Indiana Intellectual Property Law News

The US Trademark Office issued the following 152 trademark registrations to persons and businesses in Indiana in June, 2012 based on applications filed by Indiana Trademark attorneys: 

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Indiana patent attorneys obtained issuance of the following 121 patents from the US Patent Office to persons and business in Indiana in June, 2012.

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The US Trademark Office issued the following 194 trademark registrations to persons and businesses in Indiana in May, 2012, based on applications filed by Indiana Trademark Attorneys:

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Washington, D.C.: The Supreme Court has recently decided to hear a case that could reconcile two competing sections within The Copyright Act--section 602(a)(1) which prohibits the importation of a work without the authority of the owner and section 109(a) which allows copyrighted works to be sold without the copyright owner's permission--which will determine the applicability of foreign copyright owners' control of the sale and distribution of their work.

On April 16, 2012 the Supreme Court Granted cert in the case of Kirtsaeng v. John Wiley & Sons in an attempt to resolve the issue of the copyright protections of gray market goods. Reuters.com reports that Kirtsaeng, a graduate student at The University of Southern California, is from Thailand and had his family purchase textbooks cheaply overseas and then shipped to him. He then resold them on eBay for a profit, in order to make money for school. According to Kirtsaeng's petition for cert, he claims to have researched the Copyright Law including the Doctrine of First Sale, section 109(a), and felt that it was applicable to him. However, John Wiley & Sons, whose Asian subsidiary produced some of the books sold, disagreed with the interpretation and filed an infringement suit in 2008. Although Kirtsaeng profited $37,000 from the Sale of books produced by John Wiley & Sons, a jury found him liable of infringement and imposed damages of $600,000.

According to SCOTUSblog.com, the 2nd Circuit upheld the ruling, stating that the Doctrine of First Sale only applies to U.S. made goods. In their ruling, the 2nd circuit applied the Costco Wholesale Corp. v. Costco case, in which the court split 4-4 in its decision to apply the Doctrine of First Sale to U.S. made goods sold by businesses, and extended its reach to individuals as well. When the Supreme Court hears Kirtsaeng's case, it will seek to resolve the discrepancy in the Copyright Law and the issue of whether the Copyright Law applies to a copy that was made and legally acquired abroad and then imported into the United States, SCOUTUSblog.com reports. According to supremecourt.gov, the time for the parties to file their briefs on the merits has been extended until August 31, 2012. The case will be heard next term, reports abajournal.com.

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Indiana patent attorneys obtained issuance of the following 168 patents from the US Patent Office to persons and business in Indiana in May, 2012.

      Patent No.                           Title

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Indianapolis; IN - Trademark attorneys for App Press, LLC of Indianapolis, Indiana filed a declaratory judgment suit seeking a declaration that it is not infringing the trademarks of Apress Media, LLC of New York, New York.

App Press, LLC brings action against Apress Media, LLC in order to protect the right to use and continue to conduct business under the registered trademark, and asserts that use of the mark for App Press does not infringe on any trademark held by Apress. App Press is a company that creates, owns, and licenses the use of web-based software that allows consumers to create apps that can be used on mobile devices. According to the Complaint, App Press applied for trademark registration on January 7, 2011 and was registered by the United State Patent and Trademark Office on August 9, 2011. During this period, the trademark was open to opposition on May 24, 2011. Apress Media is a publishing company that edits, publishes and sells books with the focus on technological issues and how-to advice. Apress Media applied for trademark registration on May 7, 2010 and was registered on March 8, 2011. According to App Press, on August 15, 2011, Apress Media sent a cease and desist letter demanding App Press immediately stop the use of their trademark alleging that it infringed on the trademark of Apress and constituted trademark infringement, unfair competition, cyberpiracy and dilution. App Press claims that they forwarded the letter to their counsel who contacted Apress Media's counsel by phone. Almost two weeks passed that counsel for both parties went back and forth via telephone before they were able to confer regarding the issues set forth in the letter in which App Press agreed and sent a letter describing their product and why it was not infringing on Apress Media's trademark. Approximately eight months later, on May 8, 2012, Apress again contacted App Press and again asserted that App Press's use of the App Press trademark was infringing on the Apress trademark. Counsel for App Press has filed the Complaint for declaratory relief and to obtain declaration that App Press's use of their trademark does not infringe upon any trademarks owned by Apress Media.

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Indianapolis; IN - Trademark attorneys for Dillinger, LLC of Mooresville, Indiana filed a complaint for injunctive relief and damages in alleging The Pour House on Lincoln, Inc. d/b/a Dillinger's Chicago Bar & Grill, Inc. of Chicago, Illinois infringed trademark registration nos. 3,483,359 for the mark DILLINGER'S and no. 4,091,160 for the mark PUBLIC ENEMY which have been registered by the US Trademark Office.

Dillinger, LLC is owned and operated by Jeff Scalf and, according to the Complaint, is the descendant of gentleman bandit John Dillinger. Dillinger, LLC owns numerous trademark registrations for DILLINGER, JOHN DILLINGER, PUBLIC ENEMIES, and many other trademarks related to the life of John Dillinger. Dillinger, LLC is also the owner of all rights, title, and interest to both DILLINGER'S and PUBLIC ENEMIES and both marks have been used in interstate commerce in connection with restaurant and bar services as early as 2002. According to the Complaint, Dillinger, LLC has never authorized The Pour House on Lincoln d/b/a Dillinger's Chicago Bar & Grill to use the DILLINGER or PUBLIC ENEMIES marks in any way and also alleges that in July 2010 it came to their attention that the Defendants were operating a restaurant using the DILLINGER and PUBLIC ENEMIES trademarks. Upon their knowledge of the trademark usage, Dillinger, LLC alleges that The Pour House was contacted about the infringement and in August of the same year they traveled to Indianapolis for the purpose of obtaining a license for the use of the trademarks. The Complaint states that an oral agreement was reached and reduced to writing, but never executed and yet The Pour House willfully continued its infringing usage of the DILLINGER and PUBLIC ENEMIES trademarks, specifically on their website, food and drink menus and the menus posted on the storefront. Dillinger, LLC asserts five counts for the violations of the defendants, including demand for preliminary and permanent injunction; federal trademark infringement; cybersquatting; false designation of origin, false descriptions and unfair competition; and dilution by blurring. In order to avoid any irreparable harm from the loss of reputation the DILLINGER names could suffer as a result of the unauthorized use of the trademarks and the accrual thereof, Dillinger, LLC is seeking to permanently enjoin The Pour House from using the DILLINGER and PUBLIC ENEMIES trademarks or inducing such belief, actual damages suffered as a result of the alleged trademark violations, statutory and exemplary damages, and the profits derived from the infringing activities.

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New York, NY - The Southern District of New York recently issued an injunction in a case involving the trademark rights to NFL player Tim Tebow's name and jersey. Trademark attorneys for Nike, Inc of Beaverton, Oregon, had filed a Trademark infringement lawsuit in the Southern District of New York alleging that Reebok, International Ltd of Canton, Massachusetts infringed Tebow's trademarks by producing and selling jerseys and other products bearing the Tebow marks. The complaint stated that Nike had an exclusive license to produce Tebow products bearing the Tebow marks. The complaint alleges that following the Denver Bronco's trade of Tebow to the New York Jets, Reebok tried to take advantage of the high demand for Tebow's Jets jersey by offering and selling unlicensed Tebow products.

On April 9, 2012, the court approved a final judgment that recognized Nike, Inc. was awarded the sole rights to the license--including the manufacture, distribution, and sale--of Tim Tebow merchandise, retroactive February 28, 2012, affiliated with the New York Jets. The court order defined Unauthorized Tebow Product as "an NFL-related jersey or t-shirt product sold or distributed by, manufactured by or for, or in the possession or control of Defendant Reebok International Ltd. . . . with the name Tebow affixed to the product after February 28, 2012." The definition specifically targets any Tebow merchandise produced with his new team, the New York Jets. The terms of the court order issued prohibit Reebok from manufacturing, selling, donating, advertising or permitting any other individual or entity to do the an Unauthorized Tebow Product. Reebok was further ordered to repurchase or recall any existing Tebow merchandise already in distribution that was made after February 28, 2012.

Practice Tip: It will be interesting to see how valuable the trademark rights to number one draft pick Andrew Luck's jersey and his new affiliation with the Indianapolis Colts will become. Nike argued that the Tebow trademark was particularly valuable because of his high profile. He was already a prize at Stanford, and with his contract with the Colts, the trademark rights could be very valuable.

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Indianapolis; IN - Patent attorneys for Tower Reinforcement of Newburgh, Indiana filed a patent infringement suit in the Southern District of Indiana alleging Crown Castle International and Crown Castle Operating of Houston, Texas, and Aero Solutions, LLC of Boulder, Colorado infringed patent no.7,849,659, TOWER REINFORCEMENT APPARATUS AND METHOD, which has been issued by the US Patent Office.

Both the Crown Defendants and Aero Solutions are incorporated outside of Indiana, but the complaint alleges they maintain substantial contacts with Indiana by regularly conducting business in the state. Tower alleges patent infringement of three of their patents--"the '659 patent," "the '972 patent," and "the '712 patent"--to which Tower owns all the rights and interest. According to Tower's complaint, the Defendants had actual notice of the Tower patents and still infringed on the patents through their making, using, selling and the offer of sale of products utilizing Tower's patented technology. Tower asserts that the Defendants also encourage the design and construction of the protected patents, their actions being willful and deliberate. The complaint does not give many details about specific acts of infringement. Tower alleges they have, and will continue to, suffer substantial and irreparable financial loss and is therefore seeking to permanently enjoin the Defendants from their infringing activities of their '659, '972, and '712 patents.

Practice Tip: The US Patent laws applicable to this suit are 35 U.S.C. §§ 1, et seq. Specifically, 28 U.S.C. §§ 1338(a) gives district courts jurisdiction in any civil action relating to patents.

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Fort Wayne; IN - The Northern District of Indiana has granted a partial summary judgment for Forks RV of Shipshewana, Indiana that dismisses copyright infringement claims in a dispute over a recreational vehicle sales agreement and design. Copyright attorneys for Amy and James Ortega had filed a lawsuit against Forks RV of Shipshewana, Indiana alleging that Fork breached a sales distribution agreement and also alleged copyright infringement over Fork's use of Ortega's designs for a custom RV. The court summarily dismissed the copyright infringement claim because Ortega had not registered his designs with the U.S. Copyright Office. The court noted "The Copyright Act states that "no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title." 17 U.S.C. § 411(a).

The court, however, denied summary judgment on the breach of contract claim relating to the distribution and/or sales agreement. The court found that there was a genuine dispute of material fact, and therefore, summary judgment would be inappropriate.

Practice Tip: Copyright attorneys for Fork had requested attorney's fees in defending the copyright infringement claim. The court granted this request, noting that . There is a strong presumption that the "prevailing party" in a copyright infringement case is entitled to recover attorney's fees in the 7th Circuit, and that a copyright registration must be obtained before pursing an infringement claim (in most instances). Thus, plaintiffs must take care to register their copyrights before filing a copyright infringement suit, at the peril of being liable for the defendant's attorney's fees.

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Indianapolis; IN - Patent attorneys for Norco Industries, Inc. of Elkhart, Indiana filed a patent infringement in the Southern District of Indianaalleging Mito Corporation of Elkhart, Indiana infringed patent no. D650,723 ROOF BOW, which has been issued by the US Patent Office.

The patented technology was invented by Bernard F. Garceau and Robert G. Chew, but the complaint states the patent was owned by Norco during the period of alleged infringement. The '723 patent was issued in December 2011. The complaint seeks an injunction, damages, attorney fees and costs.

Practice Tip: The complaint makes only a barebones statement regarding the patent infringement: it simply states Mito is infringing the patent by "making, selling and using roof bows that embody the patented invention."

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Hammond; IN - Trademark attorneys for Mortar Net of Burns Harbor, Indiana filed a trademark infringement suit in alleging Keene Building Products of Mayfield Heights, Ohio infringed trademark registration nos. 3,571,383 and 3,571,384, which have been registered with the US Trademark Office.

Mortar designs and sells construction products and building materials. One of its products is called Mortar Net and has been sold by the company since 1993 for use in masonry. The mark in question is associated with the Mortar Net product. The Mortar Net's dovetail shape has industry recognition, and the shape has been registered as a trademark. The complaint alleges that Keene is offering products for sale that infringe Mortar's trademarks on Keene's website. Keene's allegedly infringing product is called Keystone. The complaint makes claims of trademark infringement, trade dress infringement, false designation of origin, and unfair competition. Mortar seeks an injunction, an order requiring the destruction of all of Keene's keystone products, damages, attorney fees and costs.

Practice Tip: The trademarked image is simply a black colored shape. It doesn't seem to indicate any particular brand or product. There are likely issues about whether the trademark of the shape can be validly enforced.

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Indianapolis; IN - Trademark attorneys for Mainstreet Collection of Washington, North Carolina filed a trademark infringement suit in the Southern District of Indiana alleging that Main Street Collection, LLC and Melissa Card of Fishers, Indiana infringed trademark registration no. 4,034,192 for the mark MSC MAINSTREET COLLECTION registered by the US Trademark Office.

The complaint states that the plaintiff is a successful gift product company that sells crafts, kitchenware, handbags and other gift items at over 6000 gift shops such as Hallmark®. The plaintiff also maintains a website at www.gowhimsey.com and a facebook page. The plaintiff states it has used the MSC mark at issue since at least 2000. The complaint alleges that the defendants also sell gift items. The complaint states that the defendants maintain a website at www.themainstreetcollection.com that utilizes a mark MAINSTREET COLLECTION that is very similar to the plaintiff's. The complaint states that the plaintiff attempted to have the defendants transfer www.themainstreetcollection.com domain name to the plaintiff, but the defendants refused. The complaint states that customers have been contacting the defendants who are actually seeking to do business with the plaintiff. The complaint makes claims of trademark infringement and cybersquatting and seeks an injunction, damages, transfer of the www.themainstreetcollection.com domain name, attorney fees and costs.

Practice Tip: The claim of trademark infringement here is based entirely on maintaining a website. As we have previously blogged, it can be difficult to obtain personal jurisdiction when basing a claim solely on web presence. The plaintiff here, however, has avoided is issue by filing suit in the defendants' home jurisdiction.

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