Indiana Intellectual Property Law News

July 31, 2013

Riders Choice Sues Golden West Saddle Blankets for Declaratory Relief

Terre Haute, Indiana — Copyright lawyers for Riders Choice, LLC d/b/a Show and Tell Saddle Blankets (“Riders Choice”) and Loni Rhodes (“Rhodes”; collectively,”Plaintiffs”) of Center Point, Indiana sued for declaratory relief over allegations of copyright infringement made by Lori Heckaman (“Heckaman”) d/b/a Golden West Saddle Blankets (“Golden West” or “Defendant”) of Gainesville, Texas.

Riders Choice, sometimes operating as “Show and Tell Saddle Blankets,” makes and sells products related to horseback riding, including hand-woven saddle blankets with colorful geometric designs. Rhodes owns Riders Choice. Heckaman, doing business as Golden West Saddle Blankets, also makes and sells products related to horseback riding, including blankets with colorful geometric designs.

Intellectual property counsel for Heckaman sent two cease-and-desist letters to Rhodes and Riders Choice, the first on June 14, 2013 and the second on July 2, 2013. The first cease-and-desist letter asserted that the designs on Heckaman’s blankets were copyrighted and alleged against Rhodes and Riders Choice claims for copyright infringement based on Rhodes’s and/or Riders Choice’s manufacture, marketing and sale of its own blankets. The second cease-and-desist letter made similar allegations. Claims were also made against Rhodes and Riders Choice for business interference, unfair competition and misappropriation of trade secrets based on Rhodes’s and/or Riders Choice’s marketing of Riders Choice’s blankets and alleged copying of Golden West’s weaving and design methods.

Both cease-and-desist letters threatened Rhodes and/or Riders Choice with imminent litigation if Rhodes and/or Riders Choice did not comply with Defendant’s demands, the first by writing “we will have no choice but to advise our client to protect her interests by instituting a suit in a court of competent jurisdiction,” and the second by writing that although “Golden West prefers to resolve this matter without the necessity of court intervention, all necessary action will be taken if a voluntary agreement cannot be reached.” Both cease-and-desist letters demanded that Rhodes and/or Riders Choice stop marketing, selling and producing its blankets. Further, a July 3, 2013 e-mail threatened Rhodes and Riders Choice with imminent litigation by writing that if Rhodes and/or Riders Choice did not “refrain from promoting, marketing, producing, and selling saddle blankets,” Heckaman would have “no choice but to seek available remedies.”

In response, copyright lawyers for Riders Choice filed a complaint under the Declaratory Judgment Act. In the complaint, Plaintiffs assert that blankets with similar designs are widely produced and sold by third parties, that they did not believe that Heckaman had registered any of her designs with the U.S. copyright office, that the blankets Riders Choice sells are original works designed by Rhodes and that every blanket Riders Choice sells is unique in that no two blankets are sold with an identical pattern. They further asserted that Rhodes learned these methods from books and other publicly available materials unaffiliated with Heckaman and that Rhodes had never copied Defendant’s designs.

In the complaint, Plaintiffs ask for judgments of:

· Count I — No Copyright Infringement

· Count II — No Business Interference

· Count III — No Unfair Competition

· Count IV — No Misappropriation of Trade Secrets

Plaintiffs request that the court: (a) declare that Rhodes’s and Riders Choice’s blankets did not in the past and do not now infringe any of Defendant’s valid copyrights; (b) declare that Rhodes and Riders Choice did not commit in the past and are not now engaged in business interference against Defendant based on the sale, marketing or production of blankets; (c) declare that Rhodes and Riders Choice did not commit in the past and are not now engaged in unfair competition against Defendant based on the sale, marketing or production of blankets; (d) declare that Rhodes and Riders Choice did not commit in the past and are not now engaged in the misappropriation of trade secrets from Defendant based on the sale, marketing or production of blankets; (e) award to Plaintiffs their costs and attorneys’ fees.

Practice Tip:

As with a patentee who believes that his or her patent is being infringed, holders of copyrighted materials often will send a “cease-and-desist letter” — a letter demanding that the purported infringer cease infringing. To aid in convincing the accused infringer to meet its demands, the holder of the intellectual property may be tempted to use language such as plans of “instituting a suit” and seeking “court intervention,” as Defendant did here.

As this case demonstrates, this strategy may backfire. By using such language, the Defendant can create an “actual controversy” for purposes of the Declaratory Judgment Act. Thus, the party alleging infringement (the natural plaintiff in an infringement suit) may instead find itself being sued by the alleged infringer (the natural defendant), often in a jurisdiction that would not have been the first choice of the owner of the intellectual property.

One approach that may have yielded better results for Golden West might have been to approach the accused infringer with an offer to license the purportedly protected intellectual property. With carefully crafted language, such a proposal might have served to put Riders Choice on notice of Golden West’s belief that infringement was occurring without going so far as to create an “actual controversy” sufficient to support a lawsuit under the Declaratory Judgment Act.

July 26, 2013

Lippert Components Manufacturing Sues AL-KO Kober for Patent Infringement

By Overhauser Law Offices, LLC

South Bend, Indiana — Lippert Components Manufacturing, Inc. (“Lippert”) of Goshen, Indiana sued AL-KO Kober, LLC (“AL-KO”) of Elkhart, Indiana alleging patent infringement of three patented inventions: Retractable Room Actuation Assembly for Recreational Vehicle Having Engagement Means for Maintaining Constant Distance Between Drive Members and Engagement Members, Patent No. 8,235,455 (the “‘455 Patent”); Retractable Room Actuation Assembly for Recreational Vehicle Having Engagement Mechanism for Maintaining Constant Distance Between Drive Members and Engagement Members, Patent No. 8,240,744 (the “‘744 Patent”); and Retractable Room Actuation Assembly for Recreational Vehicle, Patent No. RE44,002 (the “‘002 Patent”); which have been issued by the U.S. Patent Office.

Lippert claims ownership of the three patents-in-suit, which related to a retractable room assembly used in extending and retracting slide-out compartments for recreational vehicles. The patents were granted in 2012 and 2013.

AL-KO is accused of having made, used, offered for sale and/or sold its retractable room actuation assembly for use in extending/retracting recreational vehicle slide-out compartments. Lippert notified AL-KO of Lippert’s ‘002 Patent, ‘455 Patent and ‘744 Patent and claimed infringement of those patents in a letter dated June 28, 2013 and received by AL-KO on July 1, 2013.

Patent attorneys for Lippert sued AL-KO on July 11, 2013 claiming patent infringement by AL-KO. The complaint also asserts that AL-KO has induced and contributed to others’ use of the patents-in-suit, including at least Augusta RV, by selling to them and instructing them to use Lippert’s intellectual property.

The complaint lists the following:

· Count I: ‘002 Patent Infringement

· Count II: ‘455 Patent Infringement

· Count III: ‘744 Patent Infringement

Lippert also contends that AL-KO has engaged in its conduct willfully and in complete disregard of, or with indifference to, Lippert’s rights and interests. It asks the court to consider this an “exceptional case” as that term is defined in 35 U.S.C. §285.

Lippert, via its patent attorneys, asks for an injunction; for an accounting; for damages, up to treble the amount of actual damages; for attorneys’ fees and costs; and that the court require AL-KO to notify AL-KO’s customers of AL-KO’s unlawful acts.

Practice Tip: While the exact contents of the letter to AL-KO are unclear from the complaint, a company that receives a notification letter alleging infringement is well advised to contact intellectual-property counsel promptly. The receipt of such a letter may constitute a legally significant event which triggers a duty by the recipient to take action, such as investigate whether any of the infringement claims in the letter have merit. If the letter threatens legal action, the alleged infringer should consider initiating a suit under the Declaratory Judgment Act. Declaratory judgment actions are frequently filed in intellectual-property matters, especially patent litigation. Such a suit allows the potential defendant not only to choose its own forum, to the extent that the forum is consistent with jurisdictional restrictions, but also to remove an ever-present cloud of potential litigation and potential damages for patent infringement that may be continuing to accrue.

July 25, 2013

CarCheckup Alleges Infringement by CarMD.com and Innova Electronics of Patented Vehicle Code Readers

By Overhauser Law Offices, LLC

Indianapolis, Indiana — CarCheckup, LLC of Carmel, Indiana has sued CarMD.com Corp. (“CarMD”) and Innova Electronics Corp. (“Innova”), both of Irvine, California, for infringing two patents, Patent Nos. 6,807,469 (the “‘469 Patent) and 6,925,368 (the “‘368 Patent) both titled “Auto Diagnostic Method and Device,” which have been issued by the U.S. Patent Office.

CarCheckup sells a device designed to improve teen-driver safety, track business mileage and explain the check-engine light in vehicles compliant with on-board diagnostic II (also known as “OBD-II”) technology.

CarMD sells a “Handheld Device and Software Solution Kit,” along with “Vehicle Health System” products. The CarMD Vehicle Health System is a consumer product designed to enable car owners to monitor a vehicle’s function, to catch hidden problems and to diagnose dashboard warning lights. CarMD’s products work on newer-model vehicles with on-board diagnostic technology by retrieving diagnostic codes from the vehicle’s computer. By using a CarMD code reader, a car owner, even one unsophisticated in car repair, can identify the problem(s) with his or her vehicle.

CarMD sells its products directly to consumers via infomercials, on its website at www.CarMD.com, through the Home Shopping Network and on www.Amazon.com. Its products are also sold at various retail outlets, including Pep Boys. Innova, an allegedly related enterprise, sells two different code readers in the United States and maintains web sites at www.CodeReader.com and www.Innova.com.

Patent attorneys for CarCheckup sued CarMD and Innova, asserting a right to relief against them jointly, for infringing the ‘469 and ‘368 Patents, which are owned by CarCheckup. CarCheckup alleges that, as part of a joint endeavor, CarMD sells and offers for sale infringing CarMD products, while Innova distributes and manufactures the products. CarCheckup alleges that one or both of the Defendants has known about the patents-in-suit since at least as early as December 2012.

The complaint lists the following claims:

· Count I: Infringement of the ‘469 Patent against CarMD and Innova

· Count II: Infringement of the ‘368 Patent against CarMD and Innova

CarCheckup asks the court for a judgment against CarMD and Innova; for a finding that the infringement has been willful and deliberate; for an award of damages adequate to compensate CarCheckup for the infringement it alleges, but in no event less than a reasonable royalty; for treble damages; for an injunction; and for a finding that this is an exceptional case and, thus, for an award of reasonable attorneys’ fees and costs.

Practice Tip: The law of the “reasonable royalty” has been in transition recently. The “25% rule,” an approach that allocated 25% of the profits from an infringement to the patentee and the remaining 75% to the infringer, has been abandoned. Long used in federal courts to establish a reasonable royalty as compensation for patent infringement under § 284 of the Patent Act, it was rejected by the Federal Circuit in 2011. In its ruling in Uniloc v. Microsoft, the court held: “the 25 percent rule of thumb is a fundamentally flawed tool for determining a baseline royalty rate in a hypothetical negotiation. Evidence relying on the 25 percent rule of thumb is thus inadmissible under Daubert and the Federal Rules of Evidence, because it fails to tie a reasonable royalty base to the facts of the case at issue.”

July 24, 2013

Diamond Back Gutter Covers and Daniel Feldhaus Sue Midwest Enterprises for Patent Infringement

By Overhauser Law Offices, LLC

Lafayette, Indiana — Diamond Back Gutter Covers, Inc. (“Diamond Back”) of Lafayette, Indiana and Daniel E. Feldhaus (“Feldhaus”) of Monticello, Indiana sued Midwest Enterprises of Saint Clair, Missouri alleging infringement of its “Gutter Debris Cover,” Patent No. 7,627,991, (the “‘991 Patent”) which has been issued by the U.S. Patent Office.

Diamond Back manufactures and sells products related to the protection of gutter and drainage systems. Diamond Back states that Midwest Enterprises is in a similar business and also does business under the name E-Z Products.

A complaint against Midwest Enterprises was filed by patent attorneys for Diamond Back. It focuses on Midwest Enterprises’ EZ Double Lock gutter protectors, which Diamond Back asserts infringe upon the ‘991 Patent. That patent, for a Gutter Debris Cover, was issued to Feldhaus in December 2009; Diamond Back is licensed to use the patent.

Specifically, the complaint asserts that Midwest Enterprises has been and still is infringing the ‘991 Patent by making, selling and/or using a gutter-protection system embodying one or more of the patented inventions or by inducing others to infringe the ‘991 Patent.

In June 2012, correspondence to Midwest Enterprises alerted them that Diamond Back believed that they were infringing. Diamond Back claims that Midwest Enterprises’ actions which continued after having received notice, constitute willful conduct in disregard of its rights in the ‘991 Patent.

Diamond Back asserts that this is an exceptional case as defined by 35 U.S.C. 285. It is asking the court for an injunction; for the destruction of infringing goods; for the destruction of items relating to the making and marketing such goods; for corrective advertising; for damages, including treble damages; and for attorneys’ fees.

Practice Tip: If a court finds that a patent has been infringed upon, it may then consider the additional issue of whether the infringement was willful. Infringing behavior that continued despite an allegation of infringement can support such a finding. The determination that an infringement was “willful” can, in turn, increase damages significantly.

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 19, 2013

Batman Villainess Catwoman Gets “Clean Slate”

By Overhauser Law Offices, LLC

South Bend, Indiana — The Northern District of Indiana has ruled in favor of Warner Brothers Entertainment, Inc. (“Warner Bros.”) of Burbank, California which had been sued by trademark holder Fortres Grand Corporation (“Fortres Grand”) of Plymouth, Indiana. Fortres Grand had alleged that Warner Bros. infringed its trademark, Registration No. 2,514,853, for the mark CLEAN SLATE, which has been registered by the U.S. Trademark Office.

Fortres Grand develops, markets and sells software. Since 2000, it has marketed and sold software called “Clean Slate.” The Clean Slate software protects the security of computer networks by erasing all evidence of user activity so that subsequent users see no indication of a previous user’s activity, meaning that each new user starts his or her computer activity with a “clean slate.” Fortres Grand has sold millions of dollars worth of its Clean Slate software. In 2001, Fortres Grand obtained a federal trademark registration for the use of “Clean Slate” in connection with “computer software used to protect public access computers by scouring the computer drive back to its original configuration upon reboot.”

Warner Bros. is one of the most famous names in movie history. In the summer of 2012, it released its latest Batman film, The Dark Knight Rises. One of the plot lines in the film involves the character Selina Kyle (a.k.a. supervillainess Catwoman) and her attempt to procure a software program that will erase her criminal history from every computer database in the world. The software program she is trying to obtain was designed by the fictional company Rykin Data and is referred to four times in the film as “clean slate.”

Two websites — rykindata.com and rykindata.tumblr.com — were also created to promote the film. These websites are consistent with a recent trend in the online advertising of films: rather than just creating a straightforward promotional website where consumers can get information about the film (like, in this instance, www.thedarkknightrises.com), additional websites are created that market the film in a more subtle or creative way. In this instance, the websites are essentially a creative outgrowth of the fictional world of the film. They look like what a (fictional) citizen of Gotham might find if they were looking for information on the (fictional) Rykin Data company. These websites also use the term “clean slate” to describe the software referenced in the film.

Fortres Grand filed suit on September 19, 2012 alleging three counts based on the use of “clean slate” in the film and on the websites: 1) trademark infringement under the Lanham Act (15 U.S.C. § 1051 et seq.); 2) unfair competition under the Lanham Act; and 3) unfair competition under Indiana state law.

Fortres Grand asserted that it is, in fact, trademark infringement when a fictional product bears the same name as a real product. Warner Bros. took the opposite view and moved to dismiss the case.

The court began by noting that there is surprisingly little case law in matters such as these. Despite the many movie and television releases every year, courts have rarely been called upon to answer the question of whether it is trademark infringement if a fictional company or product in a movie or television drama bears the same name or brand as a real company or product.

The court analyzed all three of Fortres Grand’s claims — infringement, federal unfair competition, and state unfair competition — under the same trademark infringement analysis. It noted that an essential ingredient of trademark infringement is a likelihood of confusion among consumers as to the source of a product. Specifically, only confusion about origin supports a trademark claim. For this purpose, “origin” means the producer of the tangible product sold in the marketplace. Moreover, although the hallmark of trademark infringement is protecting against consumer confusion, it is not enough that there just be some generalized confusion. Trademark infringement protects only against mistaken purchasing decisions and not against confusion generally.

In this case, Grand Fortres was arguing a case of reverse confusion. This type of confusion exists when a junior user uses its size and market penetration to overwhelm the senior, but smaller, user. The “senior user” (here, Grand Fortres) is the first to adopt and use a mark anywhere in the country. The “junior user” (Warner Bros.) is the second user. The reverse confusion doctrine protects the senior user’s control of its mark and the goodwill created by the mark from a junior user’s employment of the mark, and protects the public from being deceived into believing that the senior user’s product emanates from, is connected to, or is sponsored by the junior user.

The court was not persuaded by Grand Fortres’ claim of confusion. To state a claim for reverse confusion in this case, the court held that Fortres Grand had to make plausible allegations that Warner Bros. saturated the market with a product that the public had been deceived into believing emanated from, was connected to, or was sponsored by Fortres Grand. The fatal flaw in Fortres Grand’s case had to do with correctly identifying the exact product that Warner Bros. had introduced to the market — a film, not a piece of software.

The court held that a comparison between the two products led to the conclusion that there was no plausible claim for consumer confusion regarding a consumer’s purchasing decision between the two nonfictional products — Fortres Grand’s software and Warner Bros.’s film. “Plaintiff is not in the motion picture business,” the court stated, citing a Warner Bros. pleading. “[I]t would be absurd to think that customers buy tickets to The Dark Knight Rises or purchase the DVD/Blu-ray because of a perceived association of the Film with Fortres Grand’s products.”

Finally, the court discussed the First Amendment issues associated with considering a trademark infringement claim under the Lanham Act when the asserted infringement took place in an artistic work. The Second Circuit’s Decision in Rogers v. Grimaldi, a landmark opinion in such cases, in discussing the use of intellectual property in the title of a work states:

[T]he [Lanham] Act should be construed to apply to artistic works only where the

public interest in avoiding consumer confusion outweighs the public interest in

free expression. In the context of allegedly misleading titles using a celebrity’s

name, that balance will normally not support application of the Act unless the title

has no artistic relevance to the underlying work whatsoever, or, if it has some

artistic relevance, unless the title explicitly misleads as to the source or the

content of the work.

As several Circuits have done, the court extended this analysis to cover not only the title of an artistic work, but also the body of the work. It concluded by holding that, even if there were a potential for consumer confusion caused by the use of “clean slate” in the film, the case still must be dismissed because Warner Bros.’s use of the term is also protected by the First Amendment.

Practice Tip: A more plausible legal argument might have been trademark dilution. The complaint, however, did not bring a claim under the Trademark Dilution Act. This may have been because Fortres Grand recognized that its “Clean Slate” trademark was not a “famous” one, which is a requirement for bringing a trademark dilution case.

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.

July 17, 2013

Coach Sues Again in Indiana Court Alleging Trademark Infringement

By Overhauser Law Offices, LLC

South Bend, Indiana — Trademark lawyers for Coach, Inc. of New York, New York and Coach Services, Inc. of Jacksonville, Florida (collectively, “Coach“) have sued Maxx Tan; Maxx Tan Logan, LLC — both of Logansport, Indiana — and James Robert McCarthy (“McCarthy”) of Marion, Indiana, individually and d/b/a Maxx Tan, for infringement of the COACH trademark which has been registered by the U.S. Trademark Office.

Coach was founded more than 70 years ago as a family-run workshop in Manhattan. Since then, the company has been engaged in the manufacture, marketing and sale of fine leather and mixed-material products including handbags, wallets and accessories including eyewear, footwear, jewelry and watches. Coach products have become among the most popular in the world, with Coach’s annual global sales currently exceeding three billion dollars.

On October 17, 2012, a private investigator from Coach visited Maxx Tan and observed numerous trademarked handbags, sunglasses and accessories displayed for sale. These items bore the trademarks of many high-end brands, including Coach.

The investigator purchased a purse which bore a Coach trademark for $69 plus tax and left the store. The investigator then returned, explained the reason for the purchase, attempted to serve a cease-and-desist letter on McCarthy, and asked McCarthy to surrender the merchandise. McCarthy agreed to stop selling the merchandise but refused to surrender anything.

The investigator contacted the Logansport police. In the following weeks, Maxx Tan surrendered various purses, a pair of sunglasses and a sunglasses case to the police, all of which bore the Coach mark. All of the surrendered items are alleged to be counterfeit.

Coach, the owner of at least 47 trademarks, subsequently sued Maxx Tan and McCarthy, whom Coach contends is individually liable for any infringing activities. It alleges that Maxx Tan and McCarthy are engaged in designing, manufacturing, advertising, promoting, distributing, selling, and/or offering for sale products bearing logos and source-identifying indicia and design elements that are studied imitations of the Coach trademarks.

The complaint includes counts for trademark infringement, false designation of origin and false advertising under the Lanham Act, 15 U.S.C. §§ 1114, 1116, 1117, 1125(a) and (c); trademark infringement and unfair competition under the common law of the State of Indiana; and forgery under Indiana Code § 35- 43-5-2(b) as well as counterfeiting under Indiana Code § 35-43-5-2(a), pursuant to Indiana Code § 34-24-3-1. These counts are listed as:

· COUNT I (Trademark Counterfeiting, 15 U.S.C. § 1114)

· COUNT II (Trademark Infringement, 15 U.S.C. § 1114)

· COUNT III (False Designation of Origin and False Advertising, 15

U.S.C. § 1125(a))

· COUNT IV (Common Law Trademark Infringement)

· COUNT V (Common Law Unfair Competition)

· COUNT VI (Forgery Under Ind. Code § 35-43-5-2(b))

· COUNT VII (Counterfeiting Under Ind. Code § 35-43-5-2(a))

· COUNT VIII (Common Law Unjust Enrichment)

· COUNT IX (Attorneys’ Fees)

Coach asks the court, inter alia, to enter judgment against the defendants on all counts; for an injunction against further wrongful activity; to order that all infringing materials be recalled and disposed of; to award to Coach statutory damages of $2,000,000 per counterfeit mark per type of good; to award punitive damages; and to award to Coach its costs and attorneys’ fees.

Practice Tip: Coach has been very aggressive in protecting its intellectual property rights in Indiana courts over the last few years. Coach’s intellectual property attorneys have filed numerous similar lawsuits in Indiana courts, several of which Indiana Intellectual Property Law and News has blogged about.

July 15, 2013

149 Trademark Registrations Issued to Indiana Companies in June, 2013

By Overhauser Law Offices, LLC

The US Trademark Office issued 149 trademark registrations to persons and businesses in Indiana in June, 2013, based on applications filed by Indiana Trademark Attorneys:

	Reg. Number	Mark	Click To View
1	4358361	ORTHOSIZE	LIVE
2	4348082	SAVE YOUR SURFACE	LIVE
3	4358083	KCCO	LIVE
4	4358082	CHIVE ON	LIVE
5	4358074	SOLITUDE	LIVE
6	4357923	MIRACLE WELD	LIVE
7	4357741	CROCODILE CREEK	LIVE
8	4357542		LIVE
9	4357511	BRAND MAESTRO	LIVE
10	4357470	MOONSHINE COWBOYS XXX RC	LIVE

July 10, 2013

BMI Wins on Summary Judgment in Infringement Case

By Overhauser Law Offices, LLC

Indianapolis, Indiana — The Southern District of Indiana has granted a motion by New York-based Broadcast Music, Inc. et al. for summary judgment against Diamond Investments, Inc. and Salvatore Mazza of Franklin, Indiana for copyright infringement for the unlicensed use of copyrighted musical compositions in live performances at The Juke Box Live.

Broadcast Music, Inc. (“BMI”) is a “performing rights society” under 17 U.S.C. § 101 that operates on a non-profit-making basis and licenses the right to publicly perform copyrighted musical works on behalf of the copyright owners of these works. The other plaintiffs in this action are the copyright owners of the eight compositions at issue in this lawsuit.

Diamond Investments, Inc. (“Diamond”) is an Indiana corporation that operated The Juke Box Live, a “nightclub restaurant entertainment venue.” Musical compositions were publicly performed at The Juke Box Live in connection with Diamond’s operation of that business.

Salvatore T. Mazza (“Mazza”) was an officer of Diamond with primary responsibility for the operation and management of Diamond and The Juke Box Live. Mazza also had a direct financial interest in the corporation and The Juke Box Live.

Prior to February 2010, BMI learned that The Juke Box Live was offering musical entertainment without a license from BMI and without permission from the copyright owners whose music was being publicly performed. Between February 4, 2010 and May 31, 2011, BMI repeatedly informed Diamond and Mazza (collectively, “defendants”) in writing of the need to obtain permission for public performances of copyrighted music and offered to enter into a license agreement with defendants, but they refused. BMI also sent four letters instructing defendants to cease unauthorized public performances of BMI’s music and telephoned on 55 occasions to advise defendants of the need to enter into a license agreement.

Nonetheless, the infringement continued. On March 19, 2011, a BMI investigator went to The Juke Box Live and recorded the performance of songs owned by the various non-BMI plaintiffs. An action for copyright infringement of eight works performed at The Juke Box Live, brought pursuant to 17 U.S.C. § 101 et seq. (the “Copyright Act”), followed.

BMI later moved for summary judgment and the defendants, although represented by counsel, did not respond. The court held that, due to their failure to answer or object to BMI’s requests for admissions, defendants were deemed to have tacitly admitted to copyright infringement.

The court awarded $3,000.00 for each of the eight findings of infringement in this case, for $24,000.00 in total, for the infringement itself. It also found that the infringement had been willful and consequently awarded to the plaintiffs $17,985.55, to cover in full plaintiff’s costs and attorney’s fees. The court also ordered that post-judgment interest be paid. These damages and costs were assessed against Diamond and Mazza jointly and severally.

Finally, the court ordered that Diamond and Mazza, each individually, as well as all persons acting under their permission or authority, be permanently enjoined from infringing the copyrighted musical compositions licensed by BMI.

Practice Tip:

The Copyright Act empowers a plaintiff to elect to receive an award of statutory damages between $750 and $30,000 per infringement in lieu of an award representing the plaintiffs’ actual damages and/or the defendants’ profits. In a case where the copyright owner proves that infringement was committed willfully, the court may increase the award of statutory damages to as much as $150,000 per infringed work. A finding of willful infringement will also support an award of attorney’s fees.

Here, the court awarded $3,000 per infringement plus attorney’s fees. Courts considering awards of statutory damages have recognized that awards in the range of $3,000 to $7,000 or higher per infringement are appropriate in cases where the infringement resulted from deliberate indifference toward copyright laws.

Furthermore, not only is the performer liable for infringement, but so is anyone who sponsors the performance. A corporate officer will be found jointly and severally liable with his corporation for copyright infringement if he (1) had the right and ability to supervise the infringing activity, and (2) has a direct financial interest in such activities.