic and international infrastructure - legal, technological, and operational - to pursue network criminals most effectively. The Section's enforcement responsibilities against intellectual property crimes are similarly multi-faceted.

Intellectual property has become one of the principal U.S. economic engines, and the nation is a target of choice for thieves of material protected by copyright, trademark, or trade-secret designation. In pursuing all these goals, CCIPS attorneys regularly run complex investigations, resolve unique legal and investigative issues raised by emerging computer and telecommunications technologies; litigate cases; provide litigation support to other prosecutors; train federal, state, and local law enforcement personnel; comment on and propose legislation; and initiate and participate in international efforts to combat computer and intellectual property crime.

October 10, 2014

Trademark Update: eTAS Enhancements

The following improvements were made by the United States Patent and Trademark Office to the Electronic Trademark Assignment System ("eTAS") during fiscal year 2014. These enhancements are designed to facilitate filing and recording assignments with the Assignment Recordation Branch.

  • NEW CONVEYANCE TYPES: Added three new Conveyance Types to improve database specificity and reduce the need to file two documents in the case of a merger involving a name change:
    • Merger and Change of Name" allows customers to select both conveyance types in a single submission
    • Entity Conversion 
    • Court Order
  • ORDER OF RECORDATION: Added a method for customers to designate the order of recordation for multiple, related assignment submissions.
  • PHONE COMMUNICATION: Introduced new service in which the USPTO will contact customers by phone: (1) to resolve recordation issues rather than issuing a Non-Recordation Notice, and (2) to help identify potential typographical errors that might result in the filer having to file a subsequent corrective assignment.
  • ELECTRONIC RESUBMISSION: Added electronic resubmission capability allowing customers who receive a Non-Recordation Notice to resubmit the corrected paperwork electronically.
  • COUNTRY CODES: Updated and reordered country codes in the eTAS (1) to be consistent with other USPTO systems such as the Trademark Electronic Application System and (2) to enable the USPTO to add and delete countries from the list.
  •  SPECIAL CHARACTERS: Added the ability for customers to enter special characters in the name fields in eTAS. For example, customers may now enter a corporation called XYZ*, Inc. as a name.
  • NOTICE DELIVERY: Instituted delivery of recordation notices via three methods in succession: (1) first attempt is via email, (2) if email is unsuccessful, then send via fax and, (3) if fax is unsuccessful, then send via postal mail.
  • VERIFICATION: Added a statement to the validation page requiring a filer to verify that he/she is aware that the unauthorized use of eTAS is a misrepresentation to the federal government, is prohibited and is subject to criminal and civil penalties. This change was made in an attempt to prevent the filing of false transfers against another's property.

October 9, 2014

USPTO Seeks Public Input Regarding Cybersecurity

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The facts are alarming: the cybersecurity threat to the U.S. - and the world - is real and growing. The Economist Magazine reported early this year that one security firm estimated that cybercrime costs the world $113 billion per year and affects 378 million people, while a research institute estimated that malicious cyber-attacks in 2012 cost U.S. companies $277 for each customer's or user's account put at risk.

To combat the threat, the United States Patent and Trademark Office ("USPTO") and National Institute of Standards and Technology ("NIST") have teamed up to explore viable cybersecurity solutions and are asking for help from the public.

NIST's Request for Information is accessible at: https://federalregister.gov/a/2014-20315. The 45-day comment period ends October 10, 2014. All RFI responses should be submitted to cyberframework@nist.gov and will be posted on NIST's website.

Background Information

In 2013, the Framework for Improving Critical Infrastructure Cybersecurity call to action was introduced by President Obama in Executive Order (13636). The Department of Commerce is playing a crucial role to establish the framework and connect the government's efforts to the business community. U.S. Secretary of Commerce Penny Pritzker said "The Obama administration and Commerce Department are committed to continue supporting this framework to ensure it keeps up with evolving cyber threats and the needs of American businesses."

In response to the Executive Order, NIST developed Cybersecurity Framework Version 1.0, which includes standards, guidelines, and practices that organizations of all types can use to create, guide, assess or improve cybersecurity programs. NIST has recently issued a Request for Information to gain an understanding of organizations' awareness of and experiences with version 1.0 of the Framework.

Upcoming Initiatives

Moving forward, the USPTO is pursuing initiatives to work with stakeholders to find ways new cybersecurity technology can be quickly moved into the marketplace and ensure patents related to the technology are of the highest quality.

The initiatives include:

  • Hosting a Cybersecurity Partnership Customer meeting on November 14, 2014 to discuss topics related to cybersecurity. Meeting participants will be invited to share ideas on what activities the USPTO should initiate or expand.
  • Hosting a roundtable discussion with cyber startups later in 2015 to increase awareness of the importance of protecting intellectual property ("IP") and to promote the USPTO's application programs. Participants will be encouraged to share information about hurdles or issues startups face when trying to implement an IP strategy - and how the USPTO can help them.
  • Working with industry experts to further expand training opportunities for patent examiners on cybersecurity standards and emerging technologies. The USPTO welcomes partnering on training with innovators in cybersecurity and network security from private industry, academia and other government organizations. Leaders in this important sector are encouraged to volunteer and share their expertise by applying through the USPTO's Patent Examiner Technical Training Program.
Practice Tip #1: The national and economic security of the United States depends on the reliable functioning of critical infrastructure, which has become increasingly dependent on information technology. Recent cyber attacks and publicized weaknesses reinforce the need for improved capabilities for defending against malicious cyber activity. This will be a long-term challenge.

Practice Tip #2: More information on the November 14 meeting will be forthcoming on the USPTO's Initiatives & Events webpage within a month.

Practice Tip #3: For more information on the initiatives, you may also contact the USPTO at cybersecuritypartnership@uspto.gov.

October 8, 2014

185 Trademark Registrations Issued to Indiana Companies in September 2014

The U.S. Trademark Office issued the following 185 trademark registrations to persons and businesses in Indiana in September 2014 based on applications filed by Indiana trademark attorneys:

Reg. Number Word Mark Click To View
4596040 ESG SECURITY VIEW
4611624 AROUND THE CLOCK SPORTS TALK VIEW
4609858 EVERY CONTACT MATTERS VIEW
4609713 CENTERFIRST VIEW
4609559 GOD ROCKS VIEW
4609463 LEAF VIEW
4609273 REAL PURITY VIEW
4609053 GRAND DESIGN VIEW
4608998 B. HAPPY PEANUT BUTTER VIEW
4608976 OMNI HEALTH AND FITNESS VIEW
4608873 SPRINGBUK VIEW
4608870 THE POWER OF BEST VIEW
4608869 STORYTIME SERIES VIEW
4608863 PENTREXFLU VIEW

Continue reading " 185 Trademark Registrations Issued to Indiana Companies in September 2014" »

October 6, 2014

Patent Office Issues 219 Patents To Indiana Citizens in September 2014

The U.S. Patent Office issued the following 219 patent registrations to persons and businesses in Indiana in September2014, based on applications filed by Indiana patent attorneys:

PAT. NO. TITLE
8849728 Visual analytics law enforcement tools 
8849673 Rule generation 
8849459 Power management system for a handheld medical device 
8849458 Collection device with selective display of test results, method and computer program product thereof 
8849439 Mass production of orthopedic implants 
8847756 Bed status indicators 
8847446 Method and apparatus for fastening cooling fans to electro-mechanical machines 
8847114 Laser-assisted micromachining system and method 
8847030 Inbred corn line XHK20 
8846717 Stable insecticide compositions and methods for producing same 
8846570 Herbicidal compositions comprising 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)pyridine-2- -carboxylic acid or a derivative thereof and microtubule inhibiting herbicides 
8846231 Battery assembly with temperature control device 
8846132 Method for producing polymer layers 
8846068 Methods and compositions for treating post-operative pain comprising a local anesthetic 
8846059 Extracellular matrix adjuvant and methods for prevention and/or inhibition of ovarian tumors and ovarian cancer 
8845772 Process and system for syngas production from biomass materials 
8845749 Modular orthopaedic component case 
8845744 Ulnar head implant 

Continue reading "Patent Office Issues 219 Patents To Indiana Citizens in September 2014" »

October 3, 2014

If You Have Been Sued for Patent Infringement

How does a patent infringement lawsuit begin?

A patent lawsuit begins with the filing of a complaint alleging patent infringement by the patent 

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holder. If a lawsuit is filed against you, the patent owner must serve two documents on you: (1) a document called a "complaint," which explains the accusations made against you; and (2) a document called a "summons." The patent owner may first send a "demand" letter that states that you are potentially infringing the claims of a patent and requests that you pay for a license to use the patented invention, or it may go straight to court.

What are my options for responding to the suit?

If you are sued, you must formally respond or you will likely face significant repercussions for your failure to do so. The response must be filed with the court within the time period set and a copy must be served on the patent owner. If you do not respond, the court may enter a default judgment against you, which may order you to pay damages and/or stop infringing on one or more patent claims. If you are sued for patent infringement in Indiana, it would be wise to consult with an Indiana patent attorney to help you decide on the best course of action. In general, your options include:

  • Denying that the patent owner has proved that you infringe any claim of the patent or patents. 
  • Negotiating with the patent owner for settlement of the lawsuit, for example, by agreeing to a license or a statement that you do not infringe the patent. A mediator may help you reach an agreeable settlement. 
  • Trying to invalidate the patent based on references that show that the patent or patents are invalid.

These options may be pursued in or outside of court, but court-based litigation is often very expensive (costing hundreds of thousands to millions of dollars) and slow. It often takes several years before the federal district court (the court in which the patent infringement trial is held) will reach a verdict. Even if the case results in a court decision, it may then be appealed to the Federal Circuit, and potentially the U.S. Supreme Court, requiring additional time and money.

How can I tell whether or not I'm infringing?

To determine whether or not you are infringing a patent, you or your attorney would need to compare a patent's claims and the accused product, system, or process. To infringe a patent, the accused must perform each and every element of one or more of its claims, or actively encourage, sell or offer to sell a component that leads to another's infringement. The best way to understand each claim is in light of the description provided through the patent (called the "specification"). A person knowledgeable in the technology should be able to read the specification and be able to tell how to make and use the invention.

The written record created when the United States Patent and Trademark Office ("USPTO") examined the patent application, called the "prosecution history" or "file wrapper," provides further context for understanding the boundaries of the claims, especially with respect to the closest "prior art." Prior art consists of the references (books, articles, web pages and other information) that were publicly available before the date that the application was filed. For many patents, the prosecution history is available for free via the USPTO Public PAIR (Patent Application Information Retrieval) website. If the prosecution history is not available on Public PAIR, you may order it online on the USPTO website. A registered patent lawyer can advise you regarding all of the above.

How do I find a lawyer?

Only an attorney can represent you in court. Patent litigation is a nuanced specialty. Thus, it is advisable to enlist the aid of an experienced patent litigator. A list of registered patent agents and attorneys may be obtained from the USPTO (see, e.g., Indiana patent attorney Paul B. Overhauser).

Practice Tip: Deciding simply to ignore a complaint can be a costly error. Failing to present the defendants' account of the facts and arguments about the proper application of the law can result in the trial court considering only the plaintiff's side of the story. In other words, if the defendants choose to leave a complaint unanswered, the court may deem the well-pled allegations of the plaintiff to have been admitted by the defendants due to their failure to deny them.

The information presented on this site does not constitute legal advice on patent law or any other legal matters. It should not be considered as a replacement for advice from an intellectual property attorney.

October 2, 2014

Indiana Copyright Litigation: Brinker's Jewelers Sues The Diamond Galleria by Rogers

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Evansville, Indiana - Indiana copyright attorneys for Brinker Manufacturing Jewelers, Inc. d/b/a Brinker's Jewelers of Evansville, Indiana (Brinker's) and South Central Communications Corporation d/b/a South Central Digital of Nashville, Tennessee ("South Central Digital") filed a copyright infringement lawsuit in the Southern District of Indiana alleging, inter alia, that Rogers Galleria Jewelers, LLC d/b/a The Diamond Galleria by Rogers of Evansville, Indiana ("Rogers"), Tyna Wheat of Hendersonville, Kentucky and Sharon Sartore of Henderson, Kentucky infringed the advertising material on Brinker's website, which has been copyrighted by the U.S. Copyright Office.

Brinker's has operated a jewelry store in Evansville, Indiana since 1972. Rogers opened a nearby store called The Diamond Galleria by Rogers in 2013. The two showrooms are approximately 3 miles apart.

In this Indiana copyright complaint, Brinker's accuses Rogers of "blatant and extreme violations of federal copyright and trade dress and unfair competition law and Indiana statutory and common law with regard to Brinker's intellectual property rights, business relationships, goodwill and business reputation."

Specifically, Rogers is accused of copying Brinker's advertising and branding materials including the design of Brinker's showroom and jewelry boxes, as well as copying some of Brinker's taglines, written advertisements and Internet advertising. Brinker's also contends that Rogers falsely represented the nature of Rogers' business to two jewelry vendors so that it could offer jewelry to the public that had previously been offered exclusively by Brinker's.

In its complaint, filed by Indiana copyright litigators, Plaintiffs allege the following:

  • Count I: Copyright Infringement
  • Count II: Trade Dress Infringement and Unfair Competition under the Lanham Act
  • Count III: Common Law Trademark Infringement, Unfair Competition and Deceptive Trade Practices
  • Count IV: Conversion
  • Count IV [sic]: Misappropriation of Advertising Ideas and Style of Doing Business
  • Count V: Tortious Interference with Contract or Business Relationship

Plaintiffs ask the court:

  • that Rogers, Wheat, and Sartore, jointly and severally, be found liable for actual or statutory damages; 
  • for an accounting of, and the imposition of a constructive trust with respect to, the Defendants' profits attributable to their infringement of Brinker's copyrights and trade dress and unfair competition violations;
  •  for a preliminary and permanent injunction prohibiting the Defendants and their agents from continuing to infringe Brinker's copyrights and violate Brinker's rights to its intellectual property pursuant to the Lanham Act and common law; 
  • for treble or punitive damages; 
  • for prejudgment interest; and
  • for Brinker's attorneys' fees and expenses.

Practice Tip:

The traditional rationale behind granting copyright protection is to encourage the production of creative works. Without such protection, investment in creative works would be substantially diminished.

For example, those who incur the costs of creating an original work - e.g., the creators of a movie spend time writing a script, pay actors, rent studio space and the like - would not be able to recoup such costs if others were allowed to reproduce the work for no more than it costs to copy a DVD and then offer it to the marketplace at a price point that did not include all of the costs of the work's creation.

The traditional argument for copyright protection is not as strong in the advertising context. Critics of copyright protection for advertising argue that most marketing works would be created regardless of the existence of copyright protection for the work because effective advertising results in direct benefits for its creators in the form of increased sales. Thus, no additional protection is necessary.

As a result, some have advocated statutory adjustments to the copyright protection that advertising may receive. Among the proposals is that Congress extend the doctrine of "thin" copyright protection, which is used for, e.g., factual compilations, to advertising material. Under this proposed level of copyright protection, a virtual identity between the original advertising and the accused advertising would be required before liability for copyright infringement would be found.

Continue reading "Indiana Copyright Litigation: Brinker's Jewelers Sues The Diamond Galleria by Rogers" »

October 1, 2014

Indiana Trademark Litigation: KM Innovations Sues LTD Commodities

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Indianapolis, Indiana - An Indiana trademark attorney for KM Innovations LLC of New Castle, Indiana ("KM") sued in the Southern District of Indiana alleging that LTD Commodities LLC of Bannockburn, Illinois ("LTD") infringed the trademarked "INDOOR SNOWBALL FIGHT", Trademark Registration No. 4,425,111 which has been issued by the U.S. Trademark Office.

KM sells synthetic "snowballs" for use in indoor "snowball fights." It contends that it uses two distinct trademarks to market and sell these synthetic snowballs: "SNOWTIME anytime!" and INDOOR SNOWBALL FIGHT. KM has also sought patent protection for its indoor snowballs.

The SNOWTIME anytime!/"indoor snowball fight" concept was conceived in December 2012. At a party, several parents realized that a market might exist for "indoor snowballs," which would enable children to have a "snowball fight" but without the usual requirements of snow or being outside. KM later introduced a product based on this idea.

In this Indiana trademark complaint, KM asserts that an item called an "Indoor Snowball Fight Set" is being offered and sold on by LTD on the LTD website. The retail price of the product offered by LTD is $9.95 per 12 synthetic balls, while an allegedly similar product is offered and sold by KM for somewhat more, with a retail price of about $1 per synthetic snowball.

KM contends that, by using the name "Indoor Snowball Fight Set," LTD has deliberately misappropriated KM's trademark rights. It claims that the use by LTD of this name demonstrates a wrongful attempt by LTD to utilize the goodwill associated with the KM synthetic-snowball product. KM also claims that LTD's product is inferior and that, as a result, KM's reputation will be damaged when consumers are confused into believing that KM is associated with LTD's "Indoor Snowball Fight Set."

In its complaint, filed by an Indiana trademark lawyer, KM claims the following:

• Count I: Infringement of Federal Trademark Registration No. 4,425,111
• Count II: False Designation of Origin/Unfair Competition - 35 U.S.C. § 1125(a)

KM asks the court for a judgment of trademark infringement and unfair competition. It requests that the court award damages, including treble damages; order the surrender of any infringing materials; prohibit the use of "Indoor Snowball Fight" by LTD and its agents; and award to KM its costs and attorneys' fees.

Practice Tip #1: While not included as a separate count, KM did allege trademark dilution in paragraph 24 of the complaint. This cause of action is distinct from trademark infringement and applies to trademarks that are deemed to be famous. An action for dilution can assert either, or both, of two principal harms: blurring and tarnishment. Dilution by blurring, codified in 15 U.S.C. 1125(c)(2)(B), arises when association with another similar mark causes the distinctiveness of the famous mark to be compromised. In contrast, dilution by tarnishment under 15 U.S.C. § 1125(c)(2)(C) happens when the reputation of the famous mark is damaged by association with a similar mark.

Practice Tip #2: KM, no stranger to intellectual property litigation, has previously sued in Indiana federal court alleging trade dress infringement of the packaging for its synthetic snowballs.

Continue reading "Indiana Trademark Litigation: KM Innovations Sues LTD Commodities" »

September 29, 2014

What To Do If You Get a Demand Letter

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What is a demand letter? Am I legally 

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obligated to respond?

A demand letter is correspondence that states that you are potentially infringing the claims of a patent and requesting that you pay for a license to use the patented invention. You are not legally required to respond to a demand letter, but in some situations that may be the right course of action. Before deciding, consider your options, described below.

What are my options?

You have several options for responding to a demand letter:

  • You may respond by requesting more specific evidence as to why the patent owner believes you are using patented technology without a license. Note that the sender of the letter is not legally obligated to respond to your request, or to respond adequately, but even a non-response may be valuable in helping you to determine your next steps. If you have a basis for doing so, you may also respond to the letter and deny infringement. 
  • You may elect to not respond to the letter or any follow-up letters. Some patent demand letters are sent in the hope that some recipients will be misled or intimidated into paying for licenses even though they do not need to do so. Those who believe that the claims contained in a letter are without merit have in many cases selected not responding to it as their best course of action. Doing nothing carries some risk, however, because if you are later found liable for infringement, the court may determine that you acted recklessly and subject you to up to three times the monetary damages. 
  •  You may negotiate with the patent owner for a license to use the patent on mutually agreeable terms, or to obtain an agreement that you do not infringe the patent.
  • You may want to explore suing the patent owner for a declaratory judgment stating that you do not infringe the patent claims, or that one or more of the patent claims are invalid.

A patent attorney can help you decide between these options and how to implement them.

The basis of the demand letter appears to be my use of another's product. How can that be, and what should I do?

A patent owner has the right to exclude others from making, selling, offering to sell, importing or using a patented invention. Thus, you may be liable for infringement due to your use of someone else's technology. If the letter states that you are infringing because you are using or selling a certain kind of product or system, and you obtained that product or system from a business such as a software vendor or other supplier, you may write to that vendor or supplier and ask for help. They may, for example, respond to the letter on your behalf, provide legal assistance, or step in to protect you against the patent owner. You remain free to pursue the other options described above as well.

You may also consider changing the way that you use the product. You will have to analyze the patent to determine what steps you can change to avoid the legal dispute. The advice of a patent lawyer may be of assistance in making this determination.

Does receiving a letter from the patent owner mean that I'm being sued, or will be?

Receiving a letter, without more, does not mean that you have been sued. If a lawsuit is filed against you, the patent owner must serve two documents on you: (1) a document called a "complaint," which explains the accusations made against you; and (2) a document called a "summons." A "summons" is issued by the clerk of the court, identifies the court in which you have been sued, such as "Southern District of Indiana" or "Western District of Virginia," and contains a "civil action number." A civil action number, such as 14-cv-12345, combines the year the case was filed with a unique identifying number assigned to the case by the court in which the lawsuit was filed against you. All of the United States District Courts use Form AO 440, which is a standardized summons form. Service is usually made by delivering the documents to you personally, or by delivering the documents to a registered agent for your business. Because of this service requirement, you will usually know when you have been sued.

How can I find out more information about the patent and who is behind the demand?

You can search on the United States Patent and Trademark Office ("USPTO") website or a commercial website for a specific patent number and then download a PDF copy of the patent. The Resources section of the USPTO website also lists USPTO and other sites that can tell you who is listed as the registered owner of the owner and patent portfolio of the patent holder. You can also check Secretary of State records, your State Bar, the internet, and related sources for information about the entity or attorney sending letters.

Practice Tip: If you think the demand letter is deceptive, predatory, or in bad faith, you may consider filing a complaint with your state attorney general's office, the state bar where the attorney who signed the demand letter is licensed to practice, or the Federal Trade Commission. You may request that the authorities keep the demand letter in confidence if no action is to be taken.

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

September 26, 2014

Patenting Your Invention

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What can be patented?

Utility patents are available for a new, nonobvious and useful:

• Process,
• Machine,
• Article of manufacture,
• Composition of matter, or
• Improvement of any of the above

Patent protection is also available for (1) ornamental design of an article of manufacture or (2) asexually reproduced plant varieties.

What cannot be patented:

• Laws of nature,
• Physical phenomena,
• Abstract ideas,
• Literary, dramatic, musical, and artistic works (these may be protected under copyright law), or
• Inventions which are 1) not useful (such as perpetual motion machines); or 2) offensive to public morality.

To be patentable, your invention must also be:

• Novel,
• Nonobvious,
• Adequately described or enabled (for one of ordinary skill in the art to make and use the invention), and
• Claimed by the inventor in clear and definite terms

How do I know if my invention is patentable?

First, review the list of what can and cannot be patented and determine if your invention falls into one of those categories.

Next, a search of all previous public disclosures (prior art) including, but not limited to, previously patented inventions in the U.S. should be conducted to determine if your invention has been publicly disclosed and thus is not patentable. A search of foreign patents and printed publications should also be conducted. After an application is filed, the USPTO will conduct a search as part of the official examination process.

Who can apply for a patent?

A patent may be applied for only in the name(s) of the actual inventor(s).

Practice Tip #1: While performing a search of the prior art before filing an application is not required, it is wise to do so.

Practice Tip #2: You should not assume that your invention has not been patented even if you find no evidence of it being publicly disclosed. The examination at the USPTO may uncover U.S. and foreign patents as well as non-patent literature.

Practice Tip #3: Conducting a thorough patent search is difficult, particularly for the novice. Patent searching is a learned skill. A registered patent attorney is often a useful resource for performance of a patentability search.

September 25, 2014

About Patents

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What is a patent?

A patent is an intellectual property right granted by the U.S. Patent and Trademark Office ("USPTO") that gives a patent owner the right "to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States" for a limited time in exchange for public disclosure of the invention when the patent is granted. The "invention" is set forth by a patent's "claims" and individual claims of a patent or patent application may be challenged.

Basic information about patents and the process of applying for a patent can be found on the USPTO's Inventor's Resources webpage. Also you may find this video from the Federal Judicial Center helpful in explaining patents and the patenting process.

How do I find out how long the patent will be in force?

In general, patents can stay in force for up to 20 years from the time of filing although the actual length of a patent's life can vary depending on a variety of factors. More information about patent term, and an explanation of how to estimate whether a patent has expired, is available on the Patent Term Calculator webpage. 

What if the patent is expired?

Even if a patent is expired, the patent owner has six years from the expiration date to file a lawsuit in order to collect monetary damages for past infringement before the expiration date. Also, note that the claims of a patent can be invalidated by federal courts and/or the USPTO prior to their expiration, but not afterwards.

September 24, 2014

J & J Sports Sues Soriano's Mexican Restaurant and Owner for Illegal Signal Interception

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Indianapolis, Indiana - An intellectual property attorney for J & J Sports Production, Inc. of Campbell, California ("J & J Sports") sued Minerva Soriano and Soriano's Mexican Restaurant, LLC, both d/b/a Soriano's Mexican Restaurant of Indianapolis, Indiana, in the Southern District of Indiana. Plaintiff alleges that Defendants illegally intercepted and broadcast the Julio Cesar Chavez, Jr. v. Sergio Martinez WBC Middleweight Championship Fight Program on September 15, 2012.

Defendant Minerva Soriano, alleged to be an owner and/or an individual with control, oversight and management of Soriano's Mexican Restaurant has been sued for the illegal interception of the Julio Cesar Chavez, Jr. v. Sergio Martinez WBC Middleweight Championship Fight Program (the "Program"). Soriano's Mexican Restaurant, LLC, the legal entity which apparently owns the restaurant, has also been sued.

Plaintiff J & J Sports alleges that it was granted the exclusive nationwide television distribution rights to the Program, including all under-card bouts and fight commentary included in the television broadcast of the event. It states that it entered into subsequent sublicensing agreements with various commercial entities, which were, in turn, granted certain commercial sublicensing rights to the Program.

J & J Sports contends that, "with full knowledge that the Program was not to be intercepted, received and exhibited by entities unauthorized to do so" Defendants and/or their agents unlawfully published, divulged and exhibited the Program. It further asserts that this conduct was "willful, malicious, and intentionally designed to harm" J & J Sports and to cause economic distress.

In the Indiana intellectual property complaint filed on behalf of J & J Sports, the following is alleged:

• Count I: Violation of Title 47 U.S.C. Section 605
• Count II: Violation of Title 47 U.S.C. Section 553
• Count III: Conversion

Regarding Count I, J & J Sports asks the court for the following: (a) Statutory damages for each willful violation in an amount to $100,000.00 pursuant to Title 47 U.S.C. 605(e)(3)(C)(ii), and (b) the recovery of full costs, including reasonable attorneys' fees, pursuant to Title 47 U.S.C. Section 605(e)(3)(B)(iii).

Plaintiff requests the following remedies for the alleged violations of Count II: (a) Statutory damages for each willful violation in an amount to $50,000.00 pursuant to Title 47 U.S.C. 553 (b)(2) and (b) the recovery of full costs pursuant to Title 47 U.S.C. Section 553
(c)(2)(C), and (c) and reasonable attorneys' fees, pursuant to Title 47 U.S.C. Section 553 (c)(2)(C).

Finally, for the count of conversion, J & J Sports asks: for compensatory damages in an amount according to proof against Defendants, and for reasonable attorney fees, and for all costs of the lawsuit, including but not limited to filing fees, service of process fees, investigative costs.

Practice Tip:

J & J Sports is a frequent litigant but it is relatively infrequent that a trial on the merits of its intellectual property claims is held. In 2010, it sued in the United States District Court for the Northern District of Texas alleging unauthorized interception and broadcast of the December 2007 "Undefeated" match between Floyd Mayweather and Ricky Hatton. Defendants argued that the broadcast had been authorized by its cable provider. Specifically, Time Warner Cable, which had been licensed to provide the non-commercial rights, expressly admitted that it had inadvertently authorized the commercial display of the broadcast. Time Warner Cable had also offered to pay to J & J Sports the liquidated damages that the contract required in cases of such a breach. On a motion for summary judgment, the trial court agreed with J & J Sports' allegations that either a violation of § 605 or § 553 had occurred and awarded to J & J Sports statutory damages of $350 and costs and attorneys' fees of $26,780.30.

The U.S. Court of Appeals for the Fifth Circuit reversed. The issue of whether § 605 applied was one of first impression for the court. It stated that § 605 did not apply to that case, holding that the receipt or interception of communications by wire from a cable system was not governed by § 605. The court then evaluated Defendants' conduct under the "safe harbor" provision of § 553. That provision exempts from liability any cable recipient who is authorized by a cable company to receive a transmission. In this case,Time Warner Cable's representative admitted that it had inadvertently sold the broadcast of the fight to Defendants for a non-commercial price, despite knowing that Defendants ran a commercial establishment. This, held the Fifth Circuit, was enough to create a material fact regarding whether Defendants in that case had violated § 553 making the trial court's grant of summary judgment reversible error.

Continue reading "J & J Sports Sues Soriano's Mexican Restaurant and Owner for Illegal Signal Interception" »