Articles Posted in New Decisions

U.S. Supreme Court–Frederick Allen (“Allen”) was hired as a videographer to document the recovery of the Queen Anne’s Revenge shipwreck off the North Carolina coast. Allen worked to document the recovery for over a decade and registered copyrights for his works. When North Carolina published some of Allen’s work online, Allen sued for copyright infringement. North Carolina moved to dismiss the lawsuit on the ground of state sovereign immunity; while Allen argued the Copyright Remedy Clarification Act of 1990 (“CRCA”) removed the States’ sovereign immunity.

The District Court agreed with Allen while the Fourth Circuit Court of Appeals reversed the decision. The U.S. Supreme Court ruled 9-0 in favor of North Carolina on March 23, 2020.

Sovereign immunity has recently been the basis for granting summary judgment in several recent copyright cases in the Southern District of Indiana, namely at least Richard N. Bell v. Jay L. Hess, Case No. 1:16-cv-02463-TWP-DML, (S.D. Ind. March 9, 2018) and Richard N. Bell v. Jason Henderson, Case No. 1:16-cv-02488-RLY-DML, (S.D. Ind. July 23, 2018).

Indianapolis, Indiana – Appellants, GS CleanTech Corporation and Greenshift Corporation (collectively “CleanTech”), appealed the U.S. District Court for the Southern District of Indiana’s finding that U.S. Patent Nos. 7,601,858 (the “‘858 patent”), 8,008,516 (the “‘516 patent”), 8,008,517 (the “‘517 patent”), and 8,283,484 (the “‘484 patent”) (together, the “Patents-in-Suit”) are unenforceable due to inequitable conduct. The U.S. Court of Appeals for the Federal Circuit affirmed.

Before joining CleanTech in 2006, David Cantrell founded Vortex Dehydration Technology (“VDT”). In June 2003, Mr. Cantrell sent an email to two Agri-Energy LLC (“Agri-Energy”) employees regarding how VDT’s oil recovery system may be applicable in an ethanol plant. He also included an operational cost spreadsheet and an image of the system. VDT representatives conducted tests with Agri-Energy’s ethanol syrup in early July 2003.

A proposal dated July 31, 2003 was emailed to multiple Agri-Energy employees on August 1, 2003 offering “Agri-Energy a No-Risk trial [of the] ‘Oil Recovery System.’” The proposal allowed Agri-Energy to use the unit for sixty days at which point it could purchase the system for $423,000 or return it to VDT. That proposal was not accepted, however, in early 2004 communications resumed and the system was installed in the Agri-Energy plant in May 2004.

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District of Oregon – Richard Bell, a well-known copyright infringement litigant, has filed over 100 lawsuits regarding infringement of U.S. Copyright No. VA0001785115 (the “Indianapolis Photo”). However, in September 2019, a federal jury in Bell v. Carmen Commercial Real Estate Servs. found that Bell was unable to prove that he actually owned the Indianapolis Photo. Case No. 1:16-cv-01174-JRS-MPB, (S.D. Ind. Sept. 26, 2019). Being that the first element in a copyright infringement claim is to prove ownership of a valid copyright, it appeared that the jury’s decision would put an end to future litigation for Bell.

In the present case, Bell, sought a default judgment against Michael J. Davis and three other Defendants for allegedly infringing his rights in the Indianapolis Photo in the U.S. District Court for the District of Oregon. After the Defendants failed to appear or respond to the Complaint, the Magistrate Judge issued an entry of default against all of the Defendants. Bell then filed a motion for an entry of default judgment to be entered along with an award of $150,000 in statutory damages, attorneys’ fees, costs, and injunctive relief.

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Indianapolis, Indiana – Cook Medical was granted a new trial after the Honorable Richard L. Young, a judge for the United States District Court for the Southern District of Indiana, admitted to errors in allowing inadmissible evidence to be presented to the jury by counsel for Plaintiff, Tonya Brand.

Ms. Brand was implanted with a Cook Celect® Inferior Vena Cava Filter (“Cook IVC Filter”) prior to undergoing a complex spine surgery in March 2009. The next month, imaging was taken that showed the filter perforating Ms. Brand’s IVC in multiple places and that one of the filter’s “struts” was hooked on a bone spur. The Cook IVC Filter later fractured in three places in just over two years after its initial placement. A piece of the Cook IVC Filter emerged through Ms. Brand’s thigh. After a failed attempt by Ms. Brand’s doctor to retrieve the filter in July 2011, the doctor and Ms. Brand elected to leave the fractured Cook IVC Filter in place until it was removed in 2015. Ms. Brand filed a products liability suit in November 2014 and was awarded a jury verdict in the amount of $3 million on February 1, 2019.

A new trial may be granted if the trial was not fair to the moving party or if the improper admission of evidence has a “substantial influence on the jury” and the result was “inconsistent with substantial justice.” The main piece of evidence objected to by Cook was Brand’s trial exhibit 1913 (“PX-1913”). This exhibit was an email chain between Cook employees including multiple instances of hearsay and a table with details of 27 deaths associated with Cook IVC Filters. The Court on review found Ms. Brand’s injuries were not substantially similar to those patients listed on the table and the emails contained inadmissible hearsay and therefore PX-1913 was improperly admitted. Further, Ms. Brand’s counsel relied heavily on the connection between the Cook IVC Filter and death based on PX-1913 which was found to be inappropriate and prejudicial on review. Finally, the Court found “a jury could have just as easily found in Cook’s favor.” and because this trial was so close it, “is more likely to have been affected by errors.” Therefore, the Court granted Cook’s Motion for New Trial.

The Indiana Supreme Court affirmed the trial court on both issues on appeal in the case of American Consulting, Inc. d/b/a American Structurepoint, Inc. (“American”) versus Hannum Wagle & Cline Engineering, Inc., d/b/a HWC Engineering, Inc. (“HWC”), Marlin A. Knowles, Jr., Jonathan A. Day, David Lancet, and Tom Mobley, originally filed in the Marion County Superior Court.

American-HWC-Engineering-logos-1-300x100Knowles, Day, Lancet, and Mobley were all previous employees of American. Mobley was granted summary judgment in his favor in the trial court so claims against him were not discussed on appeal. Each of the employees signed contracts precluding them from hiring or employing other American employees. These contracts each had clauses for liquidated damages upon breach set at 50% of the employee’s pay during the twelve months prior to the breach for Knowles and 100% of the employee’s pay during the twelve months prior to the breach for Day and Lancet.

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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 NantKwest-BlogPhotoStates 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.

The United States Court of Appeals for the Federal Circuit issued an opinion as to Summary Judgment in the case of Columbia Sportswear North America, Inc. (“Columbia”), an Oregon Corporation, versus Seirus Innovative Accessories, Inc. (“Seirus”), a Utah Corporation. This appeal by Seirus-logo-300x289 Columbia came after a jury trial in the U.S. District Court for the Southern District of California found that claims 2 and 23 of U.S. Patent 8,453,270 (the “’270 Patent”) are invalid as anticipated and obvious. Seirus cross-appealed from the U.S. District Court for the District of Oregon’s grant of summary judgment that it infringes U.S. Patent D657,093 (the “’093 Patent”) and from the entry of the jury’s damages award. The Court of Appeals found claims 2 and 23 of the ‘270 Patent are invalid and that the Court for the District of Oregon erred in granting summary judgment for infringement of the ‘093 Patent.

Columbia originally filed suit in the District of Oregon on January 12, 2015 claiming that Seirus infringed both the ‘270 and ‘093 Patents. Seirus moved to transfer the case to the Southern District of California, but that motion was denied. The district court then “granted summary judgment that Seirus’s HeatWave products infringe the ‘093 patent” stating that “the difference in wave pattern, orientation, and the presence of Seirus’s logo” were characterized as “minor differences.” Seirus moved to transfer the case to the Southern District of California for a second time, two years after its first motion, in light of the decision in TC Heartland LLC v. Kraft Foods Grp. Brans LLC, 137 S. Ct. 1514 (2017). Due to the intervening case law, the District of Oregon transferred the remainder of the claims to the Southern District of California.

A jury trial wPatent-Design-Logo-274x300as held in the Southern District of California and claims 2 and 3 of the ‘270 Patent were found to be invalid as anticipated and obvious. The jury also awarded Columbia $3,018,174 in damages for non-willful infringement of the ‘093 Patent. Both Parties “filed post-trial motions for judgment as a matter of law and for a new trial, but the court summarily denied them in a two-page opinion.” Subsequently, the Parties each filed notices of appeal.

The court’s denial of the motions for judgment as a matter of law is reviewed by the substantial evidence standard. “A jury’s verdict must be upheld if supported by substantial evidence.” OTR Wheel Eng’g, Inc. v. W. Worldwide Servs. Inc., 897 F.3d 1008, 1015 (9th Cir. 2018) (citing Unicolors, Inc. v. Urban Outfitters, Inc., 853 F.3d 980, 984 (9th Cir. 2017). The court’s denial of a motion for a new trial is reviewed for an abuse of discretion. Molski v. M.J. Cable, Inc., 481 F.3d 724, 728 (9th Cir. 2007). The granting of a new trial may only be done “if the verdict is contrary to the clear weight of the evidence, is based upon false or perjurious evidence, or to prevent a miscarriage of justice.” Passantino v. Johnson & Johnson Consumer Prods., Inc., 212 F.3d 493, 510 n.15 (9th Cir. 2000). Continue reading

The United States Court of Appeals for the Seventh Circuit issued an opinion reversing the denial of attorney’s fees, remanding for an entry BlogPhoto-300x96of 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.

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LHO Chicago River, LLC (“LHO”) filed a trademark infringement suit against Joseph J. Perillo, Rosemoor Suites, LLC, and Portfolio HotelsBlogPhoto1-300x138 & Resorts, LLC (collectively the “Defendants”) in the Northern District of Illinois, Eastern BlogPhoto2-300x172District. The case was voluntarily dismissed by LHO and after being denied their Lanham Act attorney fees, the Defendants appealed to the United States Court of Appeals for the Seventh Circuit. The Court of Appeals held the Supreme Court’s decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014), which was a patent case, should guide district courts when facing attorney fee applications under the Lanham Act.

LHO’s upscale hotel in downtown Chicago underwent a branding change to become “Hotel Chicago” in February 2014. Just over two years later, the Defendants opened their own “Hotel Chicago” about three miles from LHO’s hotel. LHO then sued “for trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. § 1125(a), and for trademark infringement and deceptive trade practices under Illinois state law.” After litigating for over one year, LHO moved to voluntarily dismiss its claims and the judgment was entered on February 21, 2018.

After judgment was entered, pursuant to 15 U.S.C. § 1117(a), Defendants made a post-judgment request for attorney fees. In their brief, the Defendants cited two different standards for determining if attorney fees should be granted: (1) the Seventh Circuit’s prevailing standard, “that a case is exceptional under § 1117(a) if the decision to bring the claim constitutes an ‘abuse of process’; and (2) the more relaxed totality-of-the-circumstances approach under the Patent Act” from the Octane case. The district judge acknowledged Octane in his findings but did not adopt that approach and denied Defendants request for attorney fees.

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Indianapolis, IndianaThe case of AWGI, LLC and Atlas Van Lines, Inc. versus American Wide Relocation Inc. d/b/a Atlas Moving and Storage (“American Wide”) was filed by Plaintiffs alleging American Wide infringed their rights in two separate United States Registered Trademarks. American Wide failed to appear or respond to Plaintiffs’ Complaint and upon Motion for Final Default Judgment, the Court granted default judgment to the Plaintiffs on October 1, 2019.

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In accordance with the default judgment, American Wide and all those persons who receive actual notice of the Court’s Order are permanently enjoined and restrained from: causing likelihood of confusion; “directly or indirectly falsely designating or representing that any goods or services are authorized, approved, associated with, or originate from, Plaintiffs”; “directly or indirectly using the ‘Atlas’ mark and the Infringing Logo or any confusingly similar variants”; utilizing the “Atlas” mark and the Infringing Logo; and “publishing, assembling, marketing, distributing, or otherwise utilizing any literature . . . which bear the ‘Atlas’ mark and the Infringing Logo”.

American Wide was further ordered: to destroy all literature, advertisements, etc. that bear the “Atlas” mark and the Infringing Logo; to notify its customers that the “Atlas” mark and Infringing Logo are not connected with Plaintiffs; and to immediately comply with the Court’s Order including filing “a statement, under oath and penalty of perjury, that each and every injunctive provision has been fully and completely complied with.” Finally, American Wide was ordered to transfer all internet domains and social media accounts that incorporate the term “Atlas” to the Plaintiffs.

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