Articles Posted in Jurisdiction and Venue

Indianapolis, Indiana – Eli Lilly and Company (“Lilly”) filed suit on November 13, 2019 in the Southern District of Indiana against Defendant SensorRx seeking a declaratory judgment that it had not misappropriated trade secrets among other things. SensorRx in turn, on November 22, 2019 filed a lawsuit in the Western District of North Carolina seeking injunctive relief and monetary damages. SensorRx then filed a Motion to Dismiss or to Transfer Lilly’s declaratory action suit to North Carolina.

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The Southern District found Lilly’s declaratory action was an “improper anticipatory filing” as there was a clear threat of litigation prior to the filing of the declaratory action. As such, the Court declined to exercise its discretion to hear the declaratory judgment action. The Court further found that the balance of factors under 28 U.S.C. § 1404(a) weighed in favor of transferring the action to the Western District of North Carolina where SensorRx filed its suit. Therefore, SensorRx’s Motion to Transfer was granted and the case was transferred to the Western District of North Carolina. Continue reading

Syndicate Sales Inc., an Indiana corporation, along with six other Defendants filed notice to remove a case initially filed in the Superior Court of California, County of Los Angeles by Plaintiff, Natural Pack, Inc. (“Natural Pack”). Defendants sought to remove the case to the United States District Court for the Central District of California pursuant to 28 U.S.C. §§ 1331, 1337, and 1441 for federal question and diversity jurisdiction.

The removed case is a civil action entitled Natural Pack, Inc. v. Syndicate Sales, Inc. et al. Case No 19TSCV32476 (the “State Action”).  Natural Pack filed the State Action on September 12, 2019, asserting claims for violation of Uniform Trade Secrets Act, fraud, negligent misrepresentation, breach of contract, intentional interference with prospective economic relations, negligence, violation of the Lanham Act, and California Statutory and common law infringement. Following removal to the Central District of California, the Defendants filed a Motion to Dismiss under F.R.C.P. 12(b)(2) or in the alternative to Change Venue pursuant to 28 U.S.C. § 1401. The case was transferred to the Southern District of Indiana on January 21, 2020.

The Original Notice of Removal was filed October 15, 2019 in the Central District of California; and the case was transferred to the Southern District of  Indiana on January 21, 2020 given Case No. 1:20-cv-00219-JRS-DLP and assigned to District Judge James R. Sweeney and Magistrate Judge Doris L. Pryor.

Indianapolis, Indiana – Attorneys for Plaintiff, Dean Potter LLC (“Potter LLC”), an Indiana limited liability company, filed suit in the Southern District of Indiana alleging that Defendants, LG Electronics USA, Inc. (“LG”), a Delaware corporation, and DOES 1 – 10, infringed its intellectual property rights, including the right of publicity. Potter LLC is seeking injunctive relief, judgment including statutory damages, and attorneys’ fees.

According to the Complaint, Potter LLC “is the exclusive owner of the name, likeness, image, right of publicity and endorsement, trademarks,Potter-BlogPhoto-300x240 and other intellectual property rights of the late Dean Potter.” Potter LLC claims Mr. Potter was a well-known extreme sports athlete who was featured in National Geographic for his stunts including highlining, BASE jumping, and rock climbing. Mr. Potter was allegedly featured traversing a highline in the short film entitled Moonwalk, that was shot in 2011 and published by 2012. It is alleged that no one else has recreated Mr. Potter’s performance in Moonwalk and that Potter LLC is the owner of Mr. Potter’s right of publicity and common law trademark rights in the film.

Potter LLC alleges Defendants utilized footage from Moonwalk in which Mr. Potter was traversing the highline in its commercial entitled “Listen. Think. Answer.” (the “Commercial”). According to the Complaint, LG is a multi-billion dollar corporation that has previously protected and enforced its intellectual property rights, meaning it is aware of the need to obtain a license for using Mr. Potter’s right of publicity and or likeness or commercial purposes. However, Potter LLC claims it was not approached by Defendants regarding a license for the Commercial and it never authorized Defendants to use Mr. Potter’s likeness. Potter LLC further claims Mr. Potter, during his life, “rejected the corporate, commercial, and competitive worlds that sought to profit from his art without understanding it”.

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Kosciusko County, Indiana – Attorneys for Plaintiff, Rick C. Sasso, M.D. (“Dr. Sasso”) of Carmel, Indiana, originally filed suit in the Kosciusko County Superior Court in Indiana alleging that Defendants, Warsaw Orthopedic, Inc., Medtronic, PLC, and Medtronic Sofamor Danek, Inc., haveSassoBlogPhoto-266x300 denied him and his accounting firm access to their sales ledger per two separate agreements. Dr. Sasso is seeking an injunction ordering Defendants to provide full access to its sales ledger to determine royalties owed to Dr. Sasso under two separate agreements. As of April 12, 2019, Defendants filed a Notice of Removal to remove the case to the U.S. District Court for the Northern District of Indiana.

Per the complaint, Dr. Sasso is a board-certified orthopedic surgeon specializing in the treatment of the spine. Dr. Sasso claims the Defendants, together, are top manufacturers for spine implants. It is claimed Dr. Sasso entered into two separate agreements with Sofamor Danek Holding, Inc., which was later acquired by Warsaw Orthopedic through a merger. The first alleged agreement, is the 1999 Screw Delivery System Agreement on November 18, 1999 (the “1999 Agreement”). The second alleged agreement is the 2001 Vertex Agreement, entered into on July 26, 2001 (the “2001 Agreement”). Dr. Sasso claims that these agreements have clauses that enable him to “inspect, examine, audit, and copy [Defendants’] records” relating to the agreements once per calendar year.

In August 2013, Dr. Sasso filed a different suit against the Defendants for unpaid royalties under both the 1999 and 2001 Agreements. Dr. Sasso was granted royalties in the amount of $79,794,721.00 for the 1999 Agreement and $32,657,548.00 for the 2001 Agreement, which has been appealed by Defendants. According to the complaint, the 1999 Agreement requires the Defendants to continue paying royalties until the expiration of U.S. Patent No. 6,287,313 and U.S. Patent No. 6,562,046, on or about November 23, 2019. Dr. Sasso also claims the 2001 Agreement requires Defendants to pay royalties to him so long as “the Medical Device is covered by a valid claim of an issued patent arising out of the Intellectual Property Rights.”

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Indianapolis, Indiana – Attorney and Photographer Richard N. Bell of McCordsville, Indiana filed suit in the Southern District of Indiana alleging that Defendant, Halcyon Business Publications, Inc., of New York infringed his “Indianapolis Photo” which has been registered with the United States Copyright Office as Registration No. VA0001785115. After review of the Defendant’s Motion to Dismiss for Lack of Jurisdiction which was filed on December 29, 2017 the court granted the Motion to Dismiss on May 24, 2018.

Bell, who has brought many similar lawsuits for infringement of his Indianapolis Photo, initially filed this case on November 29, 2017 alleging violations of the Lanham Act and copyright infringement. Halcyon claimed that the Court lacked personal jurisdiction over the company as they do not maintain any offices in the state, have no employees in the state, and have no assets in the state of Indiana. They did admHalcyon-BlogPhoto-300x66it that they hired one Indiana resident as an independent contractor to write for their publication, but that contractor did not write the article that utilized the Indianapolis Photo. Further, the total amounts of advertising sold to Indiana companies by Halcyon amounted to 3.26% and 4.55% in 2016 and 2017, respectively, and Indiana subscribers to the publication comprised less than 3% of their total subscribers.

Here, the Court must only look at whether the personal jurisdiction is consistent with the Federal Due Process Clause as Indiana’s long-arm statute is analyzed under this issue. For this, a defendant must have “minimum contacts” with the forum state and purposefully avail themselves “of the privilege of conducting activities within the forum [s]tate, thus invoking the benefits and protections of its laws.” Asahi Metal Indus. Co. v. Super. Ct. of Cal., 480 U.S. 102, 109 (1987). This allows a defendant to reasonably anticipate being brought into a forum in a foreign jurisdiction.

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Fort Wayne, Indiana – Attorneys for Plaintiff, Vera Bradley Designs, Inc., of Roanoke, Indiana filed suit in theDenny-BlogPhoto-300x64 Northern District of Indiana alleging that Defendant, Austin Devin 2 Denny Boys, LLC,  infringed multiple trademarks of the Plaintiff. Overhauser Law Offices, LLC represented the Defendant Austin Devin 2 Denny Boys LLC and Darlene Nicholas, who filed a Motion to Dismiss for improper venue and prevailed on July 30, 2018.

Plaintiff currently holds more than 900 copyright registrations, 35 federal trademark registrations, and has 17 pending federal trademark applications. The Plaintiff alleged in its complaint that the Defendants operate eBay accounts that they use to sell counterfeit Vera Bradley items and these acts infringe Vera Bradley’s trademarks and copyrights. All Defendants were sent cease and desist letters on behalf of the Plaintiff via counsel on July 26, 2017. On August 1, 2017, all Defendants party to the Motion to Dismiss responded through counsel and agreed to stop selling the counterfeit items, however, the Plaintiff alleged they did not cease their activities and filed suit.

The Defendants moved to dismiss Vera Bradley’s Complaint and claimed that because a substantial part of the events leading to the Plaintiff’s claims did not occur in the Northern District of Indiana, venue was improper. Further, Defendant Nicholas, claimed that the Court did not have personal jurisdiction over her. The Plaintiff countered that there were five specific instances in which the counterfeit merchandise was purchased by its employees within the Northern District of Indiana from the Defendants. They also claimed that venue was proper because they suffered harm in the District. As to Defendant Nicholas, the Court held that the Plaintiff did not give any persuasive argument as to how the Northern or Southern District Courts of Indiana could have general or specific personal jurisdiction over her in this case as she resides in Florida. Therefore, the Court was unable to transfer the case to the Southern District of Indiana, which may have been a proper venue for the other Defendants involved.

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Fort Wayne, Indiana – The Northern District of Indiana has denied Defendant’s motion to dismiss for improper venue, citing the connection of the Northern District to the events underlying the litigation.

This Indiana trademark litigation, Family Express Corp. v. Square Donuts, Inc., was filed to resolve a dispute over the use of the words “Square Donuts” in connection with the sale of donuts by two different Indiana-based companies.

Defendant Square Donuts of Terre Haute, Indiana claims trademark rights to “Square Donuts” under federal and Indiana law. It currently sells its “Square Donuts” in bakeries located in southern and central Indiana, including locations in Terre Haute, Indianapolis, Bloomington, and Richmond.

Plaintiff Family Express of Valparaiso, Indiana operates convenience stores in northern Indiana and uses the term “Square Donuts” in conjunction with doughnut sales. Plaintiff states that both it and Defendant are expanding their respective businesses into new markets, with Defendant expanding to the north while Plaintiff expands to the south. Thus, territory in which both operate concurrently has become a possibility.

In 2006, Defendant sent a cease-and-desist letter to Plaintiff. Plaintiff and Defendant subsequently discussed the possibility of entering into a co-existence arrangement, but did reach an agreement.

This trademark lawsuit followed. Plaintiff asks the Indiana federal court to declare that its use of the term does not infringe on the trademark rights in “Square Donuts” asserted by Defendant. Plaintiff also asks the court to cancel Defendant’s existing Indiana and federal “Square Donuts” trademarks.

Trademark litigators for Defendant asked the court to dismiss the lawsuit, claiming that it had been filed in an improper venue. In evaluating whether venue in the Northern District was permissible, the court first noted that, while it “must resolve all factual disputes and draw all reasonable inferences in the plaintiff’s favor,” Plaintiff then bears the burden of establishing that venue is proper. It also noted that venue can be proper in more than one district.

The federal venue statute, 28 U.S.C. § 1391(b), provides that venue can exist in “(1) a judicial district in which any defendant resides, if all defendants reside [in the same state]” or “(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 the property that is the subject of the action is situated.”

Plaintiff relied on subsection (b)(2), claiming that a substantial part of the events giving rise to the lawsuit took place in the Northern District of Indiana. To establish venue, Plaintiff pointed to the fact that Defendant’s cease-and-desist letter and other communications had been relayed to Plaintiff in the Northern District. At least some rulings by districts courts located within the Seventh Circuit have held that the requirements for venue “may be satisfied by a communication transmitted to or from the district in which the cause of action was filed, given a sufficient relationship between the communication and the cause of action.”

The Northern District of Indiana concluded that such communications, which would be a typical element of litigation under the Declaratory Judgment Act, would defeat the purpose of protecting a defendant from having to litigate “in the plaintiff’s home forum, without regard to the inconvenience to the defendant at having to defend an action in that forum or whether the defendant has engaged in substantial activities in that forum.”

Instead, the Indiana court considered the underlying substance of the dispute: “whether the Defendant’s Square Donuts trademark is valid and, if it is, whether the Plaintiff nevertheless has refrained from infringing on the trademark in connection with the sale of its Square Donuts.” The court concluded that, given the extent to which the claims and events at issue in the litigation took place in both the Northern and the Southern District of Indiana, venue was not improper in the Northern District of Indiana.

Practice Tip #1: If neither subsection (b)(1) nor (b)(2) of 28 U.S.C. § 1391 applies, a third subsection may be utilized. That subsection, 28 U.S.C. § 1391(b)(3), permits venue in “any judicial district in which any defendant is subject to the court’s personal jurisdiction with respect to such action.”

Practice Tip #2: An inquiry into proper venue for a lawsuit is different from one into personal jurisdiction. Personal jurisdiction “goes to the court’s power to exercise control over a party,” while venue is “primarily a matter of choosing a convenient forum.”

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Indianapolis, Indiana – Judge Jane Magnus-Stinson dismissed a lawsuit by Indiana copyright attorney and professional photographer Richard Bell against Defendant Find Tickets, LLC of Alpharetta, Georgia for lack of personal jurisdiction.

In June 2015, Bell sued Find Tickets in the Southern District of Indiana asserting copyright infringement. He stated that the Georgia-based company had published a copyrighted photo on its website, www.findticketsfast.com, without his permission. The photo in question was one that Bell had taken of the downtown Indianapolis skyline. It had been registered by the U.S. Copyright Office under Registration No. VA0001785115.

On behalf of Find Tickets, a copyright lawyer asked the court to dismiss the complaint for lack of jurisdiction, averring that Find Tickets “does not maintain any offices in Indiana, has no employees in Indiana, holds no assets in Indiana, pays no taxes to the state of Indiana, and has no bank or other financial institution accounts in Indiana.” It was further stated that the business was owned by two Georgia residents, neither of whom had ever set foot in Indiana.

The court turned to a constitutional analysis of the due process requirements for personal jurisdiction, as elucidated by the Seventh Circuit in Advanced Tactical Ordnance Sys., LLC v. Real Action Paintball, Inc., 751 F.3d 796, 800-01 (7th Cir. 2014). Citing that appellate case, the district court stated:

Due process is satisfied so long as the defendant had “certain minimum contacts” with the forum state such that the “maintenance of the suit does not offend ‘traditional notions of fair play and substantial justice.'” The relevant contacts are those that center on the relations among the defendant, the forum, and the litigation. However, “[f]or a State to exercise jurisdiction consistent with due process, the defendant’s suit-related conduct must create a substantial connection with the forum State.” Thus, the relation between the defendant and the forum “must arise out of contacts that the ‘defendant himself‘ creates with the forum . . . .” Moreover, although no special test exists for internet-based cases, the Court focuses on whether the defendant has purposely exploited the Indiana market beyond the availability of the website in the forum state. (Citations omitted).

The district court was unpersuaded by Bell’s arguments, opining that the Seventh Circuit precedent set forth in Advanced Tactical “established that a defendant who ‘maintains a website that is accessible to Indiana residents should not be haled into court simply because the defendant owns or operates a website that is accessible in the forum state, even if it is ‘interactive.'”

The court similarly held that, as with Advanced Tactical, Defendant’s sales to residents of the forum state were insufficient to establish personal jurisdiction as it had not been demonstrated that such sales were related to the lawsuit.

Finding no personal jurisdiction over Defendant, the court dismissed the lawsuit without prejudice.

Practice Tip: Overhauser Law Offices, publisher of this blog, represented Defendants Real Action Paintball, Inc. and its president in the appeal to the Seventh Circuit.

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Hammond, Indiana – Trademark litigation commenced in the Western District of Michigan in 2013 was transferred to the Northern District of Indiana yesterday.

This federal lawsuit, filed by trademark attorneys for Plaintiffs Texas Roadhouse, Inc. and Texas Roadhouse Delaware LLC, both of Louisville, Kentucky, alleges infringement of U.S. Service Mark Reg. No. 1,833,533, U.S. Service Mark Reg. No. 2,231,309, and U.S. Service Mark Reg. No. 2,250,966. These marks have been filed with the U.S. Patent and Trademark Office.

The Defendants listed in the Michigan complaint were Texas Corral Restaurants, Inc.; Switzer Properties, LLC; Texcor, Inc.; Texas Corral Restaurant II, Inc.; T.C. of Michigan City, Inc.; T.C. of Kalamazoo, Inc.; Chicago Roadhouse Concepts, LLC; Paul Switzer; Victor Spina; and John Doe Corp. Defendants filed a motion to dismiss or, in the alternative, transfer venue, with the Michigan court, which was granted. The lawsuit will continue in the Northern District of Indiana.

Plaintiffs, via their trademark lawyers, asserted the following claims:

• Count I: Trade Dress Infringement
• Count II: Federal Trademark Infringement
• Count III: Trademark Infringement Under Michigan Statutory Law
• Count IV: Trademark Infringement Under Indiana Statutory Law
• Count V: Trademark Infringement Under Common Law
• Count VI: Copyright Infringement

• Count VII: Unfair Competition Under Michigan and Indiana Common Law

Texas Roadhouse seeks equitable relief; damages, including punitive damages; costs and attorney fees.

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Indianapolis, Indiana – In the matter of Bell v. Find Tickets, LLC, the Southern District of Indiana quashed overbroad discovery requests and limited inquiries to those pertaining to the matter of personal jurisdiction.

Plaintiff Richard Bell of McCordsville, Indiana photographed the Indianapolis skyline in 2000 and copyrighted the work. In this copyright lawsuit, Bell, acting as his own copyright attorney, alleges that Defendant Find Tickets of Alpharetta, Georgia published the photo on a website without Bell’s permission.

As part of the litigation, Bell propounded multiple interrogatories to Defendant. Defendant asked the court to quash this discovery, characterizing it as “far exceed[ing] the scope of a reasonable jurisdictional inquiry.” Defendant also asked for a protective order prohibiting Bell from deposing Find Tickets’ officers.

Writing for the court, Magistrate Judge Mark Dinsmore noted that Defendant’s own affidavit had estimated that “less than 1% of Find Tickets [sic] income is from Indiana related sales.” Consequently, the court concluded that, while personal jurisdiction might eventually be found to be lacking, this small amount of business was sufficient as the required “colorable showing” that jurisdiction over Defendant might exist. Consequently, the court ruled that jurisdictional discovery would be permitted.

However, the court also found that the interrogatories that had been served had been too broad for the limited question of establishing whether the exercise of personal jurisdiction over Defendant was proper. Judge Dinsmore ordered that the interrogatories be limited to inquiries that would support that “Defendant had extensive and pervasive contact with Indiana (general jurisdiction) or that Defendant ‘purposely availed’ itself of the privilege of conducting business in Indiana and the alleged copyright infringement arose from Defendant’s conducting business in Indiana (specific jurisdiction).” The court revised Plaintiff Bell’s interrogatories to limit them to the relevant jurisdictional matters, pending a ruling on Defendant’s separate motion to dismiss, and ordered that Defendant respond by December 1, 2015.

Defendant’s motion to quash the deposition of the owner of Find Tickets was also granted as the court found that such a deposition was unnecessary under the circumstances.

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