October 1, 2014

Indiana Trademark Litigation: KM Innovations Sues LTD Commodities

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

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

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

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

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

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

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

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

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

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

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

September 29, 2014

What To Do If You Get a Demand Letter

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What is a demand letter? Am I legally 

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obligated to respond?

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

What are my options?

You have several options for responding to a demand letter:

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

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

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

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

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

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

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

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

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

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

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

September 26, 2014

Patenting Your Invention

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What can be patented?

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

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

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

What cannot be patented:

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

To be patentable, your invention must also be:

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

How do I know if my invention is patentable?

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

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

Who can apply for a patent?

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

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

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

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

September 25, 2014

About Patents

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What is a patent?

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

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

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

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

What if the patent is expired?

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

September 24, 2014

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

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

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

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

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

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

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

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

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

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

Practice Tip:

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

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

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

September 22, 2014

USPTO Launches Redesigned KIDS! Web Pages

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WASHINGTON - New resource offers intellectual property education resources for parents, teachers, and students of all ages.

The U.S. Department of Commerce's United States Patent and Trademark Office ("USPTO") recently announced the launch of its newly redesigned KIDS! Web pages aimed to encourage students of all ages to learn about the importance of intellectual property ("IP") creation and protection. In addition to featuring young inventor profiles, activities, and videos, the pages also offer curricula that link Science, Technology, Engineering, and Math ("STEM") education to IP and innovation through downloadable lesson plans, hands-on instructions for building inventions, USPTO career information and other useful resources.

"The USPTO looks to our children - the doers, makers, and tinkerers of the future - to reimagine the world and, as the Constitution calls for, 'to promote the progress of Science and the useful Arts' like never before," said Michelle K. Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO. "As schools across the country ramp up their STEM programming, we look forward to putting even more tools in teachers' hands that will ensure our next generation is well-versed in concepts of making, inventing, and creating the high-value intellectual property that drives our economy." USPTO's updated KIDS! Web pages also feature coloring pages designed to introduce younger students to patents and trademarks, an audio library of trademarked sounds, upcoming event listings, and other challenging activities to help encourage and inspire future generations of inventors. For more information, please visit www.uspto.gov/kids.

The KIDS! Web pages serve as an extension of the Office of Education and Outreach ("OEO"), which provides educational and outreach programming for students, educators, and young inventors and innovators of all ages. OEO is managed through the Office of the Under Secretary and Director of the USPTO and supports the mission of the agency by providing relevant intellectual property, innovation and invention resources to school administrators, teachers, students and parents. OEO also has a robust outreach program that supports many community-based invention and innovation programs. For more information please visit www.uspto.gov/about/offices/ous/education.

Practice Tip #1: For more information, you may contact Joyce Ward by telephone at (571) 272-8424 or via email at joyce.ward@uspto.gov.


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 

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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 

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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

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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 

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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 

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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

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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."

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September 8, 2014

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

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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

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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.

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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 

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