December 8, 2014

Indiana Intellectual Property Litigation: J & J Sports Productions Sues Multiple Defendants for Illegal Interception of Satellite Program

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Indianapolis, Indiana - An intellectual property attorney for J & J Sports Productions, Inc. of Campbell, California filed four separate lawsuits in the Southern District of Indiana alleging the illegal interception of the satellite signal for the Manny Pacquiao v. Juan Manuel Marquez, IV Welterweight Fight Program ("Program") broadcast on December 8, 2012.

J & J Sports states that it is the exclusive domestic commercial distributor of the Program. It has sued multiple Defendants, both individually and doing business as commercial entities, under the Communications Act of 1934 and The Cable & Television Consumer Protection and Competition Act of 1992. Specifically, Defendants have been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553 by displaying the Program at issue on December 8, 2012 without an appropriate license. A count of conversion is also included.

The Defendants in the four intellectual property complaints are Kelli Membreno, individually and d/b/a El Patron, Ramiro Barrera, individually and d/b/a El Patron, El Patron, Inc., Cassia Cortez, individually and d/b/a Regios, Taqieria Regios, Inc., Lucio Molina, individually and d/b/a La Costenita, a/k/a Restaurant La Costentia, La Costenita Enterprises, Inc., and Maria Monserrat Avalos Hernandez, individually and d/b/a El Parral Dancing Club, all of Indianapolis, Indiana.

In addition to naming the separate legal entities that apparently own the restaurants in question, Plaintiff has also sued various other Defendants as individuals, alleging that they had the right and ability to supervise the activities of the commercial establishments that allegedly engaged in the illegal interception. J & J Sports asserts that the activities that they supervised included the unlawful interception of Plaintiff's Program. J & J Sports contends that the individual Defendants specifically directed the employees of the restaurants to unlawfully intercept and broadcast Plaintiff's Program at the commercial establishments or, if they did not, that the actions of the employees of the restaurants are directly imputable to the Defendants sued as individuals by virtue of their purported responsibility for the activities of their respective restaurants.

In the complaints, the intellectual property attorney for J & J Sports listed the following counts:

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

J & J Sports asks for damages, as well as costs and attorneys' fees.

Continue reading "Indiana Intellectual Property Litigation: J & J Sports Productions Sues Multiple Defendants for Illegal Interception of Satellite Program" »

December 5, 2014

Indiana Intellectual Property Litigation: DirecTV Sues Alleging Illegal Satellite Signal Interception

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Indianapolis, Indiana - An intellectual property lawyer for DirecTV, LLC of El Segundo, California has sued in the Southern District of Indiana alleging the illegal use of DirecTV's satellite signal. Named as Defendants in the complaint are Rodolpho Flores, who has been sued as an individual and also as an officer, director, shareholder, and/or principal of Mexico City Restaurant, Inc., d/b/a Mexico City Grill, and Mexico City Restaurant, Inc., d/b/a Mexico City Grill (collectively, "Defendants"). DirecTV claims that Defendants are located in Fishers and Indianapolis, Indiana. DirecTV seeks declaratory and injunctive relief as well as damages for the improper receipt, transmission and exhibition of its satellite programming signals.

DirecTV distributes satellite programming throughout the United States. Through its operations, DirecTV provides this programming via specialized satellite-signal receiving equipment to subscribers who purchase a programming license by paying a subscription fee.

In its intellectual property complaint, DirecTV acknowledges that it granted a license for commercial service at the Mexico City Grill located on Fishers Station Drive. However, it claims that the DirecTV receiver authorized for the Mexico City Grill on Fishers Station Drive was, in fact, used at a second Mexico City Grill located on Emerson Avenue without the proper authorization from DirecTV.

This intellectual property lawsuit was brought under the Cable Communications Policy Act of 1984, 47 U.S.C. §521, et seq. DirecTV also asserts that Defendants' conduct violates several federal statutes, including 18 U.S.C. §§2511 and 2512, and 47 U.S.C. §605, and laws of the State of Indiana. The complaint further alleges that Defendants' use of an authorized commercial subscription to DirecTV in a commercial establishment for which it was not authorized was willful and unlawful.

The complaint, filed by an intellectual property lawyer for DirecTV, lists three causes of action:

  • Count One: Damages for Violations of Cable Communications Policy Act under 47 U.S.C. §605(e)(3)(c); 
  • Count Two: Damages for Violations of 18 U.S.C. §2511; and 
  • Count Three: Civil Conversion.

DirecTV asks for the following: a declaration that Defendants' use of DirecTV was a violation of 18 U.S.C. §2511 and 47 U.S.C. §605 and that such violations were willful and for the purpose of commercial advantage; an injunction against further violations; statutory damages under 18 U.S.C. §2511; statutory damages under 47 U.S.C. §605; punitive damages; costs; attorney's fees and interest.

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December 4, 2014

USPTO Roundtable: Ensuring the Accuracy and Integrity of the Trademark Register

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Alexandria, Virginia - As part of the Trademark Operation's continuing series of roundtable discussions to gather stakeholder views on important issues, the United States Patent and Trademark Office ("USPTO") will be holding a roundtable discussion of suggestions for ensuring the accuracy and integrity of the trademark register on Friday, December 12, 2014 from 2 - 3 p.m. in the Paris Room of the Global Intellectual Property Academy at the USPTO main campus, located at 600 Dulany Street, Alexandria, Virginia 22314.

Part of the discussion will focus on data compiled through October 15, 2014 from the USPTO's pilot program to assess the accuracy and integrity of the trademark register as to the actual use of marks with the goods and/or services identified in the registrations. The session will be open to the public for attendance in person or by webcast.

The full announcement is available here.

December 3, 2014

Patent Office Issues 160 Patents To Indiana Citizens in November 2014

The U.S. Patent Office issued the following 160 patent registrations to persons and businesses in Indiana in November 2014, based on applications filed by Indiana patent attorneys:

PAT. NO. Title
D718,427 Faucet 
D718,072 Toothbrush tumbler holder 
8897977 Variator control with torque protection 
8897544 System and method for segmentation of three-dimensional image data 
8895918 Ion generation using modified wetted porous materials 
8895747 Method and substances for preparation of N-substituted pyridinium compounds 

Continue reading "Patent Office Issues 160 Patents To Indiana Citizens in November 2014" »

December 1, 2014

211 Trademark Registrations Issued to Indiana Companies in November 2014

The U.S. Trademark Office issued the following 211 trademark registrations to persons and businesses in Indiana in November 2014 based on applications filed by Indiana trademark attorneys:

Reg. No. Work Mark Click to View
4634184 LENSENSE Live
4646930 MEDICAL RESORT Live
4645273 BUSINESSES DON'T GROW, PEOPLE DO! Live
4645237 INCITE Live
4645231 TRAIN LIKE A FIGHTER - SAFE MODERN APPROACH Live
4645221 BLUE COLLAR GOLD SWAGGER Live
4644997 GCSG Live
4644963 R Live
4644956 RINGS OF RISK Live
4644946 SMALL CHANGES FOR HEALTH Live
4644914 EXECUTIVE CONVERSATIONS Live
4644897 MESA RAIN Live
4644751 THE HARDEST WORKOUT YOU'LL EVER LOVE Live



Continue reading " 211 Trademark Registrations Issued to Indiana Companies in November 2014" »

November 28, 2014

Indiana Patent Litigation: Intex Recreation Sues Bestway for Patent Infringement

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Indianapolis, Indiana - Indiana patent attorneys for Intex Recreation Corporation ("Intex") of Long Beach, California filed a patent infringement complaint in the Southern District of Indiana alleging that Bestway (USA), Inc. ("Bestway") of Phoenix, Arizona infringed "Inflatable Flotation Device Having Removable Canopy," Patent No. 6,749,474, which has been registered by the U.S. Patent Office.

Intex and Bestway compete in the business of selling inflatable pool products and accessories. In this Indiana patent lawsuit, Intex contends that Bestway has made, used, offered to sell, sold, and/or imported into the United States, inflatable products that infringe one or more claims of United States Patent No. 6,749,474 ("the '474 Patent"), which relates to an inflatable flotation device having a removable canopy and which Intex indicates it owns. Intex claims that Bestway's accused products are or were available, and are or were being offered for sale and sold, via the internet on at least Amazon.com and at Kmart stores and/or Kmart's website, including to customers located within Indiana. Intex claims that one example of an infringing product offered by Bestway's is Bestway's UV Careful™ Baby Care Seats.

In this Indiana patent litigation, a single count is alleged: infringement of U.S. Patent No. 6,749,474. Intex contends that Bestway's infringement of the '474 Patent is willful and justifies a trebling of damages pursuant to 35 U.S.C. § 284. Further, it asserts that is an exceptional case supporting an award of reasonable attorneys' fees pursuant to 35 U.S.C. § 285. Intex, via its Indiana patent lawyers, asks that the court:

  1. Order, adjudge, and decree that U.S. Patent 6,749,474 is valid, enforceable, and infringed by Bestway;
  2. Enter a permanent injunction against Bestway enjoining it, its directors, officers, agents, employees, successors, subsidiaries, assigns, and all persons acting in privity or in concert or participation with Bestway from making, using, selling, or offering for sale in the United States, or importing into the United States, any and all products and/or services embodying the patented inventions claimed in the '474 Patent;
  3. Award Intex its damages for patent infringement, and prejudgment and post-judgment interest, pursuant to 35 U.S.C. §284;
  4. Order, adjudge, and decree that Bestway's infringement of the '474 Patent has been deliberate and willful, and award Intex treble damages under 35 U.S.C. § 284; and
  5. Find that this case is "exceptional" under 35 U.S.C. § 285, and award Intex its costs and reasonable attorney's fees as provided in 35 U.S.C. § 285. 

Continue reading "Indiana Patent Litigation: Intex Recreation Sues Bestway for Patent Infringement" »

November 26, 2014

Indiana Trademark Litigation: Hoosier Momma Sues Founding Member Erin Edds

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Indianapolis, Indiana - Indiana trademark attorneys for Hoosier Momma, LLC ("Hoosier Momma") of Brownsburg, Indiana sued Erin Edds ("Edds") of Marion County, Indiana in the Southern District of Indiana. In this Indiana litigation, Hoosier Momma accuses Edds of violations of the federal Lanham Act, the Computer Fraud and Abuse Act and Indiana's Uniform Trade Secret Act, as well as computer tampering, misappropriation and attempted misappropriation of trade secrets, breach of contract, breach of fiduciary duties, tortious interference with business relationships, and conversion. Among its allegations, Hoosier Momma contends that Edds tarnished its "Hoosier Momma" trademark as well as its "Betty Design" trademark, U.S. Trademark Registration Nos. 4584165 and 4584167, which have been registered with the U.S. Trademark Office.

In 2010, Kimberly Cranfill ("Cranfill"), Catherine Hill and Edds formed Hoosier Momma. They are the sole members of Hoosier Momma, which is in the business of developing and selling vegan, gluten-free products that are sold in more than 600 restaurants, stores and hotels in at least six states.

Hoosier Momma alleges multiple wrongs by Edds, including making damaging false statements, engaging in conduct that conduct negatively affects Hoosier Momma's reputation and sales of its products, tarnishing its trademarks, and changing passwords to Hoosier Momma's social media accounts without authorization, refusing to relinquish control of the accounts and continuing to post to those accounts.

Edds is also accused of accessing Cranfill's e-mail account to obtain confidential information as well as sharing confidential information with Wilks & Wilson, a competitor of Hoosier Momma. Hoosier Momma also contends that Edds contacted Tone Products, Inc. ("Tone,") a direct competitor of Hoosier Momma's packer, and asked that Tone reverse engineer a Hoosier Momma product to allow Tone to determine the confidential recipe of such product, a trade secret of Hoosier Momma, and provide it to Edds for her personal use and/or a use that jeopardized the disclosure of Hoosier Momma's trade secrets. Hoosier Momma also claims that Edds improperly contacted several of Hoosier Momma's distributors, clients, manufacturers and other business partners.

Further, Edds allegedly attempted to sell her interest in Hoosier Momma without the consent purportedly required under the Hoosier Momma operating agreement. Finally, Hoosier Momma contends that Edds sold and traded Hoosier Momma product and improperly retained the proceeds.

In its Indiana trademark complaint, filed by trademark lawyers for Hoosier Momma, the following is claimed:

  • Count I: Violation of the Lanham Act, 15 U.S.C. § 1051, et seq.
  • Count II: Violation of the Computer Fraud and Abuse Act, 18 U.S.C. § 1030, et seq.
  • Count III: Computer Tampering
  • Count IV: Misappropriation and Attempted Misappropriation of Trade Secrets and Violation of Indiana Uniform Trade Secret Act
  • Count V: Breach of Contract
  • Count VI: Breach of Fiduciary Duties
  • Count VII: Tortious Interference with Business Relationships
  • Count VIII: Conversion
  • Count XI [sic]: Unjust Enrichment

Hoosier Momma asks for injunctive relief; compensatory and exemplary damages; costs; expenses; and attorneys' fees.

Continue reading "Indiana Trademark Litigation: Hoosier Momma Sues Founding Member Erin Edds" »

November 25, 2014

Indiana Patent Law: Method for Offering Video for Ad Viewing Is Not Patent Eligible

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Washington, D.C. - In the matter of Ultramercial Inc. v. Hulu, LLC et al., a patent attorney for Ultramercial, Inc. and Ultramercial, LLC appealed to the United States Court of Appeals for the Federal Circuit asserting that the District Court for the Central District of California erred in granting Defendant Wildtangent, Inc.'s Motion to Dismiss. 

Applying the U.S. Supreme Court's 2014 ruling in Alice Corp. v. CLS Bank Int'l, the Federal Circuit concluded that a method of offering free, streamed video in exchange for viewing an advertisement is not patent eligible. According to the court, the claims were directed to abstract ideas containing no element or combination of elements to ensure that the patent claims significantly more than the abstract idea itself.

While the court's opinion disclaimed any intent of holding that all claims in all software-based patents will necessarily be directed to an abstract idea, it said this conclusion is warranted as to this claim. In a concurring opinion, Judge Mayer made three points: (1) patent eligibility is a threshold question, (2) there is no presumption of eligibility, and (3) Alice set out a technological arts test for patent eligibility.

Claims Direct to Patent-Ineligible Concept

Under Alice, the first step of the analysis is to determine if the claim was directed to a patent-ineligible concept, the court began.  The method claim in question set out eleven steps, including receiving media, selecting an ad, offering sale on the Internet, limiting public access, offering for sale to the public in exchange for the selected ad, receiving the consumer's request to view the ad, facilitating display of the ad, allowing consumer access to the media and if the ad is interactive, updating an activity log, and receiving payment from the ad sponsor.

In his opinion for the Court, Judge Lourie wrote "[t]his combination of steps recites an abstraction--an idea, having no particular concrete or tangible form." The steps all describe an abstract idea, "devoid of a concrete or tangible application," he explained, adding the following: "Although certain additional limitations, such as consulting an activity log, add a degree of particularity, the concept embodied by the majority of the limitations describes only the abstract idea of showing an advertisement before delivering free content."

The court acknowledged that, at some level, all inventions reflect abstract ideas, and said this decision does not purport to say that all claims in all software-based patents will necessarily be directed to an abstract idea. Other cases may turn out differently, but the claims in this patent are directed to an abstract idea, Judge Lourie observed, which is a method of using advertising as an exchange or currency.

Nor does the addition of merely novel or non-routine components to the claimed idea necessarily turn an abstraction into something concrete, the court added. In any event, the novelty in implementation of the idea was a factor to be considered only in the second step of the Alice analysis, Judge Lourie wrote.

No Elements Transform Claims to Patent-Eligible Subject Matter

For the second step of the analysis--determining if elements or a combination of elements transform the claims to patent-eligible subject matter--the court examined the limitations of the claim, noting that they must disclose features that are more than "well-understood, routine, conventional activity."

None of the 11 individual steps, viewed both individually and as an ordered combination, transformed the nature of the claim into patent-eligible subject matter, the court concluded.The majority of those steps comprised the abstract concept of offering media content in exchange for viewing an advertisement. Adding routine additional steps such as updating an activity log, requiring a request from the consumer to view the ad, restrictions on public access, and use of the Internet did not transform an otherwise abstract idea into patent-eligible subject matter. Instead, the claimed sequence of steps comprised only "conventional steps, specified at a high level of generality," which is insufficient to supply an "inventive concept." Instead, the steps of consulting and updating an activity log represented insignificant "data-gathering steps" and, thus, added nothing of practical significance to the underlying abstract idea. Further, that the system was active, rather than passive, and restricted public access also represented only insignificant "[pre]-solution activity," which was also not sufficient to transform an otherwise patent-ineligible abstract idea into patent-eligible subject matter.

The invocation of the Internet added no inventive concept, the court explained, observing that, as an attempt to limit the use of the abstract idea to a particular technological environment, it was also insufficient to save the claim. "Given the prevalence of the Internet, implementation of an abstract idea on the Internet in the case is not sufficient to provide any "practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself," Judge Lourie wrote. The fact that some of the eleven steps were not previously employed in this art, standing alone, was not enough to confer patent eligibility here, he added.

While the "machine or transformation" test can provide a useful clue to patent eligibility, Judge Lourie acknowledged, he pointed out that this claim was not tied to any machine other than a general purpose computer. Nor was there any sufficient "transformation" insofar as the subject matter of claim merely involved the granting of access and the exchange of money. These were insufficient, according to the court, because they were neither physical objects or substances nor representative of physical objects or substances.

Concurring Opinion

In his concurring opinion, Senior Judge Mayer stressed three separate points: (1) the subject matter requirements of 35 U.S.C. §101 were a threshold matter to be addressed at the outset of the litigation; (2) the issues of Section 101 were not subject to a presumption of patent eligibility; and (3) the Alice decision, for all intents and purposes, set out a technological arts test for patent eligibility.

To read the opinions in this case, click here.

Continue reading "Indiana Patent Law: Method for Offering Video for Ad Viewing Is Not Patent Eligible" »

November 24, 2014

Indiana Trademark Law: If You Receive a Cease-and-Desist Letter

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What is a cease and desist letter?

A cease and desist (or demand) letter is correspondence that states or suggests that you are potentially infringing the trademark of another and demands that you stop using, or consider stopping use of, the accused mark. You should treat any such letter seriously. Before deciding how to proceed, consider your options as described below.

What are my options?

Because there are several ways to respond to a cease and desist letter, and these options may each have significant legal ramifications, we recommend that you consult an attorney experienced in trademark disputes. Among the options are:

1. Respond

(a) If you have a basis for doing so, you may respond to the letter and deny infringement; or

(b) You may respond by requesting more specific evidence as to why the trademark owner believes you are infringing its mark, including exploring dates of first use, whether the mark is federally registered, and the geographic areas where the mark has been used.

2. Do Nothing

You may elect not to respond to the letter or any follow-up letters. Some trademark cease and desist letters are sent in the hope that some recipients will be misled or intimidated into stopping or paying for use even though they do not need to do so. However, the decision not to respond should not be made lightly because doing nothing carries some risk. If you are later found liable for infringement, the court may determine that you acted recklessly and subject you to additional monetary damages.

3. Negotiate

You may negotiate with the trademark owner for a license to use the mark on mutually agreeable terms, or to obtain an agreement that you do not infringe the trademark.

4. File Your Own Lawsuit

You may want to explore suing the trademark owner for a "declaratory judgment" stating that your mark does not infringe the trademark.

An attorney experienced in trademark disputes can help you decide among these and other options and how to implement them.

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

Receiving a letter, without more, does not mean that you have been sued. Generally, if a federal lawsuit is filed against you, the trademark owner must serve two documents on you: (1) a document called a "complaint," which sets forth the claims made against you; and (2) a document called a "summons." The "summons" is issued by the clerk of court, and identifies the court in which you have been sued, contains an identifying case number, and tells you when you need to formally respond to the complaint. 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.

You should consult a trademark attorney if you think that you may have been sued. Please see the "Do I need an attorney?" section below for further information.

Again, an attorney with trademark expertise can help advise you about the various options available to challenge trademark registrations and applications. Please see the "Do I need an attorney?" section below for further information.

Do I need an attorney?

While you are not required to have an attorney to respond to a cease and desist letter, a trademark lawyer can help you understand the scope of your trademarks rights and the strengths and weaknesses of the allegations against you. Though the advice and representation by intellectual property attorneys can be expensive, the assistance of an experienced attorney can be very valuable. An Indiana trademark attorney may help you navigate the negotiation with your accuser and ultimately save you from additional costly legal problems.

Practice Tip: A trademark lawsuit requesting a declaratory judgment is not always a viable option. In MedImmune v. Genentech, 549 U.S. 118 (2007), the U.S. Supreme Court revised the Federal Circuit's test for ripeness under the Declaratory Judgment Act, which had required a reasonable apprehension of a lawsuit in order to establish jurisdiction. The Court broadened the scope of declaratory judgment jurisdiction, holding that the totality of the circumstances should be evaluated in determining the existence of "a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant relief."

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

November 21, 2014

Patent Law: Supreme Court Affirms Invalidity of Alice Corporation's Software Patents

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Washington, D.C. - The United States Supreme Court issued a unanimous opinion in Alice Corporation Pty. LTD v. CLS Bank International et al., Case No. 13-298. At issue was software that allows a neutral third party to ensure that all parties to a financial transaction have fully performed their obligations. The Court held that Alice Corporation's patents should not have been issued because they (1) consisted of software created to implement an abstract idea but (2) lacked an "inventive concept" sufficient to transform the abstract idea into a patent-eligible application.

Alice Corporation owned several patents that covered a manner for mitigating "settlement risk," i.e., the risk that one or more parties to an agreed-upon financial exchange will not satisfy their obligations. Alice Corporation's patent claims consisted of computer software that facilitated the exchange of financial obligations between the parties. The patents-in-suit claimed (1) a method for exchanging financial obligations, (2) a computer system configured to carry out the method for exchanging obligations, and (3) a computer-readable medium containing program code for performing the method of exchanging obligations.

Respondents (collectively, "CLS Bank"), which operate a global network that facilitates currency transactions, sued Alice Corporation, arguing that the patent claims at issue were invalid, unenforceable, or not infringed. Alice Corporation counterclaimed, alleging infringement.

All of the claims were held to be ineligible for patent protection by the district court because they purported to protect to an abstract idea. The Federal Circuit, sitting en banc, affirmed, although, of the ten judges, only five agreed on the reasoning behind the holding.

The Supreme Court held for CLS Bank, affirming the Federal Circuit, and held that the patent claims were drawn to a patent-ineligible abstract idea under 35 U.S.C. § 101 and, thus, could not be patented.

In this opinion, the Court defined the Section 101 framework as having two parts. First, the court must determine if the patent claim at issue is directed toward an abstract idea. Second, it must examine the elements of the claim to determine whether it contains an "inventive concept" sufficient to transform the abstract idea into a patent-eligible application.

The Court concluded that, in the case of the software patents-in-suit, "the method claims, which merely require generic computer implementation, fail to transform [an] abstract idea into a patent-eligible invention."

Practice Tip: Patent lawyers hoped that this much-anticipated case would clarify the extent to which software is patentable. The Supreme Court had a difficult task in drawing these lines. A ruling that allowed ideas that were overly broad and/or vague to be patented would have encouraged lawsuits by "patent trolls" and inhibited innovation by inventors who might fear that implementing their ideas would subject them to liability for patent infringement. On the other hand, a ruling that restricted the patentability of software too much could nullify thousands of existing patents and could also discourage innovation because an inventor's resulting creation would be more difficult to patent.

Continue reading "Patent Law: Supreme Court Affirms Invalidity of Alice Corporation's Software Patents" »

November 20, 2014

Indiana Trademark Law: About Trademark Infringement

What is trademark infringement?

Trademark infringement is the unauthorized use of a trademark or service mark on or in 

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connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.

How do I know whether infringement has occurred?

To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid mark, that it has priority (its rights in the mark(s) are "senior" to the defendant's), and that the defendant's mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties' marks. When a plaintiff owns a federal trademark registration on the Principal Register, there is a legal presumption of the validity and ownership of the mark as well as of the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. These presumptions may be rebutted in the court proceedings.

Generally, the court will consider evidence addressing various factors to determine whether there is a likelihood of confusion among consumers. The key factors considered in most cases are the degree of similarity between the marks at issue and whether the parties' goods and/or services are sufficiently related that consumers are likely to assume (mistakenly) that they come from a common source. Other factors that courts typically consider include similarities between how and where the parties' goods or services are advertised, marketed, and sold; similarities in the purchasing conditions; similarities in the range of prospective purchasers of the goods or services; whether there is any evidence of actual confusion caused by the allegedly infringing mark; the defendant's intent in adopting its mark; and the strength of the plaintiff's mark.

The particular factors considered in a likelihood-of-confusion determination, as well as the weighing of those factors, vary from case to case. The amount and quality of the evidence involved can have a significant impact on the outcome of a trademark infringement lawsuit.

In addition to claiming likelihood of confusion, a trademark owner may claim trademark "dilution," asserting that it owns a famous mark and the use of your mark diminishes the strength or value of the trademark owner's mark by "blurring" the mark's distinctiveness or "tarnishing" the mark's image by connecting it to something distasteful or objectionable - even if there is no likelihood of confusion.

An experienced Indiana trademark attorney, taking the particular circumstances of your case into consideration, should be able to provide you with an opinion as to the validity and strength of a trademark owner's claims.

How do I protect my own mark and what if I believe someone is infringing?

While the provisions of Section 2(d) of the Lanham Act require the U.S. Patent and Trademark Office to refuse registration of a mark that is similar to a previously registered mark and is used on the same or related goods or services, the USPTO does not engage in any policing efforts or enforcement activities in connection with the infringement of registered marks. Thus, throughout the life of a trademark registration, a mark owner who wants to maintain rights in its mark must police its mark and enforce its rights against others who are infringing. If you think someone is infringing your trademark rights, you may pursue the options described in the following section. You should strongly consider contacting an Indiana attorney specializing in trademark law. Often, time is of the essence when it comes to enforcing trademark rights.

November 19, 2014

Indiana Copyright Law: Seventh Circuit Holds that Subsequent Copyrighted Works Do Not Extend Copyright Period for Earlier Works

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Chicago, Illinois - California attorney Leslie S. Klinger, co-editor of multiple collections of annotated works based on Arthur Conan Doyle's Sherlock Holmes fiction sued Conan Doyle Estate, Ltd. under the Declaratory Judgment Act in the Northern District of Illinois seeking a declaratory judgment that he may freely use material from those Sherlock Holmes works for which copyright protection has expired. The district court held that Klinger's use of material that was no longer subject to copyright was permissible. The Seventh Circuit affirmed.

Arthur Conan Doyle published 56 stories and 4 novels featuring the fictional character Sherlock Holmes. Of these stories, only the final 10, published between 1923 and 1927, are still protected by copyright.

Leslie Klinger, Plaintiff-Appellee, co-edited an anthology called A Study in Sherlock: Stories Inspired by the Sherlock Holmes Canon. Klinger had not sought a license from Doyle's estate, presuming that one was not necessary, as the copyrights on most of the works in the "canon" had expired. The estate disagreed and demanded that Random House, which had agreed to publish Klinger's book, pay $5,000 for a copyright license. Random House acquiesced and, in 2011, the anthology was published.

The trouble began when Klinger and his co-editor decided to create a sequel, "In the Company of Sherlock Holmes" and entered into negotiations with Pegasus Books, a publisher. The Doyle estate again demanded a fee for a copyright license and threatened to interfere with distribution of the book if that copyright license fee was not paid, telling Pegasus, "If you proceed instead to bring out Study in Sherlock II [the original title of "In the Company of Sherlock Holmes"] unlicensed, do not expect to see it offered for sale by Amazon, Barnes & Noble, and similar retailers. We work with those compan[ies] routinely to weed out unlicensed uses of Sherlock Holmes from their offerings, and will not hesitate to do so with your book as well." No threat of a lawsuit for copyright infringement was explicitly made. Pegasus subsequently refused to publish the book unless and until Klinger obtained a copyright license from the Doyle estate.

Instead of purchasing a license, Klinger sued the estate seeking a declaratory judgment that he could freely use any material from the Sherlock Holmes works for which the period of copyright protection had expired.

The district court held in Klinger's favor. The estate appealed to the Seventh Circuit on two alternative grounds. The estate first contended that the district court lacked subject matter jurisdiction under the Declaratory Judgment Act because there was no "actual case or controversy." Second, it asserted that a copyright on a "complex" character, whose full complexity is not revealed until a later story, remains protected under copyright law until the later story falls into the public domain.

Circuit Judge Posner, writing for the court, rejected both arguments. The "case or controversy," necessary for federal jurisdiction was demonstrated by the estate's "twin threats" of blocking the distribution of the book and the implied threat of a copyright lawsuit against the publisher, Klinger and the book's co-editor for copyright infringement if the book were published without a license. That such a case or controversy existed was also demonstrated by the fact that Klinger could have sued on a claim of tortious interference with advantageous business relations as a result of the estate's intimidation of his publisher.

The court then considered the question of "whether copyright protection of a fictional character can be extended beyond the expiration of the copyright on it because the author altered the character in a subsequent work." The estate urged the court to grant additional copyright protection in its case, arguing that characters such as Sherlock Holmes were "round" and/or "complex" and thus deserving of greater shelter under copyright law than fictional characters that were "flat" and/or "simple."

The court could find no basis in statute or case law to support the extension of a copyright beyond its expiration. Thus, it affirmed the uncontested matter of copyright protection for the later works - namely, a right to recover for copyright infringement still existed for some portions of the Sherlock Holmes works for which the copyrights had not yet expired. However, that protection was limited to only those elements of the later Sherlock Holmes works that included "incremental additions of originality." The remainder, the court opined, had passed into the public domain, regardless of the dimensions of the characters portrayed.

Practice Tip: The court was also unpersuaded by the Doyle estate's argument to extend copyright law on the grounds that failure to do so would diminish authors' incentives to create. After noting that Arthur Conan Doyle had died 84 years prior, thus rendering the argument inapplicable in the current litigation, the court noted that "extending copyright protection is a two-edged sword from the standpoint of inducing creativity, as it would reduce the incentive of subsequent authors to create derivative works (such as new versions of popular fictional characters like Holmes and Watson) by shrinking the public domain."

Continue reading "Indiana Copyright Law: Seventh Circuit Holds that Subsequent Copyrighted Works Do Not Extend Copyright Period for Earlier Works" »

November 17, 2014

Indiana Trademark Law: Some Basic Facts About Trademarks

What is a trademark?

A trademark is generally a word, phrase, symbol, or design, or a combination of these 

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elements, that identifies and distinguishes the source of one party's goods from those of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than goods. The terms "trademark" or "mark" are commonly used to refer to both trademarks and service marks. Although federal registration of a mark is not mandatory, it has several advantages, including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods and/or services listed in the registration.

Do trademarks, copyrights, and patents protect the same things?

No. Trademarks, copyrights, and patents protect different types of intellectual property. A trademark typically protects brand names and logos used on goods and services. A copyright protects an original artistic or literary work. A patent protects an invention. For example, if you invent a new kind of vacuum cleaner, you would apply for a patent to protect the invention itself. You would apply to register a trademark to protect the brand name of the vacuum cleaner. And you might register a copyright for the TV commercial that you use to market the product.

Is federal registration of my mark required?

No. In the United States, parties are not required to register their marks to obtain protectable rights. You can establish "common law" rights in a mark based solely on use of the mark in commerce, without a registration. However, owning a federal trademark registration on the Principal Register provides a number of significant advantages over common law rights alone, including:

    • A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration (whereas a state registration only provides rights within the borders of that one state, and common law rights exist only for the specific area where the mark is used);
    • Public notice of your claim of ownership of the mark; Listing in the USPTO's online databases;
    • The ability to record the U.S. registration with the U.S. Customs and Border Protection Service to prevent importation of infringing foreign goods;
    • The right to use the federal registration symbol "®";
    • The ability to bring an action concerning the mark in federal court; and
    • The use of the U.S. registration as a basis to obtain registration in foreign countries.

How long does a trademark registration last?

A trademark registration may remain in force for potentially unlimited consecutive ten-year periods as long as the owner meets the legal requirements for post-registration maintenance and renewal and timely files all necessary documents. The owner must file a "Declaration of Use" between the fifth and sixth year following registration, attesting to the continued use or excusable nonuse of the mark on or in connection with the goods and/or services in the registration. In addition, the owner must file a combined Declaration of Use (or Excusable Nonuse) and Application for Renewal between the ninth and tenth year after registration, and every 10 years thereafter, attesting to the continued use or excusable nonuse of the mark on or in connection with the goods and/or services in the registration and requesting to renew the registration. If these documents are not timely filed, the registration will expire or be cancelled and cannot be revived or reinstated.

Practice Tip:

Filing a trademark application at the USPTO starts a legal proceeding that may be complex and will require you to comply with all requirements of the trademark statute and rules. Most applicants hire an attorney who specializes in trademark matters to represent them in the application process and provide legal advice. While a USPTO trademark examining attorney will try to help you through the process even if you do not hire a lawyer, no USPTO attorney may give you legal advice. Once you hire an attorney, the USPTO will only communicate with your attorney about your application.

A private Indiana trademark attorney can help you before, during, and after the trademark application process, including helping you police and enforce the trademark registration that may issue from your application. While you are not required to have an attorney, an attorney may save you from future costly legal problems by conducting a comprehensive search of federal registrations, state registrations, and "common law" unregistered trademarks - all done before you file your application. Comprehensive searches are important because other trademark owners may have stronger protected legal rights in trademarks similar to yours even though they are not federally registered. Therefore, those unregistered trademarks will not appear in the USPTO's Trademark Electronic Search System (also known as "TESS") database but could still ultimately prevent you from using your mark even if the USPTO registers your mark.

In addition, trademark lawyers can help you navigate the application process to provide optimal protection of your trademark rights, by, for example, accurately identifying and classifying your goods and services, and preparing responses to any refusals to register that an examining attorney may issue. Further, a private intellectual property attorney can help you understand the scope of your trademarks rights and advise you on the best way to police and enforce those rights, including what to do if other trademark owners allege that you are infringing their mark. Enforcement of trademark rights is the responsibility of the holder of the trademark.

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

November 14, 2014

Indiana Trade Secret Law: Court Rules on Enforceability of Trade Secret Agreements

Indianapolis, Indiana - Pennsylvania trade secret attorneys, in conjunction with Indiana co-counsel, for Distributor Service, Incorporated ("DSI") of Pennsylvania sued in the Southern District of Indiana alleging that Rusty J. Stevenson ("Stevenson") of Indiana and Rugby IPD Corp. d/b/a Rugby Architectural Building Products ("Rugby") of New Hampshire violated an agreement containing non-competition, non-solicitation, and non-disclosure provisions. In the instant order, the court ruled on motions for summary judgment filed by DSI and Stevenson.

Plaintiff DSI is a seller and distributor of wholesale specialty building products to businesses in the Middle Atlantic and Midwest regions of the country. It has eight locations in Indiana, Pennsylvania, Ohio, Kentucky, and Michigan. Defendant Rugby is also in the business of selling and distributing wholesale specialty building products. It does so throughout the United States, including in Indiana, and is a direct competitor of DSI. Stevenson, formerly an employee of DSI, is currently employed by Rugby.

DSI hired Stevenson in October 1999 to be a salesman. When he started, Stevenson had no sales experience in the specialty-building-products industry or any related industry. DSI indicated that it had invested significant time and resources to provide specialized training to Stevenson. In April 2005, DSI promoted Stevenson to the position of sales manager. Later, as part of his employment, Stevenson signed a Confidentiality and Non-Competition Agreement with DSI. This agreement contained provisions for Non-Competition/Non-Solicitation and Non-Disclosure of Confidential Information.

During his employment with DSI, Stevenson had access to information that DSI considered to be protectable as intellectual property assets. This information included all of DSI's "Customer Lists," "Customer Product Preferences," "Competitive Pricing," and "Competitive Cost Structure" for DSI's Indianapolis branch. DSI asserted that this information was "the cornerstone of DSI's ability to compete effectively in the specialty building products industry in Indiana," and that the information "derives economic value from not being generally known to other persons who can obtain economic value from its disclosure or use."

In August 2013, Mr. Stevenson resigned from DSI to take a position as the general manager of Rugby's Indianapolis branch. Shortly thereafter, DSI sued Rugby and Stevenson seeking, inter alia, damages and injunctive relief. DSI asserted claims for: (1) breach of the Non-Compete Provision; (2) breach of the Non-Solicitation Provision; (3) breach of the Non-Disclosure Provision; (4) recovery of attorneys' fees and expenses under the Agreement; (5) misappropriation of trade secrets; (6) breach of duty of loyalty, and (7) tortious interference.

In this opinion, District Judge Jane Magnus-Stinson reviewed cross-motions for summary judgment filed by DSI and Stevenson. DSI's motion was denied in its entirety. Stevenson's motion for summary judgment was granted as to Count 1, breach of the Non-Compete Provision, and Count 2, breach of the Non-Solicitation Provision. Stevenson's motion for summary judgment on Count 3, breach of the Non-Disclosure Provision, was denied.

The court began by discussing the standard for upholding the provisions at issue. It is a longstanding principle in Indiana that covenants that restrict a person's employment opportunities are strongly disfavored as a restraint of trade. To be enforceable, such restraints, such as a noncompetition agreement, must be reasonable. The court noted that it, while in many other contexts reasonableness was a question of fact, the reasonableness of a noncompetition agreement was a question of law and, thus, was capable of evaluation in response to the parties' motions for summary judgment.

The first hurdle for DSI was to show that the agreement protected a legitimate interest, defined as "an advantage possessed by an employer, the use of which by the employee after the end of the employment relationship would make it unfair to allow the employee to compete with the former employer." Indiana law provides that goodwill, including "secret or confidential information such as the names and addresses of customers and the advantage acquired through representative contact," is a legitimate protectable interest. DSI argued that it had a legitimate interest in protecting the customer relationships that Stevenson had developed during his years working for DSI as well as the information embodied in DSI's Customer Lists, Customer Product Preferences, Competitive Pricing, and Competitive Cost Structure, to which Stevenson had been permitted access. The court agreed that this was a protectable interest.

DSI next had to establish that Non-Compete Provision of the agreement was "reasonable in scope as to the time, activity, and geographic area restricted." DSI argued that the provision was limited merely to restricting Stevenson from engaging in competitive business activity. The court was not convinced. Instead, it noted that, as drafted, the "competitive business activity" restriction applied to the activities of Stevenson's new employer, not to Stevenson himself. Thus, because Rugby engaged in business activities that were competitive to DSI, the agreement would de facto prohibit Stevenson from working for Rugby in any capacity, despite that no "in-any-capacity" language was explicitly applied to Stevenson in the agreement. "For example," the court explained, "[under DSI's agreement,] Mr. Stevenson could not serve lunch in Rugby's cafeteria or change light bulbs in Rugby's offices because Rugby competes with DSI." The court concluded that, as a result, the Non-Compete Provision was overly broad and unreasonable.

Regarding this provision, DSI also contended that alleging and proving that the employee had been provided with trade secrets could render an otherwise unenforceable non-competition clause enforceable. The court rejected this argument.

The court also granted summary judgment for Stevenson on the Non-Solicitation Provision. This provision attempted to restrict Stevenson's ability to solicit "any customer or prospective customer of [DSI] with which [Stevenson] communicated while employed by [DSI]." The court found this restriction to be vague as to "prospective customer" as well as overbroad and unreasonable in scope.

Finally, the court declined to rule on the Non-Disclosure Provision on summary judgment. It held that, to evaluate whether this provision had been violated, it would need to determine whether "customer lists" and "the identities of key personnel and the requirements of the customers of [DSI]" were confidential. As the evidence submitted regarding confidentiality was "vague, generalized, and conflicting," the court found that a genuine issue of material fact existed with regard to the Non-Disclosure Provision and, consequently, partial summary judgment in favor of either party was inappropriate on the record before it.

Practice Tip #1: Summary judgment in federal court is guided by Rule 56 of the Federal Rules of Civil Procedure. A motion for summary judgment asks the court to find that a trial on a particular issue or issues is unnecessary because there is no genuine dispute as to any material fact and, instead, the movant is entitled to judgment as a matter of law. The moving party is entitled to summary judgment only if no reasonable fact-finder could return a verdict for the non-moving party.

Practice Tip 2: In a similar case, decided earlier this year, the Indiana Court of Appeals affirmed the trial court's ruling that the noncompetition agreement binding an ex-employee of the plaintiff was overly broad and, thus, unenforceable.

Continue reading "Indiana Trade Secret Law: Court Rules on Enforceability of Trade Secret Agreements" »

November 13, 2014

USPTO to Offer Webcast of First Cybersecurity Partnership Meeting

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WASHINGTON, D.C. - The USPTO will offer a forum, presented both on-site and webcast, for stakeholders seeking patent protection in the cybersecurity and network-security sectors.

The U.S. Department of Commerce's United States Patent and Trademark Office ("USPTO") will host its first Cybersecurity Partnership Meeting tomorrow, Friday, November 14, 2014, in Menlo Park, California. The meeting will serve as a collaborative forum for stakeholders seeking patent protection in the cybersecurity and network security sectors to share ideas, experiences, and insights with USPTO staff.

For this inaugural event, the USPTO has partnered with the National Institute of Standards and Technology ("NIST"), whose experts will present information on their voluntary Framework for Improving Critical Infrastructure Cybersecurity. The Framework, created through collaboration between industry and government, consists of standards, guidelines, and practices to promote the protection of critical infrastructure. USPTO staff will also discuss cybersecurity patent initiatives, key computer security patent application statistics, and examination guidelines for patent eligible subject matter following the Alice Corp. v. CLS Bank Supreme Court decision. In addition to the presentations from NIST and the USPTO, several key stakeholders will present their views on topics focusing on the intersection of intellectual property and cybersecurity.

Registration for the meeting, which will begin at 8:30 am Pacific Time, is now closed. However, a webcast will be available.

Practice Tip: For more information, including webcast access instructions and a list of speakers, you may visit www.uspto.gov/about/contacts/phone_directory/pat_tech/cybersecurity-partenership-mtg.jsp.