Indianapolis, Indiana – Attorneys for Plaintiff, Dexas International, Ltd. of Coppell, Texas filed suit in the Southern District of Indiana alleging that Defendant, Menard, Inc. of Eau Claire, Wisconsin infringed its rights in United States Copyright Registration No. VA 2-118-094 (“Dexas Cutting Board Photo”). Plaintiff is seeking costs, reasonable attorneys’ fees, injunctive relief, and post judgment interest.
A Dexas employee created an original art piece entitled “Dexas Cutting Board Photo” within the scope of his employment in 2013 (the “Dexas Photo”). This art piece was for use in the product insert label for the Dexas cutting board. On April 4, 2018, Dexas applied for copyright registration for the Dexas Photo.
Dexas alleges that at least as of 2017, if not earlier, Menard began selling a “Collapsible Colander Cutting Board Set” with a label insert that includes the unauthorized copy of or derivative work based on the Dexas Photo. Further, Dexas believes Menard has manufactured, imported, published, sold, and/or distributed unauthorized copies of, or derivative works based upon the Dexas Photo and those were sold to consumers.
Although Dexas is claiming reasonable attorneys’ fees, as provided by the Copyright laws, Menard should be expected to argue strongly against this claim. Pursuant to 17 U.S.C. § 412, “no award of statutory damages or of attorney’s fees, as provided by sections 504 and 505, shall be made for – . . . (2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.” In this case, approximately five years passed before Dexas applied for copyright registration, which is well over three months after the first publication of the work. Therefore, Menard should be expected to prevail on the issue of attorneys’ fees.