Articles Posted in License

Indianapolis, Indiana – Newton Enterprises Ltd. of Kowloon, Hong Kong filed a lawsuit in the Southern District of Indiana against Defendant Singleton Trading Inc. d/b/a Elama d/b/a Blue Spotlight of Brooklyn, New York asserting patent infringement and breach of contract.

These claims follow earlier litigation against Singleton initiated by Newton in June 2016.  That lawsuit, also filed in Indiana, alleged that Singleton Trading had infringed and/or induced ZoomBike-300x290others to infringe U.S. Patent No. 7,568,720 (the “‘720 patent”) for a “Wheeled Vehicle” with its “Zoom Bike” product.

Newton states that the 2016 action was dismissed without prejudice pursuant to a settlement agreement under which Singleton agreed to compensate Newton for its claims of past infringement and “permanently cease making, using, offering to sell, or selling the Zoom Bike” or any other product that infringed the ‘720 patent.  Under the agreement, Singleton was granted a limited license to sell its remaining inventory.

Newton now returns to the court alleging that Singleton has breached the settlement agreement by selling units of the Zoom Bike exceeding the scope of the limited license.  Newton further contends that this conduct constitutes willful infringement of the ‘720 patent.

This second complaint, filed by an Indiana patent lawyer, lists two counts:

  • Count I: Infringement of ‘720 Patent
  • Count II: Breach of Settlement Agreement

Newton asks the court for a declaration of willful patent infringement; damages, including a trebling of those damages; costs and attorneys’ fees; and injunctive relief.

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EconoLodge-Lafayaette-300x170Lafayette, IndianaChoice Hotels International, Inc. of Rockville, Maryland sued in the Northern District of Indiana alleging trademark infringement under federal and Indiana law.

Choice Hotels is in the business of franchising hotels.  It offers hotel and motel services under the following brands: CAMBRIA HOTELS & SUITES®, COMFORT INN®, COMFORT SUITES®, QUALITY®, SLEEP IN®, CLARION®, MAINSTAY SUITES®, SUBURBAN EXTENDED STAY HOTEL®, ECONO LODGE®, and RODEWAY INN®.

At issue in this Indiana trademark litigation is the Econo Lodge family of trademarks.  These trademarks include U.S. Trademark Nos.:

Fort Wayne, Indiana – Super 8 Worldwide, Inc. f/k/a Super 8 Motels, Inc. of Parsippany, New Jersey sued in the Northern District of Indiana alleging trademark infringement and other wrongdoings.

Plaintiff Super 8 operates a franchise system for guest lodging.  It claims ownership to the SUPER 8® service mark as well as various related trade names, trademarks and serviceUntitled-1 marks, some of which have been registered with the U.S. Patent and Trademark Office.  It estimates the value of the entity’s goodwill to exceed hundreds of millions of dollars.

In this Indiana intellectual property lawsuit, Super 8 alleges that former franchisees have violated the terms of a franchise agreement entered into with Super 8.  Three Indianapolis Defendants were listed: Auburn Lodging Associates, LLP (“ALA”), Kokila Patel and Dilip Patel.  A fourth Defendant Chicago Capital Holdings, LLC (“CCH”) of Hinsdale, Illinois was also named.

Evansville, Indiana – Richard Litov of Evansville, Indiana sued Freedom Heritage Museum, Inc., of Evansville, Indiana alleging trademark infringement.  Litov asserts claims under both federal and Indiana law.Freedom

Litov claims that he conceived the idea for the museum – a collection of exhibits and artifacts from the World War II era – as well as the museum’s name, stating that he served as its founding president and a founding board member.  He asserts that the museum used the trademarked name pursuant to permission that he granted “as president and board member” of the museum.

The trademark in question has been registered under Litov’s name as U.S. Trademark Registration No. 4,939,292.  Litov states in his complaint that the registration covers the words FREEDOM HERITAGE MUSEUM and an associated design.  The word portion of the trademark, as listed by the U.S. Patent and Trademark Office’s website, is FREEDOM HERITAGE MUSEUM, EST. 2012, EVANSVILLE INDIANA.  The application for the trademark registration was filed on July 6, 2015 and granted on April 19, 2016.

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Untitled-2Indianapolis, Indiana – A copyright litigator for Plaintiffs Broadcast Music, Inc. (“BMI”) of New York, New York, as well as Sony/ATV Songs LLC d/b/a Sony/ATV Tree Publishing, Chinquapin Music, Boy Rocking Music, Warner-Tamerlane Publishing Corp., Del Sound Music, and Universal – Songs of Polygram International, Inc., brought a lawsuit in the Southern District of Indiana asserting copyright infringement.

Plaintiff BMI is a licensor of approximately 10.5 million copyrighted musical compositions. The remaining Plaintiffs own the copyrights to the musical compositions that are at issue in this Indiana lawsuit.

Defendants are Hoosier Daddy’s NCIN, LLC d/b/a Hoosier Daddy’s Bar & Grill and its president, Jeff Burchett of New Castle, Indiana. Plaintiffs state that Burchett is responsible for the operation and management of the business entity and the restaurant.

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South Bend, Indiana – Copyright lawyers for Plaintiff The Art of Design, Inc. of Elkhart, Indiana filed an intellectual property lawsuit in the Northern District of Indiana. Defendants in this Indiana lawsuit are Pontoon Boat, LLC d/b/a Bennington and Bennington Marine of Elkhart, Indiana and Hawkeye Boat Sales, Inc. of Dubuque, Iowa.

Plaintiff is in the business of custom airbrushing, including the airbrushing of copyrighted art works onto different surfaces. Defendants offer marine goods, including pontoon boats. In 2011, Plaintiff and Bennington entered into an agreement wherein Bennington paid Plaintiff to apply copyrighted graphics, titled “Shatter Graphics,” to a limited number of Bennington’s pontoon boats in exchange for payment.

Plaintiff contends that, following this authorized application of Shatter Graphics to Defendants’ pontoon boats, Defendant made further use of the copyrighted design without Plaintiff’s authorization.

In this Indiana litigation, Plaintiff makes several allegations, including accusing Defendant of copyright infringement for the sale of pontoon boats bearing graphics “that are copied from and substantially similar to” Plaintiff’s Shatter Graphics, which has been registered with the U.S. Copyright Office under Registration numbers VA 1-979-388 and 1-982-002. The lawsuit lists the following claims for relief:

• Count I – Breach of Contract against Bennington
• Count II – Unjust Enrichment against all Defendants
• Count III – Copyright Infringement against all Defendants
• Count IV – Unfair Competition against all Defendants
• Count V – Inducing Copyright Infringement against Bennington

• Count VI – Violations of DMCA, 17 U.S.C. § 1202

Plaintiff is seeking damages, including treble damages, as well as equitable relief, costs and attorneys’ fees.

Practice Tip: Plaintiff’s copyright attorneys also represent frequent litigant Design Basics. We have blogged about Design Basics’ Indiana copyright litigation before. See:

Design Basics Sues Fort Wayne Homebuilders
Creator of Architectural Designs Files Two New Copyright Lawsuits
Design Basics Files Three New Indiana Copyright Lawsuits
Architecture Firms File Four New Infringement Lawsuits
Design Basics Files Two New Copyright Lawsuits
Architecture Firm Files New Lawsuit Asserting Infringement
Design Basics Files Two Additional Infringement Lawsuits in the Northern District
Design Basics Files Additional Indiana Lawsuit

Design Basics Sues Builders and Others Alleging Infringement of Copyrighted Architectural Designs

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Northern District of Indiana – Plaintiffs DISH Network LLC, EchoStar Technologies L.L.C. and NagraStar LLC, all of Englewood, Colorado, sued in the Northern District of Indiana contending that Defendants Paulette Kincaide and Linnis Kincaide of Gary, Indiana wrongfully intercepted satellite signals.

Defendants are accused of circumventing DISH Network’s security system and receiving copyrighted satellite programming without having paid the required subscription fee. Plaintiffs contend that this was accomplished by purchasing decryption keys from NFusion Private Server, a pirate television service.

In this Indiana lawsuit, filed by intellectual property lawyers for Plaintiffs, the following causes of action are alleged:

• Count I: Circumventing An Access Control Measure In Violation Of The Digital Millennium Copyright Act, 17 U.S.C. § 1201(a)(l)
• Count II: Receiving Satellite Signals Without Authorization in Violation of the Federal Communications Act, 47 U.S.C. § 605(a)

• Count III: Intercepting Satellite Signals in Violation of the Electronic Communications Privacy Act, 18 U.S.C. §§ 2511(1)(a) and 2520

Plaintiffs claim that Defendants’ actions have caused “actual and imminent irreparable harm for which there is no adequate remedy at law.” They further contend that violations were willful and for the purpose of commercial advantage or private financial gain.

Plaintiffs ask the federal court for an award of damages, including enhanced damages, as well as injunctive relief and reimbursement of costs, investigative expenses and attorneys’ fees.

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Indianapolis, Indiana – Patent attorneys for Plaintiff Interactive Intelligence, Inc. of Indianapolis, Indiana filed a lawsuit for declaratory judgment in the Southern District of Indiana against Defendant Avaya, Inc. of Santa Clara, California. At issue in this litigation is the proper scope of a patent licensing agreement between Plaintiff and Defendant.

In 2002, Interactive and Avaya agreed to license patents covering Avaya’s “call center” products. In exchange for this license, Interactive agreed to pay Avaya a royalty based upon Interactive’s sales. The patents-in-suit, which have been issued by the U.S. Patent and Trademark Office are as follows: U.S. Patent Nos. 5,802,058; 5,982,873; 6,009,386; 6,052,460; 6,173,399; 6,192,050; 6,208,970; 6,389,132; 6,392,666; 6,535,601; 6,560,330; 6,636,598; 6,665,395; 6,754,331; 6,850,602; 6,925,166; 7,023,980; 7,215,760; 7,542,558; 7,685,102; 7,702,083; 7,990,899; 8,107,401; 8,379,819; 8,897,428; 9,049,291; and 9,154,629.

In this federal complaint, filed by Indiana patent lawyers, Interactive states that, since 2002, its revenue has expanded to include many sources other than call center software, including “hardware resales, software maintenance and support, training, [and] subscription services for cloud based hosting.” It also contends that a “sizeable portion” of its revenue now comes from business outside of the United States.

Interactive claims that Avaya has misused its patents and misconstrued the agreement to require Interactive to pay royalties based on Interactive’s “global sales.” It argues that sales that are outside of the scope of Avaya’s patents, as well as at least some of its foreign sales, should not be subject to a royalty under the agreement. Interactive further asserts that Avaya’s “threats of potential patent infringement litigation resulted in Interactive paying significantly more than $1,000,000 in excess payments” under the agreement.

This lawsuit seeks a declaration of patent misuse by Avaya, as well as a declaration that Interactive does not infringe any of the patents asserted by Avaya. Interactive also seeks restitution and/or damages, costs and attorneys’ fees.

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Indianapolis, Indiana – A Massachusetts trademark lawsuit filed in July 2015 was transferred to the Southern District of Indiana, Indianapolis Division. Plaintiff Get In Shape Franchise, Inc. (“GIS”), a Massachusetts-based franchisor, alleges that Defendants TFL Fishers, LLC and its sole member, Rosalyn Harris; Thinner For Life, Inc.; and Fit Chicks, LLC, all of Fishers, Indiana infringed its intellectual property rights. GIS asks the Indiana federal court: (1) to order the discontinuation of Defendant’s infringement of its registered trademarks; (2) for injunctive relief due to breach of contract, unfair competition and breach of the covenant of good faith; (3) to order compliance by Harris of her post-contractual obligations.

GIS sells fitness franchises under the service mark “Get In Shape For Women.” Registration Certificates for Plaintiff are as follows:

MARK

Reg. No.

Reg. Date

“Get in Shape for Women”

Service Mark Reg. 3,374,173

Jan. 22, 2008

“Your treatment is complete”

Service Mark Reg. 4,241,902

Nov. 13, 2012

“Get in Shape for Women Small Group Personal Training”

Service Mark Reg. 4,249,694

Nov. 27, 2012

Plaintiff contends that it entered into such a franchise agreement with TFL Fishers and Harris in April 2013 for use in the Fishers, Indiana market. This agreement provided for payment to the franchisor of a transfer fee as well as a royalty on the franchise’s gross sales. Plaintiff contends that, pursuant to the agreement, Harris also agreed to various restrictions on her activities, including prohibitions on certain activities that would compete with GIS.

According to the complaint, Harris notified GIS on June 24, 2015 that TFL Fishers was discontinuing its franchised business and had closed its Fishers fitness studio. Instead, contends Plaintiff, it discovered on June 30th that the Fishers studio continued to operate but that it had changed its name to “Fit Chicks.” GIS alleges that this was improper. It also accuses Defendants of other wrongful acts, such as willfully underreporting total sales and, consequently, underreporting the royalty fees due to GIS.

Trademark attorneys for Plaintiff list the following claims for the Indiana federal court’s review and adjudication:

• First Cause of Action: Violation of the Lanham Act
• Second Cause of Action: Breach of Contract – Injunctive Relief
• Third Cause of Action: Breach of Contract – Damages
• Fourth Cause of Action: Breach of the Covenants of Good Faith and Fair Dealings
• Fifth Cause of Action: Unjust Enrichment
• Sixth Cause of Action: Unfair Competition

• Seventh Cause of Action: Fraud

Plaintiff seeks damages, including treble damages, along with enforcement of the franchise agreement, equitable relief, attorney’s fees and costs.

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Indianapolis, Indiana – Indiana intellectual property attorneys for Plaintiff Roche Diagnostics Corporation of Indianapolis, Indiana filed a lawsuit in the Southern District of Indiana asking for a declaration of non-infringement of rights to patented technology licensed to Defendant Meso Scale Diagnostics, LLC of Rockville, Maryland.

At issue in this patent-related lawsuit is the right to use patented Electrochemiluminescence (“ECL”) technology owned by BioVeris Corporation. ECL is a detection technology that uses electricity, chemistry and light to detect and measure the presence of specific molecules in a test sample. It is used to detect, monitor, and guide the treatment of disease and other conditions.

In 1995, BioVeris licensed its ECL technology to Defendant Meso. Under this license, Meso was granted an exclusive license to use ECL technology for certain limited purposes. BioVeris later entered licensing agreements granting Roche Diagnostics use of ECL technology. Meso contends that Roche Diagnostics’ use of BioVeris’ ECL technology constitutes a violation of the exclusive rights granted to Meso. Roche Diagnostics asserts that its use does not violate Meso’s rights under the Meso license and that, while Meso was not a party to the first agreement licensing the ECL technology to Roche Diagnostics, executed in 2003, Meso expressly consented to that entire agreement. A second agreement licensing the technology was executed between BioVeris and Roche Diagnostics in 2007.

In 2013, a related dispute between Miso and Roche Diagnostics in Delaware state court was resolved in favor of Roche Diagnostics after a five-day bench trial. That judgment was affirmed by the Delaware Supreme Court in June 2015. Roche Diagnostics claims that, this concluded lawsuit notwithstanding, Meso continues to assert that Roche Diagnostics’ activities infringe Meso’s rights and continues to threaten litigation.

Indiana patent lawyers for Roche Diagnostics filed this action for declaratory judgment seeking a judgment declaring that it has not infringed Meso’s license rights in the ECL technology. Roche also seeks an award of attorney’s fees and costs.

Practice Tip: Because the validity of the BioVeris’ patents is not in dispute, and because Roche Diagnostics concedes that some of its products include BioVeris’ patented ECL technology, BioVeris was not included as a party in this lawsuit.

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