Indiana Intellectual Property Law News

New Albany, Ind. -- Intellectual property lawyers for Microsoft Corp. of Redmond, Wash. sued Mister HardDrive and Mark Cady of Scottsburg, Ind. alleging infringement of copyrighted work TX 5-407-055 titled Microsoft Windows XP Professional : version 2002 registered with the U.S. Copyright Office; and Trademark Registration Nos. 1,200,236; 1,256,083; 1,872,264 and 2,744,843 registered with the U.S. Trademark Office.

Microsoft, the seventh largest publically traded company in the world, has sued Mister Harddrive, a business entity of unknown legal structure that is also known as Mister HardDrive's Wipe and Restore ("Mister HardDrive"), and Mark Cady, an individual, alleging that they engaged in copyright and trademark infringement; false designation of origin, false description and representation; and unfair competition.

Microsoft develops, markets, distributes and licenses computer software.  Microsoft's software programs are recorded on discs, and they are packaged and distributed together with associated proprietary materials such as user's guides, user's manuals, end user license agreements, and other components.  Mister HardDrive is engaged in the business of advertising, marketing, installing, offering, and distributing computer hardware and software, including products sold as Microsoft software.

In its complaint, Microsoft alleges that Mister HardDrive and Mark Cady offered, installed, and distributed unauthorized copies of Microsoft software and thereby infringed Microsoft's copyrights, trademarks and/or service mark.  Infringement and/or misappropriation of Microsoft's copyrights, advertising ideas, style of doing business, slogans, trademarks and/or service mark in defendants' advertising is also alleged.

Microsoft asserts that in December 2012, defendants were found to have distributed computer systems with unauthorized copies of Windows XP installed on them.  Microsoft asked defendants to stop making and distributing infringing copies of Microsoft software but claims that additional computers with unauthorized copies of Windows XP were subsequently distributed by defendants.  Microsoft claims that such distribution of counterfeit and infringing copies of their software -- along with related infringing items -- is ongoing.

The complaint lists the following counts:

·         First Claim [Copyright Infringement - 17 U.S.C. § 501, et seq.]

·         Second Claim [Trademark Infringement - 15 U.S.C. § 1114]

·         Third Claim [False Designation Of Origin, False Description And Representation -

·         15 U.S.C. § 1125 et seq.]

·         Fourth Claim [Indiana Common Law Unfair Competition]

·         Fifth Claim [For Imposition Of A Constructive Trust Upon Illegal Profits]

·         Sixth Claim [Accounting]

Microsoft asks that the court adjudge that the defendants have willfully infringed its federally registered copyright; that the defendants have willfully infringed several of its federally registered trademarks and one of its service marks; that the defendants have committed and are committing acts of false designation of origin, false or misleading description of fact, and false or misleading representation against Microsoft; and that the defendants have engaged in unfair competition in violation of Indiana common law.   

Microsoft seeks damages, an accounting, the imposition of a constructive trust upon defendants' illegal profits, and injunctive relief.

Practice Tip: Microsoft has named as defendants both the business entity and the individual who has been identified as related to Mister HardDrive as "an owner, operator, officer, [or] shareholder, [who] does business as and/or otherwise controls" the business.  A corporate officer, director or shareholder is, as a general matter, personally liable for all torts which he authorizes or directs or in which he participates, even if he acted as an agent of the corporation and not on his own behalf.

Continue reading "Microsoft Sues Mister HardDrive and Mark Cady for Copyright and Trademark Infringement" »

Indianapolis, Ind. -- Trademark lawyers for Australian Gold, LLC of Indianapolis, Ind. sued in the Southern District of Indiana alleging that Devoted Creations, Inc. of Oldsmar, Fla. intentionally and willfully infringed its trademark, Registration No. 4,154,194, for "LIVE LAUGH TAN," which is registered with the U.S. Trademark Office. 

Australian Gold has been in the business of selling indoor-tanning preparations for over 20 years.  Devoted Creations also sells indoor-tanning preparations and is a competitor of Australian Gold.  Australian Gold contends that, since at least October 2010, it has used the registered mark "LIVE LAUGH TAN" as a trade name and trademark in conjunction with sales of its Australian Gold line of indoor-tanning products.  Australian Gold asserts that it has used the LIVE LAUGH TAN mark continuously, notoriously and extensively with respect to sales of the preparations since that time.  It claims that, as a result of its promotional activities, the mark has acquired substantial goodwill.  It also states that the mark is both "distinctive" and "inherently distinctive" and that it serves to distinguish Australian Gold's indoor-tanning preparations from those of others. 

Devoted Creations advertises its indoor-tanning preparations under the name "LIVE LOVE TAN."  Australian Gold asserts that Devoted Creations is aware that Australian Gold's customers use the LIVE LAUGH TAN mark to identify Australian Gold products and that the designation LIVE LOVE TAN was an intentional and willful copy.  It claims that Devoted Creations acted in bad faith and with full knowledge and conscious disregard of Australian Gold's rights and that, as a result, this is an exceptional case.  It further states that Devoted Creations' mark is substantially identical, that its indoor-tanning products directly compete with those of Australian Gold and that those products are for sale in the same channels of trade.  Finally, Australian Gold claims that Devoted Creations derives significant revenue from products sold using LIVE LOVE TAN and that such use of the mark is likely to cause confusion among consumers regarding the origins of Devoted Creations' goods and to diminish goodwill associated with Australian Gold's LIVE LAUGH TAN mark. 

Australian Gold's complaint lists a count of "Federal and Common Law Trademark Infringement" and a count of "Unfair Competition."  It seeks a judgment that the use of LIVE LOVE TAN infringes its mark; an injunction against confusing advertising or sales by Devoted Creations; damages, costs and attorney's fees; and an award of any wrongful profits made by Devoted Creations.  

Practice Tip: Australian Gold's decision to trademark LIVE LAUGH TAN as a mark for "Tote bags" is a curious one, as tote bags are not the products at issue.  While the United States Patent and Trademark Office will not provide legal advice online concerning an individual's particular circumstance, in addressing similar situations, it states, "similar trademark registrations can co-exist on the register so long as the goods or services identified in the registration are adequately different so as not to raise a likelihood of confusion in the purchasing public."

Continue reading "Australian Gold Sues Devoted Creations for Trademark Infringement of LIVE LAUGH TAN®" »

Indianapolis, Ind. - A trademark lawyer for American actor, minister, producer and writer Leon Isaac Kennedy of Burbank, Calif. sued alleging Lanham Act violations, unfair competition and violations of various Indiana state statutes as a result of defendants' purchase of the domain name Leonisaackennedy.com.  The defendants are GoDaddy.com, LLC of Scottsdale, Ariz., Spirit Media of Phoenix, Ariz., Arthur Phoenix of Phoenix, Ariz. and John Does 1-5.

In a complaint for damages and injunctive relief, Kennedy alleges that the defendants have violated his intellectual property rights by purchasing a domain name consisting of Kennedy's first, middle and last name.  Spirit Media is the registrant and owner of the domain name.  Phoenix is also listed as a registrant.  GoDaddy is the current registrar. 

Kennedy claims that no content has ever been placed on the domain website and that the defendants have offered the domain name for sale for $5,000 at a domain auction.  He asserts that this "use of the Domain violates the "Anti Cybersquatting Piracy [sic] Act."

Kennedy asserts ownership of all interests in his name, image, likeness and voice ("Kennedy right of publicity") as well as other intellectual property rights such as trademarks, copyrights and rights of association as associated with the Kennedy right of publicity.  He alleges that the purchase constitutes unauthorized and illegal commercial use and registration of a domain name and violates his personal and/or property rights.  He further claims that this commercial use has siphoned the goodwill from his various property interests and asserts that he has been irreparably harmed as a result.  

The complaint lists seven claims:

·         Count I: Violation of Section 1125 (a) of the Lanham Act

·         Count II: Violation of Section 1125 (d) of the Lanham Act

·         Count III: Unfair Competition

·         Count IV: Violation of Indiana Right of Publicity

·         Count V: Conversion (I.C. § 35-43-4-3)

·         Count VI: Deception I.C. § 35-43-5-3(a)(6)

·         Count VII: Indiana Crime Victims' Act I.C. § 35-24-3-1

Kennedy asks for the immediate transfer of the domain name to him; an injunction enjoining the defendants from future use of Kennedy's intellectual property; an order directing the immediate surrender of any materials featuring Kennedy's intellectual property; damages, including treble damages; costs and attorneys' fees.

This complaint, initially filed in an Indiana state court, was removed by GoDaddy to federal court.

Practice Tip #1: The Anticybersquatting Consumer Protection Act was enacted to create a cause of action for registering, trafficking in or using a domain name confusingly similar to, or dilutive of, a trademark or personal name.  Despite alleging malicious behavior on the part of all defendants, including GoDaddy, it will be tricky to pursue this count against GoDaddy, a domain-name registrar.  Under § 1125(d)(2)(D)(ii), the "domain name registrar or registry or other domain name authority shall not be liable for injunctive or monetary relief under this paragraph except in the case of bad faith or reckless disregard, which includes a willful failure to comply with any such court order." 

Practice Tip #2: I.C. §§ 35-43-4-3 and 35-43-5-3(a)(6) are criminal statutes, claimed in the complaint in conjunction with an attempt to parlay the accusation into an award for damages, costs and attorneys' fees.  The Indiana Court of Appeals has discussed "theft" and "conversion" as they pertain to takings of intellectual property in several recent cases (see, for example, here and here) and has made it clear that criminal statutes often apply differently to an unlawful taking of intellectual property.

Continue reading "Leon Isaac Kennedy Sues GoDaddy, Spirit Media, Arthur Phoenix and Five Doe Defendants for Purchase of Leonisaackennedy.com" »

Indianapolis, Ind. -- Copyright lawyers for LeeWay Media Group, LLC of Los Angeles, Calif. filed a declaratory judgment suit against Laurence Joachim of New York, N.Y. and Los Angeles, Calif. and Trans-National Film Corporation of New York in a copyright dispute over the use of portions of Bruce Lee's 1965 screen test in the 2012 documentary "I Am Bruce Lee."

Bruce Lee, widely considered to have been one of the most influential martial artists of all time, was also an actor and filmmaker.  He is most famous for his roles in the films The Big Boss (1971), Fist of Fury (1972), Way of the Dragon (1972), Enter the Dragon (1973) and The Game of Death (1978).  Lee was the first celebrity to be cast in major motion pictures after his death.

Lee completed his first Hollywood screen test in or about 1965.  It is over eight minutes long and, according to LeeWay Media, has been used freely in many productions over the intervening decades.  It is allegedly available for viewing on such sites as youtube.com. 

A documentary about Lee entitled I Am Bruce Lee was produced by LeeWay Media, a company founded by Lee's daughter Shannon Lee.  It was released and aired on Spike TV in early 2012.  Approximately 91 seconds of the 1965 screen test were included in the documentary.  Prior to including the material from the screen test, LeeWay Media searched to determine whether the screen test was copyrighted.  It concluded that the material was in the public domain.

LeeWay Media was contacted in July 2012 by Joachim, who claimed to own the copyright to the screen-test footage.  He asserted that his copyright had been infringed.  Negotiations ensued, but the dispute was not resolved.  Among other issues, LeeWay Media asserted that it had requested but not received any relevant copyright-ownership documentation from Joachim.

In May 2013, Joachim informed LeeWay Media that, unless a six-figure settlement fee was paid, he would sue for violations of federal copyright law; federal law for unfair competition; and Indiana and California state law for unfair competition.  LeeWay Media instead filed suit against Joachim and Trans-National Film under the Declaratory Judgment Act, asking the court to declare, inter alia, that LeeWay had not committed copyright infringement. 

The complaint asks the court for the following:

·         Declaration of No Valid Copyright

·         Declaration of No Standing

·         Declaration of No Copyright Infringement

·         Declaration of No Unfair Competition

LeeWay Media also asks for attorneys' fees and costs; and for a declaration that the claim of copyright infringement and unfair competition are in bad faith and, as such, should be sanctioned.

Practice Tip: In 1994, the Supreme Court addressed the issue of fee shifting in copyright cases in Fogerty v. Fantasy, Inc.  Since then, the federal circuit courts have taken a variety of approaches to Fogerty and its statutory underpinning, 17 U.S.C. § 505.  The Seventh Circuit is among the most willing of the circuits to shift fees, stating in Riviera Distributors, Inc. v. Jones, "Since Fogerty we have held that the prevailing party in copyright litigation is presumptively entitled to reimbursement of its attorneys' fees."  This, perhaps, provides some insight into the rationale for a California plaintiff to sue citizens of California and New York in an Indiana court.

Continue reading "Bruce Lee's Daughter Sues Regarding 1965 Bruce Lee Screen Test" »

Indianapolis, Ind. -- Patent lawyers for Eli Lilly & Co. of Indianapolis, Ind. ("Lilly"), Eli Lilly Export S.A., of Vernier/Geneva, Switzerland (a wholly owned subsidiary of Eli Lilly & Co.) and Acrux DDS Pty Ltd. of West Melbourne, Victoria, Australia ("Acrux") filed a patent infringement suit alleging that Perrigo Company of Allegan, Mich. ("Perrigo Company") and Perrigo Israel Pharmaceuticals Ltd. of Bnei Brak, Israel ("Perrigo Israel," a wholly owned subsidiary of Perrigo Company), infringed Patent Nos. 8,435,944; 8,419,307; and 8,177,449, filed with the U.S. Patent Office.

Lilly is engaged in the business of research, development, manufacture and sale of pharmaceutical products.  Acrux is engaged in the development and commercialization of pharmaceutical products for sale.  Both sell their products worldwide. 

Perrigo Company and Perrigo Israel (collectively, "Perrigo") are pharmaceutical companies that develop, manufacture, market and distribute generic pharmaceutical products for sale throughout the United States.  These products include pharmaceuticals, infant formulas, nutritional products, dietary supplements and active pharmaceutical ingredients.  Perrigo's consumer-healthcare segment includes over 2,100 store-brand products which are marketed to major national chains such as Wal-Mart, CVS, Walgreens, Sam's Club and Costco.  They also sell to major drug wholesalers.

Lilly is the holder of approved New Drug Application No. 022504 for the manufacture and sale of a transdermal testosterone solution made at a concentration of 30 mg/1.5L, which is marketed by Lilly under the trade name "Axiron."  Axiron is a pharmaceutical drug which raises the amount of testosterone in a patient's body.  Recent sales of Axiron are estimated to be $229 million annually, according to Symphony Health Solutions.  Axiron is subject to Patent Nos. 8,435,944, 8,419,307, 8,177,449 (the "'944 patent," the "'307 patent," and the "'449" patent, respectively).  All three patents have been licensed to Lilly.

Perrigo announced on May 29, 2013 that it had filed an Abbreviated New Drug Application ("ANDA") with the U.S. Food and Drug Administration ("FDA") for approval of a generic version of Axiron.  Prior to filing the ANDA, No. 204255, Perrigo sent a letter to Lilly to inform Lilly that "in Perrigo's opinion and to the best of its knowledge, the '449 patent is invalid, unenforceable, and/or will not be infringed by the commercial manufacture, use, sale, or importation of the drug product described in Perrigo's ANDA."  Perrigo sent similar letters regarding the '307 and '944 patents.

After receiving the letter, Lilly filed suit alleging infringement of the three patents.  It states in its complaint that the '944 patent claims, inter alia, methods of increasing the testosterone blood level of an adult male by applying a transdermal drug-delivery composition that contains testosterone.  The '307 patent includes in its claims a method of increasing the level of testosterone in the blood by applying a liquid pharmaceutical that contains testosterone.  The claims for the '449 patent include a method of transdermal administration of a physiologically active agent.  All three patents are used in connection with Axiron. 

Lilly's complaint lists the following claims:

·         Count I for Patent Infringement (Direct Infringement of U.S. Patent No. 8,435,944)

·         Count II for Patent Infringement (Inducement to Infringe U.S. Patent No. 8,435,944)

·         Count III for Patent Infringement (Contributory Infringement of U.S. Patent No. 8,435,944)

·         Count IV for Patent Infringement (Direct Infringement of U.S. Patent No. 8,419,307)

·         Count V for Patent Infringement (Inducement to Infringe U.S. Patent No. 8,419,307)

·         Count VI for Patent Infringement (Contributory Infringement of U.S. Patent No. 8,419,307)

·         Count VII for Patent Infringement (Direct Infringement of U.S. Patent No. 8,177,449)

·         Count VIII for Patent Infringement (Inducement to Infringe U.S. Patent No. 8,177,449)

·         Count IX for Patent Infringement (Contributory Infringement of U.S. Patent No. 8,177,449)

·         Count X for Declaratory Judgment (Infringement of U.S. Patent No. 8,435,944)

·         Count XI for Declaratory Judgment (Infringement of U.S. Patent No. 8,419,307)

·         Count XII for Declaratory Judgment (Infringement of U.S. Patent No. 8,177,449)

Lilly's lawsuit asks for an injunction to stop Perrigo from producing the generic version of Axiron until the expiration of Lilly's three patents-in-suit.  In addition, Lilly asks that the court declare the three patents to be valid and enforceable; that Perrigo infringed upon all three by, inter alia, submitting ANDA No. 204255 to obtain approval to commercially manufacture, use, offer for sale, sell or import its generic version of the drug into the United States; that Perrigo's threatened acts constitute infringement of the three patents; that FDA approval of Perrigo's generic drug be effective no sooner than the expiration date of the patent that expires last; that this is an exceptional case; and for costs and attorneys' fees.

Continue reading "Eli Lilly Sues Perrigo for Patent Infringement of Axiron" »

Litigation by patent-assertion entities ("PAEs," commonly known as "patent trolls") has skyrocketed in the last two years.  A chart released by the White House in a June 2013 report entitled "Patent Assertion and U.S. Innovation" demonstrates that such trolls now file over 60% of all patent-infringement lawsuits.  (The red portion of the bars shows patent lawsuits brought by PAEs.)

The patent-trolling business model includes no productive operations.  Instead, investors' money is used to purchase patents for the sole purpose of alleging infringement and extracting payment under the threat of litigation.  Because litigation can be very costly, the patent trolls' targets face a difficult decision: settle (typically by buying a license from the troll) or pay significant litigation expenses -- and face the potential of losing at trial, which is somewhat unlikely but where damages can be enormous.  In contrast, the trolls often use contingency-fee attorneys and, thus, have little more at stake in any given lawsuit than a few hundred dollars for a court-filing fee.

Many view this type of litigation with suspicion, if not outright derision.  At least four patent-reform bills are pending in Congress and the Obama Administration recently released a harsh indictment detailing the damage to innovation and the economy caused by the "abusive practices in litigation" committed by patent trolls.  Various measures to curb frivolous patent litigation have been suggested, including increasing transparency of patent ownership and establishing a website through the U.S. Patent and Trademark Office to inform patent-troll victims of their rights. 

Perhaps most telling, though, are the opinions of the most prominent patent judge in the nation, Randall Rader, the Chief Judge for the U.S. Court of Appeals for the Federal Circuit, which hears the appeals for all trial-court judgments involving patent infringement.  In an opinion piece in the New York Times, Chief Judge Rader accused trolls of not "fighting fairly," filing a "vast number of frivolous patent lawsuits," and "using the threat of litigation cost, rather than the merits of a claim, to bully a defendant into settling." 

These manipulations of the legal system, he says, have cost defendants and taxpayers tens of billions of dollars each year and have "slowed the development of new products, increased costs for businesses and consumers, and clogged our judicial system."  His solution is simple.  He urges courts to use the power they already possess: to look for abusive patent litigation and shift the costs of a frivolous lawsuit -- which routinely exceed $1 million for a matter taken through trial -- to the entity which brought the matter to court. 

Practice Tip: Intellectual-property trolling isn't limited to patent trolling.  For examples of copyright trolling, see here, here and here.

Evansville, Ind. -- CordaRoy's Originals, Inc. of Gainesville, Fla. ("CordaRoy's") has sued The Lovesac Corporation of Stamford, Conn. ("Lovesac") alleging infringement of Patent No. 7,131,157, "Bag Bed Assembly," (the "'157 Patent") which has been issued by the U.S. Patent Office.

Patent lawyers for CordaRoy's filed a patent infringement suit alleging that Lovesac has been and continues to infringe on CordaRoy's '157 Patent for a bag-bed assembly by using, selling, offering to sell, and/or importing a "knock-off" bag-bed assembly which embodies the patented invention.  It is also alleged that Lovesac has induced others to do likewise.  CordaRoy's asserts that the claimed infringement has been, and continues to be, intentional, willful and deliberate. 

In its complaint, CordaRoy's asks for a judgment that the '157 Patent has been infringed; that Lovesac be required to account for all of its profits and advantages realized from the alleged infringement of the '157 Patent; for an award of lost profits and a reasonable royalty; for an award of treble damages upon a finding of willful, intentional, and deliberate infringement; for an injunction against further actions of infringement; for pre-judgment interest; and for costs and attorney's fees.

A jury trial has been demanded.

Practice Tip: If a court finds that a patent has been infringed upon, it may then consider the additional issue of whether the infringement was willful.  Infringing behavior that continued despite an allegation of infringement can support such a finding.  The determination that an infringement was "willful" can, in turn, increase damages significantly.

Continue reading "CordaRoy's Originals Sues Lovesac for Infringement of Patented Bag-Bed Assembly" »

Indianapolis, Ind. -- The Southern District of Indiana has dismissed a declaratory judgment suit filed by ZPS America, LLC of Marion County, Ind. ("ZPS") holding that it was an impermissible attempt to secure its preferred forum in anticipation of litigation that Hammond Enterprises, Inc. of Pittsburg, Calif. ("Hammond") had promised to initiate imminently. 

ZPS manufactures the Mori-Say TMZ 642 CNC machine ("TMZ machine"), a high-precision lathe that can be configured to manufacture various precision parts.  In early 2009, after discussing its requirements, Hammond purchased two TMZ machines from ZPS.  Accounts vary regarding whether the TMZ machines ever performed as had been promised.  Attempts were made by the parties and their attorneys to resolve the issues with the machines but settlement discussions broke down in June 2012.  

On June 4, 2012, Hammond's lawyer sent ZPS a letter stating that the machines had been misrepresented and that Hammond was only interested in "hearing back from you...that ZPS is prepared to make arrangements to accept the return of both machines.  If we do not hear from you by Friday, June 15 [2012], that you are prepared to accept their return, we have been authorized to file a lawsuit against ZPS and will proceed to do so." 

On June 14, 2012, one day before the deadline in Hammond's letter, ZPS filed suit against Hammond in Marion Circuit Court, an Indiana state court.  Its complaint was for damages and declaratory judgment.  It asked that the court declare that Hammond had accepted the machines and was not entitled to revoke that acceptance; its damages claim arose from nonpayment by Hammond of amounts due for filter systems that had been purchased for the TMZ machines.  Notice of that suit was served on June 26, 2012. 

On July 10, 2012, Hammond filed a lawsuit against ZPS in the Northern District of California, seeking damages based on claims for negligent misrepresentation, revocation of acceptance, breach of contract, breach of express warranty, and breach of implied warranty.  On July 12, 2012, Hammond served ZPS with a summons and complaint.  On that same day, Hammond removed the action filed by ZPS in state court to the Southern District of Indiana, asserting diversity jurisdiction. 

Hammond argued to the Indiana federal court that it should exercise its discretion to dismiss the complaint on the grounds that ZPS "raced to the courthouse" to deprive Hammond, the "natural plaintiff," of the forum of its choosing. 

The Indiana federal court held that ZPS' declaratory judgment action was impermissible, as it had been filed in anticipation of litigation, beating Hammond to the courthouse by filing the day before the deadline to settle that had been set by Hammond.  The court further held that the additional state-law claim for breach of contract that ZPS had asserted did not secure a place for it in the Indiana court. 

The court cited three reasons for its decision: (1) the fact that a plaintiff filed a declaratory judgment action first does not give it a right to choose the forum; (2) the plaintiff's additional claims for affirmative or coercive relief may be filed as counterclaims in the second-filed action; and (3) the plaintiff should not be rewarded for filing a declaratory judgment action as a pre-emptive strike.  The court declined to exercise jurisdiction over the matter and dismissed the case without prejudice.  

Practice Tip:  

Declaratory judgment actions are frequently filed in intellectual-property matters, especially patent litigation.  Such a suit allows the potential defendant not only to choose its own forum, to the extent that the forum is consistent with jurisdictional restrictions, but also to remove an ever-present cloud of potential litigation and potential damages for patent infringement that may be continuing to accrue. 

The Declaratory Judgment Act provides that "any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought."  A federal district court may, in its discretion, decline to hear a case brought under the Act, even if the court has subject matter jurisdiction. 

In general, if two actions are pending in two different courts that concern the same general claims, the case filed first takes priority.  However, the Seventh Circuit has never adhered to a rigid first-to-file rule.  In addition, courts generally give priority to the coercive action (such as an action for damages or an injunction) over the declaratory judgment action, regardless of which case was filed first. 

Courts also depart from the first-to-file rule if, as was true in this case, the declaratory judgment action is filed in anticipation of litigation by the other party.  Here, rather than responding to Hammond regarding its letter, which contained a plain declaration of intent to file suit with a deadline for a response, ZPS filed suit.  Only after securing a favorable forum did ZPS offer to negotiate a settlement.  It was this conduct that the court held justified a dismissal of the declaratory judgment action as an improper anticipatory filing.

Continue reading "Southern District of Indiana Dismisses Declaratory Judgment Suit" »

The US Trademark Office issued the following  trademark registrations to persons and businesses in Indiana in May, 2013, based on applications filed by Indiana Trademark Attorneys:

Continue reading "169 Trademark Registrations Issued to Indiana Companies in May, 2013" »

The US Patent Office issued the following 121 patent registrations to persons and businesses in Indiana in May, 2013, based on applications filed by Indiana Patent Attorneys:

Continue reading "Patent Office Issues 121 Patents To Indiana Citizens in May, 2013" »

Evansville, Ind. -- Trademark lawyers for XP Innovation, LLC d/b/a Dan's Comp ("Dan's Comp") of Mt. Vernon, Ind. sued Ian Smith ("Smith") of Massillon, Ohio alleging that he infringed various trademarks owned by Dan's Comp, Registration Nos. 2,176,911, 2,176,580, 2,607,447, 3,853,112, 3,940,083, 3,957,948, 4,074,705 and 4,101,708, which have been registered with the U.S. Trademark Office.

Dan's Comp owns and operates one of the world's largest BMX bicycle stores.  It also owns related trademarks registered in connection with sales of bicycles and bicycle-related goods.  These marks include "Dan's," "Dan's Competition," "Dan's BMX" and "high speed mail order."  Dan's Comp also owns trademarks to "Dan's Comp" with a lightning-bolt graphic and to the same lightning-bolt graphic and a similar lightning-bolt graphic as separate marks.

In its complaint, Dan's Comp alleged that it uses its marks in connection with bicycles and bicycle-related goods and services in all fifty states, the District of Columbia, and throughout the world.  It further claimed that it spends tens of thousands of dollars each year to advertise and promote the Dan's Comp marks and the associated goods and services in the United States and throughout the world.  It asserts that, as a result of its use of the Dan's Comp marks, the marks have developed significant goodwill in the market.

This lawsuit pertains to an advertisement that Dan's Comp claims that Smith placed on Facebook.com.  The advertisement read "Free Bike From Dans [sic] Comp."  Users who clicked on the advertisement were redirected to a survey website, which was alleged to have been designed to appear as if it were affiliated with Dan's Comp through the unauthorized use of the Dan's Comp marks.  Users were prompted to answer survey questions regarding their buying habits in relation to Dan's Comp goods and services. 

At the conclusion of the survey, users were prompted to enter their email addresses and mobile phone numbers.  Immediately afterward, a text message containing an "offer" was sent to each user's mobile number.  Various offers included an "Amazing Facts Mobile Alert" for $9.99 per month and a membership to the "Mobile Tunez Club," also for $9.99 per month.  The text message also included a PIN number that was to be entered on the website addressed "http://surveysallday.com/bmx/winner.php" in a box on a page entitled "SCORE YOUR BIKE."  Apparently, entry of the four-digit pin would register the user for the service described in the text message.  It is further claimed that no free bicycles were provided to any users.  Allegedly, thousands of individuals entered their personal information on the survey website.

Continue reading "Dan's Comp Sues Ian Smith for Trademark Infringement in Facebook Advertisement" »

Washington, D.C. -- Indiana inventors can now take advantage of new Patent Office procedure by having their patent attorneys file the appropriate paperwork.  The USPTO launched the After Final Consideration Pilot 2.0 (AFCP 2.0) on May 19, 2013. Designed to be more efficient and effective than the AFCP, AFCP 2.0 is part of the USPTO's on-going efforts towards compact prosecution and increased collaboration between examiners and stakeholders.

"Compact prosecution remains one of our top goals," said Teresa Stanek Rea, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO. "As with the original AFCP pilot, the new AFCP 2.0 pilot allows additional flexibility for applicants and examiners to work together and provides even greater opportunity for communication after final than the original pilot."

Like AFCP, AFCP 2.0 authorizes additional time for examiners to search and/or consider responses after final rejection. Under AFCP 2.0, examiners will also use the additional time to schedule and conduct an interview to discuss the results of their search and/or consideration with you, if your response does not place the application in condition for allowance. In this way, you will benefit from the additional search and consideration afforded by the pilot, even when the results do not lead to allowance.

In addition, the procedure for obtaining consideration under AFCP 2.0 has been revised. The revised procedure focuses the pilot on review of proposed claim amendments and allows the USPTO to better evaluate the pilot.

To be eligible for consideration under AFCP 2.0, Indiana patent applicants must file a response under 37 CFR §1.116, which includes a request for consideration under the pilot (Form PTO/SB/434) and an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect.  A notice published in the Federal Register at 78 Fed. Reg. 29117 has a complete description of how to request consideration under AFCP 2.0. As was the case with the AFCP, examiners will continue to use their professional judgment to decide whether the response can be fully considered under AFCP 2.0.  This will include determining whether any additional search is required and can be completed within the allotted time, in order to determine whether the application can be allowed.

Continue reading "Patent Office Finalizes "After Consideration" Pilot Rules" »

South Bend, Ind. - Patent lawyers for Automated Products International, LLC ("API") of LaGrange, Ind. sued alleging that Norco Industries, Inc. ("Norco") of Elkhart, Ind. infringed Patent No. 7,134,711 (the "'711 Patent") which has been issued by the U.S. Patent Office. 

The '711 Patent is directed to recreational-vehicle roof-support rafters.  API alleges that Norco has been and is currently infringing the patent.  API also asserts that through continuous marking of its products, it has provided "constructive notice of [Norco's] infringement."

API seeks a judgment declaring that Norco has infringed the '711 Patent; damages equal to at least a reasonable royalty; treble damages upon a finding of willful and deliberate infringement; attorneys' fees upon a finding that the case is exceptional; and an injunction.

Continue reading "Automated Products Sues Norco for Infringement of Patented Roof-Support Rafters" »

Indianapolis, Ind. -- Copyright lawyers for Keystone Management Systems, Inc. f/k/a Keystone Builders Resource Group, Inc. ("Keystone Management") and Lockridge Homes-Indianapolis, LLC ("Lockridge"), both of Richmond, Va., filed a copyright infringement lawsuit alleging William Clyde Moore, Jr. ("Moore") and Carol Cooper ("Cooper"), d/b/a DrafTech, both of Indianapolis, Ind., infringed the copyrighted work "Birkshire II" (architectural work: 1-396-233; and technical drawings: VA 1-396-224), which is registered with the U.S. Copyright Office.

Keystone Management is in the business of creating, designing, producing, distributing and marketing original architectural working drawings, architectural works and related technical drawings ("the Keystone Designs").  Lockridge is in the business of constructing, marketing and selling distinctive single-family residential homes.  Keystone Management has granted to Lockridge the right to use the Keystone Designs.

Moore allegedly asked to purchase one of the Keystone Designs but no agreement was reached.  He also allegedly discussed various home plans with Lockridge for the purpose of constructing a single-family home on his property.  As a part of this discussion, Lockridge provided Moore with a rendering of the floor plan for the Birkshire II design.  Moore then allegedly provided these plans to Cooper for the purpose of constructing a home in the Birkshire II design.  Construction is either underway or completed.

Keystone Management and Lockridge sued in the Southern District of Indiana.  They list two counts in their complaint: copyright infringement and unjust enrichment.  They seek an injunction; impoundment and destruction of any homes built from the Keystone Designs; for damages up to $150,000 for each infringement; costs and fees.

We have blogged about similar cases here, here and here. 

Practice Tip #1: Copyright protection extends to any architectural work created on or after December 1, 1990, but architectural designs embodied in buildings constructed prior to that date are not eligible for copyright protection. 

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Indianapolis, Ind. -- Intellectual property lawyers for J & J Sports Productions, Inc. ("J&J Sports") of Campbell, Calif. have sued five Indianapolis restaurants and their owners in the Southern District of Indiana for illegally displaying the 2011 World Boxing Organization Welterweight Championship Fight.

J & J Sports was granted exclusive nationwide commercial rights to the closed-circuit distribution of the "Manny Pacquiao v. Shane Mosley, WBO World Welterweight Championship Fight" Program ("the Program"), which was telecast nationwide on Saturday, May 7, 2011. 

In five separate but similar complaints, J&J Sports has alleged such wrongful acts as interception, reception, publication, divulgence, display, exhibition, and tortious conversion of the Program.  The claims have been made both against the restaurants and as personal liability claims against the owners.  The five restaurants that have been sued are: Fandango's Night Club, La Favorita Mexican Restaurant, El Rey Del Taco Mexican Restaurant, Taqueria Night Club and Costa Brava Mexican Restaurant.  Of these, at least one, Fandango's Night Club, has been sued before under similar circumstances.

Each group of defendants has been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553.  Each complaint also lists a count of conversion.  Among its assertions of wrongdoing, J&J Sports has alleged interception under 47 U.S.C. 605, which is a different cause of action from copyright infringement. The interception claim has a two-year statute of limitations, which explains why the complaints were filed on May 6, 2013.

The complaints seek statutory damages of $100,000 for each violation of 47 U.S.C. § 605; $10,000 for each violation of 47 U.S.C. § 553; $50,000 for each willful violation of 47 U.S.C. § 553; costs and attorney fees.

In 2011, J&J Sports filed 708 lawsuits.  We have blogged before about J&J Sports here, here and here.

Practice Tip: All of these lawsuits were filed on the eve of the two-year anniversary of the program that the defendants are alleged to have illegally broadcast.  When Congress passed the Cable Communication Act, a statute of limitations was not included.  Some federal courts have determined that a two-year statute of limitation is appropriate while other federal courts have used a three-year statute of limitations.

Overhauser Law Offices, the publisher of this website, has represented several hundred persons and businesses accused of infringing satellite signals.

Continue reading "J & J Sports Sues Five Restaurants for Unauthorized Interception and Broadcast of Championship Fight" »