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January 12, 2016

Indiana Trademark Law: Stratotone Guitar Co. Has Priority Date for Stratotone Trademark; Westheimer Infringed


Fort Wayne, Indiana - District Judge Jon DeGuilo held that prior rights to the Stratotone trademark were abandoned and that the subsequent user held the superior right to the trademark.

This litigation arose as a result of a federal trademark complaint, filed in the Northern District of Indiana by Plaintiff Darryl Agler, doing business as The Stratotone Guitar Company of Fort Wayne, Indiana. The Defendant is Westheimer Corporation of Northbrook, Illinois. In the complaint, Agler asserted that Westheimer had infringed the trademark "STRATOTONE" (the "Stratotone trademark"), Trademark Registration No. 3,986,754, which has been issued by the U.S. Patent and Trademark Office.

The claims listed in Agler's complaint were:

• 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

Westheimer counterclaimed, asserting that Agler was infringing on its rights in the Stratotone trademark as well as an additional trademark for "Atom."

In this opinion, Judge DeGuilo ruled on Agler's motion for summary judgment on counts I through IV as well as Agler's motion for summary judgment on all of Westheimer's counterclaims.

The court first addressed the Stratatone trademark. Agler asserted, and Westheimer conceded, that the Stratatone mark was protected and that Westheimer's use of the mark was likely to cause confusion. The question for the court was which party had superior rights to the mark, as determined by whether Agler or Westheimer had priority to the trademark. That priority, in turn, was determined by who had established and maintained the earliest claim to the trademark.

It was undisputed that Agler had filed an "intent-to-use" application to register the Stratotone mark on March 7, 2006. Westheimer claimed that it had acquired rights that predated Agler's 2006 application through its 2009 purchase of trademark rights from Harmony Industries, a third party that had used the Stratotone trademark at least as early as 2001.

The court, however, reviewed the testimony of those involved with Harmony Industries and found that Harmony Industries had both ceased to use the trademark and had demonstrated no intent to use it for more than four years starting at least January 1, 2003. The holder of a trademark has only three years to formulate its intent to resume use before that trademark is presumed abandoned. Thus, Harmony Industries was held to have abandoned the trademark. In turn, because Harmony Industries had no trademark rights to convey in the Stratotone mark, Westheimer acquired none. Consequently, Agler was held to have an earlier priority date and, thus, superior rights to the trademark. The court granted Agler's motion with respect to his claims, and Westheimer's counterclaims, regarding the Stratotone trademark.

Regarding the Atom trademark, the court concluded that it did not have sufficient evidence to determine that Agler had acquired priority. It thus denied Agler's motion for summary judgment with respect to the claims involving the Atom trademark.

Continue reading "Indiana Trademark Law: Stratotone Guitar Co. Has Priority Date for Stratotone Trademark; Westheimer Infringed" »

December 7, 2015

Criminal Counterfeit Law: U.S. Marshals Selling Thousands of Bottles of Non-Counterfeit Wine of Convicted Wine Counterfeiter

Washington, D.C. - The U.S. Marshals are currently auctioning approximately 4,711 bottles of wine, deemed authentic, that belonged to Rudy Kurniawan, the man convicted of fraud in federal court in 2013 for producing and selling millions of dollars of counterfeit wine.

The wine is being sold in two online auctions, one that started November 24 and one that started December 1 at The auctions close on December 8 and December 15, respectively.


"It may sound ironic that we are selling wine that belonged to a convicted wine counterfeiter," said Assistant Program Manager Jason Martinez of the U.S. Marshals Service Asset Forfeiture Division, "but we are duty-bound to recoup as much value from the sale of these authentic wines as possible to compensate those who were victims of his fraud."

The wine was being stored by Kurniawan in a California wine storage facility. It is believed that much of it was destined to be used in the production of fake high-end wines in his now-infamous scheme. Some of the authenticated, high-value wines that Kurniawan stored at the facility are included in the auction. Net proceeds from the sale of the wine will be made available to the court to be returned to victims in the case.

The Marshals contracted for the wine authentication and appraisal. The contract was awarded to Stephanie Reeves, of Houston, who worked with a team that included Michael Egan of Bordeaux, France. Egan was involved in the Kurniawan federal court case as the principal expert witness for the prosecution at trial. Specifically, Egan inspected the bottles with the most risk of being counterfeit, and he uncovered a quantity of counterfeit bottles that were removed from the collection being sold.

Kurniawan, 39, was sentenced to 10 years in prison and is serving his sentence at Taft Correctional Institute in California.

The Department of Justice Asset Forfeiture Program is a key component of the federal government's law enforcement efforts to combat major criminal activity by disrupting and dismantling illegal enterprises, depriving criminals of the proceeds of illegal activity, deterring crime and restoring property to victims. The U.S. Marshals Service plays a critical role by efficiently managing and selling assets seized and forfeited by DOJ. Proceeds generated from asset sales are used to operate the Asset Forfeiture Program, compensate victims and support various law enforcement and community initiatives.

Practice Tip: For more information on the case, see:

November 10, 2015

Indiana Trademark Litigation: Shipshewana Spice Company Sues Amish Farms for Use of "Happy Salt" Trademark


Shipshewana, Indiana - Indiana trademark lawyers for Plaintiff Kevin Horn, sole proprietor of Shipshewana Spice Company of Warsaw, Indiana, filed an intellectual property lawsuit in the Northern District of Indiana alleging that Bob Wilson d/b/a Amish Farms and Shipshewana's Best Spice Co. of Millersburg, Indiana infringed the trademark "HAPPY SALT," Trademark Registration No. 4,241,663, which was granted by the United States Patent and Trademark Office. Horn also alleges trademark counterfeiting, false description, trademark dilution and unfair competition.

Plaintiff Horn of Shipshewana Spice states in his intellectual property complaint that his company has been selling spices and other seasonings since 1994 both locally in north-central Indiana and online at Plaintiff further claims that the trade name "HAPPY SALT" has been associated with his spices since 1994. A trademark registration for this mark in International Class 30 for "Seasonings, namely, Seasonings in salt" was granted by the USPTO on November 13, 2012.

Defendant Wilson, alleged to be the operator of the website, is accused of offering counterfeit goods offered as "HAPPY SALT SEASONING," "HAPPY HEARTS SALT FREE SEASONING" and "HAPPY SEA SALT SEASONING." Plaintiff also protests the use by Defendant of the business name "Shipshewana's Best Spice Company," which it contends is nearly identical to Plaintiff's business name, "Shipshewana Spice Company".

The complaint, filed by Indiana trademark attorneys for Plaintiff, includes the following counts:

• First Claim: Trademark Infringement Under Lanham Act §32; 15 U.S.C. §1114
• Second Claim: Trademark Counterfeiting Under Lanham Act §32; 15 U.S.C. §1114
• Third Claim: False Description Under Lanham Act §43; 15 U.S.C. §1125
• Fourth Claim: Trademark Dilution Under Lanham Act §43; 15 U.S.C. §1125

• Fifth Claim: Unfair Competition Under Lanham Act §43; 15 U.S.C. §1125

Horn seeks equitable relief along with damages, costs and attorneys' fees.

Continue reading "Indiana Trademark Litigation: Shipshewana Spice Company Sues Amish Farms for Use of "Happy Salt" Trademark" »

October 15, 2015

DOJ Announces New Strategy to Combat Intellectual Property Crimes


Washington, D.C. - The Justice Department has announced a new approach to combat intellectual property crimes. Grants to state and local law enforcement agencies totaling more than $3.2 million were also announced.

Attorney General Loretta E. Lynch stated recently that the Justice Department will launch a new collaborative strategy to partner more closely with businesses in intellectual property enforcement efforts. Additionally, over $3.2 million will be awarded to ten jurisdictions to support state and local task forces in the training, prevention, enforcement and prosecution of intellectual property theft and infringement crimes.

"The digital age has revolutionized how we share information, store data, make purchases and develop products, requiring law enforcement to strengthen our defenses against cybercrime - one of my top priorities as Attorney General," said Attorney General Lynch. "High-profile instances of hacking - even against large companies like Sony and Target - have demonstrated the seriousness of the threat all businesses face and have underscored the potential for sophisticated adversaries to inflict real and lasting harm."

The new FBI collaborative strategy builds upon the work previously done by the department while also working with industry partners to make enforcement efforts more effective. As part of the strategy, the FBI will partner with third-party marketplaces to ensure that they have the right analytical tools and techniques to combat intellectual property concerns on their websites. The bureau also will serve as a bridge between brand owners and third-party marketplaces in an effort to mitigate instances of the manufacture, distribution, advertising and sale of counterfeit products. This new strategy will help law enforcement and companies better identify, prioritize and disrupt the manufacturing, distribution, advertising and sale of counterfeit products. Crimes will then be investigated by the FBI and other partners of the National Intellectual Property Rights Coordination Center and finally prosecuted by the Justice Department.

Further, the Office of Justice Program's Intellectual Property Enforcement Program ("IPEP") will award $3.2 million in grants to aid state and local law enforcement in addressing intellectual property crimes.

Local award recipients announced included the following:

City of Austin Police Department: $400,000

City of Hartford Police Department: $399,545

Cook County State Attorney's Office: $400,000

Baltimore County Police Department: $120,174

North Carolina Department of Secretary of State: $367,076

New Jersey State Police: $269,619

City of Phoenix Police Department: $253,129

City of Portland Police Department: $373,569

Virginia State Police: $253,128

City of San Antonio Police Department: $400,000

Since IPEP's establishment in 2009, the department has invested nearly $14.8 million for 41 task forces across the country. These grants have supported the arrests of 3,522 individuals, the dismantling of 1,882 piracy or counterfeiting organizations and the seizure of $266,164,989 in counterfeit property, other property and currency in conjunction with IP enforcement operations.

The department also launched a new intellectual property website to serve as a both a resource to companies facing intellectual property challenges as well as a mechanism to educate the public on how intellectual property theft is a growing threat to the country's public safety and economic well-being.

Practice Tip: Intellectual property theft refers to the violation of criminal laws that protect copyrights, patents, trademarks and other forms of intellectual property and trade secrets both in the United State and abroad. Faulty and counterfeit products are often sold to unsuspecting consumers and can pose a significant threat to their health and safety. In a few circumstances, these activities are used to fund dangerous or violent criminal enterprises or organized crime networks.

June 5, 2015

Indiana Trademark and Patent Litigation: Simpson Sues Two Indiana Individuals Alleging Patent Infringement and Counterfeiting


Hammond, Indiana - Trademark and patent attorneys for Simpson Performance Products, Inc. of Mooresville, North Carolina ("Simpson") and SFI Foundation, Inc. of Poway, California ("SFI") commenced trademark litigation in the Western District of North Carolina alleging that Robert Wagoner of North Judson, Indiana and Derek Randall Cathcart of Valparaiso, Indiana infringed the SIMPSON® family of trademarks, some of which have been registered by the U.S. Trademark Office. The case was transferred to the Northern District of Indiana. Among the trademarks at issue are U.S. Trademark Registration Nos. 4,117,821; 1,243,427; 3,026,333; 3,026,334; and 3,050,920. Also at issue are U.S. Patent Nos. 6,931,669 and 8,272,074.

Plaintiff Simpson is a manufacturer of automotive and motorsports specialty/performance products, including head and neck restraints for competitive racing. The Simpson brand of automotive and motorsports products has existed 1959. Plaintiff SFI was established to develop and administer minimum performance standards for the automotive aftermarket and motorsports industries, including standards for specialty/performance racing equipment.

Simpson offers for sale the SIMPSON® Hybrid PRO Rage™ head and neck restraint. Simpson indicates that this product is one of the few such devices to be certified under a special classification, SFI SPEC 38.1, for use in NASCAR competitions.

Defendants Wagoner and Carthcart have been accused of engaging in the business of providing specialty/performance racing equipment, including head and neck restraints that are counterfeit versions of Simpson products. Plaintiffs contend that Wagoner is offering counterfeit head and neck restraints through Plaintiffs allege that Cathcart offers counterfeit head and neck restraints via the website

These restraints, Plaintiffs contend, bear trademarks owned by Simpson, including the SIMPSON® federally registered trademark as well as the HUTCHENS Hybrid PRO™ and Hybrid PRO™ common law trademarks.

The accused products also allegedly bear a label that falsely states, "This product designed & manufactured by Safety Solutions, Inc. PATENT NO.: 6931669; other patents pending." According to Plaintiffs, the alleged counterfeiting activities of Defendants also constitute patent infringement.

In this lawsuit, filed by patent and trademark lawyers for Plaintiffs, the following causes of action are listed:

• Trademark Infringement
• Unfair Competition under 15 U.S.C. § 1125(a); False Designation of Origin; False or Misleading Advertising
• Unfair and Deceptive Trade Practices under N.C. [North Carolina] Gen. Stat. § 75-1.1
• Patent Infringment [sic]

• Common Law Fraud

Plaintiffs ask for a finding in their favor on each of the counts alleged, including a finding that the conduct was knowing and willful, and entry against each Defendant jointly and severally. Plaintiffs seek costs, attorneys' fees and damages, including enhanced damages, as well as injunctive relief.

This federal trademark complaint was initially filed in the Western District of North Carolina in February 2015. In May 2015, District Judge Richard Voorhees ordered it to be transferred to the Northern District of Indiana, finding that the North Carolina court lacked personal jurisdiction over Defendants.

Continue reading "Indiana Trademark and Patent Litigation: Simpson Sues Two Indiana Individuals Alleging Patent Infringement and Counterfeiting" »

February 3, 2015

Federal Agencies Seize Over $19.5 Million in Fake NFL Merchandise During 'Operation Team Player'


Phoenix, Arizona - Federal officials teamed with the National Football League (NFL) Thursday to announce the results of a nationwide law enforcement effort aimed at combatting counterfeit sports merchandise.

Speaking at a NFL news conference, U.S. Immigration and Customs Enforcement (ICE) Director Sarah R. Saldaña, U.S. Customs and Border Protection (CBP) Director of Field Operations William K. Brooks, and NFL Counsel Dolores F. DiBella discussed the results of the initiative, dubbed "Operation Team Player."

This year's operation began immediately following the conclusion of Super Bowl XLVIII and targeted international shipments of counterfeit merchandise as it entered the United States. Authorities identified warehouses, stores, flea markets, online vendors and street vendors selling counterfeit game-related sportswear and tickets throughout the country.

Fake jerseys, ball caps, t-shirts, jackets and other souvenirs are among the counterfeit merchandise and clothing confiscated by teams of special agents and officers from ICE's Homeland Security Investigations (HSI), CBP, U.S. Postal Inspection Service (USPIS), and state and local police departments around the country - all in partnership with the NFL and other major sports leagues.

"Counterfeiting is not a game," said ICE Director Saldaña. "It is most certainly not a victimless crime either. Whether it's the child in Southeast Asia working in deplorable conditions, or local stores going out of business, intellectual property theft is a very real crime with very real victims. No good comes from counterfeiting American products regardless of whether they are all-star jerseys, airbags, or aspirin."

Special agents from HSI and officers with CBP worked with sports leagues and law enforcement agencies throughout the nation to identify illegal shipments imported into the U.S., as well as stores and vendors selling counterfeit trademarked items. The teams seized more than 326,147 items of phony sports memorabilia along with other counterfeit items worth more than $19.5 million. Law enforcement officers have made 52 arrests in relation to Operation Team Player so far, with Super Bowl XLIX efforts continuing through Feb. 6.

"The NFL is proud to once again partner with ICE and the IPR Center in combating the illegal sale of counterfeit merchandise and tickets," said DiBella. "Together, we are working hard to protect fans and prevent them from being scammed by criminals seeking to profit from the public's passion for the NFL, their home teams and Super Bowl XLIX."

"The sale of counterfeit products [is] connected to smuggling and other criminal activities and threatens the competitiveness of our businesses, the livelihoods of U.S. workers, and in some cases the health and safety of the consumer," said CBP Commissioner R. Gil Kerlikowske. "CBP works closely with our federal government partners to protect the United States from these damaging and unsafe goods."

Understanding the economic impact of intellectual property theft, the U.S. Chamber of Commerce is also spreading the word about the dangers that counterfeit products pose to the economy.

"Major events like the Super Bowl can highlight an economic problem we face throughout the year - counterfeit products put good, high-paying jobs at risk in places like Seattle, New England and Phoenix," said David Hirschmann, president and CEO of the U.S. Chamber's Global Intellectual Property Center. "Innovative IP-intensive industries are responsible for over 1.4 million jobs in Massachusetts, 1.2 million in Washington, and 750,000 in Arizona. Sports fans need to be aware of criminals trying to take advantage of big events and holidays to sell counterfeit goods and compete with legitimate companies, like the ones that make the hats, jerseys, or other Super Bowl souvenirs from many of our most trusted brands."

The IPR Center is one of the U.S. government's key weapons in the fight against criminal counterfeiting and piracy. Working in close coordination with the Department of Justice Task Force on Intellectual Property, the IPR Center uses the expertise of its 23 member agencies to share information, develop initiatives, coordinate enforcement actions and conduct investigations related to intellectual property theft. Through this strategic interagency partnership, the IPR Center protects the public's health and safety and the U.S. economy.

To report IP theft or to learn more about the IPR Center, visit

January 28, 2015

Indiana Copyright Litigation: Microsoft Asserts Copyright, Trademark Infringement by Ace Recycling


Fort Wayne, Indiana - An Indiana copyright and trademark attorney for Microsoft Corporation ("Microsoft") of Redmond, Washington sued in the Northern District of Indiana alleging that Ace Recycling, Inc. and Kevin Cawood, both of Fort Wayne, Indiana (collectively, "Defendants"), infringed copyrighted material belonging to Microsoft. Defendants have also been accused of trademark infringement, false designation of origin, false description and representation, counterfeiting and unfair competition. Microsoft seeks damages, an accounting, the imposition of a constructive trust upon Defendants' illegal profits, and injunctive relief.

Microsoft develops, markets, distributes and licenses computer software. Ace Recycling is engaged in the business of advertising, marketing, installing, offering, and distributing computer hardware and software, including the software at issue, which Microsoft contends is unauthorized.

Microsoft's software products, which have been registered by the U.S. Copyright Office, include Microsoft Windows XP and Microsoft Vista, both of which are operating systems for desktop and computers.

Also at issue are the following trademarks and service marks belonging to Microsoft:

• "MICROSOFT," Trademark and Service Mark Registration No. 1,200,236, for computer programs and computer programming services;

• "MICROSOFT," Trademark Registration No. 1,256,083, for computer hardware and software manuals, newsletters, and computer documentation;

• WINDOWS, Trademark Registration No. 1,872,264 for computer programs and manuals sold as a unit; and

• COLORED FLAG DESIGN, Trademark Registration No. 2,744,843, for computer software.

Microsoft contends that Defendants advertised, marketed, installed, offered and distributed unauthorized copies of Microsoft software, despite Microsoft's claims that their actions infringed Microsoft's intellectual property rights. Specifically, Microsoft asserts that, in April 2013, Defendants distributed to an investigator refurbished computer systems with unauthorized copies of Windows XP installed on them. In response, in June 2013, Microsoft asked Defendants to cease and desist from making and distributing infringing copies of Microsoft software. Microsoft alleges that, in May 2014, Defendants again distributed to an investigator a refurbished computer system with an unauthorized copy of a Windows operating system - in that case, Windows Vista - on it.

Microsoft contends that these are not isolated incidents but, instead, indicate Defendants' pattern of acting in reckless disregard of Microsoft's registered copyrights, trademarks and service marks.

In this Indiana lawsuit, Microsoft's copyright and trademark attorney makes the following claims:

• Copyright Infringement - 17 U.S.C. § 501, et seq.

• Trademark Infringement - 15 U.S.C. § 1114

• False Designation Of Origin, False Description And Representation - 15 U.S.C. § 1125 et seq.

• Indiana Common Law Unfair Competition

• For Imposition Of A Constructive Trust Upon Illegal Profits

• Accounting

Microsoft asks for a judgment of copyright infringement; of trademark and service mark infringement; that Defendants have committed and are committing acts of false designation of origin, false or misleading description of fact, and false or misleading representation against Microsoft, in violation of 15 U.S.C. § 1125(a); that Defendants have engaged in unfair competition in violation of Indiana common law; and that Defendants have otherwise injured the business reputation and business of Microsoft.

Microsoft also asks for the impoundment of all counterfeit and infringing copies of purported Microsoft products; the imposition of a constructive trust upon Defendants' illegal profits; injunctive relief; damages, including enhanced damages; and costs and attorneys' fees.

The case was assigned to Judge Joseph Van Bokkelen and Magistrate Judge Susan L. Collins in the Northern District of Indiana and assigned Case No. 1:15-cv-00032-JVB-SLC.

Continue reading "Indiana Copyright Litigation: Microsoft Asserts Copyright, Trademark Infringement by Ace Recycling " »

December 22, 2014

Indiana Trademark Litigation: Zip-A-Tee Sues for Declaration of Non-Infringement and Damages


Hammond, Indiana - James Cross acting pro se, and Zip-A-Tee Inc. of Michigan City, Indiana sued in the Northern District of Indiana alleging that Coalition to Advance the Protection of Sports Logos ("CAPS") of Coeur d'Alene, Idaho wrongfully interfered with Plaintiffs' use of Plaintiffs' intellectual property, including both trademark and patent protection. Also named as Defendant is Debevoise & Plimpton LLP of New York City.

Zip-A-Tee owns Trademark Registration No. 4,343,916, which was registered by the U.S. Patent and Trademark Office, and Patent Nos. D580,633 and D581,136, which were also issued by the U.S. Patent and Trademark Office.

In 2012 and 2013, CAPS sent several letters to Zip-A-Tee claiming trademark infringement and counterfeiting by Plaintiffs of various trademarked sports logos. Among CAPS' assertions was that Cross and/or Zip-A-Tee had offered for sale jerseys bearing "Lakers" and "Bulls" trademarks. CAPS also contacted and other website-hosting companies asserting that CAPS' intellectual property had been infringed. In response, those companies apparently suspended Zip-A-Tee's websites.

Cross, acting as his own Indiana trademark counsel, has sued Defendants on behalf of himself and the corporation. He makes the following claims for relief:

• Declaratory Relief of Non-Infringement of Trademark

• Preliminary and Permanent Injunction

Plaintiffs ask for a declaratory judgment of non-infringement and injunctive relief. Plaintiffs also ask to be awarded statutory damages of $700 million "for each website removed by CAPS member Infringement request and claims [sic]" as well as $500,000 "per domain name change." Additionally, Plaintiffs request an award of punitive damages of $5 billion due to the "willfully [sic], wanton, egregiously [sic] and insidious" nature of Defendants' conduct.

Continue reading "Indiana Trademark Litigation: Zip-A-Tee Sues for Declaration of Non-Infringement and Damages " »

October 31, 2014

Indiana Patent and Copyright Litigation: Lake Lite Sues Multiple Defendants for Patent and Copyright Infringement

SolarDockLightPicture.pngFort Wayne, Indiana - A patent and copyright attorney for Lake Lite Inc. of Laotto, Indiana filed a complaint in the Northern District of Indiana asserting, inter alia, that Universal Forest Products, Inc. of Grand Rapids, Michigan ("UFP"); Universal Consumer Products, Inc., also of Grand Rapids, Michigan ("UCP"); and Maine Ornamental, LLC of Greene, Maine infringed "Solar Dock Light" and "Low Profile Solar LED Lamp," Patent Nos. D697,246 and 8,845,126, which have been issued by the U.S. Patent Office.

Lake Lite is in the business of designing and selling dock lights and other related products and accessories in the boating/dock industry. Its product line includes solar-related dock lights.

In April 2012, Lake Lite first began to offer a "Solar Dot" line of products. Lake Lite indicates that UFP inquired about collaborating with Lake Lite to offer the Solar Dot products to UFP's customers and that, in November 2012, a mutual non-disclosure agreement was entered so that confidential information regarding Lake Lite's Solar Dot products could be disclosed and the potential collaboration evaluated. The disclosed information included Lake Lite's copyright applications to now-copyrighted materials, registered as U.S. Copyright Nos. VAu001118627 and VAu001156962.

Lake Lite asserts that, during these negotiations, it made numerous modifications requested by UFP for which it was not compensated. Lake Lite and UFP failed to reach an agreement about licensing terms and discontinued negotiations. Instead, Lake Lite asserts, UFP has now wrongfully begun offering its own "Solar Deck and Dock Lights."

In this Indiana copyright and patent litigation, Plaintiff Lake Lite's specific complaints include that Defendants have been unjustly enriched as a result of their manufacture, importing, marketing and sale of their solar deck and dock light products. Lake Lite contends that Defendants' acts include infringement of Lake Lite's copyrights and patents, unauthorized use and misappropriation of Lake Lite's confidential information and trade secrets and violation of the mutual non-disclosure agreement between Lake Lite and UCP.

The complaint, filed by a copyright and patent lawyer for Lake Lite, alleges the following:

• Count One - Copyright Infringement

• Count Two - Infringement of U.S. Patent No. D697,246

• Count Three - Infringement of U.S. Patent No. 8,845,126

• Count Four - Breach of Contract

• Count Five - Breach of Implied Duty of Good Faith and Fair Dealing

• Count Six - Violation of Indiana Uniform Trade Secret Act

• Count Seven - Unjust Enrichment

Lake Lite asks for a judgment of infringement of its copyrights-in-suit, of infringement of its patents-in-suit, that the non-disclosure agreement was violated by Defendants, that Defendants violated the implied duty of good faith and fair dealing in their dealings with Lake Lite regarding the Solar Dot products, that Defendants have misappropriated Lake Lite's trade secrets and that Defendants have been unjustly enriched.

Lake Lite seeks injunctive relief; damages, including punitive damages; costs and fees, including attorneys' fees.

Practice Tip:

Indiana Code Section 24-2-3-2 defines a trade secret as:

information, including a formula, pattern, compilation, program, device, method, technique, or process, that:

1. derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and

2. is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

The four general characteristics of a trade secret are:

1. it is information;

2. that derives independent economic value;

3. that is not generally known, or readily ascertainable by proper means by others who can obtain economic value from its disclosure or use; and

4. that is the subject of efforts, reasonable under the circumstances, to maintain its secrecy.

Continue reading "Indiana Patent and Copyright Litigation: Lake Lite Sues Multiple Defendants for Patent and Copyright Infringement " »

July 23, 2014

Indiana Trademark Law: Trademark Infringement and Counterfeiting Defendants Held Liable for Both Damages and Plaintiff's Attorney's Fees

Coach-Picture.jpgSouth Bend, Indiana - Chief Judge Philip P. Simon of the Northern District of Indiana ordered Defendants The Treasure Box, Inc. and Heather Hiatt, both of Elkhart, Indiana to pay statutory damages, attorney's fees and costs to Coach, Inc. of New York, New York and Coach Services, Inc. of Jacksonville, Florida for trademark infringement and counterfeiting.

By way of summary judgment, the court had earlier determined in this Indiana trademark and counterfeit litigation that Defendants The Treasure Box and Hiatt were liable for the trademark infringement and trademark counterfeiting of Plaintiff Coach's trademarks. The court's summary judgment determinations also included a finding that "The Treasure Box and Heather Hiatt acted with knowledge and intent" that was sufficient to support enhanced statutory damages. In this opinion and order, the court fixed the amount due to Coach from Defendants.

Instead of requesting actual damages resulting from Defendants' trademark infringement and counterfeiting within Indiana, Coach opted for statutory damages under §1117(c). It asked the court for damages of $100,000 for each of the 15 infringing marks, for a total of $1,500,000. The Treasure Box and Hiatt, unrepresented by counsel at the time, filed no response or opposition to Coach's damages request.

The court first addressed the proper measure of damages. Statutory damages for trademark infringement and trademark counterfeiting under 15 U.S.C. §1114 are limited to:

(1) not less than $1,000 or more than $200,000 per counterfeit mark per type of goods..., as the court considers just; or
(2) if the court finds that the use of the counterfeit mark was willful, not more than $2,000,000 per counterfeit mark per type of good..., as the court considers just.

Because the statute provides little guidance regarding what constitutes a "just" award, the court referred to the relevant factors under the analogous statutory damages provision in the Copyright Act, 17 U.S.C. §504(c). These considerations include: the profits reaped by the infringer; the revenues lost by the plaintiff; the value of the trademarks; whether the infringing conduct was willful; the duration of the infringement; and the potential deterrent effect on the defendant and others.

The court considered each factor in turn. It found that, because The Treasure Box's operations were both brief and "even trivial" in scale, neither Defendants' profits nor Coach's lost revenue supported a large statutory damages award. Instead, the court cited Nimmer on Copyright for the proposition that statutory damages "should be woven out of the same bolt of cloth as actual damages." "Statutory damages," said the court, "should represent some approximation of actual damages and are not to represent a windfall to a prevailing plaintiff."

In contrast, the factors of "value of the trademarks" and "willful conduct" weighed against Defendants. The court acknowledged that the Coach trademarks were valuable and noted that, in determining statutory damages, other courts had valued the trademarks at between $2,000 per mark and $30,000 per mark, for an average of approximately $14,000 per mark. Moreover, it characterized Hiatt's infringement as having been pursued with "bold willfulness" with regard to her efforts to sell what she knew was knock-off Coach merchandise.

The last two considerations - duration of infringement and potential deterrent effect on Defendant and others - weighed against a large award of damages. The Treasure Box had operated for only three months, closing in late 2011. Such a brief term of infringement, as well as the court's conclusion that Hiatt and the defunct The Treasure Box were now apparently beyond deterrence, militated in favor of lower damages. Regarding deterrence for others, the court stated, "Mom & Pop operators such as the Hiatts could doubtless be deterred from similar conduct by much less frightful sums than the $1.5 million Coach requests."

The court concluded that an award of $3,000 per trademark for each of the 15 counterfeited trademarks at issue, for a statutory damages award of $45,000, was appropriate.

The court was also asked to award to Coach attorney's fees of $14,780 pursuant to §1117(a)(3). This section permits a court "in exceptional cases" to award reasonable attorney's fees to the prevailing party. The court first noted the ambiguity inherent in the placement of §1117(a)(3) within the statute. Specifically, subsection (a) addresses recovery for actual damages, while subsection (c) allows a plaintiff to opt for statutory damages. Here, Coach chose an award of statutory damages under subsection (c), which raised the question of whether the provision for attorney's fees under §1117(a)(3) could be applied.

The only Court of Appeals to have addressed the question was the Second Circuit. That court concluded that subsection (c) offers an election as to the basis for damages, but not an election regarding remedies, including attorney's fees. Thus, it concluded, a court could award attorney's fees in conjunction with an award for either actual or statutory damages. Chief Judge Simon adopted the Second Circuit's reasoning. He also determined that the definition of an "exceptional" case - for example, one in which "the losing party was the defendant and had no defense yet persisted in trademark infringement" - was also met, given the willfulness of Defendants' knowing sale of counterfeit Coach goods and that Defendants had no viable defense.

In addition to the statutory damages award of $45,000, the court awarded attorney's fees of $14,780 as well as expenses and costs of $1,076.16 to Coach. The judgments were entered against Treasure Box, Inc. and Heather Hiatt jointly and severally.

Practice Tip: Chief Judge Simon noted that Coach had a history of requesting statutory damages that were considerably in excess of what was eventually awarded by the courts in other cases. In Coach, Inc. v. Paula's Store Sportwear LLC, 2014 WL 347893 (D.N.J. Jan. 31, 2014), Coach requested $800,000 in statutory damages - $100,000 for each of eight counterfeited marks - at a shop from which four counterfeit Coach wallets and two counterfeit Coach handbags had been seized. In that litigation for counterfeiting, the court noted that the retail value of the six counterfeit items was less than $1500 and awarded $5000 for each of the eight marks that had been counterfeited, multiplied by the two types of goods, for a total statutory damages award of $80,000.

Continue reading "Indiana Trademark Law: Trademark Infringement and Counterfeiting Defendants Held Liable for Both Damages and Plaintiff's Attorney's Fees" »

July 18, 2014

Indiana Patent and Trademark Litigation: American Archery Accused of Patent and Trademark Infringement

220px-Compound_Bow_full.jpgEvansville, Indiana - Indiana intellectual property attorneys for SOP Services, Inc. of Las Vegas, Nevada and Bear Archery, Inc. of Evansville, Indiana (collectively "Bear Archery") initiated an infringement lawsuit in the Southern District of Indiana alleging that American Archery, LLC of Suwanee, Georgia infringed "Arrow Rest," Patent No. RE38,096; "Arrow Rest System and Method," Patent No. 6,978,775; WHISKER BISCUIT ARROW REST, Trademark Registration No. 2,501,255; and WHISKER BISCUIT, Trademark Registration No. 3,312,392, which have been issued by the U.S. Patent and Trademark Office.

Bear Archery is in the business of researching, developing, designing, manufacturing, and selling archery products. Its business includes traditional archery bows, compound bows, bow sights, arrow rests, arrows and arrow components, archery targets, and various other archery accessories. American Archery is in the business of selling hunting products and accessories, including archery products.

At issue in this Indiana intellectual property dispute are arrow rests for mounting to archery bows. The lawsuit asserts claims of patent infringement, trademark infringement, as well as false and deceptive labeling and unfair competition.

American Archery is accused of selling counterfeit arrow rests, both through its website and through online auction sites. Specifically, Bear Archery asserts that the "ready to shoot" packages offered by American Archery advertise that they include a genuine Bear Archery Whisker Biscuit® arrow rest as part of the preassembled bow. However, Plaintiffs state, the bow that a consumer receives instead includes a pre-installed counterfeit arrow rest.

There are two patents at issue in this litigation: "Arrow Rest," Patent No. RE38,096 (the "'096 patent") and "Arrow Rest System and Method," Patent No. 6,978,775 (the "'775 patent"). The '096 patent and the '775 patent (collectively "the patents-in-suit") are owned by SOP Services. Bear Archery has been granted an exclusive license to the patents-in-suit. Plaintiffs accuse American Archery of having willfully, intentionally and deliberately infringed the patents-in-suit by offering the allegedly counterfeit items.

In addition to patent infringement assertions, this Indiana litigation also includes allegations of trademark infringement. Bear Archery contends that it owns trademark rights for the Whisker Biscuit mark, indicating that it has used the mark with its arrow rest products since at least 1999. It claims that consumers have come to recognize the mark as identifying Bear Archery's arrow rest products. It further asserts that it owns a trademark on "Whisker Biscuit Arrow Rest" for archery equipment, namely arrow-rest devices. Bear Archery claims that American Archery's use of the marks is likely to cause confusion, mistake, or deception as to origin, sponsorship or approval and therefore constitute trademark infringement and counterfeiting in violation of Section 32 and 43(a) of the Lanham Act, 15 U.S.C. § 1114 et seq. and the common law.

Bear Archery includes a final claim of "false and deceptive labeling and unfair competition" under Lanham Act 15 U.S.C. §1125 and the common law.

Bear Archery, via its Indiana intellectual property lawyers, asks the court for the following relief:

A. A judgment of infringement of the '096 patent and the '775 patent;
B. A judgment that the use of the "WHISKER BISCUIT" mark in Defendant's commercial advertising and sales in the Unites States creates a likelihood of confusion, mistake, or deception among relevant consumers and therefore infringes Plaintiff's trademarks;
C. A judgment that Defendant has engaged in counterfeiting with respect to Plaintiffs' trademarks;
D. An order permanently restraining Defendant or any of its agents from further acts of infringement of the patents-in-suit;
E. An order permanently restraining Defendant or any of its agents from engaging in misleading advertising of products or services bearing or resembling the "WHISKER BISCUIT" mark that have caused actual confusion, mistake or deception of the public;
F. An order that all infringing devices or materials in the possession of, or subject to control by, Defendant or its agents be delivered up and destroyed or altered to eliminate any possibility any further infringement;
G. An award of damages not less than a reasonably royalty, adequate to compensate Plaintiffs for Defendant's acts of infringement under 35 U.S.C. §284;
H. An award to Plaintiffs of treble Defendant's profits under 15 U.S.C. § 1117(a) and (b);
I. An award to Plaintiffs of statutory damages for counterfeiting up to $2,000,000, pursuant to 15 U.S.C. § 1117(c);
J. An order declaring that this is an exceptional case pursuant to 35 U.S.C. § 285 and 15 U.S.C. 1117 as a result of Defendant's knowing and willful infringement of the patents-in-suit and the asserted trademarks, and awarding Plaintiffs their attorneys' fees;
K. An award of Plaintiffs' costs, and/or expenses; and
L. Aw award of Defendant's wrongful profits associated with its infringement of Plaintiffs' patent and/or trademark rights.

Practice Tip: Bear Archery requested that eBay remove various auctions posted by Bear Archery on the grounds that the items for sale were counterfeit. Bear Archery indicates that eBay removed the auctions and notified American Archery that the auctions had been removed because they had been flagged as offering counterfeit goods. Bear Archery requested this under eBay's Verified Rights Owner ("VeRO") Program. The VeRO Program provides a mechanism for an owner of intellectual property to request the removal of eBay auctions that offer items that infringe that owner's intellectual property rights.

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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 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.

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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. 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, 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, reports. According to, 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

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