Trademark Dilution

August 8, 2013

Royal Purple Sues Compressor Parts, Michael Klipstein and Southern Parts & Engineering for Trademark Infringement

Indianapolis, Indiana — Royal Purple, LLC of Indianapolis, Indiana has sued Compressor Parts of Holland, Ohio; Michael Klipstein (“Klipstein”) and Southern Parts & Engineering Company, LLC (“Southern Parts”) of Alpharetta, Georgia (collectively, “Defendants”) for infringement of the trademarks ROYAL PURPLE and SYNFILM, which have been registered by the U.S. Trademark Office.

Royal Purple, which has also recently sued Liqui Moly, about which we blogged yesterday and previously, has filed an additional trademark-infringement suit in the Southern District of Indiana against Compressor Parts, Klipstein and Southern Parts.

Royal Purple claims it has sold lubricants for more than 20 years and has trademarked the color purple, at least in conjunction with various lubricating oils. It owns several federal trademark registrations for the color purple as applied to lubricating oils for automotive, industrial and household uses. It also owns multiple trademarks incorporating the word “purple” as applied to various goods. It also owns a trademark for the term “Synfilm,” for synthetic, para-synthetic and hydrocarbon lubricants for industrial uses. These trademarks are registered with the U.S. Trademark Office.

Purple was chosen for its association with royalty. (Historically, purple dye was so expensive to produce that it was used only by royalty.) Royal Purple’s purple-identified lubricant products are sold in over 20,000 retailers in the United States and Royal Purple claims a strong secondary meaning and substantial goodwill in its trademark as a result of this use.

In this complaint, trademark lawyers for Royal Purple assert that Defendants offer goods on the compressorparts.com website using Royal Purple marks in a manner that is likely to cause a substantial number of ordinary consumers to be mistaken, confused or deceived into thinking that Defendants’ goods are offered by or affiliated with Royal Purple. The complaint includes the following:

· Count I: Federal Trademark Infringement

· Count II: False Designation of Origin/False Advertising

· Count III: Unfair Competition Under Indiana Common Law

· Count IV: Common Law Trademark Infringement

Royal Purple seeks a permanent injunction; an accounting; damages, including punitive damages; interest; costs and attorneys’ fees.

Practice Tip: As part of the claim, Royal Purple’s lawyers included a count of trademark dilution. This cause of action is distinct from trademark infringement and applies to trademarks that are deemed to be famous. An action for dilution can assert either, or both, of two principal harms: blurring and tarnishment. Dilution by blurring, codified in 15 U.S.C. 1125(c)(2)(B), arises when association with another similar mark causes the distinctiveness of the famous mark to be compromised. In contrast, dilution by tarnishment under 15 U.S.C. § 1125(c)(2)(C) happens when the reputation of the famous mark is damaged by association with a similar mark.

August 7, 2013

Royal Purple Sues Liqui Moly GmbH and Liqui Moly USA for Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana — Royal Purple, LLC (“Royal Purple”) of Indianapolis, Indiana sued Liqui Moly GmbH of Ulm, Germany and Liqui Moly USA, Inc. of Hauppauge, New York (collectively, “Liqui Moly”) alleging infringement of two marks, Registration Nos. 2,691,774 and 2,953,996, which have been registered with the U.S. Trademark Office.

Royal Purple is again suing over the use of the color purple. We have blogged previously about the company here. Royal Purple claims it has sold lubricants for more than 20 years and has trademarked the color purple, at least in conjunction with various lubricating oils. It owns several federal trademark registrations for the color purple as applied to lubricating oils for automotive, industrial and household uses. It also owns multiple trademarks incorporating the word “purple” as applied to various goods. These trademarks are registered with the U.S. Trademark Office.

Purple was chosen for its association with royalty. (Historically, purple dye was so expensive to produce that it was used only by royalty.) Royal Purple’s purple-identified lubricant products are sold in over 20,000 retailers in the United States and Royal Purple claims a strong secondary meaning and substantial goodwill in its trademark as a result of this use.

Liqui Moly is accused of distributing, offering to sell and selling products that infringe upon Royal Purple’s trademarks and engaging in acts that constitute unfair competition and dilution. Royal Purple also alleges that Liqui Moly’s use is a purposeful attempt to trade upon Royal Purple’s trademarks. It asserts that Liqui Moly’s infringing use of Royal Purple’s intellectual property is likely to cause confusion, mistake or deception in customers or potential customers who encounter the Liqui Moly products. It also claims that Liqui Moly’s use will dilute the “distinctive quality” Royal Purple’s trademarks. Finally, it alleges that Liqui Moly’s use removes from Royal Purple its ability to control the quality of products and services provided under Royal Purple’s trademark, by placing them partially under the control of Liqui Moly, USA and Liqui Moly GmbH, two third parties unrelated to Royal Purple.

Trademark attorneys for Royal Purple filed suit alleging:

· Count One: Trademark Infringement Under Federal Law – 15 U.S.C. § 1114

· Count Two: Unfair Competition; False Designation of Origin Under Federal Law – 15 U.S.C. § 1125(a)

· Count Three: Dilution Under Federal Law 15 U.S.C. 1125(c)

· Count Four: Dilution in Violation of Indiana Code § 24-2-1-13.5

· Count Five: Common Law Trademark Infringement

· Count Six: Unfair Competition Under Indiana Common Law

· Count Seven: Unjust Enrichment

Royal Purple seeks preliminary and permanent injunctions, the destruction of all allegedly infringing inventory, treble damages, costs and attorneys’ fees.

Practice Tip #1: Color can serve as a useful identifier of the source of goods to consumers. The courts, however, have had to draw some narrow lines to balance the various interests. On the one hand, companies often invest significant amounts of money in promoting their brands and color is frequently a component of that promotion. On the other hand, there are a limited number of colors — and an even more limited number of colors that are pleasing and appropriate for any given type of product — and courts are wary of providing a monopoly on any given color to any one company. After all, if such a monopoly is first provided to one company, all too soon the entire spectrum may be spoken for.

Practice Tip #2: This complaint, which is very similar to an earlier action filed by Royal Purple, has added Liqui Moly USA, Inc. as a defendant and largely omitted the earlier-filed claims relating to a third trademark, registered under the U.S. Registration No. 3,819,988.

July 22, 2013

Bekins Van Lines Sues Corporate Transfer & Storage, JLV Software and The Verderber Enterprise for Trademark Infringement of Bekins Marks

By Overhauser Law Offices, LLC

Indianapolis, Indiana — Trademark lawyers for Bekins Van Lines, Inc. (“Bekins”) of Indianapolis, Indiana sued Corporate Transfer & Storage, Inc. (“Corporate Transfer”) of Ronkonkoma, New York; JLV Software of Pompano, Florida (also referred to in the complaint as “JVL Software”) and The Verderber Enterprise of Orlando, Florida (collectively, “Defendants”) alleging infringement of the trademark BEKINS which has been registered as Trademark No. 2,427,605 with the U.S. Trademark Office.

Bekins is the fourth-largest household-goods carrier in the United States. Headquartered in Indianapolis, Indiana, Bekins offers private and corporate household-goods relocation services both domestically and internationally. The United States Military is one of the company’s largest customers.

Corporate Transfer offers household moving, corporate relocation and storage services. The Verderber Enterprise specializes in providing technology innovations to entrepreneurs and corporate enterprises worldwide.

In December 1955, Bekins’ predecessors in interest were granted the registration of the stylized mark “Bekins.” The first use in commerce was noted as 1891. A second “Bekins” mark was granted to Bekins’ predecessors in interest in February 2001. The two marks were assigned to the plaintiff in this case on April 16, 2012.

The Defendants were, at one point, licensed agents of Bekins Van Lines, LLC. However, Bekins asserts, they have never been affiliated in any way with Bekins Van Lines, Inc. After Bekins Van Lines, Inc.’s acquisition of certain assets from Bekins Van Lines, LLC and Bekins Holding Corp. on April 2, 2012, Corporate Transfer was allegedly notified that it was required to cease using all of the Bekins marks immediately, as it was not an agent for the new owner of the Bekins marks.

Bekins claims that, despite this notice and three additional notices, the Defendants’ use of the Bekins marks on the Corporate Transfer website, the use of the domain name www.bekinsrelo.com and the use of the Bekins mark on social-media sites continued. Bekins also asserts that Corporate Transfer indicated that its use of the Bekins mark would be discontinued but that, in the spring of 2013, the website was reactivated. Bekins contends that, when it again demanded that the domain name be taken down and transferred to Bekins, Corporate Transfer then redirected the domain to point to a consumer-comment site which was tremendously critical of Bekins Van Lines, Inc.

Finally, Bekins asserts that Corporate Transfer continues to infringe upon the Bekins marks through the maintenance of the www.bekinsrelo.com site, the use of Bekins marks on its website at www.corporatetransfer.com and various references to the Bekins marks on social-media sites.

For its claims, Bekins lists the following:

· Count I: Federal Trademark Infringement

· Count II: Federal and State Unfair Competition/Trademark Dilution

Bekins asks for an injunction; for an award of Defendants’ profits earned from the acts claimed to be infringing; for an award of damages, including punitive damages; and for attorneys’ fees and costs.

Practice Tip: Bekins asserts that its marks have acquired strong secondary meaning as a symbol of origin among consumers and the industry as a result of many years of use. It further asserts that the marks are famous. The assertion that its marks are famous allows it to pursue the additional claim of trademark dilution under the Federal Trademark Dilution Act.

July 18, 2013

Master Cutlery Sues Pacific Solution Marketing for Infringement of Three-Dimensional Artwork Applied to Knives

By Overhauser Law Offices, LLC

Indianapolis, Indiana — Intellectual property lawyers for Master Cutlery, Inc. of Secaucus, New Jersey sued Pacific Solution Marketing, Inc. (“Pacific”) of Ontario, California alleging copyright and trademark infringement of three-dimensional artwork applied to knives. Master Cutlery seeks an injunction, damages, treble damages, statutory damages, profits, attorney’s fees and costs.

Founded 30 years ago, Master Cutlery has become the largest importer of knives in the United States. It asserts ownership of federal trademark, patent and copyright registrations for its knives, as well as common law trade dress rights (collectively, “Master Cutlery IP”). Among the rights that Master Cutlery claims are trademarks for the word marks “Sheriff” and “EMT” registered in Class 8 with the U.S. Trademark Office for knives.

Master Cutlery asserts that, after its use and registration of its various items of intellectual property, Pacific also began using the Master Cutlery intellectual property. It contends that Pacific has manufactured, produced, advertised and/or sold knives that infringe upon the Master Cutlery IP. It also asserts that Pacific has distributed advertisements and packaging bearing reproductions of Master Cutlery’s trademarks, trade dress and copyrights.

Master Cutlery sued alleging copyright infringement under the Copyright Act; federal trademark infringement, federal trademark dilution, false designation of origin and false advertising under the Lanham Act; common law trademark and copyright infringement; unfair competition; and theft and counterfeiting under Indiana state law. It further contends that this infringement was willful, intentional and done with the intent to confuse consumers. The complaint, originally filed in Indiana state court, was removed by a trademark attorney for Pacific on both the grounds of federal question and diversity of citizenship.

For its claims, Master Cutlery lists the following:

· Count I: Copyright Infringement Under 17 U.S.C. § 101 et seq.

· Count II: Federal Trademark Infringement Under U.S.C. § 1114

· Count III: Trademark Dilution Under 15 U.S.C. § 1125(c)

· Count IV: False Designation of Origin or Sponsorship, False Advertising and Trade Dress Infringement Under 15 U.S.C. § 1125(a)

· Count V: Common Law Trademark and Copyright Infringement

· Count VI: Unfair Competition

· Count VII: Theft Under Ind. Code § 35-43-4-2(a)

Master Cutlery asks for a permanent injunction enjoining infringement; that Pacific be required to deliver to Master Cutlery both unsold goods and goods already distributed or sold so that they can be destroyed; for compensatory damages; for treble damages or, alternatively, Pacific’s profits trebled; for statutory damages; and for attorneys’ fees and costs.

Practice Tip: Master Cutlery has included a count of felony theft under Indiana Code § 35-43-4-2(a) in its complaint. The extent to which intellectual property is “property” in the usual sense has been litigated several times recently in the Indiana appellate court, which has made it clear that criminal statutes often apply differently to an unlawful taking of intellectual property. For a discussion of two recent cases, see here and here.

March 22, 2013

Royal Purple Sues Liqui Moly GmbH for Trademark Infringement for Selling Purple Lubricants

By Overhauser Law Offices, LLC

Indianapolis, IN – Trademark lawyers for Royal Purple, LLC of Indianapolis, Indiana sued Liqui Moly GmbH of Ulm, Germany in the Southern District of Indiana alleging trademark infringement for selling purple automotive lubricants.

At the center of this litigation is the right to use the color purple. Royal Purple claims it has sold lubricants for more than 20 years and has trademarked the color purple. It owns several federal trademark registrations for the color purple as applied to lubricating oils for automotive, industrial and household uses. Among the trademarks are U.S. Registration Nos. 2,691,774; 2,953,996 and 3,819,988 which cover the following:

It also owns multiple trademarks incorporating the word “purple” as applied to various goods. These trademarks are registered with the US Trademark Office. Purple was chosen for its association with royalty. (Historically, purple dye was so expensive to produce that it was used only by royalty.) Royal Purple’s purple-identified lubricant products are sold in over 20,000 retailers in the United States and Royal Purple claims a strong secondary meaning and substantial goodwill in its trademark as a result of this use.

Liqui Moly sells Liqui Moly and Lubra Moly brand motor oil, both of which have packaging that is supposedly purple prior to sale. Royal Purple alleges that Liqui Moly’s use of the color purple in conjunction with the sale of motor oil is likely confuse consumers. According to Liqui Moly’s website, its products are sold in a variety of different containers:

Royal Purple also alleges that Liqui Moly’s use is a purposeful attempt to trade upon Royal Purple’s trademark and that Liqui Moly’s use will dilute the “distinctive quality” Royal Purple’s trademarks. Finally, it alleges that Liqui Moly’s use removes from Royal Purple its ability to control the quality of products and services provided under Royal Purple’s trademark, by placing them partially under the control of Liqui Moly, an unrelated third party.

The federal claims include trademark infringement, unfair competition and dilution under the Lanham Act; Royal Purple has also alleged dilution, trademark infringement, unfair competition and unjust enrichment under Indiana common law. Royal Purple seeks a preliminary and permanent injunction, the destruction of all allegedly infringing inventory, treble damages, costs and attorneys’ fees.

Practice Tip: Color can serve as a useful identifier of the source of goods to consumers. The courts, however, have had to draw some narrow lines to balance the various interests. On the one hand, companies often invest significant amounts of money in promoting their brands and color is frequently a component of that promotion. On the other hand, there are a limited number of colors – and an even more limited number of colors that are pleasing and appropriate for any given type of product – and courts are wary of providing a monopoly on any given color to any one company. After all, if such a monopoly is first provided to one company, all too soon the entire spectrum may be spoken for.
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October 10, 2012

President Obama Signs Trademark Dilution Bill

By Overhauser Law Offices, LLC

Washington DC: President Obama on October 5, 2012, signed legislation (H.R. 6215) that restores the limitation of the federal registration defense to trademark dilution claims based on state law only.

Background

In 1995, Congress enacted the Federal Trademark Dilution Act with a federal registration defense intended to encourage federal trademark registation. Section 43(c)(6) of the Lanham Act, 15 U.S.C. 1125(c)(6) included a complete bar for state dilution claims brought against federally registered marks. In 2006, the Trademark Dilution Revision Act addressed a number of problems with the legislation, including an amendments to make the federal registration defense specify not simply “dilution,” but “dilution by blurring” and “dilution by tarnishment.”

The House version of the 2006 amendment stated that a federal registration bars an action that is brought under state law and that seeks to prevent dilution, or that asserts harm to distinctiveness. When the bill was in the Senate, the language was unchanged, but the elements were enumerated in a way that changed the meaning. Thus, the enacted bill stated that a federal registration bars an action (A)(i) that is brought under state law and (ii) that seeks to prevent dilution, or (B) that asserts harm to distinctiveness. The result was that a federal registration could bar both state and federal dilution actions.

Signed Legislation
H.R. 6215 restores the intent of the House-passed version of 15 U.S.C. 1125(c)(6) as follows:

(c)(6) The ownership by a person of a valid registration … shall be a complete bar to an action against that person, with respect to that mark, that —

(A) is brought by another person under the common law or a statute of a State; and

(B) (i) seeks to prevent dilution by blurring or dilution by tarnishment; or

(ii) asserts any claim of actual or likely damage or harm to the distinctiveness or
reputation of a mark, label, or form of advertisement.’.

The House Report (H. Rept. 112-647) for H.R. 6215 points out that Congress could not have intended that federal registration could serve to bar all dilution claims since that result would make it difficult to cancel a diluting mark that is registered. That would only encourage illegitimate mark holders to register diluting marks, and would force legitimate mark holders to expend greater resources monitoring registrations as well as other marks being used in commerce, the Report noted.

Practice Tip:
The need for this legislation was recently confirmed by a ruling of the Trademark Trial and Appeal Board in the cancellation action in Academy of Motion Picture Arts and Sciences v. Alliance of Professionals and Consultants, Inc., TTAB, Canc. No. 95055081, 9/24/2012. The TTAB dismissed the action, finding that the language of the 2006 amendment barred a federal dilution claim against a federally registered mark. The TTAB explained as follows:

While a “most extraordinary showing of contrary intentions” by Congress may justify a departure from the plain language of a statute, Garcia v. United States, 469 U.S. 70, 75 (1984), there is scant legislative history, and certainly not enough to support an alternative reading in this case. The Board must apply and enforce the statute as written, rather than picking and choosing a preferred interpretation. “Congress’ intent is found in the words it has chosen to use.” Harbison v. Bell, 556 U.S. 180, 198 (2009) (Thomas, J., concurring).

June 27, 2012

APP Press Sues Apress Media for Declaration of Non- Infringement of Trademark “App Press”

By Overhauser Law Offices, LLC

Indianapolis; IN – Trademark attorneys for App Press, LLC of Indianapolis, Indiana filed a declaratory judgment suit seeking a declaration that it is not infringing the trademarks of Apress Media, LLC of New York, New York.

App Press, LLC brings action against Apress Media, LLC in order to protect the right to use and continue to conduct business under the registered trademark, and asserts that use of the mark for App Press does not infringe on any trademark held by Apress. App Press is a company that creates, owns, and licenses the use of web-based software that allows consumers to create apps that can be used on mobile devices. According to the Complaint, App Press applied for trademark registration on January 7, 2011 and was registered by the United State Patent and Trademark Office on August 9, 2011. During this period, the trademark was open to opposition on May 24, 2011. Apress Media is a publishing company that edits, publishes and sells books with the focus on technological issues and how-to advice. Apress Media applied for trademark registration on May 7, 2010 and was registered on March 8, 2011. According to App Press, on August 15, 2011, Apress Media sent a cease and desist letter demanding App Press immediately stop the use of their trademark alleging that it infringed on the trademark of Apress and constituted trademark infringement, unfair competition, cyberpiracy and dilution. App Press claims that they forwarded the letter to their counsel who contacted Apress Media’s counsel by phone. Almost two weeks passed that counsel for both parties went back and forth via telephone before they were able to confer regarding the issues set forth in the letter in which App Press agreed and sent a letter describing their product and why it was not infringing on Apress Media’s trademark. Approximately eight months later, on May 8, 2012, Apress again contacted App Press and again asserted that App Press’s use of the App Press trademark was infringing on the Apress trademark. Counsel for App Press has filed the Complaint for declaratory relief and to obtain declaration that App Press’s use of their trademark does not infringe upon any trademarks owned by Apress Media.

Practice Tip: The remedy of declaratory judgment is found in 28 U.S.C.A. § 2201 and allows for any US court to declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought.
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June 26, 2012

Dillinger Sues Pour House on Lincoln for Trademark Infringement of PUBLIC ENEMY

By Overhauser Law Offices, LLC

Indianapolis; IN – Trademark attorneys for Dillinger, LLC of Mooresville, Indiana filed a complaint for injunctive relief and damages in alleging The Pour House on Lincoln, Inc. d/b/a Dillinger’s Chicago Bar & Grill, Inc. of Chicago, Illinois infringed trademark registration nos. 3,483,359 for the mark DILLINGER’S and no. 4,091,160 for the mark PUBLIC ENEMY which have been registered by the US Trademark Office.

Dillinger, LLC is owned and operated by Jeff Scalf and, according to the Complaint, is the descendant of gentleman bandit John Dillinger. Dillinger, LLC owns numerous trademark registrations for DILLINGER, JOHN DILLINGER, PUBLIC ENEMIES, and many other trademarks related to the life of John Dillinger. Dillinger, LLC is also the owner of all rights, title, and interest to both DILLINGER’S and PUBLIC ENEMIES and both marks have been used in interstate commerce in connection with restaurant and bar services as early as 2002. According to the Complaint, Dillinger, LLC has never authorized The Pour House on Lincoln d/b/a Dillinger’s Chicago Bar & Grill to use the DILLINGER or PUBLIC ENEMIES marks in any way and also alleges that in July 2010 it came to their attention that the Defendants were operating a restaurant using the DILLINGER and PUBLIC ENEMIES trademarks. Upon their knowledge of the trademark usage, Dillinger, LLC alleges that The Pour House was contacted about the infringement and in August of the same year they traveled to Indianapolis for the purpose of obtaining a license for the use of the trademarks. The Complaint states that an oral agreement was reached and reduced to writing, but never executed and yet The Pour House willfully continued its infringing usage of the DILLINGER and PUBLIC ENEMIES trademarks, specifically on their website, food and drink menus and the menus posted on the storefront. Dillinger, LLC asserts five counts for the violations of the defendants, including demand for preliminary and permanent injunction; federal trademark infringement; cybersquatting; false designation of origin, false descriptions and unfair competition; and dilution by blurring. In order to avoid any irreparable harm from the loss of reputation the DILLINGER names could suffer as a result of the unauthorized use of the trademarks and the accrual thereof, Dillinger, LLC is seeking to permanently enjoin The Pour House from using the DILLINGER and PUBLIC ENEMIES trademarks or inducing such belief, actual damages suffered as a result of the alleged trademark violations, statutory and exemplary damages, and the profits derived from the infringing activities.

Practice Tip: U.S.C. title 15, chapter 22 governs trademarks, and §1117 specifically details the relief which can be granted as a result of trademark violation.
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May 10, 2012

Southern District Grants Preliminary Injunction for American Petroleum Institute in Trademark Infringement Suit Over API Logo

By Overhauser Law Offices, LLC

Indianapolis; IN – Judge Tanya Walton Pratt of the Southern District of Indiana has issued a preliminary injunction enjoining Tailor Made Oil Company of Cambridge City, Indiana, TM Oil, LLC of Fishers, Indiana, Circle Town Oil of Fishers, Indiana, et al from infringing trade names API and AMERICAN PETROLEUM INSTITUTE and trademark registration nos. 1,864,428, 1,868,779 and 1,872,999, which have been registered with the US Trademark Office by the American Petroleum Institute (API) of Washington, DC.

Trademark lawyers for American Petroleum Institute (“API”) of Washington, D.C. filed a trademark infringement suit in alleging Tailor Made Oil Co., LLC of Cambridge City, Indiana, TMO Oil, LLC of Fishers, Indiana, Circle Town Oil of Fishers, Indiana, William R. Selkirk and Rebecca Selkirk of Cambridge City, Indiana, Lincoln R. Schneider of Fishers, Indiana and Jafarikal Corporation of Rosedale, New York infringed trademark. The complaint alleges that the individual defendants own and operate the corporate defendants as an interrelated business that offers low quality engine oil for sale. In March 2010, Tailor Made obtained certification for its engine oil, and a one year license to use the starburst mark on its products. In order to renew the one year license, Tailor Made was required to report its sales and to pay a renewal fee to API. Tailor Made failed to comply with these requirements and has continued to sell products bearing the trademarked starburst without authorization. We blogged about the case when it was filed.

The court’s order states that the defendants did not contest API’s motion for preliminary injunction. The parties submitted a joint proposed order, but did not agree on all aspects of the proposed order. The injunction ordered by the court prevents the defendants from registering or using any infringing marks. It also requires that the Jafarikal Corporation must notify API of its intent to distribute engine oil bearing the API marks and allow API to test any engine oil it distributes bearing the API marks.

Practice Tip: The order ordered that the defendants submit an affidavit of compliance within 10 business days of the injunction.

April 20, 2012

Microsoft Corporation Sues D & A LLC for Copyright and Trademark Infringement Unauthorized Installations of Windows XP

By Overhauser Law Offices, LLC

Indianapolis; IN – Trademark and copyright attorneys for Microsoft Corporation of Redmond, Washington filed a copyright and trademark infringement suit in alleging D & A LLC d/b/a/ Asset Recovery and Recycling and David B. Bell of Indianapolis, Indiana infringed trademarks 1256083, 1200236, 1872264 and 2744843 registered by the US Trademark Office. The complaint also makes copyright infringement, false designation of origin, false description and representation, and unfair competition.

The complaint alleges that D&A markets, sells, and distributes computer hardware and software, including Microsoft products. The complaint states that D&A sells computers, which it advertises have Microsoft software pre-installed. Microsoft alleges that the Microsoft software on the computers D&A sells are infringing copies. The complaint states that a Microsoft investigator purchased computers with unauthorized copies of Windows XP from D&A on three occasions in 2011. The unlicensed software contains Microsoft trademarks and copyrighted works. Microsoft is seeking a declaration of infringement, an injunction, an accounting, an order impounding counterfeit copies of Microsoft software, damages, costs and attorney fees.

Practice Tip: Microsoft has named David Bell personally, the owner of D & B, as a defendant, alleging that he participated in and had a right to control the wrongful conduct. A corporate officer, director or shareholder is, as a general matter, personally liable for all torts which she authorizes or directs or in which she participates, even if she acted as an agent of the corporation and not on her own behalf.