Indiana Intellectual Property Law News

March 29, 2017

Indiana Copyright Litigation: Seventh Circuit Asked to Address Discovery Rule in Context of Copyright Infringement

Fort Wayne, Indiana – The Northern District of Indiana granted a motion for interlocutory appeal to the Seventh Circuit.

This Indiana copyright lawsuit involves Plaintiff Design Basics, LLC of Omaha, Nebraska, a company which “creates, markets, publishes and licenses the use of architectural works and technical drawings.” Defendant is Lancia Homes, Inc., a Fort Wayne company that builds homes.

During the course of litigation, Plaintiff stated that in 2013 it discovered that Defendant had infringed various copyrighted architectural works. A search of a website archive further revealed that “Defendant had actually been advertising infringing versions of the Plaintiff’s homes since May 18, 2006.”

In February 2016, Design Basics sued Lancia Homes alleging infringement of copyrighted architectural designs. It also named several entities under which Lancia also does business, including Lancia Construction, Springmill Development, Lancia Real Estate, Lancia Homes, Springmill Wood Development, and Waterford Enterprises,

Copyright litigators for Design Basics argued that its claims were not time barred under the Copyright Act, which states that “[n]o civil action shall be maintained under [its] provisions . . . unless it is commenced within three years after the claim accrued.” It argued that the traditional discovery rule, which provides that a claim accrues when the injured party discovers or should have discovered the allegedly infringing act, should be applied. Citing dicta in the Supreme Court’s decision in Petrella v. Metro-Goldwyn-Mayer, Inc., Defendant Lancia Homes argued that a claim for copyright infringement accrues at the time of the infringing act.

The district court agreed with Design Basics and applied the traditional discovery rule. Lancia Homes requested that the court certify the question for interlocutory appeal.

Under 28 U.S.C. § 1292(b), a trial court may certify an order for appeal if it “involves a controlling question of law, as to which there is a substantial ground for difference of opinion and that an immediate appeal from the order may materially advance the ultimate determination of the litigation.” The court found that these conditions had been met and granted Plaintiff’s motion to certify the issue for interlocutory appeal.

Practice Tip: Design Basics argued against an interlocutory appeal. In granting Lancia Homes’ request for interlocutory appeal, the court noted that Design Basics has 24 similar lawsuits pending in the Northern District of Indiana, stating that it “would be more efficient for the Court of Appeals to consider and decide what, if any, impact Petrella has on the statute of limitations for infringement claims within this Circuit before many of the Plaintiff’s cases within this District are to proceed to trial.”

March 27, 2017

Indiana Patent Litigation: Parties Return to Court Over Allegations of Ongoing Infringement of Patent for Foldable Tricycle

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Newton Enterprises Ltd. of Kowloon, Hong Kong filed a lawsuit in the Southern District of Indiana against Defendant Singleton Trading Inc. d/b/a Elama d/b/a Blue Spotlight of Brooklyn, New York asserting patent infringement and breach of contract.

These claims follow earlier litigation against Singleton initiated by Newton in June 2016. That lawsuit, also filed in Indiana, alleged that Singleton Trading had infringed and/or induced others to infringe U.S. Patent No. 7,568,720 (the “‘720 patent”) for a “Wheeled Vehicle” with its “Zoom Bike” product.

Newton states that the 2016 action was dismissed without prejudice pursuant to a settlement agreement under which Singleton agreed to compensate Newton for its claims of past infringement and “permanently cease making, using, offering to sell, or selling the Zoom Bike” or any other product that infringed the ‘720 patent. Under the agreement, Singleton was granted a limited license to sell its remaining inventory.

Newton now returns to the court alleging that Singleton has breached the settlement agreement by selling units of the Zoom Bike exceeding the scope of the limited license. Newton further contends that this conduct constitutes willful infringement of the ‘720 patent.

This second complaint, filed by an Indiana patent lawyer, lists two counts:

Count I: Infringement of ‘720 Patent
Count II: Breach of Settlement Agreement

Newton asks the court for a declaration of willful patent infringement; damages, including a trebling of those damages; costs and attorneys’ fees; and injunctive relief.

March 24, 2017

Indiana Trademark Litigation: Bosch Accuses Indiana Man of Counterfeiting

By Overhauser Law Offices, LLC

Hammond, Indiana – Robert Bosch, GmbH of Stuttgart, Germany and Robert Bosch, LLC of Broadview, Illinois sued in the Northern District of Indiana alleging trademark counterfeiting, trademark infringement, false advertising and unfair competition.

At issue in this Indiana lawsuit are the following trademarks, which have been registered with the U.S. Patent and Trademark Office:

MARK

REG. NO

REG. DATE

BOSCH

1,637,401

Mar. 12, 1991

633,563

Aug. 28, 1956

Defendants in the litigation are Joshua Rayner of Portage, Indiana as well as ten unnamed “Doe” Defendants. They are accused of “advertising, offering for sale and sale of counterfeit automotive parts” that bear unauthorized copies of Bosch trademarks.
Indiana trademark attorneys for Plaintiffs list the following claims in this federal lawsuit:

Count I: Trademark Counterfeiting in Violation of Sections 32 and 34(d)(1)(B) of the Lanham Act
Count II: Trademark Infringement in Violation of Section 32 of the Lanham Act
Count III: Unfair Competition in Violation of Section 43(a) of the Lanham Act
Count IV: False Advertising in Violation of Section 43(a) of the Lanham Act

Plaintiffs seek injunctive and monetary relief, including statutory damages, treble damages and attorneys’ fees.

March 23, 2017

Copyright Law: Registering a Work with the Copyright Office, Part II

By Overhauser Law Offices, LLC

Who Can Register a Work with the U.S. Copyright Office?

Can foreigners register their works in the United States?

Any work that is protected by U.S. copyright law can be registered. This includes many works of foreign origin. All works that are unpublished, regardless of the nationality of the author, are protected in the United States. Works that are first published in the United States or in a country with which we have a copyright treaty or that are created by a citizen or domiciliary of a country with which we have a copyright treaty are also protected and may therefore be registered with the U.S. Copyright Office. See Circular 38a, International Copyright Relations of the United States, for the status of specific countries, and Circular 38b, Copyright Restoration Under the URAA

March 22, 2017

Patent Law: Federal Circuit Rules on Two Eli Lilly Patent Cases

By Overhauser Law Offices, LLC

Washington, D.C. — The Federal Circuit ruled on two patent infringement decisions, Los Angeles Biomedical Research Institute v. Eli Lilly & Co. and Eli Lilly & Co. v. Los Angeles Biomedical Research Institute, that involve Indianapolis-based Eli Lilly and Company.

These companion cases pertain to a pharmaceutical patent, U.S. Patent No. 8,133,903 (“the ’903 patent”), owned by Los Angeles Biomedical. Also at issue is one prior art reference, International Patent Application No. WO 01/80860, published Nov. 1, 2001, common to both lawsuits.

Los Angeles Biomedical Research Institute v. Eli Lilly & Co. arose as an inter partes review of a decision by the Patent Trial and Appeal Board holding all claims of the ‘903 patent to be obvious. The Federal Circuit reviewed claims in a provisional application relating to a study involving rats in combination with a method in an uncited reference to convert those results to apply to humans. It held that the rat study and uncited conversion method did not support the claimed dosage for humans. It further concluded that claims directed to an underlying condition should not be construed broadly to treat symptoms of that condition, holding that the Board had not adopted the broadest reasonable interpretation of the claims but instead had adopted an overbroad interpretation. The panel remanding, stating:

The question remains whether a person of skill in the art would have had a reason to combine [the three cited references relating to the medical condition] and would have had a reasonable expectation of success from doing so. Because the Board’s obviousness analysis was based on an erroneous construction of the claim language and an overly broad interpretation of [one of the references], and because the Board did not address the record evidence summarized above, we remand for the Board to make new findings as to whether there was an apparent reason to combine the prior art references and whether that combination would have rendered [the treatment] obvious.

March 21, 2017

Copyright Law: Registering a Work with the Copyright Office

By Overhauser Law Offices, LLC

How do I register my copyright?

To register a work, submit a completed application form, and a nonreturnable copy or copies of the work to be registered to the U.S. Copyright Office. See Circular 1, Copyright Basics, section “Registration Procedures., and Circular 4, Copyright Office Fees”.

Where can I get application forms?

See SL-35.

Can I file online?

Yes. The Copyright Office offers online registration through its electronic Copyright Office (eCO). See SL-35.
What is the registration fee?

See Circular 4, Copyright Fees.

Do I have to send in my work? Do I get it back?

You must send the required copy or copies of the work to be registered. Your copies will not be returned. If you register online using eCO eService, you may attach an electronic copy of your deposit. However, even if you register online, if the Library of Congress requires a hard-copy deposit of your work, you must send what the Library defines as the “best edition” of your work. For further information, see Circular 7b, Best Edition of Published Copyrighted Works for the Collection of the Library of Congress, and Circular 7d, Mandatory Deposit of Copies or Phonorecords for the Library of Congress. Upon their deposit in the Copyright Office, under sections 407 and 408 of the copyright law, all copies and identifying material, including those deposited in connection with claims that have been refused registration, are the property of the U.S. government.

Will my deposit be damaged by security measures in place on Capitol Hill?

To avoid damage to your hard-copy deposit caused by necessary security measures, package the following items in boxes rather than envelopes for mailing to the Copyright Office:

electronic media such as audiocassettes, videocassettes, CDs, and DVDs
microform
photographs
slick advertisements, color photocopies, and other print items

May I register more than one work on the same application? Where do I list the titles?

You may register unpublished works as a collection on one application with one title for the entire collection if certain conditions are met. It is not necessary to list the individual titles in your collection. Published works may only be registered as a collection if they were actually first published as a collection and if other requirements have been met. See Circular 1, Copyright Basics, section “Registration Procedures.”

Do I have to use my real name on the form? Can I use a stage name or a pen name?

There is no legal requirement that the author be identified by his or her real name on the application form. For further information, see FL 101, Pseudonyms. If filing under a fictitious name, check the “Pseudonymous” box when giving information about the authors.

Will my personal information be available to the public?

Yes. Please be aware that when you register your claim to a copyright in a work with the U.S. Copyright Office, you are making a public record. All the information you provide on your copyright registration is available to the public and will be available on the Internet.

How long does the registration process take, and when will I receive my certificate?

The time the Copyright Office requires to process an application varies, depending on the number of applications the Office is receiving and clearing at the time of submission and the extent of questions associated with the application. Current Processing Times

Can I submit my manuscript on a computer disk?

No. Floppy disks and other removal media such as Zip disks, except for CD-ROMs, are not acceptable. Therefore, the Copyright Office still generally requires a printed copy or audio recording of the work for deposit. However, if you register online using eCO eService, you may attach an electronic copy of your deposit. However, even if you register online, if the Library of Congress requires a hard-copy deposit of your work, you must send what the Library defines as the “best edition” of your work. For further information, see Circular 7b, Best Edition of Published Copyrighted Works for the Collection of the Library of Congress, and Circular 7d, Mandatory Deposit of Copies or Phonorecords for the Library of Congress.

March 17, 2017

Indiana Copyright Litigation: Nine New Doe Defendants Accused of Infringing Copyrighted Movie

By Overhauser Law Offices, LLC

Hammond, Indiana – ME2 Productions Inc. of Carson City, Nevada filed an additional lawsuit in the Northern District of Indiana alleging copyright infringement of the action thriller Mechanic: Resurrection.

The lawsuit lists nine anonymous “Doe” Defendants, accusing them of infringing the copyright of the movie, which has been registered with the U.S. Copyright Office under Registration No. PA-1-998-057. Plaintiff contends that the Doe Defendants illegally distributed a “screener copy” of the film via BitTorrent, a file-sharing protocol. Plaintiff further asserted that this was done “in a collective and interdependent manner with other Defendants via the Internet for the unlawful purpose of reproducing, exchanging, and distributing copyrighted material.”

The movie, which is the sequel to the 2011 action film Resurrection, stars Jason Statham, Jessica Alba and Tommy Lee Jones. Plaintiff contends that the Doe Defendants are Indiana residents, stating that it determined through the use of geolocation technology that each had an Indiana Internet Protocol address.

This litigation, filed by a copyright lawyer for ME2 Productions, lists a single count – copyright infringement – and asks the court to award injunctive relief, damages, costs and attorneys’ fees.

March 15, 2017

Indiana Patent Litigation: Two Elkhart Vendors of RV Equipment to Litigate Dispute Over Vehicle-Leveling Patents

By Overhauser Law Offices, LLC

South Bend, Indiana – Days Corporation (“Days”) of Elkhart, Indiana filed a complaint asking the Northern District of Indiana to resolve infringement claims relating to three patents.

The lawsuit was brought against Lippert Components, Inc. (“LCI”), also of Elkhart, Indiana. Both Days and LCI operate in the recreational vehicle (“RV”) industry. They offer competing systems designed to level a vehicle, for example, one that is situated on uneven terrain causing the vehicle to be oriented on an undesirable plane.

At issue in this Indiana litigation are three patents, U.S. Patent Nos. 6,584,385 (“the ‘385 patent”), 6,885,924 (“the ‘924 patent”) and 6,619,693 (“the ‘693 patent”). LCI claims intellectual property protection under the ‘385 patent and the ‘924 patent, while Days claims rights under the ‘693 patent.

Each party asserts that the other party is committing patent infringement. Days asks the court for a declaratory judgment of non-infringement and patent invalidity of the LCI patents. It also seeks a judgment that LCI has infringed the ‘693 patent. The complaint, filed by a patent litigator for Days, lists the following claims:

Count I: Declaratory Judgment of Non-Infringement by Days of the ‘385 Patent
Count II: Declaratory Judgment of Non-Infringement by Days of the ‘924 Patent
Count III: Declaratory Judgment of Invalidity of the ‘385 Patent
Count IV: Declaratory Judgment of Invalidity of the ‘924 Patent
Count V: Infringement by LCI of the ‘693 Patent

In addition to a declaratory judgment and a judgment of infringement, Days seeks damages, including a trebling of those damages pursuant to a finding of willful infringement, and injunctive relief.

March 13, 2017

Indiana Trademark Litigation: Indiana Winemaker Sues for Right to Continue Using “Generations” Trademark

By Overhauser Law Offices, LLC

New Albany, Indiana – Huber Orchards, Inc. of Borden, Indiana filed a trademark lawsuit in the Southern District of Indiana. Defendants in the litigation are C. Mondavi & Family (“CMF”) and C. Mondavi & Sons, Inc., both of St. Helena, California. Huber filed the lawsuit seeking a declaratory judgment that its mark “Huber Winery Generations Indiana Red Wine” does not infringe Defendants’ trademark.

Both Plaintiff and Defendants produce and offer wine products. In February 2017, CMF sent a cease and desist letter to the president of Huber stating that CMF owns a federally registered trademark for GENERATIONS for wine. This trademark has been registered by the U.S. Patent and Trademark Office as U.S. Reg. No. 2,236,517.

In the letter, sent to Huber by a trademark lawyer for Defendants, CMF asserts that Huber’s use of the word “Generations” in conjunction with the sale of wine violates the Lanham Act by infringing and diluting CMF’s trademark. The letter demanded that Huber cease all use of the trademark GENERATIONS in connection with its Huber Winery Generation Indiana Red blend wines. CMF further contended that Huber is liable for injunctive relief, damages, possible treble damages and attorneys’ fees.

Huber contends that it began selling its “Huber Winery Generations Indiana Red Wine” line locally in 1997, two years before CMF registered its trademark, and that it began selling the wine on the internet in 2004. It further asserts that its use of its “Huber Winery Generations” common law trademark does not infringe any trademark in which CMF has right because there is no likelihood of confusion. It asks the court to declare that Huber’s use of “Generations” and “Huber Winery Generations” do not infringe CMF’s GENERATIONS trademark.

March 10, 2017

Indiana Trademark Law: Court Rules for Winnebago on Trade Dress Claims

By Overhauser Law Offices, LLC

South Bend, Indiana – Judge Robert L. Miller, Jr. of the Northern District of Indiana dismissed claims concerning trade dress infringement.

In this Indiana trademark lawsuit, Forest River, Inc. of Elkhart, Indiana sued Winnebago Industries, Inc. of Forest City, Iowa and its subsidiary Winnebago of Indiana, LLC alleging trademark infringement, trade dress infringement, unfair competition, false designation of origin, and false and misleading representations.

Overhauser Law Offices, LLC filed a partial motion to dismiss with the court, arguing that Forest River had neither sufficiently identified the features that constituted the claimed trade dress nor provided any factual support for its assertion that such features were non-functional.

The court noted that “to survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678. The claim is deemed plausible if “the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Id.

In this litigation, such a showing required that Forest River define its trade dress. It must also plead sufficient facts to show that the claimed trade dress is nonfunctional, has acquired secondary meaning and that a likelihood of confusion exists between its trade dress and Winnebago’s trade dress.

The court agreed with Winnebago, concluding that Plaintiff had relied on “conclusory and meaningless” assertions in its pleadings. Consequently, it granted Winnebago’s motion and dismissed without prejudice Forest River’s claims concerning trade dress infringement under the Lanham Act, 15 U.S.C. §1125(a) as well as similar claims made under common law.

Overhauser Law Offices represented Winnebago in obtaining this successful order dismissing the trade dress claims.