November 11, 2013

J & J Sports Sues Wing'N It and its Owners for Unlawful Interception and Broadcast of Championship Fight

Indianapolis, Indiana - J & J Sports Productions, Inc. of Campbell, California ("J & J Sports") has sued Joseph M. Hubbard and Alison Kay, LLC, both of Indianapolis, Indiana and d/b/a Wing'N It in the Southern District of Indiana alleging the unlawful interception and broadcast of the Manny Pacquiao v. Juan Manuel Marquez, WBO Welterweight Championship Fight Program.

J & J Sports states that it is the exclusive domestic commercial distributor of the Manny Pacquiao v. Juan Manuel Marquez, WBO Welterweight Championship Fight Program (the "program"). It has sued Alison Kay, which is listed on the complaint as the name of a limited liability company, as well as Joseph M. Hubbard as an individual, 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 on November 12, 2011 without a commercial 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, published, divulged, displayed, and/or exhibited by commercial entities unauthorized to do so, each and every one of the above named Defendants . . . did unlawfully intercept, receive, publish, divulge, display, and/or exhibit the Program" for the purpose of commercial advantage and/or private financial gain.

A count of conversion is also included which asserts that Defendants' acts were "willful, malicious, egregious, and intentionally designed to harm Plaintiff J & J Sports" and 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 entity, Alison Kay, LLC, which apparently owns the restaurant, Plaintiff has also sued Hubbard alleging that he had the right and ability to supervise the activities of Wing'N It. J & J Sports asserts that those activities included the unlawful interception of Plaintiff's program.

J & J Sports also contends that Hubbard specifically directed the employees of Wing'N It to unlawfully intercept and broadcast Plaintiff's program at Wing'N It or, if he did not, that the actions of the employees of Wing'N It are directly imputable to Hubbard by virtue of his purported responsibility for the activities of Wing'N It. Hubbard has also been named individually as a result of J & J Sports' contention that he is a managing member of Alison Kay, LLC. J & J further asserts that Hubbard, as an individual specifically identified on the liquor license for Wing'N It, had an obvious and direct financial interest in the activities of Wing'N It.

In the complaint, 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 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. § 605(e)(3)(B)(iii).

•Count II: Violation of Title 47 U.S.C. § 553. For this count, J & J Sports asks the court for (a) statutory damages for each violation in an amount to $10,000.00 pursuant to Title 47 U.S.C. § 553(c)(3)(A)(ii); (b) statutory damages for each willful violation in an amount to $50,000.00 pursuant to Title 47 U.S.C. § 553(c)(3)(B); (c) the recovery of full costs pursuant to Title 47 U.S.C. § 553 (c)(2)(C); and (d) and in the discretion of the court, reasonable attorneys' fees, pursuant to Title 47 U.S.C. § 553 (c)(2)(C).

•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 the Plaintiff.

Practice Tip #1: While on the surface this appears to be a copyright case, an allegation of interception under 47 U.S.C. § 605 is a different cause of action from copyright infringement. However, a suit alleging interception does not preclude an additional lawsuit alleging different causes of action. For example, the copyright holder can also sue for copyright infringement, which could increase damages by as much as $150,000.

Practice Tip #2: As part of its complaint, J & J Sports claims that the Defendants' actions have subjected it to "severe economic distress and great financial loss." It will be interesting to see what evidence it offers as proof that, as a result of allegedly not receiving its full commercial fee for the programming purportedly displayed by the Defendants - a circumstance presumably known to few other than the Defendants themselves - it has suffered severe economic distress and great financial loss.

Continue reading "J & J Sports Sues Wing'N It and its Owners for Unlawful Interception and Broadcast of Championship Fight" »

November 8, 2013

Joe Hand Promotions Sues Bucks Tavern and its Owner for Unlawful Interception and Broadcast of Championship Fight

Indianapolis, Indiana - An intellectual property lawyer for Joe Hand Promotions, Inc. of Feasterville, Pennsylvania has sued in the Southern District of Indiana alleging that Alice Baldwin and two limited liability companies, all of Evansville, Indiana and doing business as Bucks Tavern, unlawfully intercepted and broadcast the "Rousey v. Carmouche" Thumbnail image for JHP-logo.pngchampionship fight.

Joe Hand Promotions was granted rights to distribute via closed-circuit television and encrypted satellite signal the Ultimate Fighting Championship ("UFC") "Rousey v. Carmouche" fight (the "Program"), which was telecast nationwide on February 23, 2013.

In the complaint against Baldwin and Bucks Tavern, intellectual property counsel for Joe Hand Promotions has alleged such wrongful acts as interception, reception, publication, divulgence, display, exhibition, and "tortuous" [sic] conversion of the Program.

In addition to naming the separate legal entities which apparently own Bucks Tavern, Joe Hand Promotions has also sued Baldwin as an individual, claiming that she owns those legal entities and that she had the right and ability to supervise the activities of Bucks Tavern. Plaintiff asserts that those activities included the unlawful interception of its UFC Program. It further claims that Bucks Tavern and Baldwin received financial benefit from the unlawful display of the Program.

Baldwin and the Bucks Tavern entities have been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553. The complaint also lists a count of conversion. Joe Hand Productions seeks statutory damages of $110,000 for each willful violation of 47 U.S.C. § 605; $60,000 for each willful violation of 47 U.S.C. § 553; compensatory and punitive damages on the claim of conversion; and costs and attorney's fees. These claims have been made both against Bucks Tavern and as personal liability claims against Baldwin.

Practice Tip #1: Joe Hand Productions has sued three entities: two limited liability companies and an individual who is allegedly a principal in both. While limited liability companies are intended, as the name suggests, to limit the liability of the principals, they are not always successful in doing so. Where a principal is personally involved in certain types of illegal activity, legal mechanisms (such as a limited liability company) that are designed to shield the principal from liability may fail to do so. Unfortunately for Baldwin, it is likely that she, as an individual, will be the primary target of this lawsuit as, according to the complaint, it seems that both of the limited liability companies have been administratively dissolved, making their inclusion as defendants likely irrelevant.

Practice Tip #2: While on the surface this appears to be a copyright case, an allegation of interception under 47 U.S.C. § 605 is a different cause of action from copyright infringement. However, a suit alleging interception does not preclude an additional lawsuit alleging different causes of action. For example, the copyright holder can also sue for copyright infringement, which could increase damages by as much as $150,000.

Practice Tip #3: Joe Hand Promotions is a frequent litigant and has brought several cases in recent years against defendants alleged to have illegally intercepted and/or broadcast UFC fights. Indiana Intellectual Property Law News has previously blogged on the cases below:

Joe Hand Promotions Sues Fishbowl Pub and its Owners for Unlawful Interception and Broadcast of UFC Fight
Joe Hand Promotions Sues Ho Bo Jungle Bar Over Unauthorized Interception of the Ultimate Fighting Championship Broadcast
Joe Hand Promotions Sues Lawrenceburg, Indiana Bar for Showing UFC Fight Without Authorization
Joe Hand Promotions Sues Beerbelly's over Interception of Broadcast Signal
Joe Hand Promotions Sues Longwell and Pitt Stop Pub & Grill for Intercepting UFC Broadcast

Continue reading "Joe Hand Promotions Sues Bucks Tavern and its Owner for Unlawful Interception and Broadcast of Championship Fight" »

November 7, 2013

WindStream Sues Rambo and Keebler for Trademark Infringement

New Albany, Indiana - WindStream Technologies, Inc. of North Vernon, Indiana filed a trademark infringement lawsuit in the Southern District of Indiana alleging that Rambo LLC, Rambo Montrow Corporation (collectively, "Rambo") and Rick Keebler, all of Madison, Indiana, as well as ten unidentified John Does residing in Indiana, infringed its trademarked TurboMill, Trademark Registration No. 3,986,494, which has been registered by the United States Patent and Trademark Office.

WindStream manufactures wind turbines for municipal, residential and commercial use. Those turbines are shipped worldwide from its Indiana manufacturing facility. It contracted with Rambo and Keebler, who is asserted to be a principal of the Rambo entities, to provide component parts and to act as an authorized dealer of TurboMill turbines in certain territories.

WindStream has multiple contractual disputes with Defendants and Defendants' predecessors in interest and asserts that component parts in which WindStream has an interest are being held "hostage" in an attempt to renegotiate the terms of one of the contracts. Further, WindStream contends that the failure of Defendants to deliver the parts has damaged its business. WindStream also charges Defendants with unfair competition, claiming that they are selling WindStream products, including WindStream's TurboMill, as their own. Finally, it asserts that, among the prospective customers that Keebler and Rambo are targeting are individuals and entities that had previously been identified by WindStream as potential customers.

In its complaint, filed by the trademark attorney for WindStream, the following counts are alleged:

• Federal Unfair Competition and Passing Off (15 U.S.C. § 1125(a))
• Trademark Infringement (15 U.S.C. § 1114)
• Breach of Contract (Dealer Agreement)
• Breach of Contract (Purchase Orders)
• Interference with Contract and Prospective Economic Advantage

WindStream asks the court for an injunction prohibiting trademark infringement and similar conduct; damages, including treble damages; punitive damages for Defendants' willful and malicious acts; and attorney's fees and costs of the lawsuit.

Practice Tip: The complaint asserts that the trademark for TurboMill was registered on June 28, 2001 and that the mark has been used in commerce since at least 2009. In contrast, the registration is listed by the U.S. Patent and Trademark Office as having occurred on June 28, 2011 with the mark shown as having first been used in commerce in 2011, the same year in which WindStream began manufacturing its wind turbines. While the former inconsistency, which adds exactly ten years to the apparent life of the trademark, can be assumed to be a typographical error, the origin of the latter inconsistency, which adds another two years to the period during which the TurboMill mark is claimed to have been used in commerce, in unclear.

Continue reading "WindStream Sues Rambo and Keebler for Trademark Infringement" »

November 6, 2013

Silver Streak Industries Sues Squire Boone Caverns for Copyright Infringement

New Albany, Indiana - Silver Streak Industries, LLC of Tempe, Arizona ("Silver Streak") has filed a copyright infringement lawsuit in the Southern District of Indiana alleging that Squire Boone Caverns, Inc. of Floyd County, Indiana ("Squire Boone") infringed the copyrighted work Ore Car display and game card which has been registered by the U.S. Copyright Office.

silver-Streak-Logo.jpgSilver Streak's Ore Car display and game card (the "Work"), a whimsical representation of a mining ore car used to display polished stones and an accompanying brochure that lists the type of stones displayed, was copyrighted in 1995. Retail consumers may select stones for purchase. They are able to keep track of each type of stone collected with the brochure. Silver Streak generates revenue through the sales of copies of the Work to third parties retail establishments, such as travel centers, and through re-supply of the polished stones displayed with the Work.

Silver Streak alleges that, within the nine-month period prior to the filing of this action for copyright infringement, Squire Boone deliberately and willfully infringed Silver Streak's copyright in the Work by producing an "Ore Car and Tumbled Stone" product, which it claims infringes the copyrighted Ore Car display.

Intellectual property attorneys for Silver Streak contend that Squire Boone offered its purportedly infringing product to one of Silver Streak's existing customers at a retail-merchandise trade show in early 2013 at a deeply discounted price. It also asserts that Squire Boone has made at least one sale of the Ore Car to Six Flags, a potential customer of Silver Streak.

In its complaint, Silver Streak lists two causes of action:

• Count I: Copyright Infringement
• Count II: Tortious Interference with Contract

Silver Streak asks the court to impound and destroy all copies of the allegedly infringing work;
enjoin Squire Boone from further infringement; enjoin Squire Boone from unlawfully interfering with existing or prospective contracts between Silver Streak and its customers; order an accounting of profits and other damages that resulted from copyright infringement or interference with contract and prospective advantage; award to Silver Streak actual damages and profits under 17 U.S.C. § 504(a)(1) and § 504(b), or in the alternative, statutory damages for copyright infringement pursuant to 17 U.S.C. § 504 (a)(2) and § 504(c); award punitive damages; and award to Silver Streak its costs and expenses, including reasonable attorney's fees.

Practice Tip: The Copyright Act empowers a plaintiff to elect to receive an award of statutory damages between $750 and $30,000 per infringement in lieu of an award representing the plaintiff's actual damages and/or the defendant's profits. In a case where the copyright owner proves that infringement was committed willfully (as was asserted here), the court may increase the award of statutory damages to as much as $150,000 per infringed work. A finding of willful infringement will also support an award of attorney's fees.

Continue reading "Silver Streak Industries Sues Squire Boone Caverns for Copyright Infringement" »

November 4, 2013

119 Trademark Registrations Issued to Indiana Companies in October, 2013

The US Trademark Office issued the following 119 trademark registrations to persons and businesses in Indiana in October, 2013, based on applications filed by Indiana Trademark Attorneys:

Reg.No. 

Word Mark

View

4424025

REAL HEALTH HERO · IDENTIFY · PREVENT · MAINTAIN · TRI STATE COMMUNITY CLINICS LLC REAL HEALTH, REAL RETURN

VIEW

4426773

ANNIE'S

VIEW

4425697

INDIANA'S EMERGENCY FOOD RESOURCE NETWORK

VIEW

4425606

THE ENGLISHED ADVOCATE

VIEW

4425178

FIRE DAWGS JUNK REMOVAL

VIEW

4425111

INDOOR SNOWBALL FIGHT

VIEW

4425099

PICKLEBALL ROCKS

VIEW

4425042

CROWN SPORTING GOODS

VIEW

4425022

BELTPALACE.COM

VIEW

4425021

BELTPALACE.COM

VIEW

4424996

STRIDES FOR FAMILIES

VIEW

4424890

ROCK STEADY BOXING

VIEW

4424856

PLOYNK

VIEW

4424796

XCEL CLEAN

VIEW

4426759

AIROGEAR

VIEW

4426756

ACTIFY

VIEW

4424406

SNAPRITE

VIEW

4424296

VIEW

4426517

CINEDRIVE

VIEW

4424037

FAIRFIELD

VIEW

4424027

B105.7

VIEW

Continue reading "119 Trademark Registrations Issued to Indiana Companies in October, 2013" »

November 1, 2013

Patent Office Issues 198 Patents To Indiana Citizens in October, 2013

The US Patent Office issued the following 198 patent registrations to persons and businesses in Indiana in October, 2013, based on applications filed by Indiana Patent Attorneys:

Pat. No.

Title

D692,377

Mosfet rectifier bridge power pack

D692,286

Canning jar tool

8,571,771

Transmission turbine acceleration control for managing vehicle acceleration

8,571,637

Patella tracking method and apparatus for use in surgical navigation

8,570,519

Method and device for analyzing a body fluid

8,569,515

Directed synthesis of oligophosphoramidate stereoisomers

8,569,286

Notch pathway signaling inhibitor compound

8,569,233

Modified animal erythropoietin polypeptides and their uses

8,569,073

Test element having combined control and calibration zone

8,568,993

Detection of glycopeptides and glycoproteins for medical diagnostics

8,568,802

Process for producing enriched fractions of tetrahydroxycurcumin and tetrahydrotetrahydroxy-curcumin from the extracts of Curcuma longa

8,568,730

Compositions for use in the treatment of chronic obstructive pulmonary diseases and asthma

8,568,696

Grinding method for the manipulation or preservation of calcium phosphate hybrid properties

Continue reading "Patent Office Issues 198 Patents To Indiana Citizens in October, 2013" »

October 31, 2013

Joe Hand Promotions Sues Fishbowl Pub and its Owners for Unlawful Interception and Broadcast of UFC Fight

Indianapolis, Indiana - Joe Hand Promotions, Inc. of Feasterville, Pennsylvania has sued in the Southern District of Indiana alleging that Timothy H. Fishburn of Marion County, Indiana; David M. Rickelman of Morgan County, Indiana and MWCC, Inc. d/b/a Fishbowl Pub At Midwest Sports Complex of Indianapolis, Indiana unlawfully intercepted and broadcast the Ultimate Fighting Championship "Aldo v. Hominick" Program.

JHP-logo.pngJoe Hand Promotions was granted rights to distribute via closed-circuit television and encrypted satellite signal the Ultimate Fighting Championship ("UFC") "Aldo vs. Hominick" fight ("the Program"), which was telecast nationwide on April 30, 2011.

In the complaint against Fishburn, Rickelman and Fishbowl Pub, intellectual property counsel for Joe Hand Promotions has alleged such wrongful acts as interception, reception, publication, divulgence, display, exhibition, and "tortuous" [sic] conversion of the Program.

In addition to naming the separate legal entity, MWCC, Inc., which apparently owns Fishbowl Pub, Plaintiff has also sued Fishburn and Rickelman as individuals, claiming that they own MWCC and that they had the right and ability to supervise the activities of Fishbowl Pub. Plaintiff asserts that those activities included the unlawful interception of its Program. It further claims that Fishbowl Pub and its owners received financial benefit from the unlawful display of the Program.

Defendants have been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553. The complaint also lists a count of conversion. Joe Hand Productions seeks statutory damages of $110,000 for each willful violation of 47 U.S.C. § 605; $60,000 for each willful violation of 47 U.S.C. § 553; compensatory damages on the claim of conversion; and costs and attorney's fees. These claims have been made both against Fishbowl Pub and as personal liability claims against the owners.

Practice Tip #1: Among its assertions of wrongdoing, Joe Hand Productions has alleged interception of the Program under 47 U.S.C. § 605, which is a different cause of action from copyright infringement.

Practice Tip #2: 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. The alleged wrongdoing here occurred on April 30, 2011. If the court interprets the interception claim to have a two-year statute of limitations, this may pose a problem for the Plaintiff, as the complaint was filed on October 15, 2013.

Practice Tip #3: It is unclear precisely what unlawful act is being alleged in this complaint. In the paragraph 12, it is asserted that Defendants wrongfully intercepted and broadcast the UFC "Aldo vs. Hominick" fight. However, in paragraph 32, the Plaintiff requests a finding of unauthorized exhibition of the "St-Pierre v. Sheilds Broadcast," which is presumably a different program.

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

Continue reading "Joe Hand Promotions Sues Fishbowl Pub and its Owners for Unlawful Interception and Broadcast of UFC Fight" »

October 30, 2013

Second-Filed Litigation Stayed Pending Venue Ruling in First-Filed Litigation

Indianapolis, Indiana - Nexans, Inc. of New Holland, Pennsylvania sued Belden, Inc. of Richmond, Indiana in the District of Delaware. At issue were allegations of infringement of Patent Nos. 6,074,503, Making enhanced data cable with cross-twist cabled core profile; Nexans-Logo.gif7,135,641, Data cable with cross-twist cabled core profile; 7,977,575, High performance data cable; 5,796,046, Communication cable having a striated cable jacket; and 7,663,061, High performance data cable, which have been issued by the U.S. Patent Office. Two days after Nexans' complaint was filed, Belden sued Nexans regarding the same patent infringement claims in the Southern District of Indiana. The Indiana court has stayed the litigation filed by Belden pending a ruling by the Delaware court.

On November 19, 2012, Nexans filed a complaint for declaratory action in the District of
Belden-logo.jpgDelaware against Belden seeking a declaration of non-infringement and invalidity of U.S. Patent Nos. 6,074,503 (the "'503 Patent"), 7,135,641 (the "'641 Patent"), and 7,977,575 (the "'575 Patent"), as well as a judgment that Belden has infringed U.S. Patent No. 5,796,046 (the "'046 Patent").

On November 21, 2012, Belden sued Nexans in Indiana, alleging infringement of the '503, '575, and '064 Patents. It also alleged infringement of U.S. Patent No. 7,663,061 (the "'061 Patent"). On December 3, 2012, Nexans filed an amended complaint in the Delaware action, seeking an additional declaratory judgment of non-infringement and invalidity of Belden's '061 Patent.

In this opinion, Magistrate Judge Mark J. Dinsmore ruled on Nexans' motion to stay the patent infringement lawsuit filed by Belden in Indiana. Nexans argued that a stay should be issued until the Delaware Court, as the first-filed court, had decided the issue of venue.

Judge Dinsmore first discussed the analysis appropriate to a determination of whether to stay litigation. Specifically, the following factors must be considered in deciding whether to stay an action: (i) whether a stay will unduly prejudice or tactically disadvantage the non-moving party, (ii) whether a stay will simplify the issues in question and streamline the trial, and (iii) whether a stay will reduce the burden of litigation on the parties and on the court.

In the case of duplicative patent actions, the general rule is that the first-filed action is preferred, even if it is declaratory, unless consideration of judicial and litigant economy, and the just and effective disposition of disputes, requires otherwise. Belden argued that two circumstances warranted departing from the general first-filed rule: 1) the convenience factors under 28 U.S.C. § 1404, which it argued would favor proceeding in Indiana, and 2) that Nexans' suit in Delaware constituted forum shopping, which would allow the Indiana court to bypass the first-filed rule.

The court was not persuaded by this reasoning. Instead, it noted that, while the Seventh Circuit has approved of second-filed courts doing this analysis, and proceeding when it is in the interests of justice to do so, the Federal Circuit's rulings control this issue in patent infringement cases. In turn, the Federal Circuit has expressly declined to apply the departure test to patent infringement cases, and has held that it prefers the first-filed rule.

The court next addressed the issue of whether the second-filed court may decide the applicability of the first-filed rule. It observed that the Federal Circuit has not yet expressly addressed whether the second-filed court may decide the applicability of the first-filed rule. While commenting that district courts have come to differing conclusions on the issue, the court was most convinced by the reasoning in those cases that have reserved the application of the first-filed rule for the first-filed court.

In concluding, the court found that it "would be at odds with the promotion of judicial and litigant economy for the court to proceed with the analysis of the exceptions to the first-filed rule." It held that the "first-to-file rule has generally been interpreted to dictate not only which forum is appropriate, but also which forum should decide which forum is appropriate" and stayed the Indiana litigation, pending a ruling on venue from the Delaware court.

Practice Tip: The present action was stayed pending the Delaware court's resolution of the pending motions to enjoin and dismiss. The parties in this case have been instructed to notify the Indiana court of the Delaware district court's rulings on these motions as soon as they are issued.

Continue reading "Second-Filed Litigation Stayed Pending Venue Ruling in First-Filed Litigation" »

October 28, 2013

USPTO 2014-2018 Strategic Plan Available for Public Comment

Washington, D.C. - The U.S. Patent and Trademark Office ("USPTO") draft plan sets priorities to strengthen the USPTO, drive innovation, and support economic growth.

STRATEGICPLAN.jpgThe USPTO recently announced that its draft Strategic Plan for fiscal years ("FY") 2014-2018 has been posted for public review and comment on the USPTO website at www.uspto.gov/about/stratplan/index.jsp. The draft plan sets out the USPTO's mission-focused strategic goals: to optimize patent quality and timeliness; to optimize trademark quality and timeliness; and to provide global and domestic leadership to improve intellectual property ("IP") policy, protection, and enforcement worldwide.

To achieve these goals, the plan identifies the USPTO's priorities, notably:

1. Working with stakeholders to refine long-term pendency goals that will meet the needs of both the office and the IP community.

2. Increasing efficiencies and examination capacity to align with optimal pendency goals, such as hiring/retaining a nationwide workforce.

3. Increasing international cooperation and work sharing, such as implementing Cooperative Patent Classification and the Global Dossier.

4. Continuing to enhance patent quality by evaluating and refining the measurement of quality data, and maximizing its usage to improve the quality of patent and trademark examination.

5. Ensuring optimal IT service delivery to both employees and stakeholders, for example, by stabilizing legacy systems.

6. Continuing and enhancing stakeholder and public outreach to promote the availability of educational resources for applicants and other users; e.g., the patent pro bono program and partnerships.

7. Maintaining the Patent Trial and Appeal Board's ("PTAB") ability to provide timely and high quality decisions by defining optimal pendencies for PTAB proceedings, and ensuring consistency in PTAB decisions.

"We worked with stakeholders around the country to implement the America Invents Act in a way that was open, transparent, and responsive to your needs and concerns," said Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Teresa Stanek Rea. "In order for our nation to continue to lead and thrive in this global 21st century economy, we need that kind of dynamic, interactive private-public partnership to continue and that is why we would like your input on our 2014-2018 Strategic Plan."

Written comments should be sent by email to: strategicplan@uspto.gov by November 25, 2013. Comments may also be submitted by mail addressed to: The USPTO Strategic Plan Coordinator, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Bonita Royall. Although comments may be submitted by postal mail, submission by email to the above address is preferable. The comments will be available for public inspection on the USPTO website at www.uspto.gov.

A public forum on the USPTO 2014-2018 Strategic Plan will be held on November 5, 2013, from 10:00 a.m. to 11:00 a.m. ET in the USPTO's Madison Auditorium located at 600 Dulany Street in Alexandria, Va. in Madison Auditorium. Those wishing to present oral comments at the forum should notify the office not later than November 1, 2013. No written comments or transcripts of the public forum will be made available.

The USPTO anticipates posting the final strategic plan for FY 2014-2018 on http://www.uspto.gov in February 2014.

October 25, 2013

Patrick Collins Twice Requests to Dismiss Lund; Lund Dismissed; Court Denies Patrick Collins' Request to Reinstate

Indianapolis, Indiana - Magistrate Judge Mark J. Dinsmore of the Southern District of Indiana has recommended that Plaintiff Patrick Collins, Inc.'s request to void the judgment entered as a result of Plaintiff's two earlier requests for voluntary dismissal of Defendant Derrick Lund be denied.

[Full Disclosure - Overhauser Law Offices, the publisher of Indiana Intellectual Property Law News, represented the successful defendant in this case.]

Attorney Paul Nicoletti, copyright counsel for Plaintiff Patrick Collins, filed a complaint in June 2012 against thirteen "John Doe" Defendants identified only by their Internet Protocol addresses. Patrick Collins claimed that the Defendants had infringed upon its copyrighted films by downloading them using BitTorrent, a peer-to-peer file-sharing service. Defendant Derrick Lund was identified following a subpoena to his internet service provider.

Initially, Lund filed neither an answer nor any other pleading. Consequently, a default judgment was granted against him. What followed was a series of requests to the court by counsel for Patrick Collins that was characterized by the court as a "complicated procedural history." On the day following the default judgment against Lund, Nicoletti filed a notice of voluntary dismissal against Lund, seeking to dismiss him with prejudice. On that same day, Nicoletti also filed an unopposed motion making the same request: to vacate the default judgment against Lund and to dismiss him with prejudice. Judge Pratt granted Patrick Collins' motion the next day.

One day following Judge Pratt's order, Patrick Collins filed a motion to withdraw the voluntary dismissal. The court granted this motion and reinstated Lund as an active Defendant. Lund filed a motion for reconsideration on Lund's reinstatement. The court granted Lund's motion and vacated its reinstatement order, finding that Lund had not been properly served.

In this current opinion, the court again considered Patrick Collins' motion to withdraw its voluntary dismissal, asking "whether Plaintiff can just 'withdraw' this notice of dismissal." The court answered, "[s]imply, the answer is no, as the dismissal [constituted] a final judgment." Once the Plaintiff filed a notice of dismissal, "the case is closed and the plaintiff may not unilaterally withdraw or amend the notice."

In its latest request to the court, Patrick Collins had neither cited Rule 60(b) of the Federal Rules of Civil Procedure nor given reasons under this Rule that the judgment should be subject to vacatur. Instead, Plaintiff had simply argued that "the parties had not reached a settlement agreement and therefore the dismissal with prejudice was unintentional."

Nonetheless, the court sua sponte considered whether the final judgment should be set aside under Rule 60(b). Again, the court was not inclined to grant the Plaintiff's plea to void an order that the Plaintiff itself had requested.  While Rule 60(b) permits the Plaintiff to ask the court to vacate a dismissal, relief from a final judgment is an extraordinary measure and may only be granted in the exceptional circumstances.

Rule 60(b) permits a court to relive a party from a final judgment, order or proceeding for the following reasons:

1) mistake, inadvertence, surprise, or excusable neglect;
2) newly discovered evidence;
3) fraud, misrepresentation, or misconduct by an opposing party;
4) the judgment is void;
5) the judgment has been satisfied, released or discharged; it is based on an earlier judgment that has been reversed or vacated; or applying it prospectively is no longer equitable; or
6) any other reason that justifies relief.

The court noted that "Plaintiff twice filed requests with the Court - each filing being hours apart - to not only dismiss the action against Lund, but to dismiss it with prejudice. These filings show an unequivocal intent to dismiss Lund with prejudice." Magistrate Judge Dinsmore concluded that Patrick Collins had not demonstrated "how its argument amounts to mistake, inadvertence, surprise, or excusable neglect" and recommended that Judge Pratt deny Plaintiff's motion to withdraw voluntary dismissal.

Practice Tip #1: This case highlights the distinction between a dismissal "with prejudice" and "without prejudice." The opinion focuses on whether Plaintiff Patrick Collins, Inc. could obtain "relief" from its own dismissal. Why would a litigant need "relief" from a court order granting its own motion? Because the dismissal was "with prejudice," meaning that Patrick Collins was not allowed to simply file a second suit asserting the same claim. Because the dismissal was "with prejudice," the defendant may be a considered a "prevailing party," even though a judgment was never entered in either party's favor. Nonetheless, because the Copyright Act allows a "prevailing party" to recover its attorney's fees, the defendant can recover them.

Practice Tip #2: Patrick Collins, Inc. is represented by Paul Nicoletti, one of the country's most notorious "copyright troll" attorneys. In addition to filing suits on behalf of Patrick Collins, Inc., he has also sued hundreds of defendants on behalf of copyright trolls Malibu Media, LLC and TCYK, LLC. (Search for these company names on this site to find articles about those other suits, or visit www.fightcopyrighttrolls.comor www.dietrolldie.com.)

Continue reading "Patrick Collins Twice Requests to Dismiss Lund; Lund Dismissed; Court Denies Patrick Collins' Request to Reinstate" »

October 24, 2013

BMI Asserts Copyright Infringement Against Blu

Indianapolis, Indiana -- Broadcast Music, Inc. of New York, New York ("BMI") has filed a copyright infringement lawsuit in the Southern District of Indiana alleging that SC Entertainment, LLC d/b/a Blu and Shawn Cannon ("Cannon"), both of Indianapolis, Indiana, infringed the copyrighted works LAST NIGHT A D.J. SAVED MY LIFE, SHOW ME LOVE, and I'LL BE AROUND which have been registered by the U.S. Copyright Office. Five other Plaintiffs,Comart Music, EMI Virgin Songs, Inc. dba EMI Longitude Music, EMI Blackwood Music, Inc, Song A Tron Music, and Warner-Tamerlane Publishing Corporation, are also BMI-logo.jpglisted in the complaint.

Broadcast Music, Inc. ("BMI") is a "performing rights society" under 17 U.S.C. § 101 that operates on a non-profit-making basis and licenses the right to publicly perform copyrighted musical works on behalf of the copyright owners of these works. The other Plaintiffs in this action are the copyright owners of the three compositions at issue in this lawsuit.
SC Entertainment is an Indiana limited liability company that operates Blu, an establishment which is asserted to publicly perform musical compositions and/or cause musical compositions to be publicly performed.

BMI asserts that Cannon is a member of SC Entertainment and that he has primary sc_entertainment_logo_isolated_36373446_logo.pngresponsibility for the operation and management of the company and of Blu. Cannon also allegedly has the right and ability to supervise the activities of SC Entertainment and a direct financial interest in the company and in Blu.

BMI and the other Plaintiffs, via copyright counsel, have asserted willful copyright infringement of the three copyrights-in-suit in their complaint. They further claim that the Defendants' entire course of conduct, including the ongoing unauthorized public performances of the copyrighted works, has caused and is continuing to cause the Plaintiffs great and incalculable damage.

Practice Tip:

The Copyright Act empowers a plaintiff to elect to receive an award of statutory damages between $750 and $30,000 per infringement in lieu of an award representing the plaintiffs' actual damages and/or the defendants' profits. In a case where the copyright owner proves that infringement was committed willfully, the court may increase the award of statutory damages to as much as $150,000 per infringed work. A finding of willful infringement will also support an award of attorney's fees.

Furthermore, not only is the performer liable for infringement, but so is anyone who sponsors the performance. A corporate officer will be found jointly and severally liable with his corporation for copyright infringement if he (1) had the right and ability to supervise the infringing activity, and (2) has a direct financial interest in such activities.

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October 23, 2013

After Final Consideration Pilot 2.0 Extended

Washington, D.C. -- Using information gathered from the After Final Consideration Pilot ("AFCP"), as well as input from stakeholders and examiners obtained through the Request for Continued Examination ("RCE") outreach initiative, the U.S. Patent and Trademark Office ("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 ongoing 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, you 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. Please see the notice published in the Federal Register at 78 Fed. Reg. 29117 for 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.

As always, the option to request an interview with the examiner, consistent with Manual of Patent Examining Procedure Section 713, is available to you irrespective of whether the submission was considered under AFCP 2.0.

If you are considering filing a response to a final rejection under 37 CFR 1.116 that you believe will lead to allowance of your application with only limited further searching and/or consideration by the examiner, you should consider requesting consideration of the response under AFCP 2.0.

Click here for the guidelines related to the consideration of responses under AFCP 2.0.

Form

Form PTO/SB/434 may be used to request consideration under AFCP 2.0.

Dates

AFCP 2.0 has been extended to run through December 14, 2013; therefore, any request to consider a response after final rejection under AFCP 2.0 must be filed on or before December 14, 2013.

Contacts

You may email any question regarding AFCP 2.0 to the AFCP 2.0 mailbox at afterfinalconsiderationpilotafcp20@uspto.gov.

Alternatively, you may telephone one of the following:

• for an EFS-Web or PAIR system question, contact the Electronic Business Center at 866-217-9197;
• for an application-specific issue with AFCP 2.0, contact Tariq Hafiz, Director, Technology Center 2600, at 571-272-4550; or
• for a question regarding the After Final Consideration Pilot Program 2.0 Federal Register notice, contact Raul Tamayo, Senior Legal Advisor, Office of Patent Legal Administration, at 571-272-7728.

Practice Tip: Various current workload patent statistics may be viewed in the Patents Dashboard data visualization center at: http://www.uspto.gov/dashboards/patents/main.dashxml.

October 21, 2013

Dissimilarity Between Trademarked Goods and Allegedly Infringing Goods is Not Dispositive

Indianapolis, Indiana -- In June 2013, Australian Gold, LLC of Indianapolis, Indiana sued Devoted Creations, LLC of Oldsmar, Florida in the Southern District of Indiana alleging trademark infringement of the mark LIVE LAUGH TAN, Trademark Registration No. 4,154,194, which has been registered with the U.S. Trademark Office. Devoted Creations moved to dismiss the lawsuit for failure to state a claim.

Australian Gold has been in the business of selling indoor-tanning preparations for over 20 years. Devoted Creations also sells indoor-tanning preparations. Australian Gold contended in its complaint 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.

Devoted Creations, which competes directly with Australian Gold for customers, uses the name "LIVE LOVE TAN" to advertise its indoor-tanning preparations. Australian Gold alleges that Devoted Creations' use of a similar trademark to sell products similar to those which it sells infringes on its intellectual property rights in the "LIVE LAUGH TAN" trademark. It further asserted that Devoted Creations was aware of the goodwill and reputation associated with Australian Gold's trademark, and that Devoted Creations intentionally copied that trademark. Australian Gold sued for trademark infringement and unfair competition.

In this opinion, Judge Jane Magnus-Stinson addressed the request of Defendant Devoted Creations to invoke Federal Rule of Civil Procedure 12(b)(6) and dismiss the case against it on the basis that Australian Gold had stated no plausible claim. Devoted Creations asserted that the claims against it failed because Devoted Creations' use of a mark on one product - indoor tanning preparations - could not as a matter of law infringe on Australian Gold's use of its own mark in conjunction with an entirely different product - tote bags, the class of products for which the trademark is registered.

Judge Magnus-Stinson pointed out that Devoted Creations made two errors. Devoted Creations' first error was one of fact. Devoted Creations asserted that Australian Gold did not use the trademark in conjunction with the sale of tanning products but, rather, that the mark was used only for tote bags. The court did not accept this version of the facts. Instead, the court referred to the standard of review for a motion to dismiss under 12(b)(6), which asks whether the complaint "contain[s] sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face." As Australian Gold had explicitly alleged in its complaint that its use of the trademark was "in conjunction with the marketing and sale of its AUSTRALIAN GOLD® line of indoor tanning preparations," the court was not persuaded that a motion to dismiss was appropriate.

The second error was one of law. Even if it were true that the purported infringement occurred only on a different type of goods, that dissimilarity is not dispositive, as the analysis of likelihood of confusion requires the application of a seven-factor test.

Finally, the court reminded Devoted Creations and its counsel of the ethical duties imposed by "both Federal Rule of Civil Procedure 11(b)(2) (stating that a motion presented to the Court functions as a certification by the presenting attorney that 'the claims, defenses, and other legal contentions are warranted by existing law') and 28 U.S.C § 1927 (providing for sanctions for unreasonably protracting litigation) when filing a motion with the Court."

Practice Tip: The precedent in the Seventh Circuit is that similarity between a plaintiff's goods and a defendant's allegedly infringing goods is only one of seven factors considered in evaluating whether there is a likelihood of confusion. Dissimilarity alone is not dispositive. Even when products are "quite different," an evaluation of the other factors is required. The factors are:

1. the similarity between the marks in appearance and suggestion;
2. the similarity of the products;
3. the area and manner of concurrent use;
4. the degree of care likely to be exercised by consumers;
5. the strength of the plaintiff's mark;
6. any actual confusion; and
7. the intent of the defendant to "palm off" his product as that of another.

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October 18, 2013

Aiuppy Sues Jeepers Dollhouse Miniatures for Infringing Copyrighted Photos

Indianapolis, Indiana - Laurance B. Aiuppy of Park County, Montana ("Aiuppy") has sued Ufnowski Enterprises, LLC of Morgantown, Indiana ("Ufnowski") d/b/a "Jeepers Dollhouse Miniatures" in the Southern District of Indiana alleging infringement of a copyrighted photograph or photographs which have been registered by the U.S. Copyright Office.

Plaintiff Aiuppy (also referred to in the complaint as "Plaintiff Auippy") provides entertainment-related photojournalism goods and services featuring celebrities, which it licenses to online and print publications.

Defendant Ufnowski, which offers miniatures, dollhouses, and related accessories, is asserted to own and operate the website http://www.jeepersminiatures.com and to have copied, modified and displayed Aiuppy's photograph or photographs on the Jeepers Dollhouse Miniatures website without Aiuppy's permission.  It is further contended that this conduct was knowing and in violation of U.S. copyright laws.  The complaint also asserts that Ufnowski received a financial benefit directly attributable to the alleged infringement(s), and claims that as a result of the display of the photographs, the website had increased traffic and, in turn, realized an increase in their advertising revenues and/or merchandise sales.

The complaint, filed by the intellectual property counsel for Aiuppy, states the following claims:

·         First Count: Direct Copyright Infringement, 17 U.S.C. § 501 et seq.

·         Second Count: Contributory Copyright Infringement

·         Third Count: Vicarious Copyright Infringement

·         Fourth Count: Inducement of Copyright Infringement

·         Fifth Count: Injunction Pursuant to 17 U.S.C. § 502

·         Sixth Count: Attorney Fees and Costs Pursuant to 17 U.S.C. § 505

Aiuppy asks for a judgment that Ufnowski has infringed directly, contributorily and/or vicariously; for a judgment that Ufnowski has induced others to violate Aiuppy's copyrighted photographs(s); for statutory damages against Ufnowski of $150,000 per infringement, or actual damages and Ufnowski's profits; for a permanent injunction pursuant to 17 U.S.C. § 502; and for attorneys' fees and costs.

Practice Tip: As part of its complaint, Aiuppy has asserted that Ufnowski had "red flag" knowledge under 17 U.S.C. §512(c)(1)(A)(i) (sic) of the alleged infringements and yet failed to remove the allegedly infringing photographs.  The "red flag" provision, codified as 17 U.S.C. §512(c)(1)(A)(ii), is part of the Digital Millennium Copyright Act ("DMCA"). 

 Title II of the DMCA, separately titled the "Online Copyright Infringement Liability Limitation Act" ("OCILLA"), was designed to clarify the liability faced by service providers who transmit potentially infringing material over their networks. 

But rather than embarking upon a wholesale clarification of various copyright doctrines, Congress elected to leave current law in its evolving state and, instead, to create a series of "safe harbors" for certain common activities of service providers.  To that end, under 17 U.S.C. § 512(a)-(d), OCILLA established a series of four "safe harbors" that allow qualifying service providers to limit their liability for claims of copyright infringement based on (a) transitory digital network communications, (b) system caching, (c) information residing on systems or networks at [the] direction of users, and (d) information location tools.  

To qualify for protection under any of the safe harbors, a party must meet a set of threshold criteria.  First, the party must in fact be a "service provider," defined, in pertinent part, as "a provider of online services or network access, or the operator of facilities therefor."  17 U.S.C. § 512(k)(1)(B).  A party that qualifies as a service provider must also satisfy certain "conditions of eligibility," including the adoption and reasonable implementation of a "repeat infringer" policy that "provides for the termination in appropriate circumstances of subscribers and account holders of the service provider's system or network." Id. § 512(i)(1)(A).  In addition, a qualifying service provider must accommodate "standard technical measures" that are "used by copyright owners to identify or protect copyrighted works." Id. § 512(i)(1)(B), (i)(2).

Beyond the threshold criteria, a service provider must satisfy the requirements of a particular safe harbor.  In this case, the safe harbor presumably at issue is § 512(c), which covers infringement claims that arise "by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider."  The § 512(c) safe harbor will apply only if the service provider:

(A) (i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing;

(ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or

(iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;

(B) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and

(C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.

It is in § 512(c)(1)(A)(ii) that the so-called "red flag" knowledge exception to the safe harbor provision for service providers is found. 

As the safe harbor acts as an affirmative defense, and the "red flag" knowledge, in turn, is available to defeat that defense, it is interesting that this seems to have been included in the complaint as part of the prima facie case against Ufnowski.  Moreover, it will be interesting to see what use Plaintiff's copyright attorney makes of this assertion, given that Ufnowski appears from the complaint to be a merchant of dollhouse miniatures, not an Internet service provider.

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October 17, 2013

Another Fourteen Anonymous Defendants Accused of Infringing Robert Redford Movie

Indianapolis, Indiana -- Copyright lawyer Paul Nicoletti has sued fourteen additional Doe Defendants, all allegedly located in Indiana, in the Southern District of Indiana on behalf of TCYK, LLC of Los Angeles, California ("TCYK") alleging infringement of the copyrighted movie "The Company You Keep," which has been registered by the U.S. Copyright Office.  The movie stars Robert Redford, Susan Sarandon, Shia LaBeouf, Anna Kendrick, Julie Christie and Nick Nolte.  It was directed by Robert Redford. 

TCYK alleges that the infringing transfer and copying of this movie, which was released on DVD on August 13, 2013, was accomplished by Defendants using BitTorrent, a peer-to-peer file-sharing protocol.  Specifically, the Doe Defendants are accused of deliberately participating in a peer-to-peer "swarm," and illegally reproducing and/or distributing portions of the movie in digital form with other Defendants.  TCYK indicates in its complaint that it used geolocation technology to determine that the Doe Defendants were located in Indiana. 

The complaint lists a single count: copyright infringement.  The intellectual property attorney for Plaintiff TCYK asks the court for permanent injunctions prohibiting infringement of Plaintiff's movie by all Doe Defendants; the destruction of all copies of infringing works in any Defendant's control; judgment that Defendants have willfully infringed Plaintiff's copyrighted work; judgment that Defendants have otherwise injured the business reputation and business of Plaintiffs; for actual damages or statutory damages; and for attorneys' fees and litigation expenses.

Practice Tip:

Under 17 U.S.C. § 504(c)(1), a copyright owner may elect actual or statutory damages.  Statutory damages range from a sum of not less than $750 to not more than $30,000 per infringed work.  The determination of the exact amount is left to the discretion of the court. 

If a defendant fails to appear, the court will take as true all of the plaintiff's well-pled allegations.  That typically leads to a default judgment against the defendant.  There is a significant disparity in the dollar amounts awarded in default judgments against defendants in copyright infringement cases involving BitTorrent.  In two separate cases, Judge William T. Lawrence recently ordered two defendants who failed to appear to pay $20,000 in statutory damages for copyright infringement that was deemed to have been admitted by the defendants' failure to defend against the allegations.  See here and here.  However, in a similar case, Judge Jane Magnus-Stinson ordered an entry of default judgment against a defendant for $151,425.  Judge Sarah Evans Barker has issued several default judgments for $36,000 plus attorneys' fees against BitTorrent defendants who failed to appear.

 

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