September 19, 2014

Indiana Unfair Competition Litigation: Property Damage Appraisers Sues Clinton Body Shop and Its Owner

Indianapolis, Indiana - Texas defamation and franchise attorneys for Property Damage 

wreckpicture.png

Appraisers ("PDA"), in conjunction with Indiana co-counsel, sued alleging that John Mosley ("Mosley"), owner of the Clinton Body Shop, Inc. of Clinton, Mississippi, committed unfair competition under the Lanham Act by falsely representing the nature of an estimate made by one of PDA's franchisees. Various state-law claims have also been pled to the court. This unfair competition lawsuit was initially filed in Indiana state court. It was removed from the Marion County Superior Court to the Southern District of Indiana by Indiana intellectual property attorneys for Defendants.

Plaintiff PDA is a national franchisor with a network of approximately 185 independent franchisees that are in the business of performing inspections on vehicles and other property. It has been in business for over 50 years. Defendant Mosley is the owner of the Clinton Body Shop. Clinton Body Shop advertises itself as a one-stop, full-service shop for automobile services.

Mosley is accused of inducing a PDA franchisee, John Larry Gentry, into providing a nonconforming auto-services estimate on PDA letterhead. PDA contends that Gentry was told that this estimate was only for comparison purposes and that it would be provided only to the Mississippi Attorney General's office.

PDA claims that, instead, Mosley subsequently e-mailed this estimate to the Indiana Auto Body Association. PDA also asserts that Mosley mischaracterized the contents of, and process involved in writing, the estimate. According to the complaint, Mosley also delivered this nonconforming estimate to "other body shops around the country, making the same misrepresentations."

In its complaint, filed by Texas defamation and franchise lawyers for PDA, in conjunction with Indiana co-counsel, the following counts are listed:

• Count I: Federal Unfair Competition (15 U.S.C. § 1125(a))
• Count II: State Unfair Competition
• Count III: Defamation
• Count IV: Tortious Interference with Business Relationships

PDA asks the court for damages, including exemplary damages; interest; attorneys' fees, expenses and costs; and a permanent injunction.

Practice Tip: The vast majority of Indiana intellectual property litigation takes place in federal court, as the intellectual property causes of action that are most often litigated creations of federal statutory law. Thus, they may be heard in federal court under federal-question jurisdiction. However, some intellectual property lawsuits - for example, litigation involving a trademark that is registered only with the state of Indiana and used solely within Indiana's boundaries - may occur in Indiana state court.

Continue reading "Indiana Unfair Competition Litigation: Property Damage Appraisers Sues Clinton Body Shop and Its Owner" »

September 18, 2014

Indiana Utility Patent Litigation: Functional Devices Sues for Declaratory Judgment of Utility Patent Non-infringement and Invalidity

Indianapolis, Indiana - Indiana patent attorneys for Functional Devices, Incorporated of 

964Patent.png

Russiaville, Indiana filed a declaratory judgment action asserting patent invalidity and non-infringement in the Southern District of Indiana. This intellectual property complaint alleges that Low Voltage Systems, Inc. d/b/a LVS, Inc. of San Leandro, California and Albert L. Hermans of Oakland, California wrongfully accused Functional Devices of infringing Utility Patent No. 7,045,964, "Emergency Lighting System with Automatic Diagnostic Test" ("the '964 Patent"), which was issued by the U.S. Patent Office.

Declaratory judgment Plaintiff Functional Devices been designing, manufacturing, and selling electronic devices in the United States since 1969. It sells relays, current sensors, power control, enclosures, power supplies, transformers, and accessories.

Declaratory judgment Defendant Low Voltage offers a line of electrical, low voltage, fire alarm, access control, security, video, and voice and data fiber optics products. It specializes in emergency lighting products, central-lighting inverters and power-control relays. Declaratory judgment Defendant Hermans is the owner of the '964 Patent. He is believed to have assigned or exclusively licensed the '964 Patent to Low Voltage.

Functional Devices asserts that it has been wrongly accused by LVS of infringing the '964 Patent. It indicates that, on August 28, 2014, patent counsel for LVS sent Functional Devices a demand letter contending that the manufacture, use, sale, and offer for sale of certain products infringes the '964 Patent. This letter, it claims, creates an actual, substantial, and continuing justiciable controversy between Functional Devices and LVS.

In its complaint, filed by Indiana patent lawyers, Functional Devices lists the following claims:

• Count I: Declaratory Judgment - Non-infringement of the '964 Patent
• Count II: Declaratory Judgment - Invalidity and Unenforceability of the '964 Patent

Functional Devices seeks a declaration from the court that 1) the '964 Patent is invalid and unenforceable and 2) no Functional Devices product infringes the '964 Patent. It also asks the court to order Low Voltage and Hermans to pay all costs and attorneys' fees associated with the litigation.

Practice Tip #1: When the declaratory judgment plaintiff files in its home jurisdiction, establishing personal jurisdiction over declaratory judgment defendants is sometimes tricky and can lead to competing lawsuits in different jurisdictions. The first-to-file rule is a doctrine of federal comity that generally favors pursuing only the first-filed action when multiple lawsuits involving the same claims are filed in different jurisdictions. It was designed to avoid conflicting decisions and promote judicial efficiency. Finding an exception to the first-to-file rule requires a sound reason that would make it unjust or inefficient to continue the first-filed action.

Practice Tip #2: A court may also consider the extent to which a declaratory judgment action is anticipatory and motivated by forum shopping. However, the Federal Circuit has repeatedly held that a finding that a filing was anticipatory does not in itself constitute sufficient legal reason to transfer or dismiss the first-filed case.

Continue reading "Indiana Utility Patent Litigation: Functional Devices Sues for Declaratory Judgment of Utility Patent Non-infringement and Invalidity" »

September 15, 2014

G & G Joins J & J in Suing for Illegal Interception of Championship Fight

canelo-alvarez-v-josesito-lopez-20120915-214826-955.png

South Bend, Indiana - An intellectual property attorney for G & G Circuit Events, LLC ("G & G") of Campbell, California sued in the Northern District of Indiana alleging that Juan Aguirre, Beatriz Zarate, Graciela Valles and Taqueria Los Gallos, Inc. illegally intercepted and broadcast "Knockout Kings: Canelo Alvarez v. Josesito Lopez Championship Fight" (the "Program") on September 15, 2012.

G & G states that it is the exclusive domestic commercial distributor of the Program. It has sued multiple Defendants both individually and doing business as Taqueria Los Gallos 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 September 15, 2012 without an appropriate license. Regarding the claim under 47 U.S.C. §605, the Complaint alleges that with "full knowledge that the Program was not to be intercepted, received, and exhibited" without authorization, "each and every one of the above named defendants . . . did unlawfully ... exhibit the Program" for the purpose of commercial advantage and/or private financial gain. A count of conversion is also included. It asserts that Defendants' acts were "willful, malicious, egregious, and intentionally designed to harm Plaintiff."

In the Complaint, the intellectual property lawyer for G & G listed the following counts and requests for redress:

• Count I: Violation of Title 47 U.S.C. § 605. For this count, G & G requests (a) statutory damages for each willful violation in an amount to $100,000.00, and (b) the recovery of all costs, including reasonable attorneys' fees.
• Count II: Violation of Title 47 U.S.C. § 553. For this count, G & G asks the court for (a) statutory damages of $50,000 for each willful violation; (b) the recovery of all costs; and (c) and in the discretion of the court, reasonable attorneys' fees.
• Count III: Conversion. For this count, the court is requested to order both compensatory and punitive damages from Defendants as the result of the Defendants' allegedly egregious conduct, theft, and conversion of the program and deliberate injury to G & G.

Practice Tip #1: Typically, an Indiana intellectual property plaintiff suing for interception cannot recover under both §§ 553 and 605, as the Seventh Circuit has held that those sections relate to two different kinds of piracy. Specifically, the Seventh Circuit has held that Section 553 governs the interception of cable television program traveling over a cable network. Section 605, in contrast, addresses interception of television programming traveling through the air. However, the federal appellate courts are not in agreement on this interpretation.

Practice Tip # 2:

This Complaint is very similar to the Complaint we blogged about on Friday, which was filed by the intellectual property counsel for J & J Sports. The complained-of activity (interception) is the same, the intellectual property that was allegedly intercepted (the Program) is the same and the Defendants are the same. One can also surmise that the Plaintiffs - J & J and G & G - may be related as well. Even the mysterious page-numbering notations found at the bottom of each page - "Page PAGE 7" [sic] - are the same on both Complaints.

The main substantive difference seems to be that Plaintiff J & J Sports asserts that it was granted "the exclusive nationwide commercial distribution (closed-circuit) rights" to the Program, while Plaintiff G & G asserts a right to "exclusive nationwide television distribution rights."

Continue reading "G & G Joins J & J in Suing for Illegal Interception of Championship Fight" »

September 12, 2014

J & J Sports Productions Sues For Illegal Interception of Satellite Signal

Hammond & South Bend, Indiana - An attorney for J & J Sports Productions, Inc., of 

Lopez-Canelo-Picture.jpg

Campbell, California filed two Indiana intellectual property lawsuits alleging illegal interception of programming.

The first lawsuit was filed in South Bend, Indiana. It alleges that Juan C. Aguirre, Beatriz Zarate, Graciela Valles and Taqueria Los Gallos, Inc. of Logansport, Indiana illegally intercepted satellite signals and broadcast the "Julio Cesar Chavez, Jr. v. Sergio Martinez WBC Middleweight Championship Fight" Program. The second lawsuit alleged illegal interception of another program, "Knockout Kings: Canelo Alvarez v. Josesito Lopez Championship Fight" Program. This lawsuit was filed in Hammond, Indiana and listed Richard Serrano and Agave Mexican Restaurant of Hobart, Indiana as Defendants. Both Programs were broadcast on Saturday, September 15, 2012.

J & J Sports states that it is the exclusive domestic commercial distributor of the Programs. 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 Programs at issue on September 15, 2012 without a commercial license. Regarding the claim under 47 U.S.C. § 605, the Complaints allege that with "full knowledge" that the Program was not to be intercepted, received, and exhibited without authorization, "each and every one of the above named defendants . . . did unlawfully ... exhibit the Program" for the purpose of commercial advantage and/or private financial gain.

A count of conversion is also included. It asserts that Defendants' acts were "willful, malicious, egregious, and intentionally designed to harm Plaintiff J & J Sports." In the Complaint against Agave, J & J Sports asserts that, as a result of being deprived of their commercial license fee, J & J Sports suffered "severe economic distress and great financial loss."

In addition to naming the separate legal entities which apparently owns the restaurants in question, Plaintiff has also sued the individuals alleging that they had the right and ability to supervise the activities of the restaurants. 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 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 and requests for redress:

•Count I: Violation of Title 47 U.S.C. § 605. For this count, J & J Sports requests (a) statutory damages for each willful violation in an amount to $100,000.00 [$110,000 in the Complaint against Agave], and (b) the recovery of all costs, including reasonable attorneys' fees.

•Count II: Violation of Title 47 U.S.C. § 553. For this count, J & J Sports asks the court for (a) statutory damages; (b) additional statutory damages for each willful violation; (c) the recovery of all costs; and (d) and in the discretion of the court, reasonable attorneys' fees. [A total of $50,000 was requested as against Taqueria Los Gallos on this Count, while a total of $60,000 was requested as against Agave.]

•Count III: Conversion. For this count, the court is requested to order both compensatory and punitive damages from Defendants as the result of the Defendants' allegedly egregious conduct, theft, and conversion of the program and deliberate injury to J & J Sports.

Practice Tip #1: The interception claim has a two-year statute of limitations, which explains why these complaints were filed on September 11, 2014, almost exactly two years after the broadcast date of the Programs at issue. J & J Sports and similar plaintiffs are frequent litigants, filing thousands of lawsuits per year, usually seeking a settlement instead of litigation. It appears that many of them are also filed near the eve of the two-year anniversary of the broadcast of the program at issue in each individual lawsuit.

Practice Tip #2: Most of these intellectual property lawsuits, including similar complaints filed by Joe Hand Promotions, are initiated with cut-and-paste complaints, leading to not-infrequent, and sometimes odd, errors. In this set of complaints, the same misspelling of "Agave Mexican Restuarant [sic]"occurred 16 times; J & J Sports was listed as "a California corporation with its principal place of liquor [sic] located [in California]." In turn, the complaint against Taqueria Los Gallos includes "page PAGE 7" [sic] at the bottom of each page, an error we first noticed in a November 2013 complaint filed on behalf of Joe Hand Promotions.

Continue reading "J & J Sports Productions Sues For Illegal Interception of Satellite Signal" »

September 11, 2014

Loretta Rush Sworn in as Chief Justice of Indiana Supreme Court

Indianapolis, Indiana - Loretta H. Rush (pictured)succeeds former Chief Justice Brent Dickson as Chief 

RushPhoto.png

Justice of the Indiana Supreme Court.

Rush was appointed to the Indiana Supreme Court by then-Governor Mitch Daniels in 2012. Prior to her appointment, Rush was elected as a Tippecanoe Superior Court judge, where she served for 14 years. During her tenure as a Tippecanoe judge, Rush assisted with the creation of the county's Court Appointed Special Advocate (CASA) program. During that time, she also helped initiate, develop and sustain more than twenty-five youth programs. In 2003, she was named the best juvenile court judge in the state.

Rush was selected in early August as the next chief justice of the Indiana Supreme Court by the seven-member Judicial Nominating Commission. Also interviewed for the position were Justices Steven David, Mark Massa and Robert Rucker. She was sworn in by Governor Mike Pence on August 18, 2014. Governor Pence offered his congratulations to Rush stating, "with this selection, the Judicial Nominating Commission has made history and ensured that Indiana's Supreme Court will continue to have outstanding leadership in the years ahead. With her extensive legal experience, proven character and commitment to public service, I am confident that Chief Justice Rush will serve our judiciary and our state with distinction."

Rush was born in 1958 in Pennsylvania and moved frequently as a child before settling in Indiana in 1972. She earned her undergraduate degree from Purdue University and graduated cum laude from the Indiana University Maurer School of Law in Bloomington.

Practice Tip: The vast majority of Indiana intellectual property litigation takes place in federal court, as the intellectual property causes of action that are most often litigated creations of federal statutory law. Thus, they may be heard in federal court under federal-question jurisdiction. However, some intellectual property lawsuits - for example, litigation involving a trademark that is registered only with the state of Indiana and used solely within Indiana's boundaries - may occur in Indiana state court.

September 10, 2014

Indiana Patent Law: Strong Showing Required to Plead and Prove Inequitable Conduct

Fort Wayne, Indiana - Judge Theresa L. Springmann of the Northern District of Indiana held

SeederPicture.png

that a patent infringement defendant's claim of inequitable conduct by the patentee had been insufficiently pled. The defendant's counterclaim was dismissed and its affirmative defense struck.

In 2013, an Indiana patent attorney for Unverferth Manufacturing Co., Inc. of Kalida, Ohio sued Par-Kan Company of Silver Lake, Indiana alleging infringement of Patent No. 8,221,047, Seed Carrier With Pivoting Conveyor, which had been registered with the United States Patent and Trademark Office ("USPTO").

Unverferth alleged that Par-Kan had engaged in both the "unauthorized, infringing manufacture, use, importation, sale and/or offer for sale" of the product and inducing others to infringe patented seed tender products, including its "Seed Weigh" product. Unverferth further alleged that the infringing behavior continued after Par-Kan was notified of the infringement and, as such, some or all of the infringement was willful.

In its complaint, filed by an Indiana patent lawyer, Unverferth asked for preliminary and permanent injunctions, for lost profits in an amount no less than a reasonable royalty, and that such damages be trebled. It also asked the court for a judgment that the case was "exceptional," and that, consequently, it was entitled to all costs and expenses of the action, including reasonable attorneys' fees.

Par-Kan interposed a claim of inequitable conduct against Unverferth, stating that two declarations of Unverferth's Vice President of Sales and Marketing, which had been submitted to the USPTO, failed to mention all relevant facts. Par-Kan also asserted that certain statements in the declarations, such as "I am unaware of any other factors contributing to the success of the product," were false.

Unverferth asked the court to dismiss Par-Kan's counterclaim of inequitable conduct for failure to state a claim. Additionally, Unverferth asked the court to strike Par-Kan's amended affirmative defense of inequitable conduct.

The court agreed that Par-Kan's claim of inequitable conduct was not properly before the court. Inequitable conduct "renders an entire patent (or even a patent family) unenforceable," stated the court. Thus, as a general rule, the application of a defense or counterclaim of inequitable conduct will be limited to instances where the patentee's misconduct resulted in the unfair benefit of receiving an unwarranted claim.

Consequently, the accused infringer must meet the heavy burden of proving, by clear and convincing evidence, that the patent applicant (1) made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the USPTO.

The "materiality" element of the test requires a showing of "but-for" materiality - would the USPTO have allowed the claim if it had been aware of the undisclosed information? To allow the court to evaluate materiality, the alleged infringer's pleading must include the "who, what, when, where, why and how" of the material misrepresentation or omission that it claims was made to the USPTO.

More specifically, the pleadings must identify the "who" - the specific individual associated with the filing or prosecution of the patent, who both knew of the material information and deliberately withheld or misrepresented it. They must also identify the "what" - which claims, and which limitations in those claims, the withheld references are relevant to - and the "where" - where in those references the material information is found. These assertions allow the alleged infringer to explain, and the court to infer, both "why" the withheld information is material and "how" an examiner would have used this information in assessing the patentability of the claims.

The court held that Par-Kan's pleadings properly included the "who" and "when" components, but that they failed to meet requirements regarding the "what, where, how, and why" regarding the materiality of the alleged omissions and misstatements. Instead, the court noted that the USPTO had explicitly stated that the declarations in question were insufficient to overcome the rejections. Thus, the court held, but-for materiality had not been sufficiently pled.

The court then turned to the requirement that specific intent to deceive be shown. Deceptive intent may not be assumed from the materiality of a deception and a mere allegation of an omission is insufficient. Instead, to satisfy the inequitable conduct standard, "deceptive intent must be the most reasonable inference drawn from the evidence." The court held that Par-Kan had failed to show that Unverferth had demonstrated deceptive intent, as other interpretations of the declarant's intent were reasonable, including that the declarant had believed his sworn statements to be true.

The court dismissed Par-Kan's counterclaim asserting, and struck its affirmative defense of, inequitable conduct. It stated, however, that were Par-Kan to file a motion to amend its pleadings, the court would consider whether such an amendment would be permitted.

Practice Tip: An exception to the requirement for "but-for" materiality exists where there is egregious affirmative misconduct.  However, this exception contemplates extraordinary circumstances like "deliberately planned and executed schemes."  Alleged misconduct such as the failure to mention prior art references in an affidavit is insufficient to constitute such "egregious affirmative misconduct."

Continue reading "Indiana Patent Law: Strong Showing Required to Plead and Prove Inequitable Conduct " »

September 8, 2014

Apple Entitled to $400M in Samsung Profits, Indiana University Maurer School of Law Professors Say in Amicus Brief

LG_G_Flex_smartphone.png

Bloomington, Indiana - In a highly publicized intellectual property case involving the design features of smartphones and tablets, the Federal Circuit will decide whether to force Samsung to pay Apple nearly $400 million - Samsung's total profits on products that infringed Apple's design patents. Though several high-profile academics have lined up in support of Samsung, Apple's position on the total profits rule should prevail, according to Indiana University Maurer School of Law experts who have filed an amicus curiae brief in the case.

Apple and Samsung have been battling in dozens of complex intellectual property infringement cases in several countries. At trial in one of the U.S. cases, a jury found that several Samsung devices infringed Apple's design patents, and awarded Apple all of Samsung's profits on those devices. On appeal, Samsung is arguing that it should only be required to give up the portion of its profits that can be linked directly to the infringing design features of the products, a theory called "apportionment."

"Congress debated this same question over a century ago and rejected apportionment," said Mark D. Janis, the Robert A. Lucas Chair of Law and director of the Center for Intellectual Property Research at the IU Maurer School of Law. He explained that in the mid-1880s, the Supreme Court decided two cases involving carpet designs in which the infringers made thousands of dollars in profits, but the design patent holder was awarded only 6 cents because it failed to prove how much of the profit was attributable to the carpets' appearance.

"It's quite clear that Congress was outraged by this result, so it enacted a provision authorizing design patent holders to claim the infringer's total profits on sales of the infringing products," Janis said. "Congress understood it would be difficult in many cases for design patent holders to show the precise value that consumers placed on the appearance of a given product, as opposed to its technical features. Rather than a rule that would have left design patent holders with nothing in many cases, Congress decided that the infringer ought to give up all the profits from the infringement."

A group of academics supporting Samsung argues that the world has changed so profoundly that a rule crafted in the 1880s isn't suitable any longer and must be changed. Janis and his co-author, Jason Du Mont, the Microsoft Intellectual Property Fellow at the IU Maurer School of Law, aren't so sure.

"First, that would be a question for Congress to take up, not the courts," Janis said. "But in any event, it's not clear whether the current law needs to be changed. In fact, design is probably more valuable to modern consumers than it was in the 1880s. And modern high-tech companies invest massively in design; just read Walter Isaacson's biography of Steve Jobs. A well-calibrated design patent system plays a role in encouraging that investment."

Practice Tip: Janis and Du Mont have filed a friend of the court brief making these points. It will be some time before the court decides the appeal. Janis can be reached for comment at 812-855-1205 or mdjanis@indiana.edu, and Du Mont can be reached at 773-828-9007 or jjdumont@indiana.edu.

September 5, 2014

Indiana Trademark Litigation: Chanel Sues Chanel's Salon for Trademark Infringement and Dilution

Chanel-picture.png

Hammond, Indiana - An Indiana trademark lawyer for Chanel, Inc. of New York, New York, in conjunction with New York co-counsel, sued in the Northern District of Indiana alleging that Chanel's Salon, LLC and Chanel Jones, both of Merrillville, Indiana, committed trademark infringement and trademark dilution of the trademark CHANEL, Registration Nos. 302,690; 510,992; 1,263,845; 1,348,842; 1,464,711; 1,559,404; 1,660,866; 3,134,695; and 4,105,557, which were issued by the U.S. Trademark Office.

Chanel is a fashion and beauty company. For over 85 years, Chanel has used CHANEL as a trade name, house mark and trademark to identify its goods and business. In addition to offering cosmetics, fragrances, and skin care products, Chanel's goods include hair accessories, such as barrettes, hair clips, and men's shampoo.

Chanel states that it has spent hundreds of millions of dollars to advertise and promote its goods. It indicates that last year in the United States it spent over $50 million dollars on advertising, all of which prominently featured the CHANEL mark. Consequently, it asserts, the CHANEL name and trademark is one of the most famous marks in the world and has become synonymous with Chanel.

At issue in this Indiana trademark infringement and trademark dilution lawsuit are the actions of Defendants Chanel's Salon and its owner Chanel Jones. Defendants are accused of having begun to use the trade names CHANEL'S SALON and/or CHANEL'S COSMETOLOGY SALON in October 2012 in connection with their beauty salon without Chanel's authorization and, in doing so, impinging on Chanel's intellectual property rights.

Chanel contends in this lawsuit that Defendants are infringing the CHANEL trademark by, inter alia, offering goods and services that are related to those offered under the CHANEL mark, including cosmetics, beauty consultation services and hair accessories. Chanel also asserts that Defendants' use of CHANEL dilutes the trademark, which Chanel claims is famous.

In July 2013, Chanel sent Defendants a cease-and-desist letter requesting that Defendants change the name of Chanel's Salon to a name that did not include the word CHANEL. Chanel states that Defendants did not respond to this letter and that further attempts to resolve the dispute were unsuccessful.

In the complaint, filed by an Indiana trademark attorney, the following is alleged:

• Count I: Federal Trademark Dilution (15 U.S.C. § 1125(c))
• Count II: Federal Trademark Infringement (15 U.S.C. § 1114(1))
• Count III: Federal Unfair Competition (15 U.S.C. § 1125(a))
• Count IV: Trademark Infringement and Unfair Competition Under Indiana Common Law

Chanel asks the court for injunctive relief and "such other and further relief as the Court may deem just and proper."

Practice Tip: This is an unusual trademark case in at least two respects. First, while trademark infringement lawsuits are relatively common, colorable assertions of trademark dilution are less so. This is due in large part to the requirement that the trademark that is allegedly diluted be "famous." This trademark lawsuit is also unusual in that, while the complaint asks the court in passing for "such other and further relief as the Court may deem just and proper," it does not explicitly seek damages for the alleged trademark infringement and dilution. Instead, the sole purpose of the complaint seems to be to obtain injunctive relief.

Continue reading "Indiana Trademark Litigation: Chanel Sues Chanel's Salon for Trademark Infringement and Dilution" »

September 4, 2014

Patent Office Issues 168 Patents To Indiana Citizens in August 2014

The U.S. Patent Office issued the following 168 patent registrations to persons and businesses in Indiana in August 2014, based on applications filed by Indiana patent attorneys:

Patent No.  Title
D712,016 Toilet 
D711,670 Furniture support frame and panel 
D711,668 Shelving 
D711,667 Shelving 
D711,666 Shelving 
8819849 Customer support account with restricted patient data access 

Continue reading "Patent Office Issues 168 Patents To Indiana Citizens in August 2014" »

September 3, 2014

192 Trademark Registrations Issued to Indiana Companies in August 2014

The U.S. Trademark Office issued the following 183 trademark registrations to persons and businesses in Indiana in July 2014 based on applications filed by Indiana trademark attorneys:

Reg. Number Mark Click to view
86188876 SABOTAGE View
86158448 PL"8"TED View
86151387 KINGFISHER View
86146172 TURTLEBACK View
86134928 TEAM FILM View
86133861 THE TRAVEL ADDICT View
86133176 COMPASSION KEY View
86126781 BAD MAMMA JAMMA FITNESS View

Continue reading "192 Trademark Registrations Issued to Indiana Companies in August 2014" »

August 29, 2014

USPTO to Host America Invents Act Roadshow in Seven Cities Nationwide

WASHINGTON, D.C. - USPTO officials will discuss the First Inventor to File provision of the America Invents Act.

The U.S. Department of Commerce's United States Patent and Trademark Office ("USPTO")

UnitedStates.png

 announced this week that it will host seven roadshows across the country between September 16 and October 9, 2014. These events are designed to increase understanding of the First Inventor to File ("FITF") provisions of the America Invents Act ("AIA"). The public meetings will serve as an opportunity for USPTO subject-matter experts and stakeholders to discuss the FITF provisions and updates since its implementation in March 2013.

The USPTO hopes to broaden public knowledge of the FITF provisions and increase understanding of the provision's administrative processes to aid inventors and their representatives in the filing and prosecuting of patent applications under the FITF system. At each roadshow, panelists will discuss:

• FITF statistics to date,

• the applicability of the FITF provisions on patent applications filed today,

• the FITF statutory framework and its exceptions, and

• AIA evidentiary declaration practice useful to invoke these exceptions.

The experts will present a variety of sample scenarios to illustrate both the applicability of the FITF provisions as well as tips for prosecuting applications filed under the FITF provisions.

The roadshow series will begin on September 16, the third anniversary of the signing of the Leahy-Smith America Invents Act, and run through October 9, 2014. It will stop in Concord, New Hampshire; Madison, Wisconsin; Dallas, Texas; Silicon Valley, California; and Atlanta, Georgia, as well as on USPTO campuses in Alexandria, Virginia, and Denver, Colorado. The roadshows in Alexandria on September 23 and Denver on October 2 will be webcast live through the USPTO website.

The half-day agenda for each stop will be:

Introductory Remarks (10 min)
FITF - A Year Plus In Review (20 min)

• Review of examiner training

• Statistics to date

Will My Application Be Examined Under AIA (FITF) Or Not? (75 min)

• 1.55/1.78 statements

• The power of the ADS

• Have you checked your filing receipt?

• Scenarios

Break (15 min)

FITF Overview and Tips on Responding to Prior Art Rejections (60 min)

• 35 USC 102(a)(1) and 102(a)(2) - bases for rejections

• 35 USC 102(b)(1) and 102(b)(2) - exception provisions

• Scenarios

Effective Use of AIA (FITF) Evidentiary Declarations (45 min)

• 37 CFR 130(a) and 130(b)

• Scenarios

Tour of the AIA (FITF) Website and Q&A (15 min)

Practice Tip:

The roadshow events are free and open to the public. Seating is available on a first-come, first-served basis. For more information, including roadshow logistics, venues, and webcast access information, please refer to the AIA roadshow page on the USPTO website.

Further information is also available from Kathleen Bragdon via email at Kathleen.Bragdon@uspto.gov.

August 28, 2014

Indiana Copyright Litigation: Photographer Sues Theater and Publisher for Copyright Infringement

Indianapolis, Indiana - Larry G. Philpot, a professional photographer from Indianapolis, 

chrisdaughtryphoto.png

Indiana, filed two new Indiana copyright infringement lawsuits in the Southern District of Indiana. These lawsuits are in addition to another intellectual property lawsuit filed by Philpot recently.

On October 4, 2009, Plaintiff Philpot photographed Willie Nelson during a performance in St. Louis, Missouri ("Nelson photograph"). On August 2, 2013, he photographed Chris Daughtry during a performance in Indianapolis, Indiana ("Daughtry Photograph").

In an effort to increase his marketability and reputation and to gain more work, Philpot made the photographs of Nelson and Daughtry generally available through Wikimedia under the Creative Commons Attribution 2.0 Generic license ("CC BY 2.0"). Philpot asserts that CC BY 2.0 requires a licensee to (a) reference CC BY 2.0 with every copy of the photo used and (b) provide attribution in the manner specified by the author. He claims that these requirements applied to republication of his copyrighted photos of Nelson and Daughtry. The two new Indiana copyright infringement complaints assert that Defendants did not comply with these licensing requirements and are, consequently, liable for copyright infringement.

In the first complaint, Mansion America, LLC d/b/a Oak Ridge Boys Theater of Branson, Missouri is accused of copyright infringement of Philpot's Willie Nelson photograph, Certificate Number VAu 1-132-411, which was issued by the U.S. Copyright Office.

In the second complaint, Everything Brooklyn Media, LLC d/b/a The Brooklyn Daily Eagle, is accused of copyright infringement of Philpot's Nelson photograph and also the Daughtry Photograph, Certificate Number VAu 1-164-624, which was also issued by the U.S. Copyright Office.

In the copyright complaint against Mansion, filed by Philpot acting as a pro se litigant, the following claims are made:

• Count I: Copyright Infringement and Unfair Competition
• Count II: Unauthorized Distribution of Copyrighted Material
• Count III: Removal of Identifying Information

The copyright complaint filed against The Brooklyn Daily Eagle asserts only the first count (copyright infringement and unfair competition).

In both complaints, Philpot asks the court for an injunction, damages, costs and attorneys' fees.

Practice Tip #1: Under 17 U.S.C. § 504(c)(1), a copyright owner may elect actual or statutory damages. Statutory damages range from a sum of not less than $750 to not more than $30,000 per infringed work.

Practice Tip #2: The claims in these complaints may trigger the "advertising injury" clause of many general business liability insurance policies. If a defendant has applicable business insurance, it may provide coverage for the expenses of a legal defense and damages found due as a result of unintentional copyright infringement. Overhauser Law Offices, publisher of this Site, counsels clients on insurance coverage for insurance claims.

Continue reading "Indiana Copyright Litigation: Photographer Sues Theater and Publisher for Copyright Infringement" »

August 27, 2014

Indiana Trademark Litigation: Owner of JOIN® Sues Owner of JOIN.ME®

jmLogo_107x79.png

Indianapolis, Indiana - An Indiana trademark attorney for Sensory Technologies, LLC of Indianapolis, Indiana ("Sensory") sued in the Southern District of Indiana alleging that LogMeIn, Inc. of Boston, Massachusetts infringed the trademark "JOIN", Trademark Registration No. 3622883, which was issued by the U.S. Trademark Office. This Indiana trademark lawsuit, filed under the Lanham Act, 15 U.S.C. §1114(a), 15 U.S.C. §1125(a) and 15 U.S.C. §1117(c), as well as the common law of Indiana, seeks the following: injunctive relief, a declaratory judgment and damages.

Plaintiff Sensory offers JOIN-branded virtual meeting/video-conference services. The services connect audio, video and web technologies in virtual meeting rooms and include videoconferencing, content sharing and collaboration. Sensory estimates that more than 15,000 users participated in JOIN-enabled conferences in the first six months of 2014. It owns the trademark JOIN in connection with "teleconferencing and video conferencing services."

Defendant LogMeIn is a provider of SaaS and cloud-based remote-connection services. It operates the website join.me, where it offers instant screen sharing, unlimited audio and recording. Up to 250 people may participate in a join.me meeting.

LogMeIn owns three Trademark Registration Nos. 3995301, 3995300 and 4036263 for "JOIN.ME", including two text-with-graphic marks and one text-only mark. These three trademarks are registered in connection with "providing online, non-downloadable software for web-based screen sharing that allows simultaneous and asynchronous viewing, remote control of a computer, document sharing, file transferring, instant messaging and audio conferencing."

This trademark lawsuit pertains to LogMeIn's use of its JOIN.ME trademark in connection with videoconferencing services, which Sensory contends is infringing. Specifically, Sensory asserts that it holds superior rights to JOIN, as its first use of the JOIN trademark in connection with videoconferencing services was on or before March 26, 2008. Sensory claims that, in addition to being inherently distinctive, its JOIN trademark has acquired significant secondary meaning. Sensory states that the federally registered JOIN.ME trademarks owned by LogMeIn are confusingly similar, both visually and phonetically, to Sensory's mark.

LogMeIn is accused of willfully and intentionally using its JOIN.ME trademarks without Sensory's authorization. Sensory contends that LogMeIn's use of the JOIN.ME trademarks is a deliberate attempt to trade on Sensory's goodwill in the JOIN trademark. It states that LogMeIn intended to cause confusion between its registered JOIN.ME trademark and Sensory's registered JOIN trademark.

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

• Count I: Trademark Infringement - 15 U.S.C. § 1114
• Count II: False Designation of Origin - 15 U.S.C. § 1125(a)
• Count III: Common Law Trademark Infringement
• Count IV: Unfair Competition
• Count V: Forgery: Indiana Crime Victims Act - IC § 35-43-5-2
• Count VI: Declaratory Judgment of Trademark Invalidity
• Count VIII [sic]: Permanent Injunctive Relief

Sensory seeks a declaratory judgment that LogMeIn infringed Sensory's JOIN trademark under 15 U.S.C. § 1114, engaged in false designation of origin under § 1125(a) and engaged in unfair competition. Sensory also asks the court to enjoin LogMeIn from infringing on the JOIN trademark, representing in any way that the two companies are related, registering any domain name that includes the JOIN trademark, or otherwise using the JOIN trademark. Finally, Sensory seeks the transfer of all of LogMeIn's domain names that incorporate the JOIN trademark, damages under 15 U.S.C. § 1117 including actual damages, statutory damages, LogMeIn's profits, treble damages, costs related to the suit, attorneys' fees and for corrective advertising.

Practice Tip:

Because the Lanham Act does not contain a statute of limitations, federal courts refer to analogous state statutes of limitations to determine whether an infringement claim has been timely filed. Hot Wax Inc. v. Turtle Wax Inc., 191 F.3d 813 (7th Cir. 1999). This time bar applies both to claims for damages and to those sounding in equity. Id. at 822. A trademark is personal property, so Indiana's analogous state statute is I.C. 34-11-2-4(a), which provides for a two-year statute of limitations:

"Sec. 4. (a) An action for . . . (2) injury to personal property . . . must be commenced within two (2) years after the cause of action accrues."

LogMeIn's Trademark Registration No. 4,036,263 for JOIN.ME alleges a "first use" date of July 23, 2010. This would appear to provide laches / "statute of limitations" defense to Sensory's trademark infringement claims.

Continue reading "Indiana Trademark Litigation: Owner of JOIN® Sues Owner of JOIN.ME®" »

August 25, 2014

Indiana Copyright Litigation: Bake Me A Wish Sued for Copyright Infringement

Indianapolis, Indiana - Larry G. Philpot, a professional photographer from Indianapolis, 

picture of a camera.jpg

Indiana, sued asserting a violation of his intellectual property rights by Bake Me A Wish, LLC of New York. The lawsuit, filed in the Southern District of Indiana, alleges that Defendant Bake Me A Wish infringed the copyright of Philpot's photograph of Willie Nelson, Certificate No. VAu 1-132-411, which was issued by the U.S. Copyright Office.

On October 4, 2009, Plaintiff Philpot photographed Willie Nelson during a performance in St. Louis, Missouri. In an effort to increase his marketability and reputation and to gain more work, on May 31, 2011, Philpot made the photograph of Nelson generally available through Wikimedia under the Creative Commons Attribution 2.0 Generic license ("CC BY 2.0"). Philpot asserts that CC BY 2.0 requires a licensee to (a) reference CC BY 2.0 with every copy of the photo used and (b) provide attribution in the manner specified by the author. He claims that these requirements applied to republication of his copyrighted photo of Nelson.

Philpot states that Bake Me A Wish owns and operates the website www.bakemeawish.com and a related Facebook page and that those websites are used to generate business. Defendant Bake Me A Wish is accused of placing a copy of the Nelson photo on its Facebook page on April 30, 2013 without displaying the proper attribution to Philpot.

In the copyright complaint, filed by Philpot acting as a pro se litigant, the following claims are made:

• Count I: Copyright Infringement and Unfair Competition
• Count II: Unauthorized Distribution of Copyrighted Material
• Count III: Removal of Identifying Information

Philpot asks the court for an injunction, damages, costs and attorneys' fees.

Practice Tip #1: This complaint suffers from a number of legal and factual deficiencies. Among them is that Philpot simultaneous admits that Bake Me A Wish removed the content when requested and also alleges not only willful conduct but ongoing willful conduct. The allegation of ongoing willful conduct is made by Plaintiff in support of his contention that Defendant's conduct entitles him to the maximum statutory damages allowable. Statutory damages may be awarded in a sum not less than $750 or more than $30,000 for each finding of infringement. A determination of willful copyright infringement permits the court in its discretion to increase the award of statutory damages up to $150,000 per infringement.

Practice Tip #2: Defendants who fail to appear run a significant risk of having a default judgment entered against them. There is a significant disparity in the dollar amount awarded in default judgments against defendants in copyright infringement cases. In two separate cases, Judge William T. Lawrence ordered defendants who failed to appear to pay $20,000 for the copyright infringement that was deemed to have been admitted by the defendants' failure to defend against the allegations. See here and here. However, in a similar case, Judge Jane Magnus-Stinson ordered an entry of default judgment against a defendant for $151,425, the full amount requested.

Overhauser Law Offices, the publisher of this website, has represented several hundred persons and businesses regarding copyright infringement and similar matters.

Continue reading "Indiana Copyright Litigation: Bake Me A Wish Sued for Copyright Infringement" »

August 22, 2014

Indiana Patent Litigation: Kimball International Sues Westin-Nielsen for Infringement of Two Design Patents

Kimball-picture.jpg

Indianapolis, Indiana - Indiana patent attorneys for Kimball International, Inc. of Jasper, Indiana commenced intellectual property litigation in the Southern District of Indiana alleging that NWN, Inc., d/b/a Westin-Nielsen, infringed Design Patent Nos. D654,718 for a "Side Chair" and D665,188, also for a "Side Chair." These design patents have been issued by the U.S. Patent Office.

Kimball, a furniture design and manufacturing company that has operated for over four decades, asserts that Westin-Nielsen's "Cascade" line of chairs infringes Kimball's intellectual property rights in two design patents. The Cascade line of chairs, named after the Cascade River in northern Minnesota, is designed for plus-sized seating.

At issue in this design patent litigation are United States Design Patent Nos. D654,718 (the "'718 Patent") and D665,188 (the "'188 Patent"). Westin-Nielsen is accused of infringing these patented designs, either directly or contributorily, by making, using, selling, offering for sale, or supplying products such as Westin-Nielsen's Cascade line of chairs. Kimball asserts that Westin-Nielsen will continue to do so unless enjoined.

The complaint, filed by Indiana patent lawyers for Kimball, lists the following counts:

• Infringement of United States Design Patent No. D654,718

• Infringement of United States Design Patent No. D665,188

Kimball asks that the court:

• Adjudge that NWN has infringed the '718 and '188 Patents in violation of 35 U.S.C. § 271;

• Issue preliminary and permanent injunctive relief prohibiting NWN and its agents from infringing the '718 and '188 Patents pursuant to 35 U.S.C. § 283;

• Award Kimball damages for patent infringement, and prejudgment interest and costs against NWN pursuant to 35 U.S.C. § 284;

• Adjudge that NWN's infringement of the '718 and '188 Patents has been deliberate, willful, and wanton;

• Adjudge that NWN's infringement of the '718 and '188 Patents has been exceptional under 35 U.S.C. § 285;

• Treble the damage award under 35 U.S.C. § 284;

• Award Kimball its reasonable attorneys' fees under 35 U.S.C. § 285; and

• Award Kimball the total profits received or derived by NWN from the manufacture, marketing, sale, offering for sale, and/or distribution of products bearing or using any copy or colorable imitation of the '718 and '188 Patents pursuant to 35 U.S.C. § 289.

Practice Tip: The U.S. Supreme Court ruled this year that a trial court may award attorneys' fees in case of patent infringement litigation that it deems "exceptional." These Supreme Court rulings revisiting how "exceptional" is defined may benefit any company which is the target of a questionable patent infringement lawsuit, as trial judges will now have greater latitude to award attorneys' fees in those cases in which they determine that the conduct of the losing party "stands out from others."

Continue reading "Indiana Patent Litigation: Kimball International Sues Westin-Nielsen for Infringement of Two Design Patents" »