Civil Procedure

December 16, 2015

Indiana Copyright Litigation: Remaining Copyright Defendants in Bell Lawsuit to be Dismissed

Indianapolis, Indiana – District Judge Tanya Walton Pratt of the Southern District of Indiana denied Plaintiff’s request for partial summary judgment for declaratory relief and injunctive relief against Defendants in a copyright dispute over the use of Plaintiff’s copyrighted photograph of Indianapolis.

This lawsuit dates back to June 7, 2011 when Plaintiff Richard N. Bell of McCordsville, Indiana sued 22 Defendants for alleged infringement of his copyrighted photo, U.S. Copyright Registration No. VA0001785115. Bell amended his complaint multiple times, with the third amended complaint becoming the operative pleading on December 6, 2012.

In May 2013, the litigation was severed into three separate cases, including the one that is the subject of this opinion. In this lawsuit, Bell, who is both an Indiana copyright attorney and a professional photographer, accused Defendants Insurance Concepts, Fred O’Brien and Shanna Cheatham of copyright infringement. Bell sought injunctive relief along with damages, costs and attorney’s fees.

A prior opinion by the court held for these Defendants on the issues of Bell’s state law claims and copyright damages claims. In this order, the court addressed the parties’ cross motions for partial summary judgment on the remaining issues – declaratory and injunctive relief.

The court first cited the four-factor test necessary to obtain an injunction, which states that a plaintiff must show:

(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.

The court noted that in a prior ruling, it had concluded that Bell had failed to establish any damages, including no damages that would rise to the level of “irreparable injury.” Consequently, the first factor was not met. The court then opined that an injunction was also unwarranted under the second factor, as Bell could again institute litigation upon finding any future copyright violations by a Defendant. Having found that at least two of the four elements required for an injunction were missing, the court declined to address the remaining factors.

The court similarly declined to exercise its discretion to grant declaratory relief on the grounds that, after having been notified, the Defendants had promptly removed the copyrighted photo and, moreover, the websites on which the photo had been published no longer existed. As such, it concluded that there was no “substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.”

The court consequently denied Plaintiff Bell’s motion for partial summary judgment and his request for declaratory and injunctive relief. Defendants’ motion for partial summary judgment was granted.

Practice Tip:

• Attorney/Photographer Sues Georgia Real Estate Company for Infringing Copyrighted Photo
• Sovereign Immunity May Take a Toll on Bell’s Latest Copyright Lawsuit
• Appellate Court Dismisses Copyright Appeal as Premature
• Bell Rings in the Holiday Weekend with a New Copyright Lawsuit
• Bell Files New Copyright Infringement Lawsuit
• Bell Sues Georgia-Base FindTicketsFast.com for Copyright Infringement
• Richard Bell Files Two New Copyright Infringement Lawsuits
• Court Prevents Copyright Plaintiff Bell from Outmaneuvering Legal System; Orders Bell to Pay Almost $34,000 in Fees and Costs
• Three Default Judgments of $2,500 Ordered for Copyright Infringement

• Court Orders Severance of Misjoined Copyright Infringement Complaint

• Richard Bell Files Another Copyright Infringement Lawsuit

December 14, 2015

Indiana Copyright Litigation: Copyright Defendant Removes Lawsuit to Federal Court

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana copyright lawyer for Defendant Wrightspeed, Inc. of San Jose California filed a notice of removal in the Southern District of Indiana on the basis of both federal-question jurisdiction and diversity-of-citizenship jurisdiction.

Plaintiff Precision Rings, Inc. of Indianapolis, Indiana had filed its lawsuit in Marion County Superior Court seeking declaratory relief, injunctive relief, unspecified damages and attorney’s fees. Among Plaintiff’s contentions was the breach of a nondisclosure agreement. Included in this alleged breach was the misappropriation of Plaintiff’s trade secrets, which involved the use or disclosure by Defendant of certain copyrighted drawings that Plaintiff had registered with the U.S. Copyright Office.

Defendant Wrightspeed contended that federal-question jurisdiction was proper and asked that the federal court in the Southern District of Indiana hear and decide all further matters in the litigation. Defendant asserted that the complaint arose under copyright law because Plaintiff’s complaint included a claim that would require construction of the Copyright Act. Consequently, subject matter jurisdiction rested exclusively in federal court.

Defendant Wrightspeed also asserted that diversity-of-citizenship jurisdiction was a proper basis for the Indiana federal court to hear the litigation. The parties were completely diverse, it stated, with Plaintiff being a citizen of Indiana and Defendant being a citizen of both Delaware and California. Defendant contended further that, considering the potential damages, fees and costs, the amount at stake was well in excess of the $75,000 threshold necessary for diversity-of-citizenship jurisdiction.

November 24, 2015

Indiana Patent Law: Request to Limit Discovery Denied but Judge Orders Reimbursement if Certain Discovered Evidence is Largely Duplicative

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Magistrate Judge Mark Dinsmore of the Southern District of Indiana denied Defendants’ motion to limit discovery in the patent infringement litigation between Knauf Insulation, LLC et al. and Johns Manville Corp. et al. Judge Dinsmore also recently denied Defendants’ motion to bifurcate the trial.

This federal litigation alleges infringement of U.S. Patents Nos. 8,114,210; 8,940,089; D631,670; 9,039,827 and 9,040,652, which Plaintiffs Knauf Insulation, LLC, Knauf Insulation GmbH and Knauf Insulation SPRL contend were infringed by Defendants Johns Manville Corporation and Johns Manville, Inc.

This court order addresses Defendants’ motion, filed by patent attorneys for Defendants, for limitations on electronic discovery. Specifically, Defendants asked the court to implement a date cutoff of January 1, 2007 for all electronically stored discovery and to limit the number of e-mail custodians from which Defendants must produce e-mail. Defendants asserted that these restrictions would reduce its discovery-related expenses by approximately $49,400.

The request to limit the time was denied. The court noted that there was a high likelihood that relevant evidence that was not available from any other source would be found in Defendants’ materials prior to 2007. Further, the cost of obtaining that evidence was not excessive in light of the amount in controversy in the litigation. Consequently, the court held that Defendants had not met their burden of showing that the cost of the proposed discovery to Defendants outweighed the benefit to Plaintiffs.

Defendants also requested that the court limit electronic discovery to 10 of Defendants’ 38 e-mail custodians. Patent lawyers for Defendants argued that such a limitation would result in a savings of $18,000 and would also facilitate the predictive coding process.

The court was again unpersuaded. It noted that, while discovery couldn’t guarantee that 100% of responsive material would be produced, eliminating material held by 28 of Defendants’ 38 e-mail custodians from the scope of discovery would “guarantee a zero percent recall for the 28 custodians not chosen.” After asking itself the question, “how many relevant responsive documents are too many to voluntarily walk away from?,” the court concluded that it had insufficient evidence to weight the benefit of the e-mails that would be produced as a result of including the 28 custodians that Defendants proposed be omitted from discovery. Moreover, it opined that in high-value litigation such as this lawsuit, the burden of the additional $18,000 expense does not outweigh the potential benefit to Knauf of receiving those emails.

The court ordered Defendants to produce discovery from all 38 e-mail custodians but also ordered that, should the search of the additional 28 custodians yield fewer than 500 responsive documents, Plaintiffs must reimburse Defendants $18,000 for the cost of loading the additional data from those 28 e-mail custodians.

November 19, 2015

Indiana Patent Law: Bifurcation of Patent Infringement Trial Held to be Unwarranted

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Magistrate Judge Mark Dinsmore of the Southern District of Indiana denied a motion to bifurcate the patent infringement trial in ongoing litigation styled Knauf Insulation, LLC et al. v. Johns Manville Corp. et al.

This Indiana patent litigation began in January 2015 when Knauf Insulation, LLC, Knauf Insulation GmbH, and Knauf Insulation SPRL (“Plaintiffs”) sued Johns Manville Corporation and Johns Manville, Inc. (“Defendants”). Plaintiffs contended that Defendants had infringed U.S. Patents Nos. 8,114,210; 8,940,089; D631,670; 9,039,827 and 9,040,652 (“the ‘652 patent”).

Patent attorneys for Denver-based Defendants asked the court to bifurcate the trial, asking it to hear the claims of patent infringement of the ‘652 patent separately from the infringement claims regarding the other patents. Defendants supported its motion for bifurcation by asserting that the ‘652 patent is made from binding chemistry different from the other patents and that this difference might confuse the jury.

Whether or not to bifurcate a trial is within the discretion of the trial court, subject to certain conditions: (1) the bifurcation should avoid prejudice to a party or promote judicial economy; (2) the bifurcation should not unfairly prejudice the non-moving party; and (3) the bifurcation must not be granted if doing so would violate the Seventh Amendment.

The court noted that the burden of establishing that bifurcation is appropriate rests on the party seeking it and that “bifurcation remains the exception, not the rule.” It held that Defendants had failed to meet that burden. Instead, the difference in binder chemistry by itself did not outweigh the benefits of a single trial during which the finder of fact could evaluate the “many common facts” relating to all of the patents-in-suit.

The court finally noted that, even if bifurcation might at some point be appropriate, it was too early in the litigation for it to be ordered. The parties were advised that the court would review a motion for bifurcation, should a party choose to submit one, when the matter was closer to trial.

November 6, 2015

Indiana E-Filing Extended to Indiana Supreme Court and Court of Appeals

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Chief Justice Loretta Rush of the Indiana Supreme Court today signed an order extending e-filing.

In July, the Indiana E-filing System (“IEFS”) commenced in Indiana’s state courts with a pilot program in Hamilton County. That program extends to filings with the Indiana Supreme Court and Court of Appeals effective Monday, November 9, 2015.

E-filing via IEFS will be required for all filings for appeals “in which: (a) either the Indiana Public Defender or the Marion County Public Defender, on one side, and the Attorney General of Indiana, on the other side, represent the parties to the appeal; and (b) the Notice of Appeal has already been conventionally filed.”

Other appeals for which a Notice of Appeal have been conventionally filed may submit filings through the IEFS but are not yet required to do so. The court’s plan is to require electronic filing in all Indiana state courts by the end of 2018.

October 21, 2015

Northern District Transfers Copyright Infringement Litigation for Lack of Venue

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – District Judge Jon E. DeGuilio of the United States District Court for the Northern District of Indiana transferred a lawsuit alleging copyright to the Southern District of Indiana, citing a lack of venue in the Northern District.

In this litigation, Angela E. Brooks-Nwenga, acting pro se, alleges that The Mind Trust, United Way of Central Indiana, Central Indiana Education Alliance, Phalen Leadership Academies and Indianapolis Public Schools, all of Indianapolis, Indiana, infringed her copyright work, “Transitioning Into Responsible Students.” Among the wrongdoings asserted are infringement involving Defendants’ use of “Bridges To Success Education School Model” and “Phalen Leadership Academies School Model”

This copyright lawsuit was filed in the Northern District of Indiana, with Brooks-Nwenga acting as her own copyright attorney. The court ordered Plaintiff to show cause why the litigation should not be transferred to the Southern District of Indiana. Brooks-Nwenga argued to the court that she lived in Fort Wayne, Indiana, but the court was not persuaded by this, noting that the statute governing venue in a federal lawsuit, 28 U.S.C. § 1391(b), provides that:

a civil action may be brought in:

(1) a judicial district in which any defendant resides, if all defendants are residents of the State in which the district is located;

(2) a judicial district in which a substantial part of the events or omissions giving rise to the claim occurred, or a substantial part of property that is the subject of the action is situated; or

(3) if there is no district in which an action may otherwise be brought as provided in this section, any judicial district in which any defendant is subject to the court’s personal jurisdiction with respect to such action.

None of these criteria applied to this litigation. Brooks-Nwenga also contended that her prior litigation in the Southern District of Indiana had been excessively delayed and that her lawsuit had not received a fair and unbiased hearing. The court was similarly unswayed by this argument, stating that the court would “not hear appeals from other district courts.”

Finally, the court noted that, while venue in the Northern District was improper, “a substantial part, if not all, of the events or omissions giving rise to Ms. Brooks-Ngwenya’s claim seem to have occurred in the Southern District of Indiana.” Consequently, the court ordered the litigation transferred.

September 30, 2015

Indiana Copyright Litigation: Copyright Infringement Lawsuit Removed to Federal Court

By Overhauser Law Offices, LLC

Evansville, Indiana – Responding to a complaint filed in Indiana state court by Indiana copyright attorneys, a defense lawyer filed a motion to remove the lawsuit to a federal court in the Southern District of Indiana – Evansville Division.

Plaintiff Professional Transportation, Inc. of Evansville, Indiana (“PTI”) is the former employer of Defendant Robert Warmka of Savage, Minnesota. Warmka worked for PTI from September 2012 to December 2013. PTI contends that this employment was governed in part by a trade-secrets agreement. Subsequent to leaving employment with PTI, Warmka began employment with Minnesota Coaches Inc. (“MCI”) d/b/a Crew Motion, a competitor of PTI.

PTI filed this copyright lawsuit in Vanderburgh Superior Court alleging that Warmka infringed its intellectual property by his use of Plaintiff’s copyrighted driver’s manual within MCI’s driver’s manual. PTI contends that multiple sections of PTI’s manual were reproduced nearly verbatim in MCI’s manual. PTI claims that this manual was filed with the U.S. Copyright Office “on or before 2012.” Plaintiff further contends that Defendant appropriated Plaintiff’s confidential material and trade secrets in violation of a trade secret agreement executed by both parties in 2012.

In this lawsuit, filed by Indiana copyright lawyers, the following counts are asserted:

• Count I: Indiana Trade Secret Violation
• Count II: Unfair Competition

• Count III: Copyright Infringement

Plaintiff alleges loss of business and profits and seeks injunctive relief and monetary damages.

Copyright attorneys for Warmka filed a notice of removal, stating that federal subject-matter jurisdiction was proper on the basis of both federal-question jurisdiction and diversity-of-citizenship jurisdiction.

September 24, 2015

Indiana Copyright Law: Court Will Not Reconsider Dismissal of Pro Se Litigant’s Lawsuit

By Overhauser Law Offices, LLC

Indianapolis, Indiana – The Southern District of Indiana denied Plaintiff Larry Philpot’s

motion to reconsider the dismissal of his 2014 lawsuit alleging copyright infringement.

Acting as his own copyright lawyer, Philpot, a professional photographer of Indianapolis, Indiana filed a copyright infringement lawsuit against Music Times, LLC of New York, New York. He alleged that Defendant infringed his copyright on a photograph of Norah Jones taken during a performance in Milwaukee, Wisconsin. The photo had been registered with the U.S. Copyright Office as Certificate No. VAu 1-164-648.

Prior to this motion to reconsider, Philpot had last taken on the case on December 15, 2014. He had then failed to prosecute the case further. On April 17, 2015, the court set an April 30th deadline by which Philpot must show good cause for his failure to take additional actions to advance the copyright infringement lawsuit. Philpot did not respond and, on August, 26, 2015, the court dismissed the litigation.

Plaintiff Philpot, upon being notified of the court’s dismissal of the lawsuit, filed a motion asking the court to reconsider. He stated that he had not received notice of the court’s April 17th order and that his failure to prosecute had been a result of being “completely overwhelmed” due to having filed “too many actions.” On these grounds, he asked the court to reverse its earlier entry of judgment against him.

The court declined to do so. Under Fed. R. Civ. Pro. 59(e), a court is permitted to alter or amend its judgment “only if the petitioner can demonstrate a manifest error of law or present newly discovered evidence.” Because Plaintiff did not demonstrate either – and because his failure to do so would not be excused merely due to his pro se status – the court denied the motion to reconsider.

September 21, 2015

Indiana Copyright Litigation: CelebrityCafé.com Dismissed from Copyright Lawsuit; Court Allows New Defendants to be Added

By Overhauser Law Offices, LLC

Indianapolis, Indiana – The Southern District of Indiana has granted a motion by Defendant The Celebrity Café.com, Inc. (“Celebrity”) to dismiss the copyright infringement complaint filed by Larry G. Philpot of Indianapolis, Indiana. The court also granted Philpot’s motion to amend his complaint.

Plaintiff Philpot is a professional photographer who photographs concert events across the country. He copyrights his photographs and licenses them to others. In December 2014, Philpot sued Celebrity of Oceanside, New York asserting that it had infringed his copyrights by posting two photographs that Philpot had registered with the U.S. Copyright Office. The photos at issue are a 2009 photograph of Willie Nelson and a 2013 photo of Kid Rock.

An Indiana copyright attorney for Defendant Celebrity moved to dismiss the complaint on the grounds that Defendant was not subject to personal jurisdiction in Indiana and that the Southern District of Indiana was an improper venue. A short time later, Philpot asked the court’s permission to amend his complaint to include additional defendants. By this order, the court granted both parties’ requests.

On the issue of jurisdiction, the court held that Philpot had failed to meet his burden to demonstrate the necessary minimum contacts between Celebrity and the State of Indiana. The court found Celebrity to be a New York business that “is not registered to do business in Indiana. It does not have any offices, paid employees, members, agents, or operations in Indiana. Celebrity has no telephone or fax listings in Indiana. It also has no bank accounts in Indiana, has never paid taxes in Indiana, and does not own, lease, or control any property or assets in Indiana. Dominick Miserandino, Celebrity’s sole member, has been to Indiana only twice in his life….”

Moreover, the court held that Celebrity’s use of its website, which it had owned and operated from January 2003 to December 3, 2014, was insufficient to confer jurisdiction upon an Indiana court. Quoting the Seventh Circuit, it stated:

Courts should be careful in resolving questions about personal jurisdiction involving online contacts to ensure that a defendant is not haled into court simply because the defendant owns or operates a website that is accessible in the forum state, even if that site is interactive. Beyond simply operating an interactive website that is accessible from the forum state, a defendant must in some way target the forum state’s market. If the defendant merely operates a website, even a highly interactive website, that is accessible from, but does not target, the forum state, then the defendant may not be haled into court in that state without offending the Constitution.

be2 LLC v. Ivanov, 642 F.3d 555, 558-59 (7th Cir. 2011) (citations and quotation marks omitted).

The court noted that, while it might appear that advertisements on Celebrity’s webpages were targeting Indiana residents due to Indiana-specific content, those advertisements were not the result of Celebrity’s actions to target Indiana. Instead, the advertisements were shown as a result of internet “cookies” that tracked the location of internet end users and then selected and displayed location-specific content from third parties, including content that was specific to Indiana.

Thus, an exercise of personal jurisdiction over Celebrity in Indiana was found to be improper. For similar reasons, venue in the Southern District of Indiana was also held to be improper. The court did, however, permit Philpot to amend his complaint, finding that his request to do so had been timely filed.

September 9, 2015

Indiana Copyright Litigation: Court Allows Copyright Plaintiff to Add New Defendants

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Acting as his own Indiana copyright lawyer, Larry G. Philpot of Indianapolis, Indiana, filed a motion to amend his complaint in the Southern District of Indiana, Indianapolis Division in his ongoing intellectual property litigation against Mansion America, LLC and Oak Ridge Boys Theater of Branson, Missouri.

This lawsuit, which was filed in August 2014, alleges that Defendants Mansion America, LLC and Oak Ridge Boys Theater infringed the copyright of a photo that Plaintiff Philpot took of Willie Nelson during a 2009 performance in St. Louis, Missouri. A copyright to the photograph, Certificate Number VAu 1-132-411, was issued by the U.S. Copyright Office in 2012.

Mansion America filed a motion to dismiss the copyright litigation. The court granted Philpot leave to conduct limited discovery to assist him in responding to that motion. Plaintiff Philpot now indicates to the court that the discovery provided him with additional information, including the identities of additional parties who had been before been unknown to him. Philpot consequently asked the court for leave to amend his complaint.

The court noted that that, while the time for amending the complaint as a matter of right had elapsed, it was still within the court’s discretion to allow the amendment and that, under the Federal Rules of Civil Procedure, the court should “freely give leave when justice so requires.” Finding that there had been “no undue delay, bad faith, dilatory motive, undue prejudice, or futility of amendment,” and that Philpot had “diligently pursued discovery and prosecuted his case,” the court found that justice required that leave be granted to Philpot to amend his complaint.