Indiana Intellectual Property Law News

July 31, 2015

Criminal Copyright Infringement – 17 U.S.C. § 506(a) and 18 U.S.C. § 2319

The principal criminal statute protecting copyrighted works is 17 U.S.C. § 506(a), which provides that “[a]ny person who infringes a copyright willfully and for purposes of commercial advantage or private financial gain” shall be punished as provided in 18 U.S.C. § 2319. Section 2319 provides, in pertinent part, that a 5-year felony shall apply if the offense “consists of the reproduction or distribution, during any 180-day period, of at least 10 copies or phonorecords, of 1 or more copyrighted works, with a retail value of more than $2,500.” 18 U.S.C. § 2319(b)(1).

The 1992 amendments to section 2319 have made it possible to pursue felony-level sanctions for violations relating to all types of copyrighted works, including computer software and other works written, stored or transmitted in a digital format, if the other elements of the statute are satisfied. Felony penalties attach only to violations of a victim’s rights of reproduction or distribution in the quantity stated. A misdemeanor shall apply if the defendant does not meet the numerical and monetary thresholds, or if the defendant is involved in the infringement of the other rights bestowed upon the copyright holder, including the right to prepare derivative works, or the right to publicly perform a copyrighted work.

There are four essential elements to a charge of criminal copyright infringement: (1) that a valid copyright; (2) was infringed by the defendant; (3) willfully; and (4) for purposes of commercial advantage or private financial gain. Attempts to infringe are prohibited to the same extent as the completed act. Conspiracies to violate the Copyright Act can be prosecuted under 18 U.S.C. § 371. A minority of courts also require that the government prove the absence of a first sale, and refer to this as a fifth element of a section 506(a) offense. However, the majority position is that the absence of a first sale is an affirmative defense.

July 30, 2015

Copyright Law Introduction – Federal Law Preempts State Law

By Overhauser Law Offices, LLC

Historically, copyright protection had been provided through a dual system under which the federal government, by statute, provided limited monopolies for intellectual property concurrently with state statutory and common laws that established roughly equivalent protections. In 1976, Congress fundamentally changed this system by introducing a single, preemptive federal statutory scheme. The federal preemption provision, codified at 17 U.S.C. § 301(a), states that:

On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.

As stated in the legislative history, “[a]s long as a work fits within one of the general subject matter categories [of federal statutory copyrights], the bill prevents the States from protecting it even if it fails to achieve federal statutory copyright because it is too minimal or lacking in originality to qualify, or because it has fallen into the public domain.” H.R. Rep. No. 1476, 94th Cong., 2d Sess. 51, 131 (1976).

July 29, 2015

Criminal Copyright Law: An Introduction

By Overhauser Law Offices, LLC

The law of copyright is codified at Title 17 of the United States Code. The principal prohibitions relating to criminal copyright infringement are set forth at 17 U.S.C. § 506(a) and 18 U.S.C. § 2319. Titles 17 and 18 also contain a number of other provisions that make illegal certain practices which are inconsistent with Congress’ copyright protection scheme.

In the past several years, these criminal sanctions have been revised significantly, and the penalties for criminal infringement of copyrights have been increased. Under the Copyright Felony Act of 1992, infringement of a copyrighted work may now constitute a felony under federal law, depending on the number of infringing copies reproduced or distributed in a 180-day period, and their retail value.

July 28, 2015

Supreme Court Keeps Brulotte – Post-Expiration Patent Royalties are Still Unlawful Per Se

By Overhauser Law Offices, LLC

Washington, D.C. – The U.S. Supreme Court recently decided a patent-royalty lawsuit, Kimble v. Marvel Entertainment, LLC. The Court, divided 6-3, ruled against Kimble.

Stephen Kimble sued Marvel in 1997 for infringing his patent, U. S. Patent No. 5,072,856,

with its “Web Blaster,” a toy that allowed users to mimic Spider-Man’s web-slinging superpower. The litigation ended with a settlement wherein Marvel purchased Kimble’s patent for a lump sum and agreed to pay a 3% perpetual royalty on future sales.

July 24, 2015

Seventh Circuit Trademark Law: WD-40 Did Not Infringe “Inhibitor” Trademark

By Overhauser Law Offices, LLC

Chicago, Illinois – The United States Court of Appeals for the Seventh Circuit affirmed the

ruling of the United States District Court for the Northern District of Illinois, Western Division in the matter of Sorenson v. WD-40 Company, holding that WD-40’s use of “inhibitor” and a crosshair graphic on its product labels did not constitute trademark infringement.

Plaintiff Jeffrey Sorensen founded and is the CEO of a company that produces a line of rust-inhibiting products, which were first sold in 1997. These products contain a substance called volatile corrosion inhibitor (“VCI”). Sorenson owns a federally registered trademark – THE INHIBITOR – for this line of products. He also claims common-law trademark rights to an orange-and-black crosshair design mark that is associated with these products.

July 23, 2015

Indiana Trade Secret Litigation: Angie’s List Alleges Theft of Trade Secrets by Amazon Local and Employees

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Indiana intellectual property lawyers for Angie’s List Inc. of Indianapolis, Indiana sued in the Southern District of Indiana alleging theft of trade secrets. The Defendants in this litigation are AmazonLocal LLC of Seattle, Washington, Michael Albo, Kristin Baker, Dan Beary, Colton Bozigian, Jake Connerton, Adam DiVincenzo, Brandon Goodwyn, Kristen Haught, Justin Hillman, Amit Jain, Joshua Keezer, Olivia Landergan, Daniel Malamud, Raissa Masket, Samantha McDonald, Jason Patrao, Sharon Porter, Darren Reinstein, Billy Restrepo, Michael Shmunis, and Jacquelyn Vail.

In its 42-page complaint, Angie’s List alleges that competing business Amazon Local

and some of its employees misappropriated proprietary information belonging to Angie’s List by fraudulently obtaining membership accounts and, using this members-only access, obtained and misused proprietary information about thousands of service providers about which Angie’s List had gathered data.

July 22, 2015

Indiana Patent Litigation: Lilly Adds Mylan to List of Defendants Accused of Infringing Alimta

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana patent attorney for Eli Lilly and Company of Indianapolis, Indiana sued in the Southern District of Indiana alleging that Mylan Laboratories Limited of Hyderabad, India; Mylan Pharmaceuticals Inc. of Morgantown, West Virginia; and Mylan Inc. of Canonsburg, Pennsylvania (collectively, “Mylan”) infringed Patent No. 7,772,209 (“the 209 patent”), which covers the pharmaceutical product Alimta®.

Lilly is engaged in the business of research, development, manufacture and sale of pharmaceuticals worldwide. Alimta, which is licensed to Lilly, is a chemotherapy agent used for the treatment of various types of cancer. Alimta is composed of the pharmaceutical chemical pemetrexed disodium. It is indicated, in combination with cisplatin, (a) for the treatment of patients with malignant pleural mesothelioma, or (b) for the initial treatment of locally advanced or metastatic nonsquamous non-small cell lung cancer.

The drug is also indicated as a single agent for the treatment of patients with locally advanced or metastatic nonsquamous non-small cell lung cancer after prior chemotherapy. Additionally, Alimta is used for maintenance treatment of patients with locally advanced or metastatic nonsquamous non-small cell lung cancer whose disease has not progressed after four cycles of platinum-based first-line chemotherapy. One or more claims of U.S. Patent No. 7,772,209 cover a method of administering pemetrexed disodium to a patient in need thereof that also involves administration of folic acid and vitamin B12.

This Indiana patent infringement lawsuit arises out of the filing by Defendants of an Abbreviated New Drug Application (“ANDA”) with the U.S. Food and Drug Administration (“FDA”) seeking approval to manufacture and sell generic versions of Alimta prior to the expiration of the ‘209 patent. Defendants included as a part their ANDA filing a certification of the type described in Section 505(j)(2)(A)(vii)(IV) of the Food, Drug and Cosmetic Act, 21 U.S.C. § 55(j)(2)(A)(vii)(IV), with respect to the ‘209 patent, asserting that the claims of the ‘209 patent are invalid, unenforceable, and/or not infringed by the manufacture, use, offer for sale, or sale of Defendants’ ANDA products.

In its patent infringement complaint, filed by an Indiana patent lawyer, Lilly states that Defendants intends to engage in the manufacture, use, offer for sale and/or sale of Defendants’ ANDA Products and the proposed labeling therefor immediately and imminently upon approval their ANDA filing, i.e., prior to the expiration of the ‘209 patent. Lilly asserts that Defendants’ actions constitute and/or will constitute infringement of the ‘209 patent, active inducement of infringement of the ‘209 patent, and contribution to the infringement by others of the ‘209 patent.

Lilly lists a single count in this lawsuit – infringement of U.S. Patent No. 7,772,209 – and asks the court for:

a) A judgment that Mylan has infringed the ‘209 patent and/or will infringe, actively induce infringement of, and/or contribute to infringement by others of the ‘209 patent;
b) A judgment ordering that the effective date of any FDA approval for Mylan to make, use, offer for sale, sell, market, distribute, or import Mylan’s ANDA Product, or any product the use of which infringes the ‘209 patent, be not earlier than the expiration date of the ‘209 patent, inclusive of any extension(s) and additional period(s) of exclusivity;
c) A preliminary and permanent injunction enjoining Mylan, and all persons acting in concert with Mylan, from making, using, selling, offering for sale, marketing, distributing, or importing Mylan’s ANDA Product, or any product the use of which infringes the ‘209 patent, or the inducement of or contribution to any of the foregoing, prior to the expiration date of the ‘209 patent, inclusive of any extension(s) and additional period(s) of exclusivity;
d) A judgment declaring that making, using, selling, offering for sale, marketing, distributing, or importing of Mylan’s ANDA Product, or any product the use of which infringes the ‘209 patent, prior to the expiration date of the ‘209 patent, infringes, will infringe, will actively induce infringement of, and/or will contribute to the infringement by other of the ‘209 patent; and

e) A declaration that this is an exceptional case and an award of attorneys’ fees pursuant to 35 U.S.C. § 285.

Practice Tip: Lilly has also sued all Mylan Defendants for patent infringement of Effient®. It has also won a lawsuit, which was heard by the Federal Circuit, against Mylan Pharmaceuticals Inc. for infringing the patented Strattera®.

July 20, 2015

Indiana Trademark Litigation: Trademark Infringement Litigation to Proceed in Federal Court

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana state court complaint filed by Indiana trademark attorneys for 7E Fit Spa Licensing Group LLC, 7E Holdings 1 LLC, and 7E LLC was removed to the Indianapolis Division of the Southern District of Indiana upon the request of trademark lawyers for Defendants 7EFS of Highlands Ranch, LLC, Spectrum Medspa, Gordon Smith and Jane Smith.

Plaintiffs contend that they entered into various agreements with Defendants, including licensing and operating agreements, and that Defendants breached portions of one or more of the agreements in the operation of Defendants’ Littleton, Colorado business establishment.

Defendants are accused of violating the Lanham Act – 15 U.S.C. § 1114(a), 15 U.S.C. § 1125(a) and 15 U.S.C. § l 125(c) – as well as common law trademark infringement, unfair competition, breach of contract, tortious interference, breach of fiduciary duties and conversion.

July 14, 2015

House Judiciary Committee Approves Patent Reform Bill by Substantial, Bipartisan Vote

By Overhauser Law Offices, LLC

Washington, D.C. – The House Judiciary Committee recently approved the Innovation Act (H.R. 9) by a vote of 24-8. This bipartisan bill takes steps to combat the ever-increasing problem of abusive patent litigation. The legislation addresses abusive practices taking place in federal courts.

The Innovation Act is supported by a wide range of groups that include stakeholders from all areas of the economy representing businesses of all kinds from every corner of the United States, including independent inventors and innovators.

Key Components of the Innovation Act include:

July 13, 2015

Seventh Circuit Copyright Litigation: Appellate Court Dismisses Copyright Appeal as Premature

By Overhauser Law Offices, LLC

Chicago, Illinois – Richard Bell, an Indiana copyright attorney and professional photographer appealed a ruling by the United States District for the Southern District of Indiana, Indianapolis Division to the United States Court of Appeals for the Seventh Circuit. The Seventh Circuit dismissed the appeal for lack of jurisdiction.

In this copyright lawsuit, Bell, a repeat Plaintiff in the federal courts of Indiana, alleged copyright infringement by multiple Defendants in a lawsuit that he filed on his own behalf in the Southern District of Indiana. He asserted that each Defendant had impermissibly displayed a photo that he owns on websites promoting their respective businesses. His copyright infringement complaint sought both damages and an injunction prohibiting future use of the photo.

Defendants moved for summary judgment on the issue of damages. The district court found that Bell could not demonstrate how Defendants had caused him financial harm and, thus, Bell was entitled to no monetary recovery. After that ruling, the trial court issued a judgment against Bell, which Bell appealed to the Seventh Circuit.

The Seventh Circuit declined to hear the matter on the grounds that it lacked jurisdiction, noting that the district court had ruled on the issue of damages but not on the issue of injunctive relief. The appellate court would not have jurisdiction under 28 U.S.C. § 1291 until a “final decision” had been reached. In turn, such a “final decision” required that the litigation had been concluded on its merits.

Practice Tip: Bell’s approach here is curious. First, he appealed the district court’s ruling. Then, he apparently argued to the Seventh Circuit that his own appeal was premature because the district court’s judgment had not been final. As the appellate court noted, “Bell is correct: the court did not resolve his claims for injunctive relief. As such, the district court’s ruling was not final, and Bell’s appeal is premature.”

Practice Tip: Richard Bell has sued hundreds of defendants for copyright infringement in the Indiana federal courts. Previous blog posts regarding his litigation include:

• Bell Rings in the Holiday Weekend with a New Copyright Lawsuit
• Bell Files New Copyright Infringement Lawsuit
• Bell Sues Georgia-Base FindTicketsFast.com for Copyright Infringement
• Richard Bell Files Two New Copyright Infringement Lawsuits
• Court Prevents Copyright Plaintiff Bell from Outmaneuvering Legal System; Orders Bell to Pay Almost $34,000 in Fees and Costs
• Three Default Judgments of $2,500 Ordered for Copyright Infringement
• Court Orders Severance of Misjoined Copyright Infringement Complaint

• Richard Bell Files Another Copyright Infringement Lawsuit