September 20, 2013

CSP Sues Süd-Chemie and Airsec Again for Patent Infringement, Adds Defendant Clariant Produkte Deutschland

New Albany, Indiana -- Patent lawyers for CSP Technologies, Inc. of Auburn, Alabama have sued Clariant Produkte Deutschland GmbH of Frankfurt, Germany, Süd-Chemie, Inc. of Louisville, Kentucky and Airsec S.A.S. of Choisy-le-Roi, France (collectively, "Defendants") for patent infringement in the Southern District of Indiana.  At issue is RESEALABLE MOISTURE TIGHT CONTAINER ASSEMBLY FOR STRIPS AND THE LIKE HAVING A LIP SNAP SEAL, Patent No. 8,528,778 (the "'778" patent), which has been issued by the U.S. Patent Office. 

CSP-Logo.gifCSP develops, manufactures, distributes and sells product packaging that enhances the stability and shelf life of package contents.  It has been granted patents directed towards desiccant-entrained polymers and other sealing technology incorporated into product packaging.  Such technologies are designed to create a moisture-free environment for a packaged product. 

CSP has sued Defendants Clariant Produkte Deutschland, Süd-Chemie and Airsec, which compete with CSP in the field of product packaging, for patent infringement.  This is at least the third patent infringement lawsuit involving CSP and some or all of the Defendants.  The first case was filed in 2003 in Indiana.  In that case, CSP asserted infringement of U.S. Patent No. 5,911,937 and U.S. Patent No. 6,214,255, both titled DESICCANT ENTRAINED POLYMER.  In a 108-page opinion, the judge held that CSP's two patents were valid and that Süd-Chemie had infringed them.  She ordered the parties into mediation where they eventually settled for $8 million.  The court entered a consent order, retaining jurisdiction and enjoining Defendants in that case from infringing the asserted patents. 

Following the resolution of that lawsuit, Defendants allegedly began or resumed selling infringing products.  In response to Defendants' sales, CSP filed an additional lawsuit in 2011, again in Indiana, alleging infringement of Patent No. 7,537,137.  As is the '778 patent, that patent was titled RESEALABLE MOISTURE TIGHT CONTAINER ASSEMBLY FOR STRIPS AND THE LIKE HAVING A LIP SNAP SEAL.

This latest lawsuit was filed on September 10, 2013, the same day as the issuance of the '778 patent.  It alleges willful infringement of CSP's patented technology relating to packaging for, among other things, the diagnostic-test-strip market.

Patent attorneys for CSP list a single count of patent infringement in the complaint.  It is asserted that Defendants' conduct is willful and deliberate.  CSP asks the court for preliminary and permanent injunctions barring infringement; for an accounting of damages, including both pre- and post-judgment interest and costs; for a determination that Defendants willfully and deliberately infringed the '778 patent, and that damages be trebled as a consequence; and that the case be declared exceptional and, pursuant to such a finding, that CSP be awarded its reasonable attorneys' fees.

Practice Tip: The "willfulness" of the alleged infringement is an important issue in patent litigation because willful infringement results in a tripling of the damages awarded to the patent holder.  To establish willfulness, the patent holder must prove that the infringer acted with at least "objective recklessness."

Continue reading "CSP Sues Süd-Chemie and Airsec Again for Patent Infringement, Adds Defendant Clariant Produkte Deutschland" »

September 19, 2013

TCYK Sues Nine John Doe Defendants for Copyright Infringement of "The Company You Keep"

Hammond, Indiana -- Copyright lawyers for TCYK LLC of Los Angeles, CA sued for copyright infringement in the Northern District of Indiana alleging that John Does 1-9, all allegedly located in Indiana, infringed the copyrighted work "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 of copyright infringement.  Copyright attorneys for Plaintiff ask the court for permanent injunctions prohibiting infringement of Plaintiff's movie; 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 #1: The impact of distributing large files on servers and networks can be reduced by using BitTorrent.  Instead of downloading a file from a single server, the BitTorrent protocol allows users to join a "swarm" of hosts, each of which downloads and uploads data from the others simultaneously. 

Practice Tip #2: TCYK has filed dozens of lawsuits in federal courts claiming copyright infringement of "The Company You Keep", including courts in Indiana, Florida, Illinois, Minnesota, Ohio and Wisconsin.  It is estimated that thousands of defendants have been sued by TCYK on the allegation that they have infringed this copyrighted work.  TCYK is also featured in an interesting article on the growing practice of using the court system to monetize infringement committed by individual infringers. 

Practice Tip #3: It is curious that apparently neither the filing fee nor form AO 121 (Report on the Filing or Determination of an Action or Appeal Regarding a Copyright) was submitted to the court in conjunction with the filing of this complaint.

Continue reading "TCYK Sues Nine John Doe Defendants for Copyright Infringement of "The Company You Keep"" »

September 18, 2013

Little Sioux Added as a Defendant in CleanTech's Multidistrict Litigation

Indianapolis, Indiana -- Patent lawyers for GS CleanTech Corp. of Alpharetta, Georgia ("CleanTech") sued in the Northern District of Iowa alleging that Little Sioux Corn Processors, LLLP of Marcus, Iowa ("Little Sioux") had infringed METHOD OF PROCESSING ETHANOL BYPRODUCTS AND RELATED SUBSYSTEMS, Patent No. 7,601,858, and its family of related patents, which have been issued by the U.S. Patent Office.  The case was transferred to the Southern District of Indiana as part of Multidistrict Litigation No. 2181.

This lawsuit between CleanTech and Little Sioux is one of the most recent added to the Multidistrict Litigation currently underway in the Southern District of Indiana.  It is being adjudicated by Judge Larry J. McKinney and Magistrate Judge Debra McVickers Lynch.  At issue is CleanTech's family of patents that claims a process that extracts corn oil from the byproducts created during the manufacture of ethyl alcohol.

Recently, attention has been given to the production of ethyl alcohol, also known as "ethanol," for use as an alternative fuel.  Ethanol burns cleaner than fossil fuels and can be produced using renewable domestic resources such as corn. 

A popular method of producing ethanol is known as "dry milling," whereby the starch in corn is used to produce ethanol through fermentation.  In a typical dry milling method, the process starts by grinding each kernel of corn into meal, which is then slurried with water into mash.  Enzymes are added to the mash to convert the starch to sugar.  Yeast is then added to convert the sugar to ethanol and carbon dioxide.  After this fermentation, the mixture is transferred to distillation columns where the ethanol is evaporated and removed, leaving an intermediate product called "whole stillage."  The whole stillage contains corn oil and the parts of each kernel of corn that were not fermented into ethanol.  Despite that it still contains corn oil, the whole stillage has traditionally been treated as a byproduct of the dry-milling fermentation process and used primarily to supplement animal feed.

The '858 family of patents, which also includes U.S. Patent Nos. 8,008,516 (the "'516 patent"), 8,008,517 (the "'517 patent") and 8,283,484 (the "'484 patent"), relates to extracting corn oil from whole stillage.  CleanTech claims that the method increases the efficiency and economy of recovering corn oil.  Little Sioux is charged with infringing the '858 patent, along with the related '516, '517, and '484 patents (collectively "the patents-in-suit")

This current suit seems to have its roots in a lawsuit filed by ICM, Inc. (hereinafter "ICM"), a Kansas corporation, which sued CleanTech in 2009 for a declaratory judgment of non-infringement and invalidity of the '858 patent.  CleanTech asserts that ICM admitted in its complaint that that it "designs and builds ethanol production plants for customers and promotes, sells and installs centrifuge equipment to such customers for recovering oil from corn byproducts."  The complaint by ICM stated that it had filed the lawsuit to ask the court to determine whether ICM had the "right to sell and/or use equipment to practice corn oil recovery methods that are in part the subject of the claims of the '858 Patent." 

CleanTech asserts that ICM sold products and equipment to Little Sioux that infringe one or more of the claims of the patents-in-suit.  Little Sioux is accused of using these products and equipment to infringe one or more of the claims of the patents-in-suit.  In the complaint, patent attorneys for CleanTech assert:

·         Count I: Infringement of U.S. Patent No. 7,601,858

·         Count II: Infringement of U.S. Patent No. 8,008,516

·         Count III: Infringement of U.S. Patent No. 8,008,517

·         Count IV: Infringement of U.S. Patent No. 8,283,484

CleanTech asks the court for preliminary and permanent injunctions prohibiting further infringement of the patents-in-suit; an award of damages adequate to compensate CleanTech for the infringement that has occurred, but in no event less than a reasonable royalty for the use made of the inventions of the patents-in-suit as provided in 35 U.S.C. § 284, together with prejudgment interest from the date the infringement began; and an award to CleanTech of all remedies available under 35 U.S.C. §§ 284, 285 and 154(d).

Practice Tip: Multi-district litigation affords consistency and judicial economy, as well as allowing plaintiffs and defendants to concentrate their efforts in one forum.  However, lawsuits that are not settled before trial must later be remanded to the transferring court and to a judge who has had little opportunity to become familiar with the issues.

Continue reading "Little Sioux Added as a Defendant in CleanTech's Multidistrict Litigation " »

September 16, 2013

CleanTech Sues Aemetis for Infringing Patented Corn Oil Extraction Method

Indianapolis, Indiana -- Patent lawyers for GS CleanTech Corp. of Alpharetta, Georgia ("CleanTech") filed a patent infringement suit in the United States District Court for the Eastern District of California -- Fresno Division alleging that Aemetis, Inc. and Aemetis Advanced Fuels Keyes, Inc., (collectively, "Aemetis"), both of Cupertino, California, infringed CleanTech's METHOD OF PROCESSING ETHANOL BYPRODUCTS AND RELATED SUBSYSTEMS, Patent No. 7,601,858, (the "'858 patent") which has been issued by the U.S. Patent Office.  The case was transferred to the Southern District of Indiana as part of Multidistrict Litigation No. 2181.

This Multidistrict Litigation ("MDL") began with an assertion of patent infringement by CleanTech of the '858 patent, which was issued on October 13, 2009.  CleanTech sued numerous Defendants alleging infringement of that patent shortly after its issuance.   The Defendants accused of patent infringement in prior litigation include: Big River Resources Galva, LLC; Big River Resources West Burlington, LLC; Cardinal Ethanol, LLC; ICM, Inc.; LincolnLand Agri-Energy, LLC; David J. Vander Griend; Iroquois Bio-Energy Co., LLC; Al-Corn Clean Fuel; Blue Flint Ethanol, LLC; ACE Ethanol, LLC; Lincolnway Energy, LLC; United Wisconsin Grain Producers, LLC; Bushmills Ethanol, Inc.; Chippewa Valley Ethanol Co.; Heartland Corn Products and Adkins Energy, LLC.

Since September 29, 2011, when the court overseeing the MDL issued its order on claim construction with respect to the disputed claims of the '858 patent, patentees, GS CleanTech Corp., and its parent GreenShift Corp., have asserted three additional patents in the '858 patent family against the allegedly infringing Defendants, U.S. Patent Nos., 8,008,516 (the "'516 patent"), 8,008,517 (the "'517 patent") and 8,283,484 (the "'484 patent") (the '858, '516, '517 and '484 patents are, collectively, the "'858 patent family").

In this current lawsuit, initiated in Eastern District of California, subsidiary GS CleanTech Corp. is the sole Plaintiff.  Patent attorneys for CleanTech assert only one count in the complaint: infringement of the '858 patent.  CleanTech asks the court for preliminary and permanent injunctions prohibiting further infringement of the '858 patent; an award of damages adequate to compensate CleanTech for the infringement that has occurred, but in no event less than a reasonable royalty for the use made of the inventions of the '858 patent as provided in 35 U.S.C. § 284, together with prejudgment interest from the date the infringement began; and an award to CleanTech of all remedies available under 35 U.S.C. §§ 284 and 285.

Practice Tip: The United States Judicial Panel on Multidistrict Litigation, also known as the "MDL Panel" or, simply the "Panel," consists of seven sitting federal judges, who are appointed to serve on the Panel by the Chief Justice of the United States. The job of the Panel is to (1) determine whether civil actions pending in different federal districts involve one or more common questions of fact such that the actions should be transferred to one federal district for coordinated or consolidated pretrial proceedings; and (2) select the judge or judges and court assigned to conduct such proceedings.

Continue reading "CleanTech Sues Aemetis for Infringing Patented Corn Oil Extraction Method" »

September 13, 2013

Steak n Shake Sues for Trademark Infringement

Denver, Colorado -- Intellectual property lawyers for Steak n Shake Enterprises, Inc. and Steak n Shake, LLC of Indianapolis, Indiana (collectively "Steak n Shake") sued in the United States District Court for the District of Colorado alleging that Globex Company, LLC; Springfield Downs, LLC; Christopher Baerns; Larry Baerns; Kathryn Baerns and Control, LLC, all of Colorado, are infringing the "Steak n Shake" marks, which have been registered by the U.S. Trademark Office.

logo.bmpNon-party Steak n Shake Operations, Inc., Steak n Shake Enterprises' parent company, has continuously operated Steak n Shake restaurants specializing in burgers and milkshakes since 1934.  There are currently 415 company-owned Steak n Shake restaurants in 15 states across the country.  In addition, Steak n Shake Enterprises grants franchises to establish and operate Steak n Shake restaurants pursuant to written franchise agreements with Steak n Shake Enterprises, and written license agreements with Steak n Shake, LLC.  There are currently 100 franchised Steak n Shake restaurants operating in 23 states, including Colorado.  Steak n Shake asserts that the Steak n Shake trademarks, and the products and services offered in association with those marks, have been extensively promoted throughout the United States for many years.

This action against Defendants arose subsequent to the termination of franchise and license agreements between Plaintiffs Steak n Shake Enterprises, Inc., as franchisor, and Steak n Shake, LLC, as licensor, and Defendants as franchisees, licensees and/or guarantors.  Steak n Shake contends that Defendants materially breached their obligations under the franchise and license agreements and failed to cure such breaches.  As a result, Steak n Shake terminated the agreements.

Steak n Shake alleges that, notwithstanding the termination of the franchise and license agreements, Defendants continue to use the Steak n Shake name and marks in connection with the operation of competitive restaurants at the same locations as their former franchised Steak n Shake restaurants, and to hold their restaurants out to the public as authentic Steak n Shake restaurants.

In the complaint, trademark attorneys for Steak n Shake assert the following:

·         Count I - Trademark Infringement

·         Count II - Unfair Competition

·         Count III - Breach of Contract - Specific Performance

·         Count IV - Breach of Contract - Damages

·         Count V - Breach of Guaranty - Damages

Steak n Shake seeks the following relief against Defendants, jointly and severally: preliminary and permanent injunctive relief enjoining Defendants' trademark infringement and unfair competition, and ordering Defendants to perform their post-termination obligations under their franchise and license agreements and area development agreement, including their noncompetition covenants; recovery of the amounts owed to them by Defendants, including the damages each has sustained by reason of Defendants' breaches and the resulting termination of the franchise and license agreements and area development agreement; and an award of the attorneys' fees and costs incurred by Steak n Shake.

Practice Tip: Franchise agreements typically require the franchisee to cease using all of the franchise marks, as well as return all items bearing the franchise marks, in the event the franchise agreement is terminated.  Failure to comply promptly with these provisions can lead to liability for trademark infringement, among other claims.

Continue reading "Steak n Shake Sues for Trademark Infringement" »

September 12, 2013

80/20 Sues "John Doe" for Trademark Infringement and Passing Off

Fort Wayne, Indiana -- Trademark lawyers for 80/20, Inc. of Columbia City, Indiana filed a trademark infringement suit in the Northern District of Indiana alleging John Doe d/b/a TNutz of Champlain, New York infringed the trademark "80/20", Trademark Registration No. 2,699,302, which has been registered with the U.S. Trademark Office.

80/20 is a manufacturer of T-slotted aluminum extrusion products and accessories.  It sells to customers through a distribution network and an online "garage sale."  It asserts that it has marketed products and services under the trademark "80/20" since at least 1990.  TNutz does business via its own website and an eBay store.

TNutz is accused of unfairly competing with 80/20 by, among other things, falsely representing that some of the products that it offers for sale are genuine 80/20 products when, according to 80/20, they are not.  80/20 indicates that it has no affiliation with TNutz. 

The complaint also states that TNutz represents its own goods as 80/20 goods with the intention of causing confusion among, and deceiving, consumers who seek to purchase genuine 80/20 parts from or through 80/20.  It also contends that TNutz has purposely hidden its true identity and physical location from consumers and competitors, asserting that the businesses listed as contacts for both TNutz's website and its physical address are unrelated third parties.

80/20 indicates that it sent a cease-and-desist letter to TNutz on May 10, 2013 demanding that TNutz cease infringement and compensate 80/20 for the damages caused by the allegedly infringing conduct.  80/20 apparently received no response to its demands.

The complaint lists the following causes of action:

·         Count I: Trademark Infringement

·         Count II: Lanham Act Violation -- Passing Off

 Trademark lawyers for 80/20 ask the court for preliminary and permanent injunctions prohibiting infringement; an award of actual damages and profits by TNutz attributable to infringement of 80/20's trademarks and/or statutory damages; an award of reasonable attorneys' fees, upon a finding that this is an exceptional case; and the destruction of all materials in TNutz's control bearing the "80/20" mark.

Practice Tip:

If a defendant's identity is not clear from the evidence available when a complaint is filed, a "John Doe" designation is typically used to represent that unidentified defendant.  After filing such a complaint, the plaintiff may then ask the court to use its authority to subpoena various third parties, such as internet service providers, to disclose the identity of the Doe defendant(s).  Here, presumably, the plaintiff will subpoena to eBay to discover the identity of "John Doe." 

Although trademark lawsuits with a "John Doe" defendant are a relative rarity, this is the second one we have blogged about this week.  Sometimes, as was the case in the other recent trademark complaint with a "John Doe" defendant, revealing the identity of the unknown defendant is largely procedural.  In other cases, however, Doe defendants are highly motivated to preserve their anonymity, as they do not want to be associated with the embarrassing allegations in the complaint.  See, e.g., one Doe defendant's request to quash or modify a subpoena in a copyright case which involved the alleged illegal downloading of adult content.


Continue reading "80/20 Sues "John Doe" for Trademark Infringement and Passing Off" »

September 9, 2013

USPTO Seeking Nominations for the Trademark Public Advisory Committee

Washington, D.C. -- The United States Patent and Trademark Office ("USPTO") is seeking nominations to fill upcoming vacancies for the Trademark Public Advisory Committee ("TPAC").  Nominations must be postmarked or electronically transmitted on or before September 30, 2013.  Submission details can be found in the Federal Register.

Currently, there are up to three vacancies on the TPAC that need to be filled.  Each committee has nine voting members who are appointed by, and serve at the pleasure of, the Secretary of Commerce.  Each member serves a three-year term.

"The Committee's input is an essential component to our continuing efforts to support American innovation, support job creation and make U.S. businesses more competitive in the global economy," said Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO Teresa Stanek Rea.

Along with the USPTO's other public advisory committees, TPAC was created to advise the USPTO Director on the management of trademark operations, including goals, performance, budget, and user fees.

For more information contact, John W. Cabeca, Senior Advisor, Office of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, by electronic mail at; by facsimile at (571) 273-0464; or by mail via Post Office Box 1450, Alexandria, Virginia, 22313-1450.

Practice Tip: The Public Advisory Committees for the USPTO were created by statute in the American Inventors Protection Act of 1999 to advise the Under Secretary of Commerce for Intellectual Property and Director of the USPTO on the management of the patent and the trademark operations.  The Advisory Committees consist of citizens of the United States chosen to represent the interests of the diverse users of the USPTO.  The Advisory Committees review the policies, goals, performance, budget and user fees of the patent and trademark operations, respectively, and advise the Director on these matters.  Appointments to the Advisory Committee are made by the Secretary of Commerce.

September 6, 2013

Texas Roadhouse Sues Multiple Restaurants Operating as "Texas Corral" or "Amarillo Roadhouse"

Grand Rapids, Michigan -- Trademark lawyers for Texas Roadhouse, Inc. and Texas Roadhouse Delaware LLC, both of Louisville, Kentucky (collectively, "Texas logo.jpgRoadhouse") sued for trademark infringement in the Western District of Michigan alleging that the Defendants, including those doing business as multiple Texas Corral restaurants located in Indiana (collectively "Texas Corral"), as well as one Amarillo Roadhouse restaurant, also located in Indiana, infringed the service mark TEXAS ROADHOUSE, Trademark Registration Nos. 1,833,533; 2,231,309; and 2,250,966, which have been registered by the U.S. Trademark Office.

Texas Roadhouse operates a Texas-themed restaurant chain.  The first Texas Roadhouse restaurant opened in Clarksville, Indiana in 1993.  As of March 2013, there were 397 Texas Roadhouse restaurants in 47 states and three countries. 

Texas Roadhouse contends that each of the restaurants is required to comply with strict exterior and interior design requirements so that the look and feel is substantially identical across all Texas Roadhouse locations.  It lists three U.S. Service Mark Registrations that include the mark "Texas Roadhouse" and asserts that each of them is incontestable.  Texas Roadhouse also claims ownership of various unregistered marks that include the word "Texas" and "Roadhouse" as well as copyright protection, including a U.S. Copyright registration, of its marquee.  Finally, Texas Roadhouse claims intellectual-property rights in the trade dress of its restaurants, including the look of the exterior design of the building, the interior décor, the music and the menu.

TexasCorralLogo.jpgTexas Corral, against which Texas Roadhouse filed this complaint, also operates casual, western-themed, family restaurants. It owns and operates nine restaurant locations doing business under the name "Texas Corral."  A total of ten locations are at issue in this lawsuit.  Six Indiana cities have "Texas Corral" restaurants: Highland, Merrillville, Portage, Michigan City, Martinsville and Shelbyville.  Texas Corral also purportedly owns and operates a location that does business as "Amarillo Roadhouse" in Indiana, which is also at issue in this trademark-infringement lawsuit.  In addition, three other Texas Corral restaurants have been listed in the complaint: two in Michigan and one in Illinois.  

Also listed in the complaint are Paul Switzer, asserted to be the franchisor/licensor of Texas Corral restaurants and Victor Spina, asserted to be a franchisee/licensee.  "John Doe Corp.," a fictitious name intended to represent entities or individuals whose actual identity is not currently known to Texas Roadhouse, is also listed as a Defendant.

AmarilloRoadhouseLogo.gifIn the complaint, trademark attorneys for Texas Roadhouse assert that Texas Corral and Amarillo Roadhouse routinely use trade dress, trademarks, service marks, trade names, designs or logos that are confusingly similar to or copies of intellectual property owned by Texas Roadhouse.  This purportedly infringing use is asserted to be visible in signage, print and electronic promotional materials, menus, décor, building design and websites.

Texas Roadhouse's complaint against Texas Corral and Amarillo Roadhouse lists the following:

·         Count I: Trade Dress Infringement

·         Count II: Federal Trademark Infringement

·         Count III: Trademark Infringement Under Mich. Comp. Laws § 429.42

·         Count IV: Trademark Infringement Under Ind. Code § 24-2-1-13

·         Count V: Trademark Infringement Under Common Law

·         Count VI: Copyright Infringement Under 17 U.S.C. § 101 et seq.

·         Count VII: Unfair Competition Under Michigan and Indiana Common Law

Texas Roadhouse asks for a judgment that Texas Roadhouse owns enforceable rights in the Texas Roadhouse intellectual property and that all registrations for the Texas Roadhouse intellectual property are valid; a judgment that the Defendants have been and are directly or indirectly infringing the Texas Roadhouse intellectual property; a judgment that the Defendants have been and are engaging in unfair competition by their unauthorized use of the Texas Roadhouse intellectual property; a judgment that Defendants acted deliberately, willfully, intentionally or with malicious intent; an injunction against Defendants prohibiting infringement; damages, including treble damages; a judgment that this case is exceptional and that the Defendants be ordered to pay all of Texas Roadhouse's attorney fees associated with this action pursuant to 15 U.S.C. § 1117 and 17 U.S.C. § 505; and a judgment that the defendants be ordered to pay all costs and expenses incurred by Texas Roadhouse in this action.

Practice Tip:

The U.S. Supreme Court has addressed the requirements for trade dress protection in a similar context.  Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).  At issue in Two Pesos was similar restaurant décor.  Taco Cabana had sued rival Two Pesos for copying the look of its restaurant, described as "a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals.  The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors.  The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes.  Bright awnings and umbrellas continue the theme."  The lawsuit alleged that Two Pesos had imitated this scheme and had thereby infringed on Taco Cabana's trade dress.  Among the issues considered was whether trade dress which was inherently distinctive must also be shown to have secondary meaning to be granted protection under the Lanham Act.  The Supreme Court held that trade dress which is inherently distinctive is protectable under § 43(a) of the Lanham Act without a showing that it has acquired secondary meaning, since such trade dress itself is capable of identifying products or services as coming from a specific source.

Also at issue in this case, among other matters, will be the eligibility of the words "Texas" and "Roadhouse" for protection under federal and Indiana intellectual-property laws.  Under the Lanham Act, a federal law, the holder of a mark may ask the United States Patent and Trademark Office to register the mark on the principal register.  15 U.S.C.A. § 1051, et seq.  Marks that are "primarily descriptive" and "primarily geographically descriptive" of the goods or services with which they are associated are not eligible for registration on the principal register unless they have "become distinctive of the applicant's goods in commerce."  15 U.S.C.A. § 1052(e), (f).  Thus, registration of a descriptive mark on the principal register requires a showing of secondary meaning.

Although the Lanham Act protects both registered and unregistered marks, registration is desirable because it constitutes prima facie evidence of the mark's validity.  See 15 U.S.C.A. §§ 1057(b), 1115(a).  Thus, federal registration of a mark "'entitles the plaintiff to a presumption that its registered trademark is not merely descriptive or generic, or, if merely descriptive, is accorded secondary meaning.'"  The plaintiff bears the burden, however, of establishing that an unregistered mark is entitled to protection.

The Indiana Trademark Act is similar, and in some respects identical, to the Lanham Act. Although Indiana's body of trademark law is relatively undeveloped, the General Assembly has specified that the Indiana Trademark Act "is intended to provide a system of state trademark registration and protection that is consistent with the federal system of trademark registration and protection under the Trademark Act of 1946."  Ind. Code Ann. § 24-2-1-0.5. Moreover, "[a] judicial or an administrative interpretation of a provision of the federal Trademark Act may be considered as persuasive authority in construing a provision of the Indiana Trademark Act.

The Indiana Trademark Act's definitions of "trademark" and "service mark" track the Lanham Act's definitions of those terms nearly verbatim.  See I.C. § 24-2-1-2(8), (9). Like the Lanham Act, the Indiana Trademark Act does not adversely affect common-law trademark rights.  See I.C. § 24-2-1-15.  Registration of a trademark or service mark with the office of the Indiana Secretary of State provides a registrant with a remedy for the infringement thereof under the Indiana Trademark Act.  I.C. § 24-2-1-14(a).  Like the Lanham Act, the Indiana Trademark Act prohibits the registration of marks that are "primarily geographically descriptive or deceptively geographically misdescriptive of the goods or services[.]"  I.C. § 24-2-1-3.  This provision does not, however, prevent the registration of a mark that is used in Indiana by the applicant and has become distinctive of the applicant's goods or services.  In other words, a geographically descriptive mark may be registered under the Indiana Trademark Act if it has acquired secondary meaning.

Continue reading "Texas Roadhouse Sues Multiple Restaurants Operating as "Texas Corral" or "Amarillo Roadhouse"" »

September 5, 2013

Common Themes Between Elton John's "Nikita" and Hobbs' "Natasha" Insufficient to Support Claim of Copyright Infringement

Chicago, Illinois - The United States Court of Appeals for the Seventh Circuit has affirmed the judgment of the Northern District of Illinois, Eastern Division.   Copyright lawyers for Guy Hobbs of the United Kingdom had sued alleging copyright infringement by Elton John and Bernie Taupin of the United Kingdom of Hobbs' copyrighted work "Natasha" which has been registered in the United Kingdom.  The district court dismissed the complaint and the appellate court affirmed.

While working on a Russian cruise ship, Hobbs composed a song entitled "Natasha" that was inspired by a brief love affair he had with a Russian waitress.  He tried to publish his song, but was unsuccessful.  A few years later, John and Taupin released a song entitled "Nikita" through a publishing company to which Hobbs had sent a copy of "Natasha."  Believing that "Nikita" was based upon "Natasha," Hobbs eventually demanded compensation from John and Taupin.  He ultimately filed suit asserting a copyright infringement claim and two related state-law claims.  The Defendants asked the district court to dismiss Hobbs' complaint for failure to state a claim. 

In supporting his claim for copyright infringement in the district court, Hobbs asserted both traditional copyright infringement of individual elements of "Natasha" and also copyright infringement based upon "Natasha" as a combination of similar elements that would be unprotectable individually. 

After considering Hobbs' first argument of copyright infringement, the district court concluded that the elements identified were not entitled to copyright protection when considered alone.  

Hobbs' second legal theory to support a claim of copyright infringement was that the unique selection, arrangement, and combination of individually unprotectable elements in a song could be entitled to copyright protection.  The district court also rejected Hobbs' "unique combination" argument because it interpreted the law, as stated in Peters v. West, 692 F.3d 629, 632 (7th Cir. 2012), to preclude Hobbs' copyright infringement claim based upon a combination of similar elements that are unprotectable individually.  Despite rejecting Hobbs' "unique combination" argument in this set of circumstances as an impermissible application of copyright law, the district court nevertheless considered the facts under this theory. 

In defending his "unique combination" theory, Hobbs identified a number of allegedly similar elements between the two songs.  He argued that his selection and combination of those elements in "Natasha" constituted a unique expression entitled to copyright protection, and that the Defendants' similar use of those elements in "Nikita" supported a claim for copyright infringement.  Hobbs identified the following allegedly similar elements that are found in both songs:

·         A theme of impossible love between a Western man and a Communist woman during the Cold War;

·         References to events that never happened;

·         Descriptions of the beloved's light eyes;

·         References to written correspondence to the beloved;

·         Repetition of the beloved's name, the word "never," the phrase "to hold you," the phrase "I need you," and some form of the phrase "you will never know"; and

·         A title which is a one-word, phonetically-similar title consisting of a three-syllable female Russian name, both beginning with the letter "N" and ending with the letter "A."

The district court held that the similar elements, even when considered under the "unique combination" theory, still could not support a claim for copyright infringement.  It also concluded that the Copyright Act preempted Hobbs' state-law claims.

The sole issue for appeal was Hobbs' "unique combination" theory.  The Seventh Circuit held that Hobbs failed to state a claim for copyright infringement because, even when the allegedly similar elements between the songs were considered in combination, "Natasha" and "Nikita" did not share enough unique features to give rise to a breach of the duty not to copy another's work.  It held that, although both songs contained the idea of an impossible love affair due to a conflict, each song expressed this general idea differently.  That is, "Natasha" and "Nikita" tell different stories about impossible romances during the Cold War.  Thus, as a matter of law, they were not substantially similar and the dismissal of Hobbs' claim for copyright infringement was affirmed.

Practice Tip #1:

The Seventh Circuit declined to decide whether Hobbs was correct when he argued that a unique selection, arrangement, and combination of individually unprotectable elements in a song can support a copyright infringement claim.   Instead, careful review of both songs' lyrics reveals that Hobbs' first four allegedly similar elements are expressed differently in "Natasha" and "Nikita."  The remaining similar elements were standard fare in popular love songs and, thus, could not serve to serve as evidence that infringement had occurred.

Practice Tip #2:

The Copyright Act does not protect general ideas, but only the particular expression of an idea.  Additionally, even at the level of particular expression, the Copyright Act does not protect incidents, characters or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic.

However, there is a wealth of authority recognizing that, in certain situations, a unique arrangement of individually unprotectable elements can form an original expression entitled to copyright protection. See Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 362 (1991) ("The question that remains is whether [the plaintiff] selected, coordinated, or arranged these uncopyrightable facts in an original way."); JCW Invs., Inc. v. Novelty, Inc., 482 F.3d 910, 917 (7th Cir. 2007) ("[T]he very combination of these [unprotectable] elements as well as the expression that is [the work itself] are creative."); Bucklew v. Hawkins, Ash, Baptie & Co., 329 F.3d 923, 929 (7th Cir. 2003) ("[I]t is the combination of [unprotectable] elements, or particular novel twists given to them, that supply the minimal originality required for copyright protection."); Roulo v. Russ Berrie & Co., 886 F.2d 931, 939 (7th Cir. 1989) ("While it is true that these elements are not individually capable of protection, just as individual words do not deserve copyright protection, it is the unique combination of these common elements which form the copyrighted material."); see also Stava v. Lowry, 323 F.3d 805, 811 (9th Cir. 2003) ("It is true, of course, that a combination of unprotectable elements may qualify for copyright protection."); Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1003-04 (2d Cir. 1995) ("As the Supreme Court's decision in [Feist] makes clear, a work may be copyrightable even though it is entirely a compilation of unprotectible elements.").

Practice Tip #3:

Although Hobbs brought his action twenty-seven years after "Nikita" was authored and eleven years after Hobbs allegedly first encountered "Nikita," the Defendants did not raise the three-year statute of limitations, see 17 U.S.C. § 507(b), as a defense in their motion to dismiss.

Continue reading "Common Themes Between Elton John's "Nikita" and Hobbs' "Natasha" Insufficient to Support Claim of Copyright Infringement" »

September 4, 2013

146 Trademark Registrations Issued to Indiana Companies in August 2013

The U.S. Trademark Office issued 146 trademark registrations to persons and businesses in Indiana in August 2013 based on applications filed by Indiana Trademark Attorneys:

Serial Number

Reg. Number


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September 3, 2013

Patent Office Issues 146 Patents To Indiana Citizens in August 2013

The U.S. Patent Office issued the following 146 patent registrations to persons and businesses in Indiana in August 2013 based on applications filed by Indiana Patent Attorneys:





Electrical receptacle bracket for an electrical distribution harness


Cabinet with sliding door




Electric machine cooling system and method


Low temperature plasma probe and methods of use thereof


Detection of solar events


Canola cultivar G152964H


Canola cultivar G152950H


Generation of plants with altered protein, fiber, or oil content


Rho kinase inhibitors for treatment of mastocytosis and acute myeloid leukemia


Solid-state hydrogen storage media and catalytic hydrogen recharging thereof

Continue reading "Patent Office Issues 146 Patents To Indiana Citizens in August 2013" »

August 30, 2013

NIBCO Sues for Declaration of Non-Infringement of Valvulas Arco Patents

South Bend, Indiana - NIBCO, Inc. of Elkhart, Indiana has sued Valvulas Arco, S.A. ("Arco") of Valencia, Spain in the Northern District of Indiana asking for a declaratory judgment that it has not violated Arco's patents, U.S. Design Patent Nos. 429,518; 429,519; 429,520; 438,595; and 479,307.

NIBCO-logo.bmpArco and NIBCO both manufacture shut-off valves.  From about 2002 to 2008, Arco manufactured and sold to NIBCO shut-off valves of the type involved in this dispute.  Around 2008, NIBCO discontinued purchasing valves from Arco.  Currently, NIBCO manufactures shut-off valves for its own use and for sale.

In letters dated April 22, 2013 and August 16, 2013, Arco purportedly asserted that NIBCO infringes the Arco valves (the "patents-in-suit").  As a result of Arco's claims of infringement in those letters, NIBCO asserts that there is now an actual controversy between it and Arco regarding the alleged infringement and validity of the patents-in-suit; NIBCO seeks a resolution under the Declaratory Judgment Act.

NIBCO states that Arco has never fixed upon its shut-off valves notice of, nor was there ever any mention of any of, any of the patents-in-suit.  It further claims that most, if not all, of the features shown in the claims are functional.  To the extent that any purely ornamental features do exist, it contends that those ornamental features of NIBCO's products would not appear substantially similar to an ordinary observer.  Consequently, NIBCO asserts that its products do not infringe, either literally or under the doctrine of equivalents.  Finally, NIBCO denies inducing others to infringe any of the patents-in-suit.

NIBCO asks that this be found to be an exceptional case and asks that attorney's fees be awarded pursuant to such a finding.  In its complaint, patent attorneys for NIBCO ask the court for:

  • Count I: Declaratory Judgment of Non-Infringement
  • Count II: Declaratory Judgment of Invalidity of the Patents-In-Suit

Practice Tip: In MedImmune v. Genentech, 549 U.S. 118 (2007), the U.S. Supreme Court revised the Federal Circuit's test for ripeness under the Declaratory Judgment Act, which had required a reasonable apprehension of suit in order to establish jurisdiction.  The Court broadened the scope of declaratory judgment jurisdiction, holding that the totality of the circumstances should be evaluated in determining the existence of "a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant relief." 

In this case, it is unclear whether the complaint adequately alleges, under the totality of the circumstances, a controversy of sufficient immediacy to warrant jurisdiction under the Declaratory Judgment Act. 

Continue reading "NIBCO Sues for Declaration of Non-Infringement of Valvulas Arco Patents" »

August 29, 2013

Raymond T. Chen Confirmed to U.S. Court of Appeals for the Federal Circuit

Washington, D.C. -- Raymond T. Chen has been confirmed to the United States Court of Appeals for the Federal Circuit.

Judge Chen was nominated to the Federal Circuit by President Barack Obama onThumbnail image for ray-chen-USPTO-official.jpg February 7, 2013.  On August 1, 2013, the United States Senate voted 97-0 to confirm his nomination.  Judge Chen assumed the duties of his office on August 5, 2013.

Prior to his confirmation, Judge Chen served as Deputy General Counsel for Intellectual Property Law and Solicitor at the United States Patent and Trademark Office from 2008 to 2013.  He was an Assistant Solicitor in that office from 1998 to 2008.  From 1996 to 1998, Judge Chen was a Technical Assistant at the United States Court of Appeals for the Federal Circuit.  Before joining the court staff, Judge Chen was an Associate with Knobbe, Martens, Olson & Bear from 1994 to 1996.  Before entering law school, Judge Chen worked as a scientist at Hecker and Harriman from 1989 to 1991.

Judge Chen has received numerous awards for his service, including: the Gold Medal Award, U.S. Department of Commerce (2011); the Bronze Medal Award, U.S. Department of Commerce (2005); and Attorney of the Year, Office of the Solicitor (2002).  Judge Chen received a J.D. from the New York University School of Law in 1994 and a B.S. from University of California, Los Angeles in 1990.

Congratulations came from many elected officials.  Congressman Chris Van Hollen commended Judge Chen, saying "His swift confirmation speaks to the honorable and successful contributions he has made to the fields of science and the law and to his commitment to public service."

Senator Mazie K. Hirono praised the nomination, "Congratulations to Ray Chen on his confirmation.  It was a privilege to interact with Mr. Chen during the confirmation process and learn more about his story. The son of Taiwanese immigrants, Mr. Chen was trained as an engineer before embarking on a distinguished legal career.  Mr. Chen will make history as the first Taiwanese American to serve on a federal appellate court, and I am confident he will serve honorably."

Applauding the decision to confirm Judge Chen, who "brings a wealth of experience from his distinguished legal career" Congresswoman Judy Chu stated, "I am thrilled that the Senate unanimously confirmed Raymond Chen to the U.S. Court of Appeals for the Federal Circuit today."

Congressman Mike Honda also offered his congratulations, praising Judge Chen as "a highly qualified lawyer, an exemplary public servant, and a shining figure within the Asian American and Pacific Islander legal community."


August 28, 2013

Another BitTorrent Defendant Ordered to Pay $20,000 in Default Judgment

Indianapolis, Indiana - The United States District Court for the Southern District of Indiana has granted a motion by Malibu Media of Los Angeles, California for default judgment against Kenny Griffith for infringement of the copyrighted work "Slow Motion" which has been registered by the U.S. Copyright Office.

In its complaint, Malibu Media alleged that Griffith and others directly and contributorily infringed its copyrighted work when they downloaded and disseminated without authorization, all or a portion of a movie owned by Malibu Media titled "Slow Motion" using BitTorrent, a peer-to-peer file sharing protocol.  The initial complaint was served upon eight defendants but was later severed.  Discussed in this opinion are the allegations, findings and judgments against Griffith only.

Malibu Media served Griffith with a summons and complaint on January 5, 2013.  He did not respond.  On April 1, 2013, default was entered as to Griffith by Southern District of Indiana Judge William T. Lawrence.  By virtue of this entry of default, it was established as a factual matter that Griffith had uploaded and downloaded all or a portion of the copyrighted work without authorization, and had also enabled countless unknown others to obtain the work in the process.

In the current default-judgment opinion, the court addressed requests by copyright attorneys for Malibu Media for two separate injunctions, for damages, for attorney's fees and for costs.

The first injunction sought injunctive relief pursuant to 17 U.S.C. §§ 502 and 503.  The court noted that, under § 503(b), a court may order the destruction of all copies made or used in violation of the copyright owner's exclusive rights.  Given the nature of the infringement that occurred in this case -- participating in a "swarm" and downloading and uploading copyrighted work -- the court found that this injunction was particularly appropriate.

The second injunction sought asked the court to prohibit Griffith "from directly, contributorily or indirectly infringing [Malibu Media's] rights under federal or state law in the Work, including, without limitation, by using the internet, BitTorrent or any other online media distribution system to reproduce (e.g., download) or distribute the Works, or to make the Work available for distribution to the public, except pursuant to a lawful license or with the express authority of [Malibu Media]."  The court held that such an injunction was simply a mandate that Griffith follow copyright laws and that the injunction was therefore unnecessary.

The court also denied Malibu Media's request for attorney's fees and costs, noting that the fees submitted seemed to reflect legal work done not only in the furtherance of the lawsuit against Griffith, but also seemed to pertain to other related lawsuits involving the previously joined defendants.  As a result of these ambiguities, the court denied Malibu Media's request for costs and attorney's fees but indicated that it would be willing to entertain such motions -- for attorney's fees incurred as to Griffith only -- upon the entry of final judgments as to all defendants in related cases.

Finally, Malibu Media sought statutory damages in the amount of $20,000.  The court cited "Congress's recognition of the 'disturbing trend' of internet piracy" and found that amount to be just under the circumstances.

Practice Tip:

Deciding to simply ignore a complaint, as Kenny Griffith apparently did, can be a costly error.  Failing to present the defendant's version of the facts and arguments results in the court considering only the plaintiff's side of the story.  Here, because the defendant chose to leave the complaint unanswered, the well-pled allegations of the plaintiff relating to liability were taken as true.

After the entry of default judgment, the court then conducted an inquiry to ascertain the amount of damages with "reasonable certainty."  Again, in such circumstances, it serves a defendant well to plead his case -- to present the court with reasons that the plaintiff should not get 100% of what he requests.

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.  The determination of the exact amount is left to the discretion of the court.  In this case, Malibu Media asked the court for $20,000 and the court, having no arguments from the defendant to suggest that this was excessive, granted the entire amount.

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

Continue reading "Another BitTorrent Defendant Ordered to Pay $20,000 in Default Judgment" »

August 26, 2013

Eli Lilly Defending Method-of-Use Patent for Blockbuster Drug

Indianapolis, Indiana - Patent lawyers for Eli Lilly and Company ("Lilly") of Indianapolis, Indiana are in trial again this week in the Southern District of Indiana pursuing patent-infringement allegations against five generic-drug challengers, including AAP Pharmaceuticals of Schaumberg, Illinois and Pliva Hrvatksa of Croatia.  At issue is Lilly's patent on the use of Alimta in conjunction with specific vitamins; patents for the two Alimta treatments, both with and without the supplemental therapy, have been issued by the U.S. Patent Office. 

Lilly sells the drug Alimta to treat various types of lung cancer, Thumbnail image for logo.pngincluding mesothelioma.  However, certain side effects were troublesome, including treatment-related hematologic and gastrointestinal toxicity.  Deaths among some patients were attributed to treatment with Alimta.  In response to this concern, Lilly took the unusual step of mandating supplementation of the Alimta protocol with two vitamins, folic acid and vitamin B12.  The patentability of that idea is the focus of a patent challenge by five makers of generic drugs.

Patent-infringement litigation between brand-name manufacturers and generic-drug makers is common.  In a typical lawsuit, a company which wishes to sell a generic version of a brand-name drug, usually a widely used drug, will try to invalidate the patent on the drug, in the hopes that it could then offer the same drug in generic form.

This litigation is different from traditional patent litigation.  The original patent on Alimta, administered as a stand-alone treatment, protects only Alimta's active ingredient.  That patent will expire in 2017.  However, the focus of the current litigation is on the combination treatment which involves both Alimta and the vitamin regimen.  The patent on the method of administration, if upheld, would expire in 2022.

The generic challengers contend in part that the patent on the combined therapy is invalid, arguing that someone knowledgeable about both nutrition and medicine could have easily concluded that supplementation with B12 and folate might alleviate certain side effects of Alimta.

Lilly, in contrast, argues that the vitamin regimen was not only counterintuitive when it was proposed, it was called "crazy" a leading cancer doctor before testing showed its benefits.

The case, which is before Judge Tanya Walton Pratt, began last Monday and is expected to continue another week.

Practice Tip:

Lilly is facing a significant patent cliff.  Its patent for a former top product, the antipsychotic Zyprexa - which once generated $5 billion in annual revenues - expired in 2011.  Its current top-selling drug, the antidepressant Cymbalta, will lose patent protection this year.  The patent on blockbuster Evista, a breast cancer drug, will expire in early 2014. 

Alimta is currently Lilly's second-best-selling drug.  It generated $2.6 billion in sales last year, or about 11 percent of total Lilly's revenue.  Since it was launched in 2004, Alimta has generated $12 billion in total sales for Lilly through 2012.

Under patent law, a court can deem a patent invalid if its claims are "obvious" and anticipated by previous research.  In this case, the court will weigh the merits of the separate "method-of-use" patent on the administration of Alimta with B12 and folic acid.

If successful in defending this patent, intellectual-property law will grant market exclusivity to Lilly until 2022, allowing it to exclude generic manufacturers and, thus, to charge the higher brand-name price for Alimta therapy.  If the patent is not upheld in this litigation, Lilly will lose the five additional years of exclusivity that the second patent would have afforded.

Continue reading "Eli Lilly Defending Method-of-Use Patent for Blockbuster Drug " »