Articles Posted in International Intellectual Property Law

Celina, Texas – Plaintiff, Nickels and Dimes Incorporated is suing LaPorte, Indiana company, Noah’s Arcade, LLC d/b/a Full Tilt, for infringement of its federally registered trademark TILT, in association with arcade, amusement, and entertainment services, under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1).

According to the complaint, Plaintiff Nickels and Dimes opened their first TILT arcade in 1977, inside the Six Flags Mall, in Arlington, TX, and has since owned and operated 200 TILT arcades in the U.S.  NickTiltStudio2-300x225els and Dimes states that it then began using the Trademark TILT STUDIO in 2010, and the TILTED 10 Trademark in 2021, in association with arcade games and indoor entertainment.

The Defendant, Noah’s Arcade, allegedly opened their arcade in 2022 under the mark FULL TILT and has been accused of using the mark in their marketing and advertising, to which the Plaintiff claims infringement of their trademarks TILT, TILT STUDIO, and TILTED 10.  The Plaintiff argues that the products sold under Noah’s FULL TILT mark are identical or highly similar to those that Nickels and Dimes sell under their trademarks.  In addition, the Plaintiff contends that Noah’s Domain Name is similar to Plaintiff’s TILT STUDIO and TILTED 10 marks, which could potentially cause confusion among the customer base who may assume an affiliation between the two entities.

New Jersey – Plaintiff Christopher Sadowski is suing Defendant Restoration 1 By J&D, LLC, of New Palestine, Indiana, over violation of the Copyright Act, 17 U.S.C. § 501, for allegedly reproducing, distributing, and publicly displaying Sadowski’s intellectual property for its own commercial purposes.

Photographer-300x200According to the claim, Sadowski is an award-winning photojournalist with 19 years of experience in documenting ordinary life and the human condition through photography. His work has been commissioned in magazines and newspapers such as the New York Post, Daily Mail Online, Reader’s Digest, USA Today, New York Times, Fox News, CBS News, NBC News, Boston Globe, Boston Herald, Los Angeles Times, Newsweek Magazine, and People Magazine.  The complaint states that while the Plaintiff does sell limited, one-time use licenses to customers, he always retains copyright ownership of the photographs.

The suit accuses Restoration 1, a property damage restoration company, of using Sadowski’s photograph of Christmas lights on the Restoration 1 website without the proper licensing or permission to do so.  The Plaintiff claims that the Defendant has never been licensed to use the photograph and upon learning of its unauthorized use, the Defendant has not been willing to negotiate a reasonable license for it. Furthermore, the complaint states that Restoration 1 displays a copyright disclaimer (“Copyright © 2017”) on the page of the website that contains the photo, allegedly asserting that Restoration 1 owns the rights to everything on the webpage, including the photo in question.

While finding the owner of a domain name has traditionally been an easy process, as of May 25, 2018, access for WHOIS information has WhoIS-BlogPhoto-300x245changed. In light of the General Data Protection Regulation (“GDPR”) adopted by the European Union (“EU”) in April 2016, the Internet Corporation for Assigned Names and Numbers (“ICANN”) has had to attempt to form new policies to protect registrant information. The Temporary Specification for gTLD Registration Data (“Temporary Specification”) is ICANN’s attempt to comply with the GDPR while maintaining the WHOIS system by restricting most personal data. While the personal data will not be publicly available without some effort, those with a legitimate interest in the contact information will be able to request such information through their domain registrar. They may also be able to contact the registrant through anonymized email or web forms.

These changes are really hitting home for trademark owners who may not able to file a complaint directly against the domain name registrant due to the information being restricted. While not all WHOIS information is unavailable, complainants in most cases will have extra steps that they must take in order to file a complaint. If the information is not available on WHOIS, the complainant will have to verify that the information is not publicly available in the complaint. After the complaint has been filed, FORUM will contact the registrar to obtain the restricted contact information. For Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) cases, the complainant will have to amend the complaint with the newly received registrant contact information. For Uniform Rapid Suspension Systems (“URS”) cases, complaints may not be amended to include additional registrant information under the URS Procedure and Rules, however, the Temporary Specification allows FORUM to add registrant information after the complaint is filed.

The Expedited Policy Development Process (“EPDP”) initiated by ICANN will consider the adoption of the temporary specification and will likely include a discussion of a standardized access model for the restricted registration information. For any questions, you can contact the Director of Arbitration for FORUM, Renee Fossen by mail at 6465 Wayzata Blvd., Suite 480, Minneapolis, MN 55405, by phone at 952-516-6456, or email at rfossen@adrforum.com.

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Washington, D.C. – The Trade Facilitation and Trade Enforcement Act provides new tools and resources to protect American innovation.

The Office of the United States Trade Representative (“USTR”) commended Congress for passing the Trade Facilitation and Trade Enforcement Act of 2015, which will bolster trade enforcement efforts.

“This bill adds new tools that we’ll use in the work we do every day to hold America’s trading partners accountable,” said U.S. Trade Representative Michael Froman. “Coming on the heels of negotiating [the Trans-Pacific Partnership (“TPP”)], the highest-standard trade agreement in history, this bill will further boost enforcement of the groundbreaking intellectual property, labor, environment, and many other fully enforceable commitments we’ve secured.”

In 2008, a new federal law creating stricter penalties for criminals who engaged in intellectual property theft was enacted to keep pace with globalization, e-commerce, and technology advances.

Fast forward to 2016: Technological advances continue at an even faster pace, dramatically 

 

 

Intellectual Property Theft 101

 

Intellectual property can be an idea, an invention, a design, a business process, or even a creative expression.  All are protectable under the law.

 

Once stolen, intellectual property can generate a great deal of money for the thieves.  But there are other consequences. Intellectual property theft, which includes theft of trade secrets, the trafficking of counterfeit goods, and digital piracy, results in billions of dollars in lost profits annually. Failure to protect the nation’s intellectual property undermines confidence in the economy, removes opportunities for growth, erodes America’s technological advantage, and disrupts fairness and competitiveness in the marketplace.

 

Some intellectual property thefts pose a more far-reaching and serious threat to the U.S. than economic loss to the rights holders. These thefts can also put public safety at risk through the sale of counterfeit pharmaceuticals,
electrical components, and aircraft and automobile parts, as well as through the funding of other kinds of crime.

 

Within its intellectual property rights violations program, the FBI prioritizes its investigations and focuses the majority of its resources on cases involving theft of trade secrets, counterfeit goods that pose a threat to human health and safety, and copyright and infringement matters with a nexus to national security or organized crime or that pose a significant economic impact.

 

Along with its partners at the National Intellectual Property Rights Coordination Center, the FBI also participates in several intelligence-driven national initiatives, including:

 


Operation Chain Reaction, which focuses on counterfeit products entering the U.S. government supply chain that pose a threat to human health and safety or national security;


Operation Engine Newity, which addresses counterfeit automotive parts that threaten safety, including airbags, brake pads, and steering systems; and


Operation Apothecary, which focuses on counterfeit pharmaceuticals that pose a safety threat.

 

increasing the threat posed by criminals who steal trade secrets, produce and/or traffic in counterfeit products, and infringe on copyrights. One important factor in this increase is the global expansion of online marketplaces, which aids international and domestic criminal organizations in trafficking in counterfeit goods.

The Department of Justice recently announced a new strategy that involves partnering more closely with businesses in an effort to combat these types of crimes more effectively. According to Attorney General Loretta Lynch, “Through this new approach, we intend to provide information and resources to individuals and companies that will help them identify and disrupt attempts on their intellectual property, extend greater protection to American commerce as a whole, and safeguard the health and safety of individual Americans.” The Federal Bureau of Investigations (“FBI”), working with its investigative partners at the National Intellectual Property Rights Coordination Center (“NIPRCC”), will play an integral part in this strategy.

The FBI has already been collaborating for years with brand owners, copyright holders, and trademark holders because in an effort to prevent the harm that intellectual property theft causes: legitimate businesses lose billions of dollars in revenue and suffer damaged reputations, consumer prices go up, the U.S. and global economies are robbed of jobs and tax revenue, product safety is reduced, and sometimes lives are even put at risk. The FBI’s efforts with these businesses to date have involved shared information, aggressive criminal initiatives based on current or emerging trends, and investigations.

The FBI has now begun expanding its efforts to work with third-party entities, such as online marketplaces, payment service providers, and advertisers, that may inadvertently enable the activities of criminals.

Third-party online marketplaces draw consumers to their sites with competitive pricing and a sense of security, but criminal counterfeiters exploit these marketplaces to gain an appearance of legitimacy, access to far-reaching advertising, and efficient sales transactions.

Payment service providers, such as credit card payment processors and related payment alternatives, also give counterfeiters the appearance of legitimacy when they provide payment options that consumers mistakenly interpret to mean that the businesses they service are legitimate.

Online advertising systems and platforms enable website owners to outsource the process of monetizing their website traffic. Criminals have begun exploiting advertising as an alternative revenue stream, drawing traffic to their sites by offering counterfeit products for sale or pirated digital content for download.

The FBI finds that there are significant benefits to working with these third-party entities. According to David Farquhar, who heads up the FBI’s Intellectual Property and Cyber-Enabled Crimes Unit at the NIPRCC, “We’re not only broadening awareness of the crime problem, we can also obtain information about crime trends, get investigative leads that will help us identify criminals, and collect evidence of criminal activity.” Farquhar added that the FBI will assist these companies with refining their own analytical tools and techniques for uncovering fraud.

Also new in its approach to intellectual property theft is an enhanced relationship between the FBI’s criminal and counterintelligence personnel when working theft of trade secrets cases. A trade secrets case worked under the counterintelligence program, which occurs when the involvement of state-sponsored actors is suspected, will be referred to a criminal squad if no state sponsorship is found. And when criminal investigators begin to suspect the involvement of a state sponsor, the case will be referred to the counterintelligence squad.

Internet-related crime, like any other crime, should be reported to appropriate law enforcement investigative authorities at the local, state, federal, or international levels, depending on the scope of the crime. Citizens who are aware of federal crimes should report them to local offices of federal law enforcement.

A guide to reporting intellectual property crime:

Type of Crime

Appropriate federal investigative law enforcement agencies 

Copyright piracy (e.g.,
software, movie, sound recordings)

Trademark counterfeiting

Theft of trade secrets/Economic Espionage

The U.S. Department of Justice has also produced a guide, “Reporting Intellectual Property Crime: A Guide for Victims of Counterfeiting, Copyright Infringement, and Theft of Trade Secrets,” available as a PDF file. This guide is contained in Appendix C of the Report of the Department of Justice’s Intellectual Property Task Force (October 2004). The guide also contains the following checklists for reporting intellectual property crime to law enforcement:

Checklist for Reporting a Copyright Infringement or Counterfeit Trademark Offense (PDF)

Checklist for Reporting a Theft of Trade Secrets Offense (PDF)

Other government initiatives to combat cybercrime include:

National Intellectual Property Rights Coordination Center

The IPR Coordination Center’s responsibilities include:

• Coordinating U.S. government domestic and international law enforcement activities involving IPR issues.
• Serving as a collection point for intelligence provided by private industry, as well as a channel for law enforcement to obtain cooperation from private industry (in specific law enforcement situations).
• Integrating domestic and international law enforcement intelligence with private industry information relating to IPR crime, and disseminating IPR intelligence for appropriate investigative and tactical use.
• Developing enhanced investigative, intelligence and interdiction capabilities.

• Serving as a point of contact regarding IPR law enforcement related issues.

The STOP Initiative (www.stopfakes.gov)

The stopfakes.gov website provides information to consumers and businesses on intellectual property, including information on how to report trade in fake goods.

Those with specific information regarding intellectual property crime can submit an IPR Coordination Center Complaint Referral Form.

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Washington, D.C. – The U.S. International Trade Commission (“USITC”) began an investigation under section 337 of the Tariff Act of 1930 regarding the importation and sale of blood cholesterol test strips that allegedly infringe a U.S. patent. The respondents are Jant Pharmacal Corp. of Encino, California; Infopia America LLC of Titusville, Florida and Infopia Co., Ltd. of the Republic of Korea.

In August 2014, Indiana patent attorneys for Plaintiff Polymer Technology Systems (“PTS”) of Indianapolis, Indiana sued respondents in the Southern District of Indiana alleging infringement of U.S. Patent No. 7,087,397, “Method for determining HDL concentration from whole blood or plasma,” which was granted by the United States Patent and Trademark Office. In the lawsuit filed in Indiana federal court, PTS also asserted that Defendants had violated the Lanham Act.

In October 2015, PTS filed a complaint with the USITC involving its point-of-care blood cholesterol testing meters, test strips, and systems containing the same naming the same three parties. PTS asks that the USITC issue an exclusion order and a cease and desist order.

No decision has yet been made on the merits of the USITC action. The matter will be assigned to an administrative law judge (“ALJ”), who will hold an evidentiary hearing. The ALJ will make an initial determination regarding whether there is a violation of section 337. That decision, in turn, is subject to review by the USITC, which then makes a final determination.

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The U.S. Copyright Office, a part of the Library of Congress, issued a final rule adopting exemptions to the provision of the Digital Millennium Copyright Act (“DMCA”) that prohibits circumvention of technological measures that control access to copyrighted works.

The DMCA was enacted in 1998 to implement various elements of copyright-related World Intellectual Property Organization treaties. Included in the DMCA was a prohibition against circumventing technological measures employed by or on behalf of copyright owners to protect access to their works. The DMCA also provided for exemptions to this prohibition, which are issued by the Librarian of Congress following a rulemaking proceeding. In the course of this proceeding, the Librarian determines which “noninfringing uses by persons who are users of a copyrighted work are, or are likely to be, adversely affected by the prohibition against circumvention in the succeeding three-year period” and, through the final rule, exempts that class from the prohibition for that three-year period.

Under the DMCA, this final rule must consider “(i) the availability for use of copyrighted works; (ii) the availability for use of works for nonprofit archival, preservation, and educational purposes; (iii) the impact that the prohibition on the circumvention of technological measures applied to copyrighted works has on criticism, comment, news reporting, teaching, scholarship, or research; (iv) the effect of circumvention of technological measures on the market for or value of copyrighted works; and (v) such other factors as the Librarian considers appropriate.”

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South Bend, Indiana – An Indiana patent attorney for Plaintiffs Never Lost Golf, LLC of South Bend, Indiana; Michael Carnell, a domiciliary of California who resides in Berlin, Germany and who does business as The Never Lost Golf Tee Saver and The Never Lost Golf Tee Saver Mat System (“NLG”); and Teresa O’Keefe and Grant Holloway, Trustees for the N.L.G. Living Trust filed a lawsuit in the Northern District of Indiana alleging infringement of NLG’s German Patent A63B 57/100, which has been filed with the German Patent Office. Patent protection for NLG has also been sought with the U.S. Patent and Trademark Office.

Three Defendants in this litigation, Maia Steinert, Chrisoph Stephan and Ralf Menwegen, are partners and/or members of Steinert & Stephan, a German law firm. Steinert has been accused by Plaintiffs of “aggregious [sic] conduct in asserting ownership interest in the NLG German patent.” Stephan and Menwegen were accused of having been “involved in the patent process.”

Carnell contends that he retained Steinert & Stephan in 2010 to represent him in filing for a German patent for the Never Lost Golf product. He adds in his complaint that any intellectual property rights obtained by these filings were supposed to accrue to him alone. Carnell asserts that, subsequent to hiring the Steinert & Stephan and utilizing their services in pursuit of a German patent, Steinert applied for a Never Lost Golf patent with the United States Patent and Trademark Office. This filing, states Carnell, includes an assertion by Steinert that she was the sole owner of the patent rights associated with the NLG product. He states that her actions demonstrate an attempt to illegally claim rights to intellectual property that she knew was not hers, both in the United States and in Germany.

Two additional Defendants, Markus Schumann and Harribert Pamp, have been named as co-conspirators. Plaintiffs contend that they conspired with Steinert to commit fraud and perjury in support of Steinert’s assertion of ownership in NLG’s German patent.

Defendants seek equitable relief along with damages, costs and attorney fees.

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On October 4, 2015, Ministers of the 12 Trans-Pacific Partnership (“TPP”) countries – Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States, and Vietnam – announced conclusion of their negotiations. The result is an agreement that has been promoted as enhancing economic growth; supporting the creation and retention of jobs; enhancing innovation, productivity and competitiveness; raising living standards; reducing poverty; and promoting transparency, good governance, and enhanced labor and environmental protections.

TPP’s chapter regarding intellectual property (“IP”) covers patents, trademarks, copyrights, industrial designs, geographical indications, trade secrets, other forms of intellectual property, and enforcement of intellectual property rights, as well as areas in which participating countries agree to cooperate. The IP chapter will make it easier for businesses to search, register, and protect IP rights in new markets, which is particularly important for small businesses.

The chapter establishes standards for patents, based on the World Trade Organization’s (“WTO”) agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”), and international best practices. On trademarks, it provides protections of brand names and other signs that businesses and individuals use to distinguish their products in the marketplace. The chapter also requires certain transparency and due process safeguards with respect to the protection of new geographical indications, including for geographical indications recognized or protected through international agreements. These include confirmation of understandings on the relationship between trademarks and geographical indications, as well as safeguards regarding the use of commonly used terms.

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