Seventh Circuit News

February 16, 2024

Copyright Originality Upheld: Seventh Circuit’s Decision in UIRC-GSA Holdings v. William Blair

On January 12, 2024, the Seventh Circuit Court of Appeals, in the matter of UIRC-GSA Holdings v. William Blair, upheld a district court’s ruling to award summary judgment and attorneys’ fees in favor of Blair. The issue revolved around copyright infringement claims brought by UIRC-GSA Holdings against William Blair, a financial services company. UIRC-GSA Holdings (hereafter referred to as UIRC) alleged that Blair copied certain documents used in bond offerings, which UIRC claimed copyright protection over. Blair prevailed at summary judgment, and the district court awarded attorneys’ fees under the Copyright Act. UIRC appealed, arguing that the district court erred in ruling that UIRC lacked the requisite originality for valid copyrights in the documents and in awarding fees to Blair.

The case involved UIRC, a company managing properties leased to the U.S. General Services Administration (GSA), seeking capital by pooling GSA properties and offering bonds. UIRC produced key documents for this process, including a private placement memorandum (PPM) and an indenture of trust, largely adapted from documents by the Idaho Housing and Finance Association, with the addition of some new language. The legal issue concerned the originality and copyrightability of UIRC’s documents, as copyright law requires works to be independently created with some degree of creativity to qualify for protection.

The district court ruled in favor of Blair, finding that UIRC’s documents lacked the necessary originality for copyright protection. The court noted that UIRC had extensively copied language from documents prepared by the Idaho Housing and Finance Association. Additionally, the court found that the new text added by UIRC consisted primarily of facts, fragmented phrases, or language dictated by functional considerations, which are not eligible for copyright protection.

October 13, 2023

Magistrate Judge Joshua P. Kolar Congratulated on his Seventh Circuit Nomination

By Overhauser Law Offices, LLC

Magistrate Judge Joshua P. Kolar

HAMMOND, Indiana – On October 10, 2023, Chief Judge Holly A. Brady congratulated Magistrate Judge Joshua P. Kolar on his nomination by President Joseph R. Biden to the United States Court of Appeals for the Seventh Circuit. If confirmed, Judge Kolar will fill the vacancy left behind by the death of Judge Michael S. Kanne.

In her statement about Judge Kolar, Chief Judge Brady wrote that the judges of the Northern District of Indiana are extremely proud of Magistrate Judge Kolar for being nominated to the Seventh Circuit. She also remarked that Judge Kolar “has been a tremendous asset as a member of the judiciary for the Northern District [of Indiana]…his thoughtful and humble approach to the matters pending before him will surely be missed by the bench, the bar and litigants, the judges anxiously await Judge Kolar’s much deserved confirmation.”

August 10, 2020

Seventh Circuit Rules Against Molson Coors in Beer Rival Litigation

By Overhauser Law Offices, LLC

The Seventh Circuit Court of Appeals issued an opinion in the case of Molson Coors Beverage Co. (“Molson Coors”) v. Anheuser-Busch Companies, LLC (“Anheuser-Busch”) which was originally filed in United District Court for the Western District of Wisconsin.

The basic issue is whether “the true statement ‘their [Molson Coors] beer is made using corn syrup and ours [Anheuser-Busch] isn’t’ wrongly implies that ‘their beer contains corn syrup.’” While the ingredient lists for both Miller Lite and Coors Light include “Corn Syrup (Dextrose),” Molson Coors argues that a list of “ingredients” is different from what is contained in the finished product. To support its argument, Molson Coors relies on the fact alcohol is omitted from the ingredients list, but is included in the final product. Continue reading

July 15, 2020

Trade Dress for Conveyor Belt Fastener Rejected as Functional

By Overhauser Law Offices, LLC

The U.S. Court of Appeals for the Seventh Circuit affirmed the district court’s ruling that Flexible Steel Lacing Co.’s (“Flexco”) trade dress is invalid because it is functional.

Flexco originally filed suit in the Northern District of Illinois, Eastern Division for trade dress infringement and unfair competition against Conveyor Accessories, Inc. (“CAI”). CAI counterclaimed seeking cancellation of Flexco’s trademarks and seeking declaratory judgment of invalidity, unenforceability, and noninfringement. The district court granted summary judgment in favor of CAI, finding that Flexco’s trade dress was functional because the product’s utilitarian advantages were disclosed in an expired utility patent, internal corporate documents, and advertising materials.

This case was before Chief Judge, Diane Wood, Judge Joel Flaum and Judge Kenneth Ripple assigned Appeal No. 19-2035 and was decided April 7, 2020.

August 29, 2019

Gatorade’s Use of the Term “Sports Fuel” Protected by Fair Use

By Overhauser Law Offices, LLC

Attorneys for Plaintiff-Appellant, SportFuel, Inc. (“SportFuel”), of Chicago, Illinois, originally filed suit against Defendants-Appellees, PepsiCo, Inc. (“Pepsi”) and The Gatorade Company (“Gatorade”) (collectively the “Appellees”), for trademark infringement in the United States District Court for the Northern District of Illinois, Eastern Division. After the District Court granted summary judgment for Gatorade and Pepsi, SportFuel appealed to the United States Court of Appeals for the Seventh Circuit. Circuit Judge Kanne wrote the opinion affirming the grant of summary judgment by the District Court.

SportFuel provides personalized nutrition services to professional and amateur athletes and sells its own brand of dietary supplements. SportFuel registered two trademarks for “SportFuel” the first of which was registered for “food nutrition consultation, nutrition counseling, and providing information about dietary supplements and nutrition.” Pursuant to 15 U.S.C. § 1065, the first registration became “incontestable” in 2013. The second registration for “SportFuel” was for “goods and services related to dietary supplements and sports drinks enhanced with vitamins.”

Gatorade, now a household name, was created in 1965. Although Gatorade is known for its traditional sports drinks, it also sells customizable sports drinks for individual professional athletes and other sports nutrition products. Starting in 2013, Gatorade began describing and marketing its products as “sports fuels” and registered the trademark “Gatorade The Sports Fuel Company” in 2016 with the United States Patent and Trademark Office (“PTO”). During the registration process, “Gatorade disclaimed the exclusive use of ‘The Sports Fuel Company’ after the PTO advised the company that the phrase was merely descriptive of its products.”

June 25, 2019

Opinion: Seventh Circuit Issues Opinion Regarding Bodum USA, Inc.’s Trade Dress Case Against A Top New Casting Inc.

By Overhauser Law Offices, LLC

Bodum USA, Inc. (“Bodum”) originally filed this case against A Top New Casting Inc. (“A Top”) in the Northern District of Illinois on claims of trade dress infringement. After a jury verdict found for Bodum and awarded $2 million in damages, A Top brought this appeal in the United States Court of Appeals for the Seventh Circuit. The Court of Appeals affirmed the findings and damages awarded.

Bodum began selling French press coffeemakers in the 1970s and began distributing the Chambord French press at issue in this case in 1983. Bodum claimed it acquired exclusive distribution rights to the Chambord French press in 1991 and has since spent millions of dollars in marketing and advertising the product. A Top began selling their French press, the SterlingPro, through Amazon in 2014.

In March 2016, Bodum filed a complaint for “trade dress infringement under the Lanham Act, 15 U.S.C. § 1125(a); common law unfair competition; and violation of the Illinois Uniform Deceptive Trade Practices Act”. While A Top moved for summary judgment twice, these motions were denied, and a jury trial took place in March 2018. The jury found that A Top willfully infringed the Chambord trade dress and awarded Bodum $2 million in damages. The district court denied A Top’s motion for judgment as a matter of law and granted Bodum’s motion for enhanced damages to $4 million dollars and a permanent injunction against A Top selling the SterlingPro products.

June 21, 2018

Seventh Circuit Upholds Preliminary Injunction Issued in Favor of Elanco US, Inc. Against Arla Foods

By Overhauser Law Offices, LLC

Eli Lilly & Company and its subsidiary, Elanco US Inc., both of Greenfield, Indiana, filed suit in the Eastern District of Wisconsin alleging that Arla Foods, Inc. USA of Denmark, and Arla Foods Production LLC a Delaware Corporation used false advertising and unfair business practices in regards to Arla brand cheeses.

In 2017, Arla Foods launched a $30 million advertising campaign focused on expanding its cheese sales in the U.S. These advertisements included ads featuring a seven-year-old girl describing recombinant bovine somatotropin (“rbST”), an artificial growth hormone used to treat cows, as a type of monster. The ads implied that milk from cows that were treated with rbST was unwholesome and unnatural, therefore not good for your family.

Elanco makes the only FDA-approved rbST supplement, marketed under the name Posilac®. After the Arla campaign launched, Elanco filed suit alleging that Arla was in violation of the Lanham Act and simultaneously moved for a preliminary injunction with supporting copies of ads, evidence that a major cheese distributor decreased its purchasing of rbST in response to the ad campaign, and scientific literature pertaining to rbST’s safety. The district judge issued the requested injunction and later modified the injunction to cure technical deficiencies.

January 11, 2017

Seventh Circuit Copyright Law: Pro Se Plaintiff Loses Counterfeiting Claim Against Amazon

By Overhauser Law Offices, LLC

Chicago, Illinois – The Seventh Circuit Court of Appeals has ruled against Plaintiff Reginald Hart in an intellectual property lawsuit filed against Amazon.com.

Plaintiff Hart, filing pro se, sued Amazon.com, Inc. alleging various state and federal claims, including copyright infringement, aiding and abetting counterfeiting, and intentional infliction of emotional distress. Hart, the author of two self-published books, Vagabond Natural and Vagabond Spiritual, claimed that Amazon had permitted six counterfeit copies of his books to be advertised for sale and/or sold on its website by third parties. Hart further claimed that Amazon had “forcefully exploited” the books by counterfeiting them “for its own commercial use.” He stated that the books, which detailed his experiences as a homeless man, would have generated “millions of dollars for Amazon” and allowed him “to end homelessness [and not only for himself] both in the U.S. and abroad.”

Hart asserted to the court that he was certain that the books were unauthorized reproductions of his works as they did not bear “indicia of authenticity known only to him.” The indicator that a book was genuine, according to Plaintiff, was his fingernail indentations on the cover of the book. Plaintiff provided photographs purporting to show both authorized copies of Plaintiff’s books and books alleged to be fake. The court, however, concluded that the “two types of book are in all respects identical.”

January 20, 2016

Seventh Circuit Law: Appellate Court Vacates Order Enjoining Defamation in Copyright/Trademark Case

By Overhauser Law Offices, LLC

Chicago, Illinois – The Seventh Circuit Court of Appeals held that an injunction against Defendants effecting a prior restraint on defamatory speech regarding the Plaintiffs was improper.

This lawsuit springs from an Indiana event occurring in 1956 wherein Mary Ephrem, a Catholic Sister, claimed to have encountered a series of apparitions of the Virgin Mary. Those apparitions told her: “I am Our Lady of America.” A program of devotions to Our Lady began, which Patricia Fuller joined in 1965. When Sister Ephrem passed away, she willed her property to Fuller. Between Sister Ephrem’s efforts to register intellectual property pertaining to Our Lady and Fuller’s efforts, the program’s assets included both copyrights and trademarks.

In 2005, Kevin McCarthy and Albert Langsenkamp volunteered to assist Fuller in promoting devotions to Our Lady. By 2007, however, the relationship had soured. Langsenkamp established the Langsenkamp Family Apostolate and McCarthy and Langsenkamp (and the latter’s apostolate) claimed to be the authentic promoters of devotions to Our Lady. They also claimed ownership to all documents and artifacts accumulated by Fuller and Sister Ephrem.

Paul Hartman intervened on Fuller’s behalf, “launching a campaign to smear McCarthy’s and Langsenkamp’s reputations.” McCarthy and Langsenkamp, as well as the Langsenkamp Family Apostolate, sued Fuller and Hartman asserting tortious conduct, including conversion, fraud and defamation. Plaintiffs also sought a declaratory judgment that they had not infringed any of Fuller’s intellectual property. Fuller and Hartman counterclaimed, accusing Plaintiffs of theft, infringement and defamation.

The district court conducted a jury trial that resulted in a verdict in favor of Plaintiffs, who were awarded compensatory and punitive damages, as well as attorney’s fees, sanctions and costs. The district court also issued an injunction prohibiting Defendants from making certain statements “as well as any similar statements that contain the same sorts of allegations or inferences, in any manner or forum” and ordered that Fuller take down his website.

Judge Posner, writing for the Seventh Circuit, upheld the damages, fees and costs but vacated the injunction. He noted that, while the jury had held that Plaintiffs had been defamed, there was no specific indication regarding which of the many of Defendants’ statements had been deemed by the jury to be defamatory. Thus, by prohibiting all of the statements, the injunction was overbroad.

Moreover, the injunction’s preamble greatly expanded the scope of the prohibited conduct by enjoining “any similar statements [that is, similar to the injunction’s specific prohibitions] that contain the same sorts of allegations or inferences, in any manner or forum,” as those listed in the body of the injunction. This was also held to be improper as overly expansive, as an injunction must be specific about the acts that it prohibits.

The mandate within injunction that Hartman take down his website, made without a finding that everything published on the website defamed any of the Plaintiffs, was also held to be overly broad.

Finally, the Seventh Circuit opined on the injunction as it related to the First Amendment, which forbids, with some exceptions, “prior restraints” on speech by the government. One permissible exception outlined by the other jurisdictions, including the Sixth Circuit, is for defamatory statements, which may be enjoined but only where the injunction is “no broader than necessary to provide relief to plaintiff while minimizing the restriction of expression.”

The appellate court thus concluded that the trial court’s injunction could not be sustained. Without ruling that the law of the Seventh Circuit allowed the enjoining of defamatory speech, it held that, even were such an injunction permissible in the Seventh Circuit, the injunction issued by the trial court was vague, open-ended and overbroad; that it was thus a patent violation of the First Amendment; and that as a consequence the injunction must be vacated.

December 18, 2015

Indiana Copyright Law: District Court Terminates Copyright Suit Over Photo; Plaintiff Appeals

By Overhauser Law Offices, LLC

Chicago, Illinois – One of the copyright lawsuits of Plaintiff Richard N. Bell of McCordsville, Indiana has been terminated by the trial court. Bell filed an appeal on multiple grounds with the United States Court of Appeals for the Seventh Circuit.

This Indiana lawsuit alleged copyright infringement of a photo that Bell, an Indiana copyright lawyer and professional photographer, took and copyrighted. The photo, U.S. Copyright Registration No. VA0001785115, was of the Indianapolis skyline. Bell has sued numerous Defendants alleging copyright infringement of this photo. In this lawsuit, the Defendants were Cameron Taylor, Taylor Computer Solutions, Insurance Concepts, Fred O’Brien, and Shanna Cheatham, all of Indianapolis, Indiana.

On December 4, 2015, District Judge Tanya Walton Pratt of the Southern District of Indiana entered a final judgment in favor of all Defendants and terminated the case. Within days, Bell appealed to the Seventh Circuit. Bell contends that the district court acted improperly regarding:

• The district court’s opinion, order and final judgment granting summary judgment in favor of the Defendants;
• The denial of “Plaintiff’s Second Motion to Compel and sanctions against Defendants for failing to answer Interrogatories and product [sic] requested documents … on October 16, 2013″ as well as his “appeal to the District Judge” on June 9, 2014 regarding that motion;
• The denial of “Plaintiffs [sic] Motion for Leave to File Fourth Amended Complaint”;
• The denial of an additional motion to compel and for sanctions;
• The district court’s ruling on partial summary judgment;
• The district court’s ruling on “Bell’s Motion to Relieve Plaintiff from Orders of the Court”; and

• The district court’s entry of final judgment against Bell.

Practice Tip: This is not the first time Bell has appealed in this litigation. We blogged about a prior appeal to the Seventh Circuit wherein Bell, after appealing, then argued that his appeal was premature and should not yet be heard by the appellate court.