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March 31, 2014

Indiana Trademark Litigation: Agler Sues Westheimer Over Use of Stratotone Mark

Fort Wayne, Indiana - Indiana trademark attorneys for Darryl Agler, doing business as The Stratotone Guitar Company of Fort Wayne, Indiana, filed a lawsuit in the Northern District of Indiana alleging that Westheimer Corporation of Northbrook, Illinois infringed the trademarkguitarpicture.bmp "STRATOTONE" (the "Stratotone mark"), Trademark Registration No. 3,986,754 which has been issued by the U.S. Patent and Trademark Office ("USPTO"). Counterfeiting, unfair competition, and false designation of origin arising under the Lanham Act, 15 U.S.C. § 1051 et seq., and the statutes and common law of the State of Indiana have also been alleged.

Agler custom manufactures guitars and sells them across the United States. Each of Agler's guitars is hand crafted from the wood of a customer's choosing and features vintage hardware. Agler currently accepts orders for his guitars on his website at www.stratotoneguitar.com. He also displays and sells his guitars, which sell at retail for $1,250 or more, at vintage guitar shows across the nation. Angler asserts that, since at least as early as January of 2007, his marketing and promotions in connection with his guitars have included the Stratotone Mark.

Agler claims a right to exclude others' use of the "Stratotone" mark in connection with guitars based on, inter alia, ownership of trademark rights to the mark "Stratotone" conferred by U.S. Reg. No. 3,986,754 ("'754 Registration"). The '754 Registration was issued by the USPTO in 2011 as a result of a 2006 application for the Stratotone mark in association with "musical instruments, namely, guitars."

According to the complaint, at the National Association of Music Merchants ("NAMM") show in 2010, Westheimer offered and sold cheaper guitars using the Stratatone mark. Agler states that he spoke to Westheimer personnel twice at this show, notifying them that Westheimer's products were infringing the Stratotone mark. Agler alleges that he was unable to sell any of his guitars at the NAMM show that year.

Agler indicates that, since the 2010 NAMM show, Westheimer has flooded the market with lower quality, cheaper guitars that bear the Stratotone mark. These guitars retail between $199.00 and $399.00. Agler contends that Westheimer's "Stratotone" guitars have destroyed the market for Agler's more expensive Stratotone guitars.

On April 25, 2013, Westheimer filed a petition to cancel the '754 Registration (the "Cancellation Petition") with the Trademark Trial and Appeal Board. The Cancellation Petition is currently pending.

In the complaint, filed by Indiana intellectual property lawyers for Agler, the following counts are alleged:

• Count I: Federal Unfair Competition and False Designation of Origin
• Count II: Federal Trademark Infringement
• Count III: Federal Trademark Counterfeiting
• Count IV: Common Law Unfair Competition and Trademark Infringement
• Count V: Unjust Enrichment
• Count VI: Conversion
• Count VII: Deception
• Count VIII: Indiana Crime Victim's Relief Act

Agler asks the court for injunctive relief; an accounting of damages; the surrender by Westheimer of items featuring the Stratotone mark; damages, including treble damages; and attorney's fees.

Practice Tip: Indiana Code §§ 35-43-4-3 and 35-43-5-3(a)(6) are criminal statutes, claimed in the complaint in conjunction with an attempt to parlay the accusation into an award for damages, costs and attorneys' fees. The Indiana Court of Appeals has discussed "theft" and "conversion" as they pertain to takings of intellectual property in several recent cases (see, for example, here and here) and has made it clear that criminal statutes often apply differently to an unlawful taking of intellectual property.

Continue reading "Indiana Trademark Litigation: Agler Sues Westheimer Over Use of Stratotone Mark" »

February 10, 2014

Swag Merchandising and Musical Group Devo Sue for Trademark Infringement

Indianapolis, Indiana - An Indiana trademark attorney for Swag Merchandising, Inc. and DEVO-picture2.bmpDevo Inc., both of California, sued in Hamilton Superior Court alleging that Your Fantasy Warehouse, Inc. d/b/a T.V. Store Online and Fred Hajjar, both of Commerce Township, Michigan, infringed Devo's Trademarks, Registration Nos. 3161662 and 3167516, which have been registered by the U.S. Trademark Office. The case has been removed from Indiana state court to the Southern District of Indiana.

Swag claims that it owns the exclusive right to license the various trademarks, copyrights and individual and collective rights of publicity of the musical group Devo. The group is best known for the song "Whip It," which hit number 14 on the Billboard chart in 1980. Swag indicates that it licenses the Devo intellectual property to third parties around the globe.

T.V. Store Online is in the business of manufacturing, marketing and distributing apparel and memorabilia featuring classic and current television programming, movies and/or music. T.V. Store Online and Hajjar have been accused of manufacturing, producing, marketing, advertising and/or retailing a product known as "Energy Dome Hats." Plaintiffs assert that these Energy Dome Hats are commonly associated with Devo but have not been licensed by Plaintiffs to Defendants. Plaintiffs further claim that consumers coming into contact with Defendants' product would "immediately recognize the same as being associated with, sponsored by and/or endorsed by" the '80s group.

In the complaint, filed by an Indiana trademark attorney, Plaintiffs assert the following:

• I: Violation of 15 U.S.C. §1125(a) of the Lanham Act
• II: Trademark Infringement - 15 U.S.C. §1114 and Common Law
• III: Counterfeiting
• IV: Dilution - 15 U.S.C. §1125(c) and New York General Business Law §360-1
• V: Common Law Unfair Competition
• VI: Statutory Right of Publicity [NB: under Indiana law]
• VII: Right of Publicity Infringement Under California Civil Code §3344
• VIII: Common Law Right of Publicity
• IX: Conversion [NB: under Indiana law]
• X: Deception [NB: under Indiana law]
• XI: Indiana Crime Victims Act

Plaintiffs ask for an injunction; the surrender of infringing materials; damages, including treble damages; costs and fees. An Indiana intellectual property lawyer for Defendants removed the case to federal court, although he noted that the removal was not a concession that the Southern District of Indiana was the proper venue for the California Plaintiffs or the Michigan Defendants.

Practice Tip:

This is at least the third case filed by Theodore Minch about which we have blogged. In at least two prior cases, LeeWay Media Group, LLC v. Laurence Joachim et al. and Leon Isaac Kennedy v. GoDaddy et al., Mr. Minch has filed in an Indiana court despite none of the parties having any connection to Indiana.

It can be surmised that perhaps the choice of Indiana as a forum might have been driven by an attempt to increase damages. I.C. §§ 35-43-4-3 and 35-43-5-3(a)(6) are criminal statutes, claimed in the complaint in conjunction with an attempt to parlay the accusation into an award for damages, costs and attorneys' fees. The Indiana Court of Appeals has discussed "theft" and "conversion" as they pertain to takings of intellectual property in several recent cases (see, for example, here and here) and has made it clear that criminal statutes often apply differently to an unlawful taking of intellectual property.

Continue reading "Swag Merchandising and Musical Group Devo Sue for Trademark Infringement" »

December 5, 2012

Indiana Court Grants Coach, Inc. Summary Judgment In Trademark and Copyright Infringement Case

South Bend, IN - Trademark attorneys for Coach, Inc. of Jacksonville, FL, filed a lawsuit in the Northern District of Indiana against Defendants Diva's House of Style and its owner Elizabeth Bond of Elkhart, IN, alleging multiple violations of intellectual property laws under the Lanham Act, the Copyright Act, Indiana common law and Indiana statutory law.

Lawyers for Coach sought partial summary judgment as to liability on three of its counts under the Lanham Act: trademark infringement, unfair competition and counterfeiting for the sale of products labeled as "Coach" which had not been manufactured by Plaintiffs (i.e., "knock-offs").

Defendant Bond, proceeding pro se, failed to respond to Plaintiffs' motion for summary judgment, as she had earlier failed to respond to the Plaintiffs' request for admissions. Defendant Diva's House of Style also attempted to proceed pro se despite the court's explicit warning that the company was not permitted to do so.

As a result of Defendant Bond's earlier failure to respond, 19 separate facts were deemed by the court to have been admitted. The undisputed facts were sufficiently robust to support summary judgment on the issue of liability for each of the three counts in question. The remaining counts, as well as a determination of damages for those counts for which Defendants were liable, were not addressed. The court also held that Ms. Bond could be held personally liable for her store's infringement as a result of her personal involvement in the misconduct.

Practice Tip: Pro se litigants should remember that failing to respond to a lawsuit - including failing to respond in a timely and procedurally appropriate manner - can have serious consequences. Moreover, when any business is operated through a corporation or LLC, the business owner is not allowed to represent the business. The business must hire a lawyer, preferably one experienced in litigation, to represent the business. Finally, while corporations are often used to shield owners of personal liability, that protection often does not apply to intellectual property infringement cases, such as those involving patents, trademarks or copyrights.

Continue reading "Indiana Court Grants Coach, Inc. Summary Judgment In Trademark and Copyright Infringement Case" »

June 27, 2012

U.S. Supreme Court Will Hear Copyright Case over Gray Market Goods

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

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

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

Continue reading "U.S. Supreme Court Will Hear Copyright Case over Gray Market Goods" »

April 20, 2012

Microsoft Corporation Sues D & A LLC for Copyright and Trademark Infringement Unauthorized Installations of Windows XP

Indianapolis; IN - Trademark and copyright attorneys for Microsoft Corporation of Redmond, Washington filed a copyright and trademark infringement suit in alleging D & A LLC d/b/a/ Asset Recovery and Recycling and David B. Bell of Indianapolis, Indiana infringed trademarks 1256083, 1200236, 1872264 and 2744843 registered by the US Trademark Office. The complaint also makes copyright infringement, false designation of origin, false description and representation, and unfair competition.

The complaint alleges that D&A markets, sells, and distributes computer hardware and software, including Microsoft products. The complaint states that D&A sells computers, which it advertises have Microsoft software pre-installed. Microsoft alleges that the Microsoft software on the computers D&A sells are infringing copies. The complaint states that a Microsoft investigator purchased computers with unauthorized copies of Windows XP from D&A on three occasions in 2011. The unlicensed software contains Microsoft trademarksmicrosoft.bmp and copyrighted works. Microsoft is seeking a declaration of infringement, an injunction, an accounting, an order impounding counterfeit copies of Microsoft software, damages, costs and attorney fees.

Practice Tip: Microsoft has named David Bell personally, the owner of D & B, as a defendant, alleging that he participated in and had a right to control the wrongful conduct. A corporate officer, director or shareholder is, as a general matter, personally liable for all torts which she authorizes or directs or in which she participates, even if she acted as an agent of the corporation and not on her own behalf.

Continue reading "Microsoft Corporation Sues D & A LLC for Copyright and Trademark Infringement Unauthorized Installations of Windows XP" »

April 11, 2012

JacobsParts, Inc. Sues United Integral, Inc. for Trademark Infringement In Sale of Phone Assessories On Amazon

Indianapolis; IN - Trademark attorneys for JacobsParts, Inc. of Indianapolis, Indiana filed a trademark infringement suit in alleging United Integral, Inc. of Temple City, California infringed trademark registration nos. 85405544,85567855,7725369 and 85575355 for the marks JPQuality and JacobsParts, which have been issued by the US Trademark Office.

The complaint states that JacobsParts sells computer and office supplies and that a vast majority of its sales are through amazon.com. United Integral is alleged to also sell computer and office supplies through amazon.com. The complaint alleges that at an unknown time, United began describing itself on amazon as selling products bearing the JPQualityjacobsparts.bmp and JacobsParts marks. The complaint alleges United claims to offer these trademarked goods at lower prices than JacobsParts does. The complaint states that United's unfair practices result in its products being listed first when customers are searching for the specific parts on amazon. It further alleges that United then sends customers generic and non-trademarked parts, which are lower quality, in an attempt to "pass off" its products. JacobsParts has included a list of the allegedly infringing products, which consists mainly of mobile phone cases, styluses, chargers and cables. The complaint seeks a declaration of infringement, an injunction, actual and treble damages, costs and attorney fees.

Practice Tip: The complaint makes only a bare-bones allegation of facts that would establish personal jurisdiction over Defendant United Integral in Indiana, "as a result of business regularly conducted by the Defendant within the State of Indiana." Despite the allegation that United Integral sells products on "Amazon.com," apparently JacobsParts did not make a purchase and have it shipped to Indiana before filing a complaint. Making such a purchase before filing a suit increases the chances of obtaining personal jurisdiction in Indiana.

Continue reading "JacobsParts, Inc. Sues United Integral, Inc. for Trademark Infringement In Sale of Phone Assessories On Amazon" »

March 20, 2012

Southern District Grants Summary Judgment for Coach in Trademark Infringement Case Over Knock-Offs

Indianapolis; IN - The Southern District of Indiana has issued a partial summary judgment in favor of Coach, Inc. and finding that Teresa Barnes, the owner of a Muncie store, had committed trademark infringement and counterfeiting for the sale of knock-off Coach goods.

In April 2011, trademark attorneys for Coach, Inc. and Coach Services, Inc. of New York, New York,Thumbnail image for Coach.bmp had filed a trademark infringement lawsuit in the Southern District of Indiana alleging that Chaos of Muncie, Chaos on Campus, LLC and Teresa Barnes of Muncie, Indiana have been offering for sale and advertising Coach knock-off products. The complaint alleged that in February 2011, the store was offering for sale fifty-five Coach knock-off items including flip-flops, handbags, wallets, and sunglasses. The complaint made claims of trademark counterfeiting, trademark infringement, trade dress infringement, false designation of origin, false advertising, trademark dilution, copyright infringement, common law trademark infringement, common law unfair competition, forgery, and counterfeiting. We blogged about the case here.

In the court's decision granting summary judgment, it noted that Coach had requested summary judgment and Ms. Barnes had failed to reply. The court then reviewed the elements of trademark infringement and counterfeiting, found there was no factual dispute and found that the Coach should be granted summary judgment on the issue of liability. The court has ordered Coach to submit evidence on its damages.

Practice Tip: As the court noted, "A corporate officer, director or shareholder is, as a general matter, personally liable for all torts which she authorizes or directs or in which she participates, even if she acted as an agent of the corporation and not on her own behalf." The court also noted that "an officer of a corporation can be personally liable for trademark infringement if the officer is a moving, active conscious force behind the defendant corporation's infringement." Citing Bambu Sales, Inc. v. Sultana Crackers, Inc., 683 F.Supp. 899, 913-14 (E.D.N.Y.1988). In this case, the court held that Ms. Barnes is personally liable because she was the sole owner of Chaos and managed all of the store's business decisions.

Continue reading "Southern District Grants Summary Judgment for Coach in Trademark Infringement Case Over Knock-Offs " »

February 7, 2012

Counterfeit Super Bowl Goods Lead to Federal Seizure and Arrest for Criminal Trademark and Copyright Infringement

Indianapolis, IN - Federal authorities, led by the Homeland Security Investigations division of the Immigration and Customs Enforcement (ICE), have seized counterfeit Super Bowl goods, shut down websites and made one arrest in a targeted effort to crack down on counterfeit sports goods and websites. According to a government press release, federal authorities seized fake jerseys, caps, t-shirts and other souvenirs illegally bearing NFL and other sports trademarks, trade names and copyrights.SuperBowl46.bmp According to the press release, the operation has been ongoing since October 2011 and culminated in the raids and arrest on Thursday, February 2. The total value of the goods seized was reported to be $4.8 million.

Indianapolis Metro Police Department also participated in the operation, which focused on street vendors in and around the Indianapolis Super Bowl village as well as counterfeit sellers around the world. According to a news report, a store called Off the Wall in Fort Wayne was one of the stores raided by federal agents.

The operation, dubbed Operation Fake Sweep, also targeted websites that illegally stream sports events and sell counterfeit goods. Over 300 websites were shut down. Yonjo Quiroa of Michigan was the sole person arrested. He has been charged with criminal copyright infringement based on his alleged operation of websites that illegally streamed live sporting events. According to news report, many of the websites selling counterfeit goods were from.

Practice Tip: On a related note, the Indianapolis Business Journal reported that the NFL had obtained a temporary restraining order in Marion County Superior Court that allows the NFL to seize counterfeit goods without notice. The report notes the NFL has over 20 registered trademarks such as Super Bowl, SB46, team logos and the Vince Lombardi Trophy design. IBJ has quoted Judge Cynthia Ayers as writing ""Plaintiffs have shown that notice need not be given because vendors and manufacturers of counterfeit NFL merchandise have no business identity and cannot be identified, located or notified ... and if so notified would flee with the counterfeit merchandise."
January 10, 2012

Coach Sues Kristy Davidson for Trademark and Copyright Infringement of the Coach Marks

Indianapolis; IN - Trademark lawyers for Coach Inc. of New York, New York filed a trademark and copyright infringement suit in the Southern District of Indianaalleging Kristy Davidson d/b/a Kristy's Trends of Greenfield, Indiana infringed the Coach'sCoach.bmp registered trademarks and copyrights, including the copyrighted works known as the "Coach Design Elements" including the SIGNATURE C DESIGNS, Registration No. VAu1-046658, COACH 70th ANNIVERSARY SNAPHEAD PRINT Registration No. VA1-010-918, and COACH CLOVER DESIGN, which have been registered by the US Copyright Office, and approximately fifty trademarks that have been registered by the US Trademark Office.

The complaint alleges that Ms. Davidson is designed, distributed, sold, promoted and offered for sale products that bear the Coach marks and copyrights without authorization from Coach. Essentially, Coach claims the Ms. Davidson is offering counterfeit Coach products for sale. The complaint alleges that on November 7, 2011, a Coach Representative visited Kristy's Trends in Greenfield, Indiana and purchased a handbag bearing the Coach marks, but that was not an authentic Coach handbag. The complaint alleges that the representative saw 20 additional handbags, six wallets, and a pair of boots bearing the Coach marks that was offered for sale. The complaint states that Coach's trademark attorneys sent a cease and desist letter to Ms. Davidson thereafter. In response, Ms. Davidson surrendered handbags, wallets, sunglasses and boots bearing the Coach marks.

The complaint makes claims of copyright infringement, trademark infringement, trade dress infringement, false designation of origin, false advertising, trademark dilution, unfair competition, forgery and counterfeiting. Coach seeks an injunction, damages of $2,000,000 per counterfeit mark, actual and punitive damages, costs and attorney fees.

Practice Tip: Coach has been very aggressive in protecting its intellectual property rights in Indiana courts in the last year. Coach's intellectual property attorneys have filed eight similar lawsuits in Indiana courts, which Indiana Intellectual Property Law and News has blogged and that are linked below.

Continue reading "Coach Sues Kristy Davidson for Trademark and Copyright Infringement of the Coach Marks" »

December 23, 2011

Northern District Grants Default Judgment and Damages of Over $113,000 in favor of Century 21 in Trademark Infringement Case

Lafayette, IN - The Northern District of Indiana granted a default judgment, damages and a permanent injunction in a trademark infringement case involving a hold-over franchisee. Century 21 Real Estate, LLC Century 21 Logo.JPGof Parsippany, New Jersey had filed a trademark infringement lawsuit in the Northern District of Indiana alleging that Destiny Real Estate Properties LLC, f/d/b/a Century 21 Destiny Real Estate and Daniel Sutton of Lowell, Indiana infringed Century 21's trademarks and service marks. Indiana Intellectual Property Law and News blogged about the case when it was filed. The defendants failed to file any response to the Century 21's complaint. After finding that the defendants had been properly served, the court granted Century 21's motion for a judgment by default.

The Court analyzed a legal question that has not yet been examined by the Seventh Circuit Court of Appeals and that different federal circuit courts have reached different results: "whether a hold-over franchisee's continued unauthorized use of a franchisor's mark constitutes counterfeiting[?]" The court found that the defendants use to Century 21's mark was counterfeiting in this case and noted "The Court can conceive of no reason why an ex-franchisee should escape liability for counterfeiting simply because that person had access to franchise's original marks because of the former relationship[.]" The court then analyzed the damages claims of Century 21 and awarded $113,656 plus attorneys fees of $5,419 and costs of $595 to Century 21. The Court also granted Century's 21's request for a permanent restraining order that prevents the defendants from using the Century 21 marks.

Practice Tip: Since the Court found that the defendant's trademark infringement was counterfeiting, treble damages were available to Century 21. This case explains how intellectual property rights are generally well protected in statutory damages provisions and explains how the trebling of damages, ability to recover a defendant's "profits" and recovery of attorney fees can lead to significant recoveries, even without the intellectual property owner having to prove "actual" damages.

Continue reading "Northern District Grants Default Judgment and Damages of Over $113,000 in favor of Century 21 in Trademark Infringement Case" »

December 14, 2011

Coach, Inc. Files Federal Trademark and Copyright Infringement Lawsuits Against The Treasure Box, Inc. for Infringements of Merchandise.

South Bend, IN - Trademark lawyers for Coach, Inc. of New York, New York filed a trademark and copyright infringement suit in the Northern District of Indianaalleging The Treasure Box, Inc. of Elkhart, Indiana infringed the Coach's registered trademarks and copyrights, including the copyrighted works known as the "Coach Design Elements" Coach.bmpincluding the SIGNATURE C DESIGNS, Registration No. VAu1-046658, COACH 70th ANNIVERSARY SNAPHEAD PRINT AND Registration No. VA1-010-918, COACH CLOVER DESIGN, which have been registered by the US Copyright Office, and approximately fifty trademarks that have been registered by the US Trademark Office.

The complaint alleges that the Treasure Box has advertised, sold, or offered for sale handbags, wallets, key chains, earrings and sunglasses bearing the Coach marks without authorization from Coach. The complaint states that on October 25, 2011, a Coach representative visited The Treasure Box store in Elkhart, Indiana and purchased a handbag, wallet and key chain bearing the Coach marks.. The representative also saw 25-30 additional items for sale in the store that bore the Coach marks, all of which were counterfeit items. The complaint makes claims of copyright infringement, trademark infringement, trade dress infringement, false designation of origin, false advertising, trademark dilution, unfair competition, forgery and counterfeiting. Coach seeks an injunction, damages of $2,000,000 per counterfeit mark, actual and punitive damages, costs and attorney fees.

Practice Tip: Coach's latest compliant is very similar to several others it has recently filed in Indiana, which Indiana Intellectual Property Law and News has blogged and that are linked below.

Continue reading "Coach, Inc. Files Federal Trademark and Copyright Infringement Lawsuits Against The Treasure Box, Inc. for Infringements of Merchandise." »

December 2, 2011

SoftMaker and SEG Sue Third Scroll Copyright and Trademark Infringements of Computer Software Products.

Indianapolis, IN - A trademark and copyright infringement case filed in the Southern District of California has been transferred to the Southern District of Indiana. Intellectual property attorneys for SoftMaker and SEG, both of Nuremberg, Germany have filed a trademark and copyright infringement suit in the Southern District of California alleging that Third Scroll of Indianapolis, Indiana infringed trademark registration no. 3,051,159 for the mark SOFTMAKERSoftmaker.bmp and trademark registration no. 3,104,173 for the mark TEXTMAKER registered by the US Trademark Office. The case was transferred to the Southern District of Indiana on November 29.

The plaintiffs are software development companies. The complaint states the suit is based on the defendant's production, importation and sale of hacked copies of the plaintiff's software bearing the plaintiff's trademarks. The complaint alleges that the defendants offered pirated copies of the plaintiff's software online, including the programs Textmaker®, Planmaker®, and Softmaker Presentations®. The plaintiff states that its software is protected by U.S. copyright laws and international treaties recognizing copyrights. The copyrighted software also bears the plaintiff's trademarks. The complaint makes claims of copyright infringement, "circumvention of copyright protection measures," trademark infringement and counterfeiting, false designation of origin, and unfair competition.

Practice Tip: This case was originally filed in the Southern District of California. The only allegation of a connection to California in the complaint is that defendant's website was accessible there. The defendant succeeded in getting the case transferred to Indiana, the domicile of the defendant company.

Continue reading "SoftMaker and SEG Sue Third Scroll Copyright and Trademark Infringements of Computer Software Products." »

October 14, 2011

French Lick Resort and Casino Sued by Colorado Artist for Copyright Infringement in Commissioned Artwork

Indianapolis, IN - French Lick Resorts and Casino Group has been sued in the Southern District of Indiana by Pamela Mougin for Copyright Infringement, violation of the Visual Artist Rights Act (17 USC § 106A), Breach of Contract and Unjust Enrichment. The West Baden Hotel is a historic hotel in Southern Indiana that was extremely popular in the early 1,900's. However, it fell in to disrepair. In the 2,000's it was restored in connection and converted into a hotel / casino in an effort to revitalize the economically depressed region.

Copyright attorneys for Ms. Mougin allege that in 2006, she was commissioned by a Colorado Interior Design firm, Worth Group, to create "an archival hand-painted canvas series of angels with topography of story for the resorts Resort Dome.jpgWest Baden Hotel, featuring angels from an existing work in the dome of the resorts hotel."

Later, in November, 2007, Mougin claims she entered into an agreement with the hotel whereby, in exchange for $2,800 she granted permission on a "one time print agreement only" to make "large prints to be displayed at the resort West Baden Hotel." Allegedly, in the agreement, the hotel acknowledged Mougin's Copyrights in the Works.

Copyright lawyers for Mougin further claim that on October 13, 2008, she discovered that additional "3D relief productions of the Works were present in the upper lobby mezzanine of the hotel" and at least 48 outdoor banners hanging on light posts. She alleges she notified the French Lick Resort of Copyright Infringement that same day.

The lawsuit was filed October 11, 2011, apparently two days before the 3 year Copyright statute of limitations would have run on the copyright claim.

Practice Tip: This lawsuit raises several interesting issues, among them, the scope of Copyright in Ms. Mougin's work, since the complaint alleges that she made her angels from copies of what was preexisting at the hotel. The complaint also raises issues of the interplay between Copyright Infringement and Breach of Contract, as Mougin admits that the hotel had rights in the Copyrighted Works, although Mougin claims the scope of that license has been exceeded. Also, it appears that Ms. Mougin's claim for Unjust Enrichment is preempted by the Copyright Act, as its only factual basis appears to be acts that would constitute copyright Infringement. It is unclear why Worth Group is named a Defendant; as no specific actions of it are implicated.

Continue reading "French Lick Resort and Casino Sued by Colorado Artist for Copyright Infringement in Commissioned Artwork" »

October 8, 2011

Coach, Inc. Wins Default Judgment of $30,000 in Trademark Infringement Suit Against Tom's Treasure Chest of Gary, Indiana

Chief Judge Philip P. Simon of the Northern District of Indiana has award a default judgment and $30,000 in damages to Coach, Inc. of New York, New York in a trademark infringement case over the sale of knock-off Coach purses against a Gary, Indiana business.

In June 2010, trademark attorneys for Coach filed a trademark infringement lawsuit in the Northern District of Indiana alleging that Tom's Treasure Chest of Gary, Indiana infringed 48 trademarks registered with the US Trademark Office. Thumbnail image for Thumbnail image for Thumbnail image for Coach.bmpCoach also alleged Tom's Treasure Chest infringed the copyrighted works of Registration No. VAu000704542, LEGACY STRIPE, Registration No. VA0001228917, SIGNATURE C DESIGNS, Registration No. VAu1-046658, COACH 70th ANNIVERSARY SNAPHEAD PRINT AND Registration No. VA1-010-918, COACH CLOVER DESIGN which have been registered by the US Copyright Office. The complaint alleged that a Coach representative purchased two handbags labeled "Coach" at Tom's Treasure Chest store in Gary on May 12, 2010. The purchased handbags were not genuine Coach products, rather they were knock-off products. The complaint made claims of trademark counterfeiting, trademark infringement, trade dress infringement, false designation of origin and false advertising, trademark dilution, copyright infringement, unfair competition, criminal forgery, and criminal counterfeiting.

Since Tom's has failed to respond to the lawsuit in anyway, Coach filed a motion for default judgment. The court in its opinion granted the default judgment. The court then turned to the issue of damages. Coach sought statutory damages of $100,000 per violation, which would total $600,000 and argued that these damages were reasonable since Coach could have sought up to $12,000,000 under the statute. The court, however, found this amount was unreasonable. The court noted the only allegation was the sale of two infringing handbags and that Coach had not presented evidence of actual damages in this range. The court concluded that damages in the amount of $5,000 per violation for a total of $30,000. The court also awarded attorney fees and costs.

Practice Tip: Coach filed a nearly identical complaint against J & J.S. Petroleum just a few days ago. Indiana Intellectual Property Law News blogged about case here.

This case illustrates the importance of seeking legal counsel from a trademark infringement lawyer who will properly respond to a lawsuit if you are served with a similar complaint and summons. Federal Rule of Civil Procedure 55(b)(2) governs default judgment and allows the court to enter a default judgment after considering numerous factors. Here, the court gave great weight to the fact that the lawsuit was filed in June 2010 and Tom's had not filed any type of response. The court also considered that "it's in the public's interest to protect intellectual property from trademark infringement."

Continue reading "Coach, Inc. Wins Default Judgment of $30,000 in Trademark Infringement Suit Against Tom's Treasure Chest of Gary, Indiana" »

September 29, 2011

Coach, Inc. Files Federal Trademark and Copyright Infringement Lawsuits Against Indiana Company J & JS Petroleum, Inc. for Infringements of Handbags

Indianapolis, IN - Trademark lawyers for Coach, Inc. of New York, New York have filed a trademark infringement suit in the Southern District of Indiana alleging J & JS Petroleum, Inc. of Indianapolis, Indiana infringed the forty-eight trademarks registered with the US Trademark Office. In this suit, CoachThumbnail image for Thumbnail image for Coach.bmp also alleges J & JS infringed the copyrighted works of Registration No. VAu000704542, LEGACY STRIPE, Registration No. VA0001228917, SIGNATURE C DESIGNS, Registration No. VAu1-046658, COACH 70th ANNIVERSARY SNAPHEAD PRINT AND Registration No. VA1-010-918, COACH CLOVER DESIGN which have been registered by the US Copyright Office.

The complaint against J & JS alleges that the company operates a gas station and convenience store at 9025 Brookville Road in Indianapolis where a Coach representative purchased a purse labeled "Coach" on August 21, 2011. The knock-off purse was purchased for $59.99, rather than the normal retail price of the Coach purse of approximately $298. Coach had not authorized the use of the "Coach" mark on the purse sold. The Coach representative viewed additional product labeled "Coach" for sale in the store. The complaint makes claims of trademark counterfeiting, trademark infringement, trade dress infringement, false designation of origin and false advertising, trademark dilution, copyright infringement, unfair competition, criminal forgery, and criminal counterfeiting.

Practice Tip: Coach has recently been very aggressively defending its intellectual property rights in Indiana. Indiana Intellectual Property Law News has previously reported on several cases here:

Coach Files Two Trademark and Copyright Infringement Lawsuits in Northern District Over Knock-Off Coach Items

Coach, Inc. Sues Chaos of Muncie and Angelina's Unique Boutique for Trademark and Trade Dress Infringement For Sale of Coach Knock-Off Products

Coach, Inc. and Coach Services, Inc. Sue Diggz Clothing LLC and Lori Harth for trademark and trade dress infringement

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