May 1, 2014

Insurance Coverage for Advertising Injury: Allstate Held to Have No Duty to Defend or Indemnify Against Allegations of False Advertising

Indianapolis, Indiana - An insurance attorney for Allstate Insurance Company of allstatepicture.bmpNorthbrook, Illinois ("Allstate") filed a Motion for Summary Judgment in the Southern District of Indiana. Allstate asked the court to declare that it had no duty to defend or indemnify the defendants in a putative class action lawsuit proceeding against the defendants in the Middle District of Georgia. The Indiana court ruled against Defendants Preferred Financial Solutions, Inc. ("PFS") of Indianapolis, Indiana; Credit Card Relief, Inc. ("CCR") of Indianapolis, Indiana; Jeffery Brooks, President of PFS and CCR of Zionsville, Indiana and Thomas P. Dakich, d/b/a Dakich & Associates, of Indianapolis, Indiana.

This lawsuit concerns Allstate's obligations to the defendants with respect to a class action lawsuit filed in Georgia against the defendants and others (the "underlying litigation"). The complaint in the underlying litigation, filed by the underlying plaintiffs, alleges that the defendants are interrelated entities that collectively comprise a debt-adjustment-services operation that targets financially troubled customers and extracts fees for worthless services.

In this litigation, which the underlying plaintiffs are attempting to classify as a class action, it is alleged that the defendants promote themselves in print, on the internet, and in broadcast media as a provider of debt-settlement services, debt-elimination services and debt-reduction services. The underlying plaintiffs contend that the defendants never made any attempts to pay or settle the debts of at least some members of the putative class.

The defendants tendered the complaint to Allstate for defense, asserting that the claims in the underlying litigation triggered potential coverage as a covered peril - an "advertising injury" - under the provisions of their insurance contracts with Allstate.

This issue - whether Allstate's contract for insurance coverage for an "advertising injury" required them to defend and indemnify the defendants - was submitted to the Indiana District Court. Allstate moved for judgment as a matter of law, asserting that the conduct at issue did not qualify as an advertising injury. It contended that it thus had no duty to provide a defense in the underlying litigation.

Under the terms of the insurance agreement, an "advertising injury" was defined in the insurance contract as an "injury arising out of one or more of the following offenses:

1. Oral or written publication of advertising material that slanders or libels a person or organization or disparages a person's or organization's goods, products or services;
2. Oral or written publication of advertising material that violates a person's right to privacy;
3. Misappropriation of advertising ideas or style of business; [and/or]
4. Infringement of copyright, title or slogan as a result of your advertising."

Excluded from coverage was "[a]ny advertising injury arising out of...[i]ncorrect description of or mistake in advertised price of goods, products or services sold, offered for sale or advertised."

The Indiana court, in an opinion written by Magistrate Judge Debra McVicker Lynch, noted that there had been no allegation of defamation, violation of privacy, misappropriation of advertising ideas or infringement of intellectual property in defendants' advertising. As a result, the court concluded that no "advertising injury," as it was defined in the insurance contract, had occurred. As that holding was dispositive, the court did not reach the issue of whether the exclusion to coverage for "incorrect description" would have applied. As no coverage was found to exist, Allstate was determined to have neither the duty to defend nor to indemnify the defendants.

Practice Tip:

Exclusions to coverage in insurance policies are narrowly construed. However, it seems likely that, had the court not disposed of this matter as not fitting within the definition of "advertising injury," it would have instead concluded that there was no coverage upon construing the exclusion for "incorrect description" of goods or services offered.

In contrast, businesses sued for defamation, invasion of privacy, misappropriation of advertising ideas and/or infringement of intellectual property, would be wise to consult their commercial general liability insurance policies to evaluate whether such an advertising injury is considered a covered peril.

Continue reading "Insurance Coverage for Advertising Injury: Allstate Held to Have No Duty to Defend or Indemnify Against Allegations of False Advertising" »

April 28, 2014

Indiana Patent Litigation: CleanTech Sues Pacific Ethanol Magic Valley

Indianapolis, Indiana - A patent attorney for GS CleanTech Corporation of Alpharetta, E-85picture.jpgGeorgia ("CleanTech") filed a patent infringement lawsuit in the District of Idaho alleging that Pacific Ethanol Magic Valley, LLC of Burley, Idaho ("Pacific"); ICM, Inc. of Colwich, Kansas; and David J. Vander Griend of Wichita, Kansas infringed Patent Nos. 7,601,858 - "Method of Processing Ethanol Byproducts and Related Subsystems"; 8,008,516 - "Method of Processing Ethanol Byproducts and Related Subsystems"; 8,008,517 - "Method of recovering Oil From Thin Stillage"; and 8,283,484 - "Method of Processing Ethanol Byproducts and Related Subsystems", 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 litigation 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 patent infringement 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, Adkins Energy, LLC, Little Sioux Corn Processors, LLLP; Southwest Iowa Renewable Energy, LLC; Western New York Energy, LLC; Homeland Energy Solutions, LLC; Pacific Ethanol, Inc.; Guardian Energy, LLC and Pacific Ethanol Stockton LLC. This Indiana patent lawsuit is being overseen in the Southern District of Indiana pursuant to the provisions for Multidistrict Litigation ("MDL").

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 CleanTech and its parent GreenShift Corp. have also asserted infringement by some of the allegedly infringing Defendants of four additional patents related to the '858 patent: U.S. Patent Nos. 8,008,516 (the "'516 patent"), 8,008,517 (the "'517 patent"), 8,283,484 (the "'484 patent") and, the newest addition, 8,168,037 ("the '037 patent"), (the '858, '516, '517, '484 and '037 patents are, collectively, the "'858 patent family" or "the patents-in-suit"). Four of the patents in the "'858 patent family" - the '858 patent, the '516 patent, the '517 patent, and '484 patent - have purportedly been infringed by Pacific.

CleanTech claims that the methods claimed increase the efficiency and economy of recovering corn oil. CleanTech's patented methods recover corn oil by evaporating, concentrating and mechanically separating thin stillage ("stillage"), a byproduct of ethanol produced from corn, into two components: corn oil and a post-recovery syrup ("syrup") with most of its corn oil removed.

In one embodiment, the patented method comprises initially processing the whole stillage by mechanically separating (such as by using a centrifugal decanter) the whole stillage into distillers wet grains and thin stillage, and then introducing the thin stillage into an evaporator to form a concentrated syrup byproduct. Prior to recombining the then-concentrated syrup with the distillers wet grains, the syrup is introduced into a second mechanical separator, such as a second centrifuge, which is different from the centrifuge that mechanically separated the whole stillage into distillers wet grains and thin stillage. This second centrifuge separates corn oil from the syrup thereby allowing for the recovery of usable corn oil. The syrup that exits the centrifuge is then recombined with the distillers wet grain and dried in a dryer. The corn oil that is extracted from the syrup can be used for various purposes such as feedstock for producing biodiesel.

In this current lawsuit, initiated in the District of Idaho, subsidiary GS CleanTech Corp. is the sole Plaintiff. A patent lawyer for CleanTech asserts the following counts against Pacific:

• 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: More than thirty ethanol-production plants have executed installation and licensing agreements with GreenShift Corp., the parent company of CleanTech, for its corn-oil extraction system. When deciding whether to avoid the potential of being included as an additional defendant in ongoing patent infringement litigation, it's useful to consult an experienced patent attorney to evaluate the possibility of licensing rights to use the patent(s)-in-suit.

Continue reading "Indiana Patent Litigation: CleanTech Sues Pacific Ethanol Magic Valley" »

April 25, 2014

Indiana Patent Litigation - Bonutti Research and Joint Active Systems Sue Lantz Medical for Patent Infringement

Indianapolis, Indiana - Patent attorneys for Bonutti Research, Inc. ("Bonutti") and Jointelboworthosispicture.jpg Active Systems, Inc. ("JAS"), both of Effingham, Illinois, filed an intellectual property lawsuit in the Southern District of Indiana alleging that Lantz Medical, Inc. of Indianapolis, Indiana ("Lantz") infringed multiple patents: "Orthosis," Patent No. 5,848,979; "Elbow Orthosis," Patent No. 7,955,286; "Finger Orthosis," Patent No. 7,404,804; and "Orthosis," Patent No. 7,112,179, which have been issued by the U.S. Patent Office.

Bonutti claims ownership by assignment of four patents. The patents at issue are:

• Patent No. 5,848,979 ("the '979 patent"), titled "Orthosis," which generally covers apparatuses for use in effecting relative movement between bones in an arm of a patient, was issued in 1998.
• Patent No. 7,112,179 ("the '179 patent"), titled "Orthosis," which generally covers apparatuses for stretching tissue around a joint of a patient between first and second relatively pivotable body portions, was issued in 2006.
• Patent No. 7,404,804 ("the '804 patent"), titled "Finger Orthosis," which generally covers apparatuses for positioning a joint in a finger on a hand of a patient, was issued in 2008.
• Patent No. 7,955,286 ("the '286 patent"), titled "Elbow Orthosis," which generally covers apparatuses for stretching tissue around a joint of a patient between first and second relatively pivotable body portions, was issued in 2011.

The '979, '179, '286, and '804 patents are licensed exclusively to JAS. Among the products that JAS develops and markets are products covered by the patents-in-suit, including the JAS Pro/Sup, JAS EZ Pro/Sup, JAS EZ Elbow, JAS EZ Wrist, and JAS EZ Finger products.

Defendant Lantz manufactures and sells, among other products, the Stat-A-Dyne® ESP, Stat-A-Dyne® Pro/Sup, Stat-A-Dyne® Elbow, and Stat-A-Dyne® WHFO products. Bonutti and JAS contend that these products infringe their patented inventions and are sold in direct competition with products offered for sale by JAS.

In a complaint filed by patent attorneys for Plaintiffs, the following claims are made:

• Count I: Infringement of U.S. Patent No. 5,848,979
• Count II: Infringement of U.S. Patent No. 7,955,286
• Count III: Infringement of U.S. Patent No. 7,404,804
• Count IV: Infringement of U.S. Patent No. 7,112,179

Plaintiffs Bonutti and JAS seek injunctive relief, damages, pre- and post-judgment interest, costs and attorneys' fees.

Practice Tip: Since September 2012, Bonutti Skeletal Innovations LLC, an entity believed to be related to Bonutti Research, Inc., has initiated a series of patent-infringement lawsuits against medical-device manufacturers, including Depuy, Inc.; Zimmer, Inc.; Smith & Nephew, Inc.; Wright Medical Group, Inc.; ConforMIS, Inc.; Arthrex, Inc.; Linvatec Corporation; ConMed Corporation and Biomet, Inc. We blogged about the Biomet lawsuit, in which Biomet sought declaratory judgment of non-infringement and invalidity the Bonutti patents, here.

Continue reading "Indiana Patent Litigation - Bonutti Research and Joint Active Systems Sue Lantz Medical for Patent Infringement" »

April 24, 2014

Indiana Intellectual Property Litigation: Joe Hand Promotions' Lawsuit Alleges Illegal Interception of Televised Fight

South Bend, Indiana - An intellectual property attorney for Joe Hand Promotions, Inc. of JonesRashadPhoto.jpgFeasterville, Pennsylvania sued in the Northern District of Indiana alleging that Jeffrey M. Abbott individually and d/b/a Awesome Place Bar & Grill and Awesome Place Bar and Grill, LLC d/b/a Awesome Place Bar & Grill, all of Mishawaka, Indiana illegally intercepted and televised Ultimate Fighting Championship 145: Jon Jones v. Rashad Evans ("the Program").

Joe Hand Promotions, a commercial distributor of sporting events, states that it was granted exclusive rights to distribute via closed-circuit telecast the Ultimate Fighting Championship ("UFC") fight between Jon Jones and Rashad Evans, which Joe Hand Promotions asserts was broadcast nationwide on April 21, 2012.

In the complaint against Abbott and Awesome Place Bar and Grill, LLC, Joe Hand Promotions has alleged such wrongful acts as interception, reception, publication, divulgence, display, exhibition, and "tortuously" [sic] converting the Program.

In addition to naming the restaurant, Joe Hand Promotions has also sued both Awesome Place Bar and Grill, LLC and Abbott as an individual, claiming that Abbot had the right and ability to supervise the activities of Awesome Place Bar & Grill. Joe Hand Promotions asserts that those activities included the unlawful interception of its UFC Program.

Abbott, Awesome Place Bar and Grill, LLC, both allegedly doing business as Awesome Place Bar & Grill, have been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553. The complaint, filed by a Kentucky intellectual property attorney, also lists a count of conversion. Joe Hand Promotions seeks statutory damages of $110,000 for each willful violation of 47 U.S.C. § 605; $60,000 for each willful violation of 47 U.S.C. § 553; compensatory and punitive damages on the claim of conversion; costs, including costs incurred for the service of process and the investigation of potential wrongdoing; and attorney's fees.

Practice Tip #1: When Congress passed the Cable Communication Act, a statute of limitations was not included. Some federal courts have determined that a two-year statute of limitation is appropriate while other federal courts have used a three-year statute of limitations. As is typical with lawsuits initiated by Joe Hand Promotions, the complaint was filed almost exactly two years after April 21, 2012, the date of the alleged wrongdoing.

Practice Tip #2: Joe Hand Promotions is a frequent litigant and has brought many cases in Indiana in recent years against defendants alleged to have illegally intercepted and/or broadcast UFC fights. Indiana Intellectual Property Law News has previously blogged on the cases below:

Joe Hand Promotions Sues for Unlawful Interception of Championship Fight

Joe Hand Promotions Again in Court Asserting Unlawful Interception

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

Joe Hand Promotions Sues Ho Bo Jungle Bar Over Unauthorized Interception of the Ultimate Fighting Championship Broadcast

Joe Hand Promotions Sues Lawrenceburg, Indiana Bar for Showing UFC Fight Without Authorization

Joe Hand Promotions Sues Beerbelly's over Interception of Broadcast Signal

Joe Hand Promotions Sues Longwell and Pitt Stop Pub & Grill for Intercepting UFC Broadcast

Continue reading "Indiana Intellectual Property Litigation: Joe Hand Promotions' Lawsuit Alleges Illegal Interception of Televised Fight" »

April 23, 2014

Indiana Copyright Litigation: Transcultural C.A.R.E. Sues Evansville Vanderburgh School Corporation

Evansville, Indiana - A copyright attorney for Dr. Josepha A. Campinha-Bacote d/b/a EVSCPicture.jpgTranscultural C.A.R.E. Associates of Cincinnati, Ohio filed a copyright infringement lawsuit in the Southern District of Indiana alleging that Evansville Vanderburgh School Corporation of Evansville, Indiana ("EVSC") and Dionne Blue and Deborah Hartz, both of Indiana, infringed the copyrighted work "Cultural Competency in Healthcare Delivery: Have I 'ASKED' Myself the Right Questions?" (the "ASKED" model). This work was registered by the U.S. Copyright Office.

Plaintiff Campinha-Bacote is the President and sole proprietrix of Transcultural C.A.R.E. Associates, which provides education regarding transcultural issues in health care to improve awareness and sensitivity to cultural concerns among healthcare professionals and others. In 2002, Dr. Campinha-Bacote developed the ASKED mnemonic model of cultural competence. The work was registered by the U.S. Copyright Office in 2003.

Defendants are accused of unlawfully reproducing, copying, publishing and displaying the ASKED model in a PowerPoint presentation titled "Culturally Competent Classroom Management." Defendant EVSC is being sued directly as well as vicariously for the actions of Defendants Blue and Hartz.

In her complaint, filed by an Ohio trial lawyer, Plaintiff asserts willful copyright infringement. She asks for injunctive relief, statutory damages, a declaration that Defendants' actions be declared willful, attorney's fees, costs and pre- and post-judgment interest.

Practice Tip:

Lawsuits against government entities often differ from those against private defendants. For example, when seeking to sue in federal court, litigators must evaluate whether the 11th Amendment, which generally prevents federal-court actions seeking damages from a state, will hamper their efforts.

Congress may waive states' sovereign immunity in some cases, provided that it does so with explicit language. In 1990, Congress amended the Copyright Act in an attempt to limit sovereign immunity for lawsuits under the Copyright Act. Section 501(a), which defines copyright infringers, was modified to include as a potential defendant "any State, any instrumentality of a State, and any officer or employee of a State acting in his or her official capacity." A new section, §511, was also added. It provides that states, state instrumentalities and their employees "shall not be immune, under the Eleventh Amendment of the Constitution of the United States or any other doctrine of sovereign immunity" from suit in a federal court for copyright infringement.

The United States Supreme Court has evaluated similar attempts to waive sovereign immunity under the Commerce Clause, the Patent Clause and the Fourteenth Amendment of the Constitution. The Court held that in federal-court lawsuits for damages for patent or trademark infringement, Congress lacked the constitutional authority to abrogate the sovereign immunity of the states. Subsequent decisions by federal district courts and federal appellate courts have extended this decision to actions for copyright infringement.

Continue reading "Indiana Copyright Litigation: Transcultural C.A.R.E. Sues Evansville Vanderburgh School Corporation " »

April 21, 2014

Indiana Patent Litigation: Four Mile Bay Asserts Infringement of Patented Dental Implant

Hammond, Indiana - Patent attorneys for Four Mile Bay LLC of Wadsworth, Ohio sued indentalpicture.png the Northern District of Indiana alleging that Zimmer Holdings, Inc. of Warsaw, Indiana and Zimmer Dental Inc. of Carlsbad, California infringed DENTAL IMPLANT WITH POROUS BODY, Patent No. 8,684,734, which has been issued by the U.S. Patent Office.

Defendant Zimmer Holdings designs, develops, manufactures, and markets reconstructive orthopedic implants, including dental implants. Defendant Zimmer Dental, a division of Zimmer Holdings, is engaged in a similar business. The two Zimmer entities have been sued by Four Mile Bay for patent infringement.

The subject of the dispute is Patent No. 8,684,734 (the "'734 patent"), which relates to the "osseointegration" of dental implants into a patient. A dental implant designed for osseointegration provides porous structures to which a patient's bone may grow an attachment. Four Mile Bay indicates that prior art in the area was limited to providing a surface-level solution, wherein bone surrounding the implant could grow into the coating only on the outside of the implant.

Four Mile Bay contends that the '734 patent addresses this shortcoming of the prior technology by including porous structures to which bone can adhere that extend through a "significant part" of the implant. This, it states, allows the patient's bone to grow completely through the implant and provides improved anchoring within the mouth. The invention also includes an internal cavity that may house a substance that stimulates bone growth.

Four Mile Bay contends in this current patent infringement litigation that Zimmer Holdings and Zimmer Dental are infringing the '734 patent. In the complaint, filed by Illinois patent attorneys for Four Mile Bay, the following are claims are asserted:

• Count I: Patent Infringement Against Zimmer Holdings
• Count II: Patent Infringement Against Zimmer Dental

Four Mile Bay asks the court for a judgment that defendants have directly infringed claims of the '734 patent, for a reasonable royalty and for pre- and post-judgment interest.

Practice Tip:

The concept of "prior art" appears simple upon first glance. It might be briefly defined as "all information that was publically available before a relevant date [often 12 months prior to a U.S. patent application being filed] that could be pertinent to a patent's claim of originality."

However, the legal nuances of what is "new" and what constitutes "prior art," along with the difficulties in performing an adequate worldwide search of printed materials for references to claims in a pending application, makes performing a complete patentability assessment a daunting prospect for even the most experienced inventor. Thus, while an inventor is wise to conduct his or her own patent search initially, it is important to hire an experienced patent attorney to perform a thorough patent search and assessment of patentability.

Continue reading "Indiana Patent Litigation: Four Mile Bay Asserts Infringement of Patented Dental Implant" »

April 18, 2014

Indiana Copyright Litigation: BMI Sues The Irish Exit for Copyright Infringement

New Albany, Indiana - An Indiana copyright attorney for Broadcast Music, Inc. of New York,IEPicture.bmp New York ("BMI"), Sony/ATV Songs LLC, Fall Out Boy, Inc. d/b/a Chicago X Softcore Songs, Beechwood Music Corporation, and Universal Music-Z Tunes LLC d/b/a Universal Music Z Songs sued in the Southern District of Indiana alleging that The Irish Exit, LLC d/b/a The Irish Exit and Matthew McMahan, both of New Albany, Indiana, committed willful copyright infringement. All copyrights-in-suit have been registered by the U.S. Copyright Office.

In its complaint, BMI states that it has been granted the right to license the public performance rights of more than eight million copyrighted musical compositions, including the compositions at issue. The other plaintiffs are the publishers of the copyrighted music that was allegedly infringed.

The lawsuit, brought under The Copyright Act, alleges that the defendants infringed multiple songs in BMI's repertoire by performing those copyrighted songs without authorization and/or causing the copyrighted songs to be performed publically in The Irish Exit without authorization. BMI alleges that there were three instances of infringement, with each publisher-plaintiff having at least one copyrighted song infringed by the defendants.

BMI contends that The Irish Exit, LLC (the legal entity) has a direct financial interest in The Irish Exit (the business establishment), as does Matthew McMahan. Further, it is alleged that Matthew McMahan is a member of The Irish Exit, LLC, with responsibility for the operation, management and supervision of the activities of LLC and the business establishment.

The plaintiffs claim that they have suffered great and incalculable damage as a result of the defendants' actions and that further acts of infringement will injure them irreparably. They ask that the court enjoin the defendant from committing further acts of infringement. The plaintiffs also seek statutory damages pursuant to 17 U.S.C. §504(c) and costs, including reasonable attorneys' fees.

Practice Tip:

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

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

Continue reading "Indiana Copyright Litigation: BMI Sues The Irish Exit for Copyright Infringement" »

April 16, 2014

Indiana Trademark Litigation: Roche Diagnostics Sues Polymer Technology Systems for Trademark Infringement

Indianapolis, Indiana - An Indiana trademark attorney for Roche Diagnostics GmbH of Roche Picture.jpgGermany and Roche Diagnostics Operations, Inc. of Indianapolis, Indiana (collectively "Roche Diagnostics") filed a trademark infringement lawsuit in the Southern District of Indiana alleging that Polymer Technology Systems, Inc. d/b/a CHEK Diagnostics of Indianapolis, Indiana ("PTS") infringed the trademarked "ACCU-CHEK", Registration Nos. 1,277,867; 2,403,536; 2,628,696; 2,651,417; 2,681,644; 2,703,048; 2,732,629; 3,071,846; 3,076,905; 3,127,170; 3,194,287; 3,199,675; 3,202,402; 3,256,740; 3,411,797; 3,481,185; 3,595,149; 3,602,8253,609,052; 3,676,782; 3,703,434; 3,991,903; 3,749,950; 4,214,217; 4,230,563; and 4,226,844, which have been issued by the U.S. Trademark Office.

The Roche Diagnostics entities are global providers of medical products that help healthcare providers and consumers to prevent, diagnose, treat and manage diseases and other medical conditions. Included in the Roche Diagnostics offerings are products and services relating to diabetes care, including blood-glucose testing, monitoring and analysis. In connection with these products and services, Roche Diagnostics owns and uses numerous registrations for the federally registered trademark Accu-Chek and related marks.

Defendant PTS is a manufacturer of point-of-care diagnostic products headquartered in Indianapolis, Indiana. PTS designs, manufactures, and markets products for distribution in over 120 countries around the world and has sales offices in Europe, Latin America, and the Pacific Rim, and manufacturing facilities in Indianapolis, Indiana and Sunnyvale, California.

For several years prior to this trademark infringement complaint by Roche Diagnostics, PTS had sold a product under the name CardioChek, a medical device that measures blood cholesterol. Roche Diagnostics states that it did not assert its trademark rights to oppose the sale of CardioChek when it was marketed under the business name "Polymer Technology Systems."

In March 2014, PTS announced that it was making two changes. According to a press release, it would be changing its business name to "CHEK Diagnostics" and would begin offering a line of diabetes-care products, the AICNow® family of products, which PTS had purchased from Bayer Diabetes Care. This new line of products would be offered under the CHEK Diagnostics business name. Roche Diagnostics contends the expansion into this new market, in conjunction with Defendants' changed business name, violates its trademark rights and is likely to cause confusion, mistake and/or deception as to the source of PTS's diabetes-care goods.

In its complaint, filed by an Indiana trademark lawyer, Roche Diagnostics asserts trademark infringement of its Accu-Chek trademarks under 15 U.S.C. § 1114(1) and § 1125 (a) of the Lanham Act, as well as trademark infringement and unfair competition in violation of the common law of the State of Indiana.

Roche Diagnostics requests that the court enjoin PTS from using "CHEK Diagnostics" as a company name or in a manner in any way related to the promotion or sale of diabetes-care products. It asks that the court direct PTS to immediately recall any materials bearing the "CHEK" business name and to order PTS to cancel or modify any pending trademark registrations that include the CHEK name.

Roche Diagnostics also seeks monetary damages as well as a declaration by the court that the use of "CHEK Diagnostics" as a company name, or in a manner in any way related to the sale or promotion of diabetes-care products, would constitute trademark infringement and unfair competition under both federal and Indiana-state law.

Practice Tip: The protection afforded to a registered trademark is not exhaustive in scope. Among the limits to its applicability are restrictions based on the type of business and product to which the trademark pertains. In this case, while Roche may have declined to object to PTS's use of "CHEK" in conjunction with the sale of a non-diabetes-related product (here, a cholesterol-measuring product), that failure to object is unlikely to waive its right to assert infringement later if the word "CHEK" is used to market a product that is allegedly related to the product for which Roche Diagnostics owns a trademark (here, the purportedly similar line of diabetes products to be offered by PTS).

Continue reading "Indiana Trademark Litigation: Roche Diagnostics Sues Polymer Technology Systems for Trademark Infringement" »

April 14, 2014

Indiana Patent Litigation: CleanTech Sues Pacific Ethanol for Patent Infringement

Indianapolis, Indiana - Patent attorneys for GS CleanTech Corporation of New York, NewCornPumpPicture.jpg York ("CleanTech"), filed a patent infringement lawsuit in the Eastern District of California - Sacramento Division alleging that Pacific Ethanol Stockton LLC of Stockton, California infringed "METHOD OF PROCESSING ETHANOL BYPRODUCTS AND RELATED SUBSYSTEMS," Patent No. 7,601,858 (the "'858 patent"), which was 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 litigation 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 patent infringement 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, Adkins Energy, LLC, Little Sioux Corn Processors, LLLP; Southwest Iowa Renewable Energy, LLC; Western New York Energy, LLC; Homeland Energy Solutions, LLC; Pacific Ethanol, Inc. [this entity is different from Pacific Ethanol Stockton LLC] and Guardian Energy, LLC. This Indiana patent litigation is being overseen in the Southern District of Indiana pursuant to the provisions for Multidistrict Litigation ("MDL").

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 CleanTech and its parent GreenShift Corp. have asserted patent infringement of three additional patents in the '858 family - U.S. Patent Nos. 8,008,516; 8,008,517 and 8,283,484 - against some of the allegedly infringing Defendants.

In this current patent infringement lawsuit, initiated by California patent lawyers in the Eastern District of California, subsidiary CleanTech 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: Previous articles about this litigation have posted many times by Indiana Intellectual Property Law News including:

CleanTech Adds Three Additional Defendants to Multidistrict Litigation

CleanTech Adds Western New York Energy as a Defendant in Patent Infringement Litigation

CleanTech's Multidistrict Litigation Adds Southwest Iowa Renewable Energy as a Defendant

CleanTech Sues Aemetis for Infringing Patented Corn Oil Extraction Method

Southern District of Indiana Denies All Summary Judgment Motions Regarding Family of Corn Oil Extraction Patents

Southern District Allows CleanTech to Amend Complaint to Add Patent to Ethanol Patent Litigation

GS Cleantech Files Patent Infringement Lawsuit Against Flottweg in Indiana

Multiple Patent Infringement Suits Brought by Greenshift Consolidated in Indiana

GS CleanTech Sues Iroquois Bio-Energy for Patent Infringement

Cardinal Ethanol Sued by GS Cleantech for Patent Infringement

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

Continue reading "Indiana Patent Litigation: CleanTech Sues Pacific Ethanol for Patent Infringement" »

April 11, 2014

Indiana Patent Litigation: Cor-A-Vent Sues Alleging Patent Infringement by DCI Products

South Bend, Indiana - Indiana patent attorneys for Cor-A-Vent Inc. of Mishawaka, Indiana CoraventPicture.bmpfiled a lawsuit in the Northern District of Indiana alleging that Designer Cabinets Inc. d/b/a DCI Products of Clifton Heights, Pennsylvania ("DCI") infringed the patented "Moisture Resistant Roof Vent," Patent No. 5,704,834, which has been issued by the U.S. Patent Office.

Cor-A-Vent is a designer and manufacturer of roof vent and other venting products. In 1998, United States Patent No. 5,704,834 (the "'834 Patent") was issued for a moisture-resistant roof vent. Cor-A-Vent asserts that it owns this patent.

DCI is accused of infringing the '834 Patent - either directly, by inducement, and/or contributorily - by making, using, selling, offering for sale, importing or supplying infringing roof vent products, including DCI's SmartRidge® II product, in violation of 35 U.S.C. § 271 et seq. Cor-A-Vent contends that DCI has profited, and Cor-A-Vent has suffered damages, as a result of this alleged patent infringement.

Cor-A-Vent also asserts that DCI has been aware of the '834 Patent since 2010 or earlier. As a result, Cor-A-Vent contends that the patent infringement committed by DCI has been willful. Further, Cor-A-Vent contends that this is an exceptional case, which would support an award of reasonable attorneys' fees pursuant to 35 U.S.C. § 285.

In its complaint, filed by Indiana patent attorneys in Indiana federal court, Cor-A-Vent lists a single count: Infringement of United States Patent No. 5,704,834. It requests the following:

• A judgment that DCI has infringed the '834 Patent in violation of 35 U.S.C. § 271;
• Preliminary and permanent injunctive relief prohibiting DCI and its agents from infringing the '834 Patent pursuant to 35 U.S.C. § 283;
• An award to Cor-A-Vent of its damages for patent infringement,
• An award of pre-judgment and post-judgment interest and costs against DCI pursuant to 35 U.S.C. § 284;
• A judgment that DCI's infringement of the '834 Patent has been deliberate and willful;
• A judgment that DCI's infringement of the '834 Patent has been exceptional under 35 U.S.C. § 285;
• Treble damage under 35 U.S.C. § 284; and
• An award to Cor-A-Vent of its reasonable attorneys' fees under 35 U.S.C. § 285.

Practice Tip:

A court may award increased damages for willful infringement. These punitive damages, up to and including a trebling of damages, are appropriate when an infringer has acted in wanton disregard of the patentee's intellectual property rights. In determining whether the infringing behavior supports increased damages, the court will consider the "totality of the circumstances."

Potential exposure for increased damages may be reduced by seeking - and acting on - timely advice from a competent patent lawyer. In contrast, the failure to seek and heed such advice may increase the chance of a finding of willfulness.

Continue reading "Indiana Patent Litigation: Cor-A-Vent Sues Alleging Patent Infringement by DCI Products" »

April 9, 2014

Indiana Copyright Litigation: Richard Bell Files Another Copyright Infringement Lawsuit

Indianapolis, Indiana - Richard Bell, an Indiana copyright attorney, filed a lawsuit in the Southern District of Indiana alleging copyright infringement by numerous Defendants. The BellPicture.bmpDefendants are: Diversified Vehicle Services of Marion County, Indiana; Cameron Taylor and Taylor Computer Solutions of Indianapolis, Indiana; Rhonda Williams of Indianapolis, Indiana; Forensic Solutions, Inc. of Waterford, New York; Heath Garrett of Nashville, Tennessee; CREstacom, Inc. of Fishers, Indiana; American Traveler Service Corp LLC, location unknown;
Mike Cowper of Martinsville, Indiana; Kimberly Hinds of Indianapolis, Indiana; Rensselaer Polytechnic Institute of Troy, New York; EasyStreet Realty of Indianapolis, Indiana; Drohan Management of Reston, Virginia; Metal Markets of Indianapolis, Indiana; Mattison Corporation of Indianapolis, Indiana; Industrial Heating Equipment Association of Taylor Mill, Kentucky; Junk Dawgs of Indianapolis, Indiana and WRTV of Indianapolis, Indiana. Mr. Bell is both the copyright lawyer and Plaintiff in this lawsuit.

Bell is a copyright attorney and a professional photographer. He contends that he is the owner of two copyrighted photographs of Indianapolis taken in March 2000. The photos have been registered with the U.S. Copyright Office.

Bell alleges that each Defendant, independent of each other Defendant, "created their individual website to promote and market their business" and placed the Plaintiff's copyrighted photo on each of the Defendants' respective websites. It is alleged that no Defendant had obtained the right to publish either photo but that each falsely represented otherwise to the world. Bell asserts that, as a result, Defendants have "realized and continue to realize profits and other benefits rightfully belonging to Plaintiff." Each Defendant is accused of "willfully and deliberately" engaging in copyright infringement "with oppression, fraud, and malice."

In his complaint, Bell lists the following claims:

• Count I: Copyright Infringement and Unfair Competition
• Count II: Theft

Bell asserts that he has already suffered, and is continuing to suffer, irreparable injury as a result of the alleged infringement of his copyrighted photos. Bell asks the court to declare that the Defendants' conduct in using his photos violates his rights under Indiana law and the Copyright Act and asks the court to enjoin further infringing uses of his photos. Among other remedies, he seeks treble damages under Indiana statutory authority. He also asks for an accounting of all gains, profits and advantages derived by Defendants as a result of the alleged infringement and for the maximum allowable statutory and/or actual damages for each violation. Plaintiff also seeks reimbursement of costs and reasonable attorneys' fees.

Practice Tip #1: The claims of this case appear calculated to trigger the "advertising injury" clause of many general business liability insurance policies. If a defendant has applicable business insurance, this may allow Mr. Bell to negotiate quicker settlements. Overhauser Law Offices, publisher of this Site, counsels clients on insurance coverage for insurance claims.

Practice Tip #2: This newest complaint initiates the latest of three ongoing cases filed by Mr. Bell asserting infringement of his photos. We have blogged about his copyright infringement litigation before. See here. The Indiana Lawyer also wrote today about Mr. Bell's copyright infringement lawsuits.  See here.  The Indiana Business Journal ran a similar piece.  Those articles include an interview with Paul Overhauser, Managing Partner of Overhauser Law Offices.

 

Continue reading "Indiana Copyright Litigation: Richard Bell Files Another Copyright Infringement Lawsuit" »

April 8, 2014

Center for Intellectual Property Law and Innovation Holds Third Annual Symposium

Indianapolis, Indiana - On April 10, 2014, the Robert H. McKinney School of Law will hostMcKinney Photo.jpg "IP Jurisprudence in the New Technological Epoch: The Judiciary's Role in the Age of Biotechnology and Digital Media." The program will run from 9 a.m. to 5 p.m. and will provide 6.5 hours of continuing legal education.

Speaker: Robert A. Armitage, Consultant, IP Strategy & Policy

Location: Wynne Courtroom and Atrium, Inlow Hall, 530 W. New York Street, Indianapolis, Indiana

Attorney Registration: $100 (includes CLE credits)

General Admission: $25

Contact: Kyle Galster, kgalster@iupui.edu, 317-274-0042

Agenda:

9:00 to 9:10 a.m.
Introductory Remarks: Prof. John Schaibley, III, IP Center Executive Director

9:10 to 10:00 a.m.
Keynote Address: "Completing the Codification of U.S. Patent Law: Rising to the Challenge," Robert A. Armitage

10:00 to 11:00 a.m.
Trolls Under Attack: The Multiple Front Assault on NPE's/PAE's
Panel: Sharon Barner, Vice President-General Counsel, Cummins, Inc; Richard Rainey, Executive Counsel, IP Litigation, General Electric Co.; Hamid Piroozi, Director-Legal Purdue OTC; Brion St Amour, Head of IP, IURTC; Prof. John Schaibley (Panel Moderator)

Patent Assertion Entities have been a target for patent litigation reform efforts for many years. While the AIA contained certain provisions to deal with so-called patent trolls, attacks on these entities have multiplied and intensified in the last year. The House passed H.R. 3309, a bill would make dramatic changes to the patent litigation process (including enhanced pleading requirements and fee shifting), the President issued Executive Orders, the Supreme Court granted certiorari in Highmark Inc. v. Allcare and Octane Fitness v. ICON Health (standard of review for exceptional case finding under 35 U.S.C. §285), and numerous states have taken action against NPE's as well. The panel will explain and analyze these developments, focusing on the perceived need for reform, and the better mechanisms for reducing actual abuses of the system, while maintaining effective enforcement of patent rights.

11:00 to 11:10 a.m.
Break

11:10 a.m. to Noon
Software Patents Under Attack: Patents Allegedly Inhibiting More Innovation Than They Incentivize

Panel: David Jones, Assistant General Counsel for IP Policy, Microsoft Corp.; Bruce Schelkopf, Vice President, Dep. General Counsel & Chief IP Officer, Ingersoll Rand; Kevin Erdman (Partner, Reichel IP), Prof. Gerard Magliocca (Panel Moderator)

With the Supreme Court's grant of certiorari in Alice Corp. v. CLS Bank Int'l, a software patent for reducing risk has put software patents in general at risk. Are there categories of technology that are a poor fit for patent protection, especially in light of freedom to operate concerns? Should Congress or the Courts make such judgments? Would hybrid IP rights better suit some current categories of patentable subject matter? Do some industries even need the incentive of patent exclusivity to innovate? Was Bilski the bellwether of a trend toward substantially contracting patent eligible subject matter? The panel will address these questions, explain and analyze applicable case law, compare U.S. and international treatment of such subject matter, evaluate the conflicting interests at work, and address the appropriate respective roles of Congress and the courts in this area.

Noon to 1:00 p.m.
Luncheon in Atrium

1:00 to 2:00 p.m.
Biotechnology Patents Under Attack: From Prometheus to Myriad, the Supreme Court's Narrowing View of Patent Eligible Subject Matter

Panel: Jim Kelley, Senior Director-Assistant General Patent Counsel, Eli Lilly and Co; Paul Berghoff (Partner, McDonnell Boehnen Hulbert & Berghoff), Prof. Emily Morris (Panel Moderator)

Rejecting the course-filter view of §101, the Supreme Court has employed judicially created categories of patent ineligible subject matter to invalidate key categories of biotechnology patents (e.g., Mayo v. Prometheus Laboratories, Inc., Ass'n for Molecular Pathology v. Myriad Genetics), while giving no weight to decades of USPTO practice, and no deference to the Federal Circuit, the specialized appellate court Congress created to develop and refine patent law. Has the Court failed in developing a coherent doctrine in light of the special issues posed by biotechnology, and is the Court institutionally competent to exclude broad categories of subject matter from patent eligibility? Should Congress provide a detailed code of patent ineligibility law? In the absence of Congressional action, what are Myriad's implications for pharma patents based on isolated, but naturally occurring substances? How will new USPTO rules address such questions? Has Prometheus stolen the fire of biotechnology, particularly personalized medicine? The panel will address these questions, analyze applicable case law, and evaluate whether judge-made patent law provides more doctrinal confusion or enlightenment, and whether Congress should exercise its plenary authority to codify with more specificity categories of patent eligible and ineligible subject matter. The panel will also discuss the March 4, 2014 USPTO Guidance memorandum implementing a new procedure to address changes in subject matter eligibility doctrine under Myriad and Prometheus.

2:00 to 3:00 p.m.
The Federal Circuit Under Attack: The Supreme Court's Recent Focus on IP - Diagnosing the Causes and Assessing the Results

Panel: Doug Norman, Vice President-Chief Patent Counsel, Eli Lilly and Co.; Kenneth Southall, Chief Patent Counsel, Cummins Inc.; Paul Berghoff (Partner, McDonnell Boehnen Hulbert & Berghoff), Prof. John Schaibley (Panel Moderator)

The Supreme Court issues less than half as many decisions as it did a generation ago, but increasingly grants certiorari in major IP issues, often unanimously reversing the Federal Circuit, the specialized court Congress created to develop and coherent and consistent body of patent law. The panel will analyze recent (e.g., Bilski, Myriad, Prometheus, Bowman v. Monsanto Co.) and pending (Limelight Networks v. Akamai Techs. (standard for inducing patent infringement), Nautilus v. Biosig Instruments (standard for indefiniteness)) cases before the Court, assessing that factors that influence the Court to grant review, and evaluating the Court's institutional competency in various areas of IP. If judge-made patent law is going to continue to be the primary mechanism for refining patent doctrine, in what areas should the Court defer to the Federal Circuit, and when should it intervene? Have the Justices generally concluded that the USPTO issues too many patents that fail to advance the useful arts, and that the Federal Circuit has failed to police adequately the judicially created exceptions to patent eligible subject matter? Prognostications will include possible Supreme Court review of the Federal Circuit's 6-4 en banc decision in Lighting Ballast Control LLC v. Philips Electronics North America Corp., reaffirming Cybor.

3:00 to 3:10 p.m.
Break

3:10 to 4:00 p.m.
Copyright, Patents, and Human Rights: A Global Perspective, Prof. Lea Shaver

4:00-5:00 p.m.
Copyright Under Attack by Digital Media: The Need for a Copyright Act for the Digital Age

Panel: Kevin Erdman Partner, Reichel IP; Robert S. Meitus, Partner, Meitus Gelbert Rose LLP; Prof. Lea Shaver (Panel Moderator), Prof. John Schaibley

The last comprehensive copyright law revision occurred in 1976, before personal computers, the internet, cell phones, DVR's (or even VCR's) - in short, before the dawn of the digital age. Since 1976, a series of copyright law amendments have occurred, often representing deals by organized interest groups. The term of copyright protection has been expanded, and public domain works have had non-existent copyrights "restored." The economic and societal consequences of this ad hoc, piecemeal approach to copyright reform have been profound. Meanwhile, the courts have been developing the law in the light of these new technologies, beginning with the landmark Sony decision, "viewed as the 'Magna Carta' of both 'product innovation' and the 'technology age.'" In ABC, Inc. v. Aereo, anticipated to be one of the most important copyright cases since Sony, the Supreme Court confronts the question whether the "public performance" right is violated when a company retransmits an over-the-air broadcast to paid Internet subscribers. In the absence of clear congressional intent, how should the Court resolve the conflicting economic interests at stake? Is judicial decision making on such copyright scope questions a sensible way of dealing with the numerous copyright issues that new technologies inevitably spawn? Is Aereo an example of the need for a new Copyright Act for the Digital Age? Moreover, can the copyright reform movement learn from the patent reform movement that resulted in the America Invents Act? What can the continuing patent reform movement learn from the copyright law code based model? Does the detailed copyright code suggest caution for over codifying patent doctrine? What areas of doctrine should remain the domain of common law development?

5:00 to 6:00 p.m.                                                                                                         Complimentary cocktail reception in the Atrium following the Symposium. Reception co-hosted by the Indianapolis Bar Association Intellectual Property Section and the IP Center.

Practice Tip #1:

Registration with the conference center is now closed. However, anyone interested in attending the Symposium may contact Kyle Galster at kgalster@iupui.edu or (317) 274-0042.

Practice Tip #2:

Parking is available for a nominal fee at the campus Gateway Garage, located on the corner of Michigan and California Streets (Address is 525 Blackford Street).

Parking is also available for a nominal fee at the Natatorium Garage two blocks west of the law school.

Practice Tip #3:

More information may be found here.

April 7, 2014

Indiana Trademark Litigation: Order Inn Asserts Trademark Infringement by "Order In"

Indianapolis, Indiana - A trademark attorney for Order Inn, Inc. of Las Vegas, Nevada filed a lawsuit in the Southern District of Indiana alleging that TJ Enterprises of Indiana, LLC d/b/a Order In ("Order In") and Tom Ganser, both of Carmel, Indiana and other unknown "Doe" OrderInnPhoto.pngindividuals infringed trademarks for "ORDER INN", Registration Nos. 3,194,903 and 2,801,951, which have been issued by the U.S. Trademark Office.

Order Inn Hospitality Services, also known as Order Inn, was founded in 2001. The company's initial core product, Order Inn Room Service, was created to provide room service to guests of limited-service hotels and timeshares. Order Inn states that it has developed partnerships with over 10,000 hotels and 700 restaurants nationwide and that it does business in Indiana.

Order Inn asserts ownership over several registered trademarks for "Order Inn," among them a registration for "On-line ordering services in the field of restaurant take-out and delivery; on-line order fulfillment services for goods and services which hotel guests, residents or businesses may wish to purchase; promoting the goods and services of others by preparing and placing advertisements in menus placed in hotels, residences or businesses; providing information in the field of on-line restaurant ordering services."

Order Inn claims that, as a result of its extensive, continuous and exclusive use of the "Order Inn" trademark in connection with its services, that trademark has come to be recognized by consumers as identifying Order Inn's services as well as distinguishing them from services offered by others. It further claims that its trademark has developed substantial goodwill throughout the United States.

Order In, which also does business in Indiana, facilitates restaurant takeout and delivery through its website and via telephone. Order In is accused of trademark infringement of a registered trademark and false designation of origin. Ganser is alleged to be an owner and/or manager of Order In and to have personally participated in any trademark infringement. Both Order In and Ganser are accused of infringing upon the Order Inn trademark willfully, intentionally and deliberately and with full knowledge and willful disregard of Order Inn's intellectual property rights.

In its complaint, filed by a trademark lawyer for Order Inn, the following counts are alleged:

• Federal Trademark Infringement Under 15 U.S.C. §1114
• False Designation of Origin and Unfair Competition under 15 U.S.C. §1125(a)

Order Inn asks for an injunction; damages, including treble damages; interest; costs and attorney's fees

Practice Tip:

The protection afforded to a registered trademark is not exhaustive in scope. Among the limits to its applicability are restrictions based on the type of business to which the trademark pertains. From its website, it appears that Order Inn directs its efforts primarily towards guests at hotels, inns and similar temporary-lodging facilities. In contrast, Order In's offerings are not similarly limited.

Trademarks protection is also unavailable for generic words that merely describe the goods or services for sale. For example, while "Apple" could be trademarked for use in conjunction with the sale of computers, a company would not be allowed to trademark the term to refer to the sale of apples. Similarly here, Order Inn may have difficulty in showing that it should be allowed to prohibit nationwide the use by anyone else of the generic term "order in."

Continue reading "Indiana Trademark Litigation: Order Inn Asserts Trademark Infringement by "Order In" " »

April 3, 2014

Indiana Trademark Litigation: Noble Roman's Sues for Trademark Infringement

Indianapolis, Indiana - An Indiana trademark attorney for Noble Roman's, Inc. of NRPPicture.gifIndianapolis, Indiana filed a lawsuit in the Southern District of Indiana alleging that Sahara Sam's Indoor Water Park, LLC of Pennsauken, New Jersey ("Sahara") infringed its trademarks. These trademarks are: Noble Roman's®, Trademark Registration No. 987,069; THE BETTER PIZZA PEOPLE, Trademark Registration No. 1,920,428; and a design mark, Trademark Registration No. 1,682,308. Noble Roman's also states that it has registered the Tuscano's® mark. In addition to trademark infringement, Noble Roman's asserts that Sahara engaged in false designation of origin and unlawful competition. Noble Roman's has registered its marks with the U.S. Patent and Trademark Office.

Noble Roman's is in the business of franchising the operation of Noble Roman's pizza franchises that feature pizza, breadsticks, and other related food items to various franchisees throughout the world. Noble Roman's has used its trademarks, among them "Noble Roman's" and "The Better Pizza People," registered in 1974 and 1995, respectively, in commerce in connection with marketing, identifying, and promoting its pizza franchises.

On or about June 27, 2005, Noble Roman's and entered into two franchise agreements. Under the terms of the agreements, Sahara became a franchisee of Noble Roman's, licensed and authorized to sell "Noble Roman's" and "Tuscano's" branded food products using Noble Roman's intellectual property assets. Noble Roman's asserts that these agreements included terms relating to the accurate reporting of sales and timely payment of franchise fees and other fees.

Sahara is accused of failing to pay royalties as required under the agreement and of misreporting sales, among other things. Noble Roman's contends that Sahara purposely, intentionally and knowingly misreported its sales to Noble Roman's for the purpose of avoiding payment of franchise fees and/or royalties which were due.

Noble Roman's also contends that, after electing not to renew the franchise agreements, Sahara violated certain post-termination provisions of the Agreements, including those which require Sahara to: (1) cease to use any Noble Roman's proprietary products; and (2) remove from public view and display any signage or other articles containing or depicting the trademarks.

Sahara is further accused of having violated the non-competition covenants by selling, after termination of the franchise agreements, various food items "which can be utilized without knowledge gained from Noble Roman's."

Noble Roman's states that Sahara's actions were without the authorization or consent of Noble Roman's and that they constitute trademark infringement, in violation of 15 U.S.C. § 1114(1), as well as false designation of origin in violation of 15 U.S.C. § 1125.

The complaint, filed by an Indiana trademark lawyer, lists the following:

• Count One (Trademark Infringement)
• Count One [sic] (Breach of Contract)
• Count Two (Fraud)
• Count Three (Injunctive Relief)

Noble Roman's asks for injunctive relief, as well as judgment in its favor in amount to be proven at trial, together with interest, punitive damages, costs of collection and reasonable attorney's fees.

Practice Tip: Noble Roman's has been particularly aggressive in enforcing franchise agreements. Since 2007, it has also filed the following suits in the Southern District of Indiana:

February 12, 2014 - NOBLE ROMAN'S, INC. v. B & MP and LESLIE PERDRIAU

September 5, 2012 - NOBLE ROMAN'S, INC. v. VILLAGE PANTRY

March 17, 2011 - NOBLE ROMAN'S, INC. v. FINDLAY TIFFIN OIL, LLC and AYMAN MAGDADDI

January 27, 2011 - NOBLE ROMAN'S INC. et al. v. BRABHAM OIL COMPANY and BRABHAM OIL COMPANY

October 9, 2009 - NOBLE ROMAN'S, INC. v. CITY CENTER FOOD CORP., INC.

August 31, 2009 - NOBLE ROMAN'S INC. v. W.J. INTERNATIONAL GROUP, LLC

July 17, 2009 - NOBLE ROMAN'S, INC. v. MARDAN, INC.

July 8, 2009 - NOBLE ROMAN'S, INC. v. RENTON WILLIAMS

April 21, 2009 - NOBLE ROMAN'S, INC. v. RICHARD A. GOMES and RRCM FOODS, INC.

April 2, 2009 - NOBLE ROMAN'S, INC. v. KANDAKAR ALAM

February 17, 2009 - NOBLE ROMAN'S, INC. v. EXPRESS LANE, INC.

February 10, 2009 - NOBLE ROMAN'S, INC. v. JJP&L, LLC

November 6, 2008 - NOBLE ROMAN'S, INC. v. PARDIS & ASSOCIATES, INC.

October 24, 2008 - NOBLE ROMAN'S, INC. v DELTA PROPERTY MANAGEMENT LLC, ZACK BROTHERS TRUCK STOP, LLC and STANDARD PETROLEUM CORP.

October 6, 2008 - NOBLE ROMAN'S INC. v. JAY'S GAS LLC

April 9, 2008 - NOBLE ROMAN'S, INC. v. SHAHRAM RAHIMIAN

March 17, 2008 - NOBLE ROMAN'S, INC. v. MEDALLION CONVENIENCE STORES, INC.

December 20, 2007 - NOBLE ROMAN'S, INC. v. MICHAEL J. BRUNSWICK, LAURIE BRUNSWICK, and M&L RESTAURANTS, LLC

September 17, 2007 - NOBLE ROMAN'S, INC. v. THE FRENCH BAGUETTE, LLC et al.

July 26, 2007 - NOBLE ROMAN'S, INC. v. MR. RON'S, L.C.

July 19, 2007 - NOBLE ROMAN'S INC. v. BAUER BUILT, INC. et al.

Continue reading "Indiana Trademark Litigation: Noble Roman's Sues for Trademark Infringement" »

April 2, 2014

137 Trademark Registrations Issued to Indiana Companies in March 2014

The U.S. Trademark Office issued the following 137 trademarks to persons

and businesses in Indiana in March 2014 based on applications filed by

Indiana trademark attorneys:

Reg. Number Word Mark Click to View
4497684 CHRISTIAN ART GREETINGS View
4501870 PRIVACY IS OUR POLICY View
4503451 INTERMODAL STRAP View
4501535 FNEX View
4501451 ARTBABBLE View
4501411 SCOOP View
4501268 Q View

Continue reading " 137 Trademark Registrations Issued to Indiana Companies in March 2014" »