July 2, 2014

Patent Office Issues 194 Patents To Indiana Citizens in June 2014

The U.S. Patent Office issued the following 194 patent registrations to persons and businesses in Indiana in June 2014, based on applications filed by Indiana patent attorneys:

PAT. NO. Title
D707590 Race car 
D707483 Side rail 
D707480 Bed frame 
8762766 Distributed fault tolerant architecture for a healthcare communication system 
8762289 Method, apparatus, and computer readable storage for training human searchers 
8762018 Method and apparatus for clutch pressure control 
8761941 Method for displaying medical data by a medical device during display failure 
8761940 Time block manipulation for insulin infusion delivery 
8761898 Flexible neural probe for magnetic insertion 
8761787 Methods, systems and apparatus to facilitate ranked network priority 
8760521 Calibration of large camera networks 
8760303 Spray drift systems and methods including an input device 

Continue reading "Patent Office Issues 194 Patents To Indiana Citizens in June 2014" »

July 1, 2014

174 Trademark Registrations Issued to Indiana Companies in June 2014

The U.S. Trademark Office issued the following 174 trademark registrations to persons and businesses in Indiana in June 2014 based on applications filed by Indiana trademark attorneys:

Reg. Number Word Mark Click To View
4556061 THE BRIDGE VIEW
4556052 STAY METRICS VIEW
4556051 STAY METRICS VIEW
4556027 ABRO VIEW
4556007 YOUR JOURNEY BEGINS HERE VIEW
4556005 TIER 2 CONTROLS VIEW
4555905 THERE'S A CODE FOR THAT VIEW
4555856 PACEMATES VIEW
4555815 VALLEY BLOOM VIEW
4555770 TAKING YOU WHERE BANKS WON'T. VIEW
4555768 ACQUIRE GROW SUCCEED VIEW
4555766 BUY. BUILD. SELL. VIEW
4555714 CONTRIB VIEW

Continue reading " 174 Trademark Registrations Issued to Indiana Companies in June 2014" »

June 30, 2014

Indiana Patent Litigation - Lilly Adds Panacea Biotec to List of Patent Infringement Defendants

Indianapolis, Indiana - An Indiana patent attorney for Eli Lilly and Company of Indianapolis, Indiana; Daiichi Sankyo Co., Ltd of Tokyo, Japan; Daiichi Sankyo, Inc. of Parsippany, NewEffient-pill.jpg Jersey; and Ube Industries, Ltd. of Yamaguchi, Japan sued in the Southern District of Indiana alleging that Panacea Biotec, Ltd. of New Delhi, India ("Panacea") infringed Effient® products, Patent Nos. 8,404,703 and 8,569,325, which have been issued by the United States Patent Office.

This lawsuit adds another defendant, Panacea, to Lilly's Indiana patent litigation. In these "Effient" patent-defense lawsuits, Lilly et al. assert allegations of infringement of Effient. At issue in the Panacea litigation are Effient-related patents 8,404,703 "Medicinal Compositions Containing Aspirin," (the "'703 patent") and 8,569,325 "Method of Treatment with Coadministration of Aspirin and Prasugrel" (the "'325 patent").

This complaint asserts patent infringement arising out of the filing by Panacea of an Abbreviated New Drug Applications ("ANDA") with the United States Food and Drug Administration ("FDA") seeking approval to manufacture and sell generic versions of two pharmaceutical products - Effient 5mg and Effient 10mg tablets - prior to the expiration of the '703 patent and the '325 patent. These patents cover two Effient products and/or methods of using Effient products and for which Lilly claims an exclusively license.

Effient products were approved by the FDA for the reduction of thrombotic cardiovascular events in certain patients with acute coronary syndrome (ACS) who are to be managed with percutaneous coronary intervention (PCI, or angioplasty). Effient products contain prasugrel hydrochloride, which is also known as 5-[(1RS)-2-cyclopropyl-1-(2-fluorophenyl)-2-oxoethyl]-4,5,6,7-tetrahydrothieno[3,2-c]pyridin-2-yl acetate hydrochloride or 2-acetoxy-5-(alpha-cyclopropylcarbonyl-2-fluorobenzy1)-4,5,6,7-tetrahydrothieno[3,2-c]pyridine hydrochloride, and is covered by the '726 patent.

The instructions accompanying Effient products state that patients taking Effient products should also take aspirin. The use of Effient products in combination with aspirin for the reduction of thrombotic cardiovascular events in patients with ACS who are to be managed with PCI is allegedly covered by the claims of the '703 and '325 patents.

Panacea is accused of planning to infringe the patents-in-suit by including with its products instructions for use that substantially copy the instructions for Effient products, including instructions for administering Panacea's products with aspirin as claimed in the '703 and '325 patents.

Plaintiffs contend that Panacea knows that the instructions that Panacea intends to include with its products will induce and/or contribute to others using those products in the allegedly infringing manner set forth in the instructions. Moreover, Lilly et al. also contend that Panacea specifically intends for health care providers, and/or patients to use Panacea's products in accordance with the instructions provided by Panacea and that such use will directly infringe one or more claims of the '703 and '325 patents. Thus, state Plaintiffs, Panacea's actions will actively induce and/or contribute to infringement of the '703 and '325 patents.

The complaint, filed by an Indiana patent lawyer, lists four counts:

• Count I: Infringement of U.S. Patent No. 8,404,703
• Count II: Declaratory Judgment of Infringement of U.S. Patent No. 8,404,703
• Count III: Infringement of U.S. Patent No. 8,569,325
• Count IV: Declaratory Judgment of Infringement of U.S. Patent No. 8,569,325

Plaintiffs ask the court for judgment:

• That Panacea has infringed the '703 patent and/or will infringe, actively induce infringement of, and/or contribute to infringement by others of one or more claims of the '703 patent;
• That Panacea has infringed the '325 patent and/or will infringe, actively induce infringement of, and/or contribute to infringement by others of one or more claims of the '325 patent;
• That, pursuant to 35 U.S.C. § 271(e)(4)(B), Panacea be permanently enjoined from making, using, selling or offering to sell any of its accused products within the United States, or, where applicable, importing accused products into the United States prior to the expiration of the '703 and '325 patents;
• That, pursuant to 35 U.S.C. § 271(e)(4)(A), the effective date of any approval of the Panacea ANDA under § 505(j) of the Federal Food, Drug and Cosmetic Act (21 U.S.C. § 355(j)) shall not be earlier than the later of the expiration dates of the '703 and '325 patents, including any extensions;
• If Panacea commercially makes, uses, sells or offers to sell any accused product within the United States, or, where applicable, imports any accused product into the United States, prior to the expiration of either of the '703 and '325 patents, including any extensions, that Plaintiffs be awarded monetary damages for those infringing acts to the fullest extent allowed by law and be awarded prejudgment interest based on those monetary damages;
• That the case be deemed exceptional under 35 U.S.C. § 285;
• That the '703 patent remains valid and enforceable;
• That the '325 patent remains valid and enforceable; and
• That Plaintiffs be awarded reasonable attorney's fees, costs and expenses.

Practice Tip: In March 2014, Lilly et al. filed a 101-page complaint making similar accusations against more than thirty defendants: Accord Healthcare, Inc. USA; Accord Healthcare, Inc.; Intas Pharmaceuticals Ltd.; Amneal Pharmaceuticals LLC; Amneal Pharmaceuticals of New York, LLC; Amneal Pharmaceuticals Co. India Pvt. Ltd.; Aurobindo Pharma Limited; Aurobindo Pharma USA Inc.; Dr. Reddy's Laboratories, Ltd; Dr. Reddy's Laboratories, Inc.; Glenmark Generics Inc., USA; Glenmark Generics Ltd.; Glenmark Pharmaceuticals Ltd.; Hetero USA Inc.; Hetero Labs Limited; Hetero Labs Limited Unit V; Hetero Drugs Ltd.; Mylan Pharmaceuticals Inc.; Mylan Inc.; Mylan Laboratories Limited; Par Pharmaceutical Companies, Inc.; Par Pharmaceutical, Inc.; Sun Pharma Global FZE; Caraco Pharmaceutical Laboratories, Ltd.; Sun Pharma Global Inc.; Sun Pharmaceutical Industries, Ltd.; Teva Pharmaceuticals USA, Inc.; Teva Pharmaceutical Industries, Ltd.; Watson Laboratories, Inc.; Actavis plc; Actavis, Inc.; Actavis Pharma, Inc.; Zydus Pharmaceuticals USA, Inc.; and Cadila Healthcare Ltd. d/b/a Zydus Cadila.

Continue reading "Indiana Patent Litigation - Lilly Adds Panacea Biotec to List of Patent Infringement Defendants" »

June 27, 2014

Terry Unveils Draft Legislation to Address Abusive Patent Demand Letters

WASHINGTON, D.C. - Commerce, Manufacturing, and Trade Subcommittee Chairman Lee Terry (R-NE) (pictured) recently proposed draft text of legislation to address illegitimate patent demand letters. The legislation is designed to protect businesses from abusive patent assertion entities, also known as PAEs or patent trolls, while preserving the ability of LeeTerryPicture.jpglegitimate companies to prosecute their patents.

The draft legislation seeks to increase transparency and accountability to help expose and prevent fraudulent infringement claims. It would require patent demand letters to include certain basic information to help companies determine whether a letter is legitimate. It would also enhance Federal Trade Commission (FTC) authority to levy fines on fraudulent patent demand practices, and provide state Attorney General enforcement of the federal standard.

Terry stated, "Patent trolls cost American companies tens of billions of dollars each year, and are threatening job creation and innovation. We heard from countless small businesses about the destructive consequences of these scams, and after listening to these concerns, it became clear Congress needs to act to stop this growing abuse. But we must also be careful not to reach too broadly and limit legitimate business practices."

Practice Tip: Information on the hearing, the Majority Memorandum, a witness list, and witness testimony will be available here as they are posted.

June 26, 2014

Indiana Patent Law: Magistrate Declines to Grant Crime-Fraud Exception to Attorney-Client Privilege

Evansville, Indiana - In the matter of Berry Plastics Corp. v. Intertape Polymer Corp., Indiana patent attorneys for Berry Plastics Corporation ("Berry") invoked the crime-fraud exception to the attorney-client privilege, asking the court to compel Intertape Polymer Corporation ("Intertape") to produce documents and testimony it had withheld as privileged. Magistrate Judge William G. Hussmann, Jr. of the Southern District of Indiana denied the request.

This Indiana patent lawsuit was filed in January 2010 and seeks a declaratory judgment. Plaintiff Berry of Evansville, Indiana requested a judgment that Patent No. 7,476,416, titled Process for Preparing Adhesive Using Planetary Extruder, was invalid and unenforceable due to inequitable conduct before the U.S. Patent and Trademark Office ("USPTO") by Intertape, a company located in Bradenton, Florida.

In this current order, Magistrate Judge Hussmann addresses Berry's request to compel Intertape to produce documents and testimony that had been withheld as subject to attorney-client privilege. Indiana patent lawyers for Berry argued that this was proper because Intertape had engaged in inequitable conduct or defrauded the USPTO.

The Magistrate first emphasized that this ruling pertained only to discovery, as the question of whether Intertape had perpetrated a fraud upon the USPTO was one of the ultimate issues in the litigation. As such, that question of fact would be decided at trial by Chief Judge Richard L. Young.

The general rule in discovery is that a party to litigation is entitled to discover from his adversary "any nonprivileged matter that is relevant to any party's claim or defense." An exception to the attorney-client privilege is made when the communication between the attorney and the client is made in furtherance of a crime or fraud. To successfully invoke this exception, Berry must offer evidence demonstrating that:

1) Intertape made a false representation as to a material fact;
2) Intertape made its false representation with intent to deceive;
3) the USPTO justifiably relied upon Intertape's false representation; and
4) the USPTO suffered an injury as a consequence of its reliance on Intertape's false representation.

In an attempt to prove that the elements of the crime-fraud exception applied, Berry offered "numerous allegations and ... extensive evidence suggesting Intertape engaged in inequitable conduct or defrauded" the USPTO. Intertape responded to each allegation with "numerous defenses and extensive evidence suggesting its dealings with the USPTO were lawful and forthright."

The Magistrate held for Intertape. Citing Federal Circuit precedent, which governs the application of the crime-fraud exception to privilege in patent cases, the court called the piercing of the attorney-client privilege an "extreme remedy." The rule in such cases is that, if the court were to find Intertape's explanation satisfactory, it must leave the privilege intact. After an analysis of the defenses proffered by Intertape, the court found that Intertape's explanation for each of the allegations of fraud sufficient to avoid a piercing of the privilege.

Practice Tip: Magistrate judges are adjuncts to Article III district judges. They often dispose of pretrial matters such as motions, evidentiary hearings and pretrial conferences. However, their authority, and thus their role, in federal litigation is constrained by constitutional and statutory limits. Because the factual issue of whether Intertape committed fraud against the USPTO was one of the ultimate issues in the litigation, Magistrate Hussman expressly limited his ruling in this opinion to the discovery dispute before him. At trial, Chief Judge Young, in his role as the ultimate finder of fact, may determine that Intertape did, indeed, commit fraud.

Continue reading "Indiana Patent Law: Magistrate Declines to Grant Crime-Fraud Exception to Attorney-Client Privilege " »

June 25, 2014

Indiana Trademark Law: Personal Jurisdiction Cannot be Based on Alter-Ego Theory

Indianapolis, Indiana - In the matter of American Petroleum Institute v. Bullseye Automotive Products, et al., Indiana trademark litigators Paul B. Overhauser and John M. Bradshaw of Overhauser Law Offices, attorneys for Carlos Silva, petitioned the court to dismiss Silva for lack of personal jurisdiction. District Judge Tanya Walton Pratt granted the motion to dismiss.

In July 2013, Indiana trademark attorneys for American Petroleum Institute ("API") of Washington, D.C. sued in the Southern District of Indiana alleging that Bullseye Automotive Products Inc. and Bullseye Lubricants Inc., both of Chicago, Illinois (collectively, "Bullseye"), and Carlos Silva of Chicago Ridge, Illinois infringed registered API "Starburst" and "Donut" trademarks, Registration Nos. 1864428, 1868779, and 1872999.

The Bullseye entities are Illinois corporations that bottle and sell motor oil. Defendant Silva is the sole incorporator and shareholder of the Bullseye entities. Plaintiff API is a trade association for the petroleum and natural-gas industry.

API brought various claims against Bullseye and Silva as an individual, including trademark infringement and trademark dilution. It claimed that Bullseye's labeling infringed on its "Starburst" and "Donut" certification marks. While Bullseye did not contest jurisdiction in Indiana, trademark lawyers for Silva asked the court to dismiss the claims against him for lack of personal jurisdiction.

API countered that the exercise of personal jurisdiction over Silva in Indiana was proper, contending that Silva personally directed the allegedly infringing activities, that he exercised complete control over Bullseye and that he and Bullseye were essentially the same entity for jurisdictional purposes. API made no argument that Silva personally had sufficient contacts with Indiana to permit an Indiana court to exercise personal jurisdiction.

The court rejected API's "alter-ego" theory of personal jurisdiction, stating that this argument pertained to liability, not jurisdiction. Even if the court determined that Silva were the alter ego of Bullseye, a finding that the court explicitly declined to make, such potential for liability for corporate acts was held to be irrelevant to the question of personal jurisdiction. In so ruling, the court stated that it was refusing to disregard the corporate form and bypass the protections it offers, citing the longstanding rule that a "corporation exists separately from its shareholders, officers, directors and related corporations...."

The court then analyzed whether it would be appropriate to exercise personal jurisdiction over Silva based on his personal contacts with the state of Indiana. It concluded that Silva as an individual had not purposefully availed himself of the privilege of conducting activities within Indiana such that he would reasonably anticipate being haled into an Indiana court. Finding that the minimum contacts necessary had not been established, the court held that exercising personal jurisdiction over Silva would offend due process and the "traditional notions of fair play and substantial justice" and dismissed Silva from the lawsuit.

Practice Tip: Many of the arguments API made - for example, that Silva personally selected the text and design for Bullseye's labels, that he personally negotiated with suppliers and that he oversaw production - do not support an "alter ego" theory. Activities such as these must necessarily be carried out by the sole shareholder of a small corporation. To find that a small corporation is the alter ego of a sole shareholder merely because that shareholder acts on behalf of the company would violate the basic principles of corporation law.

Paul B. Overhauser, Managing Partner of Overhauser Law Offices, also recently prevailed on the issue of personal jurisdiction in the Seventh Circuit in another lawsuit alleging trademark infringement.

Continue reading "Indiana Trademark Law: Personal Jurisdiction Cannot be Based on Alter-Ego Theory" »

June 23, 2014

Indiana Copyright Law: Three Default Judgments of $2,500 Ordered for Copyright Infringement

Indianapolis, Indiana - In Bell v. Glacier International, District Judge Tanya Walton Pratt (pictured) ofJudgePratt.jpg the Southern District of Indiana granted default judgments against three defendants, DiamondIndyLimo.com, Lon Dunn and Glacier International. In the three nearly identical opinions, the three defendants were each ordered to pay statutory damages of $2,500 for infringing a copyrighted photograph.

In January 2013, Indiana copyright attorney and professional photographer Richard N. Bell, acting as his own copyright lawyer, sued alleging copyright infringement under the Copyright Act and conversion under Indiana statutory law as a result of the allegedly unauthorized use of a photograph he had taken. This photograph had been registered with the United States Copyright Office.

In this lawsuit, Bell sued forty-eight Defendants: Jerry Gordon; Demand Media, Inc.; Bryce Welker; Royal Corniche Travel Ltd.; VRBO.com, Inc.; Experience Credit Unions, LLC; Jaclothing.com; Glacier International; ABNHotels.com; 1&1 Internet, Inc.; Conde Nast Digital; Flixter, Inc.; Financing-USA.com; SodaHead, Inc.; NuMedia Marketing, Inc.; Jynell Berkshire; Tzvetelin Petrov; Los Pentecostales del Area de la Bahia; 10Best, Inc.; Keyes Outdoor Advertising; Zoom Communications Inc.; Christine Nevogt; Zarzar, Inc.; Hydro-Gear; Tam T. Dang; Lon Dunn; William McLaws, Trustee; Natl-electronic Residential Payment History Recording Agency; CVI; Constant Contact, Inc.; Charles Lantz; Schumacher Cargo Logistics; Eventbrite, Inc.; Celebrity Entertainment Corp.; Association of Equipment Manufacturers; Yardi Systems Inc.; DiamondIndyLimo.com; Marcelo Santos; National Rural Recruitment & Retention Network; Anbritt Stengele; Pinnacle Sports Equipment, Inc.; Marygrove College; RunAnyCity.com; Buzzle.com, Inc.; Charles Onuska; University of Indianapolis; and PersephoneMagazine.com.

Bell alleged that each Defendant, independent of each other Defendant, "created a website to promote and advertise its own business" and placed Bell's copyrighted photo on each of the Defendants' respective websites. In addition to asserting copyright infringement, Bell also alleged criminal misconduct under Indiana statutory law. Bell requested an injunction and a declaratory judgment. He also asked the court for damages for copyright infringement under the Copyright Act as well as treble damages under an Indiana criminal statute prohibiting conversion.

In September 2013, the court entered default judgments against each of the three Defendants. Last week, the court issued three new opinions addressing the damages to be assessed against those Defendants.

The court first discussed the issue of damages for copyright infringement. Under 17 U.S.C. § 504(c)(1), statutory damages, in lieu of actual damages and profits, may be awarded "in a sum not less than $750 or more than $30,000" for each finding of infringement. A determination of willful copyright infringement permits the court in its discretion to increase the award of statutory damages up to $150,000 per infringement.

In determining the appropriate measure of statutory damages, the court considers factors including: (1) the infringer's state of mind; (2) the expenses saved, and profits earned, by the infringer; (3) the revenue lost by the copyright holder; (4) the deterrent effect on the infringer and third parties; (5) the infringer's cooperation in providing evidence concerning the value of the infringing material; and (6) the conduct and attitude of the parties.

The court declined to find the copyright infringement to be willful, in part because Bell requested statutory damages well under $30,000.00 per instance of infringement. Instead, the court found that $2,500 per Defendant was an appropriate measure of damages. An injunction was also granted, as it would serve the public interest by protecting copyrighted material and encouraging compliance with federal law. The injunction will be lifted upon payment of the award of statutory damages.

A claim of conversion under Indiana state law, and treble damages awarded pursuant to such a claim, was denied as preempted by the Copyright Act. Indiana code § 35-43-4-3(a) provides that a "person who knowingly or intentionally exerts unauthorized control over property of another person commits criminal conversion." However, section 310 of the Copyright Act preempts "all legal or equitable rights that are the equivalent to any of the exclusive rights within the general scope of copyright" and that "no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State." The court held that the photograph in question was clearly under the scope of the Copyright Act and that Bell had not sufficiently alleged a right apart from the Act. Thus, no damages were available under Bell's state law conversion claim.

Practice Tip:

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

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

Under 17 U.S.C. § 504(c)(1), a copyright owner may elect actual or statutory damages. Statutory damages range from a sum of not less than $750 to not more than $30,000. The determination of the exact amount is left to the discretion of the court. In this case, Richard Bell asked the court for no less than $5,000. In some cases, courts in determining damages in cases of default judgment have granted the entire amount. In this case, the court took the additional step of considering the cost to purchase Plaintiff Bell's picture - $200 - and incorporated that into its determination of the proper amount of damages to be awarded.

Continue reading "Indiana Copyright Law: Three Default Judgments of $2,500 Ordered for Copyright Infringement" »

June 20, 2014

USPTO Launches Glossary Pilot to Promote Patent Claim Clarity

Washington, D.C. - The United States Patent and Trademark Office ("USPTO") recently 600px-US-PatentTrademarkOffice-Seal_svg.pngannounced the launch of a new Glossary Pilot as part of a White House Executive Action designed to enhance claim clarity in the specification of software-related patent applications.

The pilot runs for six months from the start date of June 2, 2014.

Pilot participation requires an applicant to include a glossary section in the patent application specification to define terms used in the patent claim. Applications accepted into the pilot will receive expedited processing, be placed on an examiner's special docket prior to the first office action and have special status up to the issuance of a first office action.

Practice Tip: More information about the Glossary Pilot can be found at: www.uspto.gov/patents/init_events/glossary_initiative.jsp.

June 19, 2014

USPTO Cancels Redskins Trademark as "Disparaging" to Native Americans

Washington, D.C. - The opinion in Blackhorse v. Pro Football, Inc., TTAB Cancellation No. Redskins-Helmet.jpg92046185, resolved the petition of five Native Americans who filed for the cancellation of six "Redskins" trademarks with the U.S. Patent and Trademark Office ("USPTO").

Yesterday, in a 177-page opinion, the Trademark Trial and Appeal Board ("TTAB" or "Board") canceled six trademark registrations belonging to The Washington Redskins. All of the trademark registrations included the term "Redskins."

Trademark attorneys for the petitioners argued that the term "Redskins" was disparaging of Native Americans. Under 15 U.S.C. § 1052, registration of a mark may be denied if that mark "Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute."

Trademark lawyers for respondent Pro Football, Inc., the owner of the registrations in dispute, defended the trademarks on the grounds that the registrations were longstanding, had been much-used and had been the subject of significant investment.

The TTAB held that the petitioners had established by a preponderance of the evidence that the term "Redskins" was disparaging of Native Americans. The respondent's defenses were held to be inapplicable, as the TTAB determined that none of the claimants in this case had unreasonably delayed in bringing the cancellation action.

Judge Bergsman dissented on the theory that the petitioners made an insufficient showing that the trademarks were disparaging in the 1960s through the 1990s when they had been registered.

Practice Tip #1: The Trademark Trial and Appeal Board is an independent administrative tribunal within the United States Patent and Trademark Office.

Practice Tip #2: Pro Football, Inc. may seek judicial review in federal court for this determination. A similar petition in 1999 to the TTAB also resulted in a cancellation of the "Redskins" trademark registrations. Those cancellations were overturned on appeal in 2003 to the United States District Court, District of Columbia in part because so much time had passed between the registrations and the petition for cancellation. In that case, the court reasoned that the "notion that Pro-Football's trademarks would be subject to attack at any point in time would seriously undermine the entire policy of seeking trademark protection in the first place" and noted that "[t]he best time to resolve this case was 1967 or shortly thereafter." After several appeals to the United States Court of Appeals, District of Columbia, see Harjo II and Harjo III, the district court's reversal of the cancellations was upheld. The United States Supreme Court declined to hear the matter.

Practice Tip #3: A trademark registration is not required to use a trademark. Thus, Pro Football, Inc. may continue to use "Redskins" on its merchandise. Moreover, many states offer considerable protection for trademarks under state law. However, multiple state registrations are a poor substitute for a federal trademark registration. If the federal registrations for "Redskins" are canceled, the rights conferred by federal registration, such as nationwide legal presumption of ownership and the ability to prevent importation of counterfeit goods, would be lost.

June 18, 2014

Indiana Trademark Litigation: Liquid Palace Sues E Liquid Palace for Trademark Infringement

New Albany, Indiana - Trademark attorneys for Liquid Palace, LLC and Robert W. Kaiser, LiquidGeniePicture.jpgJr., both of New Albany, Indiana, filed an intellectual property lawsuit alleging that E Liquid Palace, LLC and Austin Simon, both of Jeffersonville, Indiana, and Russell Simon of Louisville, Kentucky infringed registered trademarks "Genie" and "Liquid Genie", serial numbers 86107913 and 86107799 by using the registered trademark "Electric Genie", serial number 86194345. This Indiana trademark litigation, initially filed in Indiana state court, was removed to the Southern District of Indiana.

Liquid Palace manufactures, distributes and sells electronic cigarettes, also known as e-cigarettes, and related products through brick-and-mortar and e-commerce channels. Liquid Palace indicates that it began conducting business on or around March 21, 2013. It claims that, in the next few days, it registered the domain name "liquidpalace.com" and began using the trademark "Liquid Genie" along with an accompanying image of a genie. Liquid Palace submitted applications for trademarks to the U.S. Patent and Trademark Office ("USPTO") for the "Genie" and "Liquid Genie" word marks, with an accompanying image, in November 2013.

E Liquid Palace, which does business as "Electric Genie," engages in a similar business approximately 6 miles from Liquid Palace's retail store. Defendant Austin Simon is asserted to be the sole member of E Liquid Palace. On April 4, 2013, two weeks after Plaintiffs' claimed business-opening date, Defendants submitted articles of organization to the Indiana Secretary of State to form E Liquid Palace, LLC, while Defendant Russell Simon is listed as the owner of the "Electric Genie" trademark.

Liquid Palace contends that it owns rights to the marks "Genie", "Liquid Genie" and "Electronic Genie". It claims that Defendants are using those marks and/or marks that are substantially similar. Liquid Palace asserts that these actions violate its trademark rights.

In its complaint, filed by trademark attorneys for Plaintiffs, the following counts are alleged:

• Count I: Violations of 15 U.S.C. § 1051 et seq.
• Count II: Common Law Trademark Infringement
• Count III: Intentional Interference with Prospective Business Advantage and/or Intentional Interference with Business Relationships
• Count IV: Unfair Competition
• Count V: Injunctive Relief

Plaintiffs seek damages, including compensatory and punitive damages; statutory and/or liquidated damages under 15 U.S.C. § 1051; interest; injunctive relief and costs and attorneys' fees.

Practice Tip:

Plaintiffs may have a difficult case to prove. They claim that at "the time the Defendants' submitted articles of organization for [E Liquid Palace], the Defendants knew or should have known that the Plaintiff's [sic] claimed a right to use 'Liquid Palace' in its business operations and that the intentional registration of 'E Liquid Palace, LLC' would confuse and/or mislead the consuming public." However, Plaintiffs' entity, Liquid Palace, LLC, is shown on the website of the Indiana Secretary of State to have been created in Kentucky on April 9, 2013, after the creation of E Liquid Palace, LLC.

Moreover, given that E Liquid Palace, LLC is the Defendants' legal name, not the name under which they present themselves to the public, Liquid Palace is going to have a hard time showing confusion in the marketplace resulting from any similarities between the legal names of the entities.

It will also be interesting to see how the court handles any competing rights conferred by the registration of the marks at issue, given that both Plaintiff(s) and Defendant(s) have rights in federally registered marks.

Finally, the core infringement standard for trademark law is the "likelihood of confusion" test. This test imposes liability if a substantial number of consumers are likely to be confused by a defendant's use of a trademark in which the plaintiff in the litigation has intellectual property rights. Given the exceedingly short period of time for which Plaintiffs here claim exclusive use of any mark in question, proving that consumers have come to identify Plaintiffs' marks exclusively with their goods will be challenging.

Continue reading "Indiana Trademark Litigation: Liquid Palace Sues E Liquid Palace for Trademark Infringement" »

June 16, 2014

Appeals Court Disallows Mass Joinder in Copyright Infringement Litigation

Washington, D.C. - The United States Court of Appeals for the District of Columbia handed Copyright-Troll-Crossing.jpgcopyright trolls a major defeat recently by removing one of their most powerful tactics: the ability to sue large groups of John Doe defendants together with minimal evidence.

The case, AF Holdings v. Does 1-1058, is one of the few mass copyright cases to reach an appellate court, and the first to look into fundamental procedural problems that have tilted the playing field firmly against the Doe Defendants. With this decision on the books, it appears likely that even more federal trial courts will disallow cookie-cutter lawsuits seeking cash payouts from dozens or even hundreds of Internet subscribers.

The appeal was brought by several internet service providers (Verizon, Comcast, AT&T and affiliates) with amicus support from copyright attorneys for the Electronic Frontier Foundation ("EFF"), the ACLU, the ACLU of the Nation's Capital, Public Citizen, and Public Knowledge.

On the other side of the copyright litigation was notorious pornography/copyright troll Prenda Law, the copyright lawyers for AF Holdings.

In this case, Prenda sued 1,058 Does (anonymous defendants identified only by an Internet Protocol address) in federal district court in the District of Columbia. It then issued subpoenas demanding that Internet service providers ("ISPs") give them the names of the Doe subscribers. The ISPs objected to this request, arguing that most of the Internet protocol ("IP") addresses were associated with computers located outside of the court's jurisdiction.

It was argued to the district court that joining together many subscribers in one lawsuit was fundamentally unfair and improper under the rules governing when defendants can be sued together (known as "joinder"). Lumping dozens or hundreds of Internet subscribers together, argued amici for the court, would deny them a real opportunity to explain their unique circumstances in court, such as who uses their Internet connection and when.

The district court disagreed with that argument and in August 2012 issued a decision that would allow Prenda and its fellow copyright trolls to continue these tactics. An appeal was brought to the Court of Appeals for the D.C. Circuit, an influential appellate court by several ISPs as well as amici of the court.

Recently, the appellate court ruled, reversing the district court's holding. In doing so, it set some powerful precedents. On the issue of jurisdiction, Circuit Judge Tatel ruled that in order to subpoena ISPs for subscribers' names, a plaintiff must show a "good faith belief" that Doe Defendants had a connection to the court's geographic territory. Quoting EFF's amicus brief, Judge Tatel noted that Prenda could have used simple geolocation tools to determine what state or region each Doe likely lived in, rather than suing people from all over the country in one court. "[W]e think it quite obvious," he wrote, "that AF Holdings could not possibly have had a good faith belief that it could successfully sue the overwhelming majority of the 1,058 John Doe defendants in this district."

The court also put a significant limit on the number of Doe Defendants who could be joined into one suit. While many people may share files in a single BitTorrent swarm over the course of days or months, the court suggested that only those who participate at the same time could be joined together in a single copyright infringement case. Delving more deeply than most courts into the workings of the BitTorrent protocol, Judge Tatel used an analogy that EFF had suggested during oral argument:

"[T]wo BitTorrent users who download the same file months apart are like two individuals who play at the same blackjack table at different times. They may have won the same amount of money, employed the same strategy, and perhaps even played with the same dealer, but they have still engaged in entirely separate transactions. And "[s]imply committing the same type of violation in the same way does not link defendants together for the purposes of joinder."

Practice Tip #1: Limits on courts' jurisdiction are a vital protection for the rights of defendants because, without this safeguard, Internet subscribers in Oregon (for example) could be forced to defend themselves in a distant court. That would make it even more likely that John Doe defendants would choose to pay a copyright troll a few thousand dollars to make the case go away, even if they had not infringed any copyright.

Practice Tip #2: Abusive copyright litigation tactics have not been limited to Prenda Law. Prenda, and other groups like it, have been using the subpoena power of various federal courts to identify Internet subscribers in an attempt to extract "settlements," which typically range between $2,000 and $4,000. They seem less interested, however, in investing the time and expense needed to actually figure out who, if anyone, could be proven to have infringed a copyright. Pornography trolls use court processes not to enforce their rights or to protect a legitimate business, but to make a profitable business out of the threat of embarrassment, specifically, being accused in court documents, which are usually available to the public, of having viewed pornographic materials.

Practice Tip #3: As the only federal appeals court decision on these issues in the context of copyright trolling, this decision can be expected to have a wide impact. Although Prenda seems to have ceased its copyright lawsuit campaign after being accused of fraud by Judge Otis Wright II last year, copyright trolling continues. Over 10,000 Doe defendants were sued in federal copyright infringement cases in 2013. After this decision, however, people who try to use copyright litigation as a money-making machine will have to limit the defendants in each suit both by geographic region and by the time of their alleged copyright infringement. This gives each defendant a better chance to defend him- or herself, and will also discourage some of the most abusive lawsuits from ever being filed.

This edited article was provided by the nonprofit group Electronic Frontier Foundation, which also served as an amicus to the court in this copyright infringement litigation. Organizations such as the EFF advocate for innovators and users of technology. The article has been licensed under the Creative Commons Attribution License.

June 13, 2014

Indiana Intellectual Property Litigation: DirecTV Sues Alleging Illegal Satellite Signal Interception

Indianapolis, Indiana - An intellectual property lawyer for DirecTV, LLC of El Segundo, DirecTV-picture.jpgCalifornia has sued in the Southern District of Indiana alleging that Jeremy Jennings and Regal Enterprises, LLC d/b/a Ron-De-Voo Inn, all of Hagerstown, Indiana illegally utilized a satellite signal that had been licensed for residential service by displaying the satellite programming in a commercial establishment. DirecTV seeks declaratory and injunctive relief as well as damages for the improper receipt, transmission and exhibition of its satellite programming signals.

DirecTV distributes satellite programming throughout the United States. Through its operations, DirecTV provides this programming via specialized satellite-signal receiving equipment to subscribers who purchase a programming license by paying a subscription fee.

This intellectual property lawsuit was brought under the Cable Communications Policy Act of 1984, 47 U.S.C. §521, et seq., and 47 U.S.C. §605. The complaint alleges that Jennings, in his capacity as an owner and individual with close control over internal operating procedures of Regal Enterprises, LLC and Ron-De-Voo Inn willfully and unlawfully used a residential subscription to DirecTV in a commercial establishment. Jennings has been sued both individually and as an officer, director, shareholder, principal, manager and/or member of Regal Enterprises, LLC, which does business as Ron-De-Voo Inn.

The complaint, filed by an intellectual property attorney for DirecTV, cites three causes of action:

• Count One: Damages for Violations of Cable Communications Policy Act under 47 U.S.C. §605(e)(3)(c);
• Count Two: Damages for Violations of 18 U.S.C. §2511; and
• Count Three: Civil Conversion.

DirecTV asks for the following: a declaration that the defendants' use of DirecTV was a violation of §2511 and §605, that such violations were willful and for the purpose of commercial advantage; an injunction against further violations; statutory damages under 18 U.S.C. §2511; statutory damages under 47 U.S.C. §605; punitive damages and costs, attorney's fees and interest.

Practice Tip #1: DirecTV provides services to homes based on residential rates and to commercial establishments under commercial rates. Jennings and Regal Enterprises are accused of surreptitiously gaining access to DirecTV programming without proper authorization by subscribing to DirecTV services under a residential account and then installing/moving the equipment to the business establishment and utilizing the services, licensed at a residential rate, in a commercial environment.

Practice Tip #2: As part of its complaint, DirecTV claims that its goodwill and reputation have been usurped. It will be interesting to see what evidence it offers as proof that, as a result of allegedly receiving a lower monthly fee for the programming provided to the defendants - a circumstance, if true, presumably known to few other than Jennings - its goodwill or reputation have been impacted.

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June 12, 2014

Indiana Intellectual Property Litigation: J & J Sports Sues Again Asserting Illegal Cable Signal Interception

Hammond, Indiana - An intellectual property attorney for J & J Sports Productions, Inc.250px-Pacquiao_vs_Bradleypicture.jpg ("J & J Sports") of Campbell, California sued Sheila M. Kikalos individually and d/b/a Valla Del Sol a/k/a Villa Del Sol of Merrillville, Indiana in the Northern District of Indiana alleging the illegal interception and broadcast of Manny Pacqiao v. Timothy Bradley, WBO World Welterweight Championship Fight Program (the "Program"), which was telecast nationwide on June 9, 2012.

J & J Sports states that it is the exclusive domestic commercial distributor of the Program. It has sued Sheila M. Kikalos individually and d/b/a Villa Del Sol, under the Communications Act of 1934 and The Cable & Television Consumer Protection and Competition Act of 1992.

Specifically, Kikalos has been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553 by displaying the Program without a commercial license on the day of its broadcast. Regarding the claim under 47 U.S.C. § 605, the complaint alleges that with "full knowledge that the Program was not to be intercepted, received, published, divulged, displayed, and/or exhibited by commercial entities unauthorized to do so, each and every one of the above named Defendants . . . did unlawfully intercept, receive, publish, divulge, display, and/or exhibit the Program" for the purpose of commercial advantage and/or private financial gain.

A count of conversion is also included in the complaint. It asserts that the alleged acts of interception and exhibition were "willful, malicious, egregious, and intentionally designed to harm Plaintiff J & J Sports" and that, as a result of being deprived of their commercial license fee, J & J Sports suffered "severe economic distress and great financial loss."

As there appears to be no separate legal entity, the lone defendant is Kikalos, who has been named both individually and doing business as Villa Del Sol. As an individual, J & J Sports asserts that Kikalos is responsible for the alleged unlawful activity, contending that she had the right and ability to supervise the activities of the establishment. J & J Sports asserts that the activities that she supervised included the unlawful interception of Plaintiff's program. J & J Sports contends that Kikalos specifically directed the employees of Villa Del Sol to unlawfully intercept and broadcast Plaintiff's program at Villa Del Sol and Grill or, if she did not, that the actions of the employees of Villa Del Sol are directly imputable to Kikalos by virtue of her purported responsibility for the activities of the restaurant.

J & J Sports further asserts that Kikalos as an individual specifically identified on the liquor license for Villa Del Sol, had an obvious and direct financial interest in the activities of Villa Del Sol.

In the complaint, the intellectual property lawyer for J & J Sports listed the following counts and requests for redress:

• Count I: Violation of Title 47 U.S.C. § 605. For this count, J & J Sports requests (a) statutory damages for each willful violation in an amount to $100,000.00 pursuant to Title 47 U.S.C. 605(e)(3)(C)(ii), and (b) the recovery of full costs, including reasonable attorneys' fees, pursuant to Title 47 U.S.C. § 605(e)(3)(B)(iii).
• Count II: Violation of Title 47 U.S.C. § 553. For this count, J & J Sports asks the court for (a) statutory damages for each violation in an amount to $10,000.00 pursuant to Title 47 U.S.C. § 553(c)(3)(A)(ii); (b) statutory damages for each willful violation in an amount to $50,000.00 pursuant to Title 47 U.S.C. § 553(c)(3)(B); (c) the recovery of full costs pursuant to Title 47 U.S.C. § 553 (c)(2)(C); and (d) and in the discretion of the court, reasonable attorneys' fees, pursuant to Title 47 U.S.C. § 553 (c)(2)(C).
• Count III: Conversion. For this count, the court is requested to order both compensatory and punitive damages from Defendants as the result of the Defendants' allegedly egregious conduct, theft, and conversion of the program and deliberate injury to J & J Sports.

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

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

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June 11, 2014

Indiana Copyright Litigation: Malibu Media Sues Nine Additional "John Does" Asserting Copyright Infringement

Indianapolis, Indiana - Nine copyright infringement lawsuits have been filed in the Southern District of Indiana on behalf of Malibu Media, LLC of Los Angeles, California. The lawsuits assert that nine separate unidentified defendants, each identified with only "John Doe" and an internet protocol address, infringed Malibu Media's copyrighted works.

Frequent copyright litigator Paul Nicoletti has filed another set of copyright infringement complaints in Indiana federal court. The complaints, filed on behalf of adult-content purveyor Malibu Media, assert infringement of the company's intellectual property. In this latest round, Malibu Media submitted nine new and nearly identical lawsuits for adjudication in the Southern District of Indiana against nine anonymous John Doe defendants. The defendants allegedly used the BitTorrent file-sharing protocol to illegally download, copy and distribute elements of various works of Malibu Media's copyrighted material. As with all of Malibu Media's complaints, the copyrights-in-suit cover pornographic videos.

Malibu Media seeks a permanent injunction barring the defendants from engaging in infringing activities; an order by the court that infringing materials be removed from all computers of each defendant; a separate award of statutory damages for each work found to have been infringed and reasonable attorneys' fees and costs.

Practice Tip: Defendants who fail to appear run a significant risk of having a default judgment entered against them. There is a significant disparity in the dollar amount awarded in default judgments against defendants in copyright infringement cases involving BitTorrent. In two separate cases, Judge William T. Lawrence ordered defendants who failed to appear to pay $20,000 for the copyright infringement that was deemed to have been admitted by the defendants' failure to defend against the allegations. See here and here. However, in a similar case, Judge Jane Magnus-Stinson ordered an entry of default judgment against a defendant for $151,425, the full amount requested.

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

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June 9, 2014

J & J Sports Sues Yeakle's Sports Bar and Grill Alleging Illegal Cable Signal Interception

Fort Wayne, Indiana - An intellectual property attorney for J & J Sports Productions, Inc. of manny-pacquiao-timothy-bradley.jpgCampbell, California has sued in the Northern District of Indiana alleging that Wesley Yeakle individually and d/b/a Yeakle's Sports Bar and Grill; and Yeakle's Sports Bar and Grill, Inc. d/b/a Yeakles Sports Bar and Grill, both of Marion, Indiana, illegally intercepted and televised Manny Pacquiao v. Timothy Bradley WBO Welterweight Championship Fight Program (the "Program"), which was telecast nationwide on Saturday, June 9, 2012.

J & J Sports states that it is the exclusive domestic commercial distributor of the Program. It has sued Yeakle's Sports Bar and Grill, Inc., as well as Wesley Yeakle as an individual, under the Communications Act of 1934 and The Cable & Television Consumer Protection and Competition Act of 1992.

Specifically, Defendants have been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553 by displaying the Program without a commercial license on the day of its broadcast. Regarding the claim under 47 U.S.C. § 605, the complaint alleges that with "full knowledge that the Program was not to be intercepted, received, published, divulged, displayed, and/or exhibited by commercial entities unauthorized to do so, each and every one of the above named Defendants . . . did unlawfully intercept, receive, publish, divulge, display, and/or exhibit the Program" for the purpose of commercial advantage and/or private financial gain.

A count of conversion is also included in the complaint. It asserts that Defendants' acts were "willful, malicious, egregious, and intentionally designed to harm Plaintiff J & J Sports" and that, as a result of being deprived of their commercial license fee, J & J Sports suffered "severe economic distress and great financial loss."

In addition to naming the separate legal entity, Yeakle's Sports Bar and Grill, Inc., which apparently owns the restaurant, Plaintiff has also sued Yeakle alleging that he had the right and ability to supervise the activities of the establishment. J & J Sports asserts that the activities that he supervised included the unlawful interception of Plaintiff's program. J & J Sports contends that Yeakle specifically directed the employees of Yeakle's Sports Bar and Grill to unlawfully intercept and broadcast Plaintiff's program at Yeakle's Sports Bar and Grill or, if he did not, that the actions of the employees of Yeakle's Sports Bar and Grill are directly imputable to Yeakle by virtue of his purported responsibility for the activities of the restaurant.

Yeakle has also been named individually as a result of J & J Sports' contention that he is a managing member of Yeakle's Sports Bar and Grill, Inc. J & J Sports further asserts that Yeakle, as an individual specifically identified on the liquor license for Yeakle's Sports Bar and Grill, had an obvious and direct financial interest in the activities of Yeakle's Sports Bar and Grill.

In the complaint, the intellectual property lawyer for J & J Sports listed the following counts and requests for redress:

• Count I: Violation of Title 47 U.S.C. § 605. For this count, J & J Sports requests (a) statutory damages for each willful violation in an amount to $100,000.00 pursuant to Title 47 U.S.C. 605(e)(3)(C)(ii), and (b) the recovery of full costs, including reasonable attorneys' fees, pursuant to Title 47 U.S.C. § 605(e)(3)(B)(iii).
• Count II: Violation of Title 47 U.S.C. § 553. For this count, J & J Sports asks the court for (a) statutory damages for each violation in an amount to $10,000.00 pursuant to Title 47 U.S.C. § 553(c)(3)(A)(ii); (b) statutory damages for each willful violation in an amount to $50,000.00 pursuant to Title 47 U.S.C. § 553(c)(3)(B); (c) the recovery of full costs pursuant to Title 47 U.S.C. § 553 (c)(2)(C); and (d) and in the discretion of the court, reasonable attorneys' fees, pursuant to Title 47 U.S.C. § 553 (c)(2)(C).
• Count III: Conversion. For this count, the court is requested to order both compensatory and punitive damages from Defendants as the result of the Defendants' allegedly egregious conduct, theft, and conversion of the program and deliberate injury to J & J Sports.

Practice Tip #1: A recent complaint filed by a different intellectual property attorney for J & J Sports deviated from the standard format of J & J Sports' complaints. The standard format, as is demonstrated in this complaint, includes a count of conversion. It also asserts Counts I and II as additive. However, the other complaint omitted the count of conversion and listed Counts I and II in the alternative. It will be interesting to see whether the differences between these pleadings results in different rulings by the Northern District of Indiana.

Practice Tip #2: J & J Sports has sued two entities: a legal entity which appears to be incorporated and an individual who is apparently an owner of that company. While corporations are intended to limit the liability of the principals, they are not always successful in doing so. Where a principal is personally involved in certain types of illegal activity, legal mechanisms (such as a corporation or a limited liability company) that are designed to shield that individual from liability may fail to do so.

Practice Tip #3:  J & J Sports is a frequent litigant.  While the fight programs at issue in its intellectual property lawsuits vary, with few exceptions, the complaints are otherwise almost identical.  As is sometimes also the case with others utilizing this template approach to drafting multiple similar complaints, this standardized method of litigation resulted in several errors in this complaint drafted for J & J Sports.  For example, the date of the program over which this federal lawsuit was initiated is listed incorrectly at least four times (listed variously as "Saturday [sic], June 6, 2012," "June 6, 2012" and May 7, 2011.")

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