Attorney's Fees

February 21, 2023

Central Illinois Railroad Sues Former Employee for Misappropriation of Trade Secrets

Crowne Point, Indiana – The Plaintiff, Illinois Central Railroad (“IC”) filed suit against Defendant and former employee, Michael Belcher (“Belcher”) for Breach of Contract, Breach of Duty of Loyalty, Civil Conversion, Indiana Uniform Trade Secrets Act, Defend Trade Secrets Act, and Trespass to Chattels.

Per the Plaintiff’s website, IC is headquartered in Chicago, Illinois, and has been in business for 148 years. Its Slogan, “The Main Line of Mid-America,” perfectly describes its unique north-south routing running from Chicago to the Gulf Coast.

According to the complaint, the Defendant, Michael Belcher (“Belcher”) is a resident of Crown Point Indiana. He was employed as a Senior Manager for IC for 20 years until he was terminated on October 19, 2022. Belcher’s duties included writing software code for IC’s financial data systems that included, but was not limited to, IC’s systems for financial metrics, financial records, and compliance. Belcher served as the key point of contact for financial analysis, performance tracking, and corrective action related to Basic Capital budgets for all levels of Engineering management. He also participated in IC’s Share Units Plan and was awarded Performance Share Units (“PSUs”). Each time he was awarded PSUs, he received and accepted an award letter that contained a Confidentiality Clause. This prohibited him from revealing, disclosing or making known any Confidential Information without prior written consent from IC. Belcher also received regular training on the Company’s Code of Business Conduct that requires every employee to safeguard Company assets and intellectual property. The Code of Conduct also contained provisions defining Company Confidential Information, and prohibitions against disclosure.

December 23, 2022

Gema USA, Inc. Sues Former Employee for Alleged Patent & Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – The Plaintiff, Gema USA, Inc. (“Gema”) is a Switzerland based company that was founded in 1897 as a metalworking company and operates out of Indianapolis. Since 2012, Gema has been a part of the global Graco Group, an internationally leading manufacture of liquid conveyance systems and components. According to the complaint, Gema is a worldwide leader in the design and manufacture of electrostatic powder coating control units, and powder feed systems. Gema sells a variety of powder guns and spray equipment in this district and throughout the United States.

The Defendant, First in Finishing, Inc., according to their website, was formed by Monte McClung in 2009 after a 20 year Career at Gema. First in Finishing, Inc.’s mission statement is listed to “Provide quality and reliable powder coating solutions while saving and controlling costs to customers.” They allege to be an Integrator of Gema Products, not a Gema Distributor.

August 9, 2022

PUMA Sues Competitor for Alleged Trademark and Patent Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – The Plaintiffs, PUMA SE and PUMA North America Inc. (“PUMA”), are world leaders in the sportswear industry. PUMA SE, based in Herzogenaurach, Germany, is a multi-national company that designs and manufactures athletic and casual footwear, apparel, and accessories. PUMA North America Inc. is a Delaware Corporation, with its principal place of business in Somerville, Massachusetts and is one of the top five sportswear brands in the world by revenue.

PUMA applied for a Federal Trademark registration under Application Serial No. 97171928 for the mark NITRO for footwear, namely, running shoes, training shoes, and basketball shoes. According to the Complaint, in or around December 2021, PUMA requested the Defendant, Brooks Sports, Inc. (“Brooks”) cease and desist the use of the Mark NITRO mark in connection with footwear. The parties were unable to reach a settlement.

PUMA also alleges that the Brooks shoe the “Aurora BL” infringes upon their Design Patent No. D897,075 and is being sold in connection with the infringing use of PUMA’s NITRO mark.

July 21, 2022

Thrivent Sues for Alleged Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – The Plaintiff, Thrivent Financial for Lutherans (“Thrivent”), is a fraternal benefits society established in 1902 with over 2 million members and over $100 billion in assets under management or advisement. Thrivent and its licensees offer a wide variety of services and products to their members and customers under the THRIVENT Trademarks (listed below), including insurance and annuity products, financial and business advising, mutual funds and investments, individual retirement accounts, trust accounts, financial advisory services, banking and credit union services, lending services, and debit and credit card services.

July 19, 2021

Seventh Circuit Affirms Denial of Fees for Trademark Infringement Case

By Overhauser Law Offices, LLC

Chicago, Illinois – Chicago is apparently home to two hotels named “Hotel Chicago.” The first, owned by plaintiff/appellee, LHO Chicago River, LLC (“LHO”) was allegedly named in 2014. The second hotel, owned by defendants/appellants Rosemoor Suites, LLC, Portfolio Hotel & Resorts, LLC and Chicago Hotel, LLC (collectively “Rosemoor”), was apparently renamed to “Hotel Chicago” in 2016. LHO filed suit for trademark infringement and unfair competition under the Lanham Act, deceptive advertising, and common-law trademark infringement under Illinois law.

The district court found that LHO failed “to show that it is likely to succeed in proving secondary meaning” of the alleged mark “Hotel Chicago” and thus denied preliminary injunctive relief. While LHO appealed this ruling, it moved to voluntarily dismiss its claims with prejudice prior to briefing.

After the case was dismissed, Rosemoor filed a motion requesting more than half a million dollars in attorney fees, claiming the case was “exceptional.” This request was denied by the district court. On appeal, the Seventh Circuit held that the district court did not use the proper standard of Octane Fitness to deny the request and remanded. On remand, Rosemoor filed a renewed request for fees including an extra $130,000 on top of the original fee request. However, even after applying the Octane Fitness standard, the district court still denied the fee request. The Seventh Circuit affirmed finding the district court “considered the evidence under the Octane Fitness framework and reasonably determined that this case did not qualify as exceptional.”

Practice Tip: Under Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 at n.7. (2014), a district court must consider the totality of the circumstances by simply weighing non-exclusive factors such as “frivolousness, motivation, objective unreasonableness (both in the factual and legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence.”

June 23, 2021

Copyright Alternative in Small-Claims Enforcement (CASE) Act Enacted by Congress

By Overhauser Law Offices, LLC

USA – The Copyright Alternative in Small-Clams Enforcement (CASE) Act was enacted on December 27, 2020. This creates a Copyright Claims Board consisting of three officers chosen by the Librarian of Congress and the Register of Copyrights. The officers will act as arbitrators for civil copyright claims and counterclaims capped at $30,000 in damages for declaratory judgment of non-infringement or for notices under the Digital Millennium Copyright Act. The Board is expected to be operational by December 27, 2021.

Parties may affirmatively opt out of adjudication before the board within 60 days of service. Failure to do so will serve as consent to the proceeding before the Board and will waive the right to a jury trial.

The proceedings before the Board are also less formal. While parties can conduct written discovery, they may not conduct depositions under the CASE Act. Further, unlike federal district courts, attorneys’ fees are not generally awardable to prevailing parties.

November 2, 2020

Seventh Circuit Confirms Presumptive Fees in Copyright Litigation are Not Guaranteed

By Overhauser Law Offices, LLC

Seventh Circuit Court of Appeals – The U.S. Court of Appeals for the Seventh Circuit affirmed the denial of fees for the Defendant, David Knott (“Knott”), after Plaintiff, Timothy B. O’Brien LLC (“Apple Wellness”), voluntarily dismissed all its claims with prejudice.

Originally filed in the Western District of Wisconsin, Apple Wellness alleged that Knott, a former employee of Apple Wellness started a similar, competing wellness shop. Apple Wellness sued Knott for alleged trademark, trade dress, and copyright infringement. Knott countersued for tortious interference and retaliation. The District Court found the copyright claims baseless and denied a preliminary injunction on the trademark and trade dress claims. Apple Wellness later voluntarily dismissed all its claims.

While Apple Wellness submitted a motion to dismiss without prejudice, the District Court ordered Apple Wellness to withdraw its motion or accept a dismissal with prejudice because Knott had already expended resources litigating an injunction. The District Court further noted that in its opinion, no party’s claim was strong. Apple agreed to the dismissal with prejudice and the District Court declined to exercise supplemental jurisdiction over the counterclaims. The District Court subsequently denied Knott’s motion for fees leading to this appeal only as to the fees for the copyright claims and the appeal.

The Court of Appeals found that while Apple Wellness’s copyright claims were frivolous, it appears the claims were brought in good faith. Therefore, “there were minimal concerns regarding compensation and deterrence.” Further, Knott did not have to expend a large amount of time, money, or energy defending against the copyright claims as they were quickly dismissed. After considering all of the factors, the Court of Appeals affirmed the judgment of the District Court denying Knott’s motion for fees.

March 26, 2020

Motion to Disqualify: Patent Law Firm Tries to Cap Bottle Cap Suit

By Overhauser Law Offices, LLC

This suit is over the design of two bottle caps.

Plaintiff, Closure, claims it designed the bottle cap on the left, and Defendant, Novembal, got a patent on the bottle cap on the right. But Closure claims that it, not Novembal is the actual “inventor” of the bottle cap design. Perhaps fearing that Novembal was about to file suit, Closure in its home turf of New Jersey and trying to gain a home court advantage, took the initiative and sued Novembal in Indiana. Its Complaint sought to “correct the inventorship” of Novembal’s patent and to prevent Novembal from enforcing the patent against Closure. That suit is reported here: Closure Systems International Sues Novembal USA Seeking Correction of Inventorship. Not surpisingly, Novembal asserted a counterclaim for patent infringement.

The twist is that in the infringement counterclaim, Novembal seeks a broad injunction. So broad, that it would prevent not just Closure, but some of Closure’s customers from infringing the patent. In its counterclaim, Novembal seeks:

A permanent injunction enjoining CSI and its employees, agents, successors, partners, officers, directors, owners, shareholders, principals, subsidiaries, related companies, affiliates, distributors, dealers, and all persons in active concert or participation with any of them . . . from making, importing, promoting, offering, or exposing for sale, or selling the CSI Production Closures, or any other closures with designs confusingly similar to the claimed design of Novembal’s ‘442 patent.

One company that apparently gets its bottle caps from Closure is Nestle, one of the biggest sellers of bottled water. So far, no big deal. Except, Nestle is represented by the blue chip Washington DC patent law firm, Finnegan, Henderson, Farabow, Garrett & Dunner. Finnegan happens to be the same law firm that represents Novembal in the suit with Closure. So Finnegan is attempting to get an injunction for one client (Novembal) that would apply to another client, Nestle. Continue reading

March 4, 2020

Patent Litigation:

By Overhauser Law Offices, LLC

The Supreme Court of the United States has issued an Opinion affirming the decision of the United States Court of Appeals for the Federal Circuit in the case of Laura Peter, Director of the United States Patent and Trademark Office, versus NantKwest, Inc. (“NantKwest”).

Following an adverse decision by the USPTO, an applicant may either appeal directly to the Federal Circuit, 35 U.S.C. § 141, or may file a new civil action against the USPTO Director in the United States District Court for the Eastern District of Virginia, 35 U.S.C. § 145. In this case, NantKwest filed a new civil action in the District Court. Under § 145, the applicant is required to pay “[a]ll the expenses of the proceedings.”

The District Court granted summary judgment for the USPTO affirming the denial of NantKwest’s patent application. The Federal Circuit then affirmed the decision of the District Court. Following this affirmation, the USPTO moved for the reimbursement of its expenses, “including the pro rata salaries of PTO attorneys and a paralegal who worked on the case.” The District Court denied the motion finding “that the statutory language referencing expenses was not sufficient to rebut the ‘American Rule’ presumption that parties are responsible for their own attorney’s fees.” That decision was affirmed by the en banc Federal Circuit.

January 13, 2020

Trademark Law: United States Court of Appeals for the Seventh Circuit Affirms Award of Over $17.3 Million

By Overhauser Law Offices, LLC

The United States Court of Appeals for the Seventh Circuit issued an opinion reversing the denial of attorney’s fees, remanding for an entry of a reasonable fee reward under 15 U.S.C. § 1117(a), and affirming all other aspects of the judgment of the district court in the case of 4SEMO.com Incorporated (“4SEMO”) versus Southern Illinois Storm Shelters, Inc. (“SISS”), et al. (collectively “Defendants”). While the Defendants originally sued 4SEMO in this case, the case was reconfigured as above for the July 2017 bench trial and decision, which was on appeal.

According to the opinion, 4SEMO began selling storm shelters manufactured by SISS in 2005. 4SEMO is a Missouri-based home-remodeling firm while Robert Ingoldsby and his brother Scott (the “Ingoldsbys”) run the Illinois based company, SISS. 4SEMO began marketing the storm shelters under a wordmark “Life Saver Storm Shelters” and a matching logo (the “Marks”) that it affixed to the shelters it sold in Missouri and Arkansas pursuant to an exclusive dealership agreement with SISS. The Ingoldsbys were granted a limited license to use the 4SEMO Marks for shelters marketed in southern Illinois. However, the Ingoldsbys violated the limited license by using the 4SEMO Marks on shelters sold throughout the country.

SISS sued 4SEMO for trademark infringement over the “Life Saver” wordmark, claiming they had used it prior to 4SEMO and that they had ownership of the wordmark. 4SEMO counterclaimed for trademark infringement and false endorsement, along with various state-law claims. After SISS’s claim did not survive summary judgement, 4SEMO’s counterclaims were tried to the bench and the district court found in favor of 4SEMO on all counts and awarded $17,371,003 in damages for profit disgorgement and $26,940 for breach of contract. However, 4SEMO’s motion for vexatious-litigation sanctions and attorney’s fees under 28 U.S.C. § 1927 and the Lanham Act, respectively, was denied.