Indiana Intellectual Property Law News

September 27, 2011

The Court of Appeals for Indiana Dismisses Counterfeiting, Theft and Corrupt Business Criminal Charges Based On Alleged Trademark Infringement Suit Involving Sale of Toy Guns.

Indianapolis, IN – Chief Judge ROBB of the Court of Appeals for Indiana has issued an opinion regarding An-Hung Yao and Yu-Ting Lin Houston, Texas; who were charged with counterfeiting, theft, and corrupt business influence Huntington County, Indiana Circuit Court based upon the sale of toy guns that allegedly infringement federally registered trademarks.

Defendant Lin operates a business in Houston, Texas called Generation Guns, which imports toy guns from Taiwan and sells the toy guns to the public, including the GA-112 Airsoft gun. Defendant Yao is the vice-president of a Houston bank and is a friend of Lin who allegedly occasionally helps Lin with the Generation Guns business. In 2009, firearms manufacturer Heckler & Koch engaged Continental Enterprises of Indianapolis, to investigate possible trademark infringement claims of H&K’s federally registered trademarks. Continental Enterprises placed orders with Generation Guns for several guns that it believed to infringe H&K’s trademarks and had the products delivered to addresses in Huntington County, Indiana. Continental Enterprises then filed a report with the Indiana State Police. The prosecuting attorney in Huntington County then charged Lin and Yao each with three counts of counterfeiting, three counts of theft, and one count of corrupt business influence “based upon the similarities between the GA-112 airsoft guns and H&K’s firearm.”

The defendants had filed a motion to dismiss in the trial court arguing that the court did not have jurisdiction since all the alleged act occurred in Texas and also argued that the toy gun was not a “written instrument” for the purposes of the counterfeiting crime. The trial court found that it did have jurisdiction, but dismissed the counterfeiting claim, finding that toy was not a “written instrument.” In this interlocutory appeal, the Court of Appeals reversed and held that the trial court should have dismissed the case since Indiana did not have territorial jurisdiction. The court looked to Indiana Code 35-41-1-1(b), which states that Indiana has jurisdiction if conduct or a result that is an element of the crime occurred in Indiana. The court noted that jurisdiction in a criminal case is a factual issue for the jury to determine. However, the court noted that there was no factual dispute about whether the acts occurred in Texas, and therefore, the case should have been dismissed as a matter of law. The court did not address the claim that the toy gun was not a written instrument.

Practice Tip: This case is interesting to Indiana intellectual property attorneys for a number of reasons. First, it involves Continental Enterprises, a frequent litigant in Indiana intellectual property lawsuit. Indiana Intellectual Property Law News has previously blogged about Continental Enterprises cases here.

Secondly, this case addresses the unique issue of territorial jurisdiction for criminal actions. In this case the court looked to Indiana Code 35-41-1-1(b), which states that Indiana has jurisdiction if conduct or a result that is an element of the crime occurred in Indiana. The court noted that jurisdiction in a criminal case is a factual issue for the jury to determine. However, the court noted that there was no factual dispute about whether the acts occurred in Texas, and therefore, the case should have been dismissed as a matter of law. This is a different standard than Indiana courts’ personal jurisdiction for purposes of civil liability.

Finally, the Court of Appeals decided that the trial court did not have jurisdiction, there by evading the issues of how a “product” like a toy gun, can be a “written instrument” for purposes of counterfeiting criminal offense. Another recent Court of Appeals opinion addressed the definition of a written instrument.
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September 26, 2011

James Buchanan and J. B. Custom, Inc. Sues Henry Repeating Arms Company for Trade Dress and Right of Publicity Right Infringement for Firearms Ads in Allen County Superior Court, Case Removed to Federal Court

By Overhauser Law Offices, LLC

Fort Wayne, IN – Trademark lawyers for James Buchanan and J.B. Custom, Inc. of Huntertown, Indiana filed a trademark infringement suit in Allen County, Indiana Superior Court alleging Henry Repeating Arms Company of Bayonne, New Jersey infringed trademark registration no. 3645700 for the mark MARE’S LEG, registered with the US Trademark Office. On September 20, 2011, the case was removed to the Northern District of Indiana upon motion of trademark attorneys for Henry Repeating Arms Company.

According to the complaint, J.B. Custom owns trade dress rights to unique shapes, designs, and appearances of certain pistols designs, including the “Mare’s Leg” lever-action pistol. J.B. Custom advertises the Mare’s Leg pistol design using unique likenesses of Mr. James Buchanan in cowboy attire, including on its website www.maresleg.com. The complaint alleges that Henry’s 2011 catalog included advertisement for a product called “Henry’s Mare’s Leg.” The product advertisement also appeared on Henry’s website. The complaint alleges the Henry’s Mare’s Leg is virtually identical and confusingly similar to J.B. Custom’s product. The complaint also states that Henry has used Mr. Buchanan’s likeness in advertising the Henry’s Mare’s Leg. Trademark attorneys have made claims of misuse of publicity right relating to the unauthorized use of Mr. Buchanan’s likeness, trade dress infringement, false designation of origin, passing off, false advertising and unfair competition.

Practice Tip: In addition to trademark and trade dress claims, which are covered by the federal Lanham Act, the plaintiffs have made a claim under Indiana’s Right of Publicity law because the defendant has alleged used Mr. Buchanan’s likeness in advertisements without Mr. Buchanan’s permission. Indiana Intellectual Property Law News blogged about Indiana’s unique right to publicity law here. The right of publicity protects the right to control the commercial use of a person’s identity.
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September 23, 2011

Rare Criminal Conviction for Copyright Infringement for Unauthorized Online File Sharing of Film Black Swan

By Overhauser Law Offices, LLC

Los Angeles, CA – Wesley DeSoto of Los Angeles, California has pleaded guilty to a charge of criminal copyright infringement in a rare federal criminal prosecution of copyright infringement, which was brought in the Central District of California. Mr. DeSoto allegedly uploaded copies of the copyrighted films Black Swan, The Fighter, The King’s Speech, 127 Hours and Rabbit Hole on to the website The Pirate Bay. Mr. DeSoto allegedly used the bittorrent protocol to share these films in January 2011 using the username “mf34inc.” According to Wired.com, the FBI raided Mr. DeSoto’s apartment earlier this year after being alerted of the alleged infringement by the Motion Picture Association of America. Mr. DeSoto is an actor and member of the Screen Actor’s Guild. He had obtained advanced copies of the films through his SAG membership. Investigators were able to identify Mr. DeSoto as “mf34inc” by tracing username’s Internet Protocol address to Mr. DeSoto.

On September 12, 2011, Mr. DeSoto and copyright infringement attorneys at U.S. Attorney’s Office filed a plea agreement with the court. Mr. DeSoto agreed to plead guilty and the U.S. Attorney’s Office is recommending a sentence of three years of probation. The judge in the case, however, will not be bound by the sentencing recommendation. The offense carries a maximum sentence of three years of incarceration.

Practice Tip: Mr. DeSoto was charged under 17 U.S.C. § 506(1)(C), which criminalizing the distribution of a copyrighted work that is being prepared for commercial distribution by making it available on a computer network to the public. This provision was passed in 2005. Mr. DeSoto’s case is a rare prosecution under this statute.
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September 22, 2011

80/20, Inc. Sues Parco Inc. and Phillip Andrew Roser for Trademark and Copyright Infringement of Aluminum Products Online and in Product Catalogs

By Overhauser Law Offices, LLC

Fort Wayne, IN – Trademark lawyers for 80/20, Inc. of Columbia City, Indiana filed a trademark infringement suit in the Northern District of Indianaalleging Parco Inc of Huntertown, Indiana and Phillip Andrew Roser of Fort Wayne, Indiana infringed trademark registration no. 2,699,302 for the mark 80/20 and no. 3,362,571 for the mark AUTO QUOTER registered by the US Trademark Office as well as three unregistered trademarks. 80/20 also alleges Parco has infringed five registered copyrights owned by 80/20.

80/20 is a leading seller of aluminum extrusion products and accessories. The complaint alleges that Parco is a former distributor of 80/20 products, and Mr. Roser is the president and majority shareholder of Parco. 80/20 alleges that Parco and Mr. Roser “created a scheme whereby they would use Parco’s status as a distributor to form and launch a direct competitor to 80/20.” The complaint states that Parco has been using 80/20 trademarks and copyrighted material on its online advertising and in catalogs. 80/20 alleges that Parco registered an internet domain name “parco8020.com” which used the 80/20 mark without authorization. 80/20 sent a cease and desist letter to Parco on June 14, 2011, and Parco then removed allegedly infringing material from its website. 80/20 alleges that Parco subsequently used photos of 80/20 products to create Parco promotional material, including a YouTube video. 80/20’s copyright and trademark attorneys have made claims of copyright infringement, federal trademark infringement, Lanham Act violation of “passing off,” common law trademark infringement, common law unfair competition, “anti-cyber squatting,” Indiana law unfair competition and deceptive trade practices. 80/20 is seeking to hold Mr. Roser individually liable, through theories of personal liability arising under copyright and trademark law and vicarious liability. 80/20 seeks an injunction, accounting of profits, impoundment and destruction of infringing catalogs, actual damages, attorney fees and costs.

Practice Tip: 80/20 has designated one of its claims “passing off” and cites 15 U.S.C. 1125(a). The federal law calls this type of claim a false designation of origin and false description. The law prohibits any use of marks or words that create a likelihood of confusion as to the origin, sponsorship or approval of a product.
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September 21, 2011

Allison Transmission, Inc. Sues Authorized Transmission Remanufacturing, Inc. for Trademark Infringement in Connection with Remanufactured Allison Transmissions.

By Overhauser Law Offices, LLC

Indianapolis, IN – Trademark lawyers for Allison Transmission Inc of Indianapolis, Indiana filed a trademark infringement suit in the Southern District of Indiana alleging Authorized Transmission Remanufacturing, Inc. of Vernon Hills, Illinois, infringed trademark registration no. 2,686,798 and 3,821,441 for the mark ALLISON TRANSMISSION (words only), 2,720,112, ALLISON DOC (words only) mark, 4,013,075 ALLISON TANSMISSION OPTIMIZED mark, 4,013.074, ALLISON HYBRID mark, 1,666,977, 1,624,473, and 2,625,008, ALLISON TRANSMISSION mark, all registered with the US Trademark Office.

Allison manufactures automotive transmissions and innovative automotive technology. The complaint alleges that Authorized Transmission is in the business of remanufacturing, selling and installing remanufactured Allison Transmission products. Authorized Transmission allegedly displays signs and distributes advertising stating that it is “authorized” by Allison Transmission. However, Allison states it has not granted any “authorization” to Authorized Transmission. The complaint notes that in February 2009, Allison filed a similar lawsuit against Authorized Transmission. That lawsuit was dismissed without prejudice as part of a settlement agreement. The complaint alleges that Authorized has violated the settlement agreement by continuing to display signs and distributing advertising that states it is an “authorized” Allison dealer. The complaint makes claims of false designation of origin, unfair competition, deceptive acts and breach of contract. Allison’s trademark lawyers are seeking a permanent injunction, profits, a declaration that Authorized has breached the settlement agreement, costs, attorney fees, and destruction of the all items with the term “authorized” associated with Allison products.

Practice Tip: This is the second trademark infringement case filed by Allison’s intellectual property attorneys this month. Indiana Intellectual Property Law News blogged about the first case. According to Justia, Allison filed two trademark infringement cases in 2010. Allison is relatively aggressive about enforcing their trademark rights.
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September 20, 2011

Mr. Waterheater Enterprises, Inc. and MRW National, Inc. Sue Greater Midwest Building Solutions, LLC and Ronald O’Connor for Trademark Infringement in Sales and Service of Water Heaters

By Overhauser Law Offices, LLC

Indianapolis, IN – Trademark lawyers for Mr. Waterheater Enterprises, Inc. and MRW National, Inc., both of North Versailles, Pennsylvania filed a trademark infringement suit in the Southern District of Indiana alleging Greater Midwest Building Solutions, LLC and Ronald O’Connor of Franklin, Indiana infringed trademark registration no. 3,338,117, for the mark MR. WATERHEATER KEEPING WATER HOT, registered by the US Trademark Office.

The complaint states that Mr. Waterheater has been selling water heaters using the Mr. Waterheater mark and the trademarked slogan since at least 1988 and spends significant resources to advertise its brand. The complaint alleges that the defendants sell water heaters using the confusingly similar mark “Mr. Water Heater” and uses the confusingly similar website url www.mr-waterheater.com. The complaint states that Mr. Waterheater’s trademark attorneys sent a cease and desist letter to the defendants in June 2011, but the defendant did not cease using their confusingly similar marks. The complaint makes claims of trademark infringement, false designation of origin, unfair competition under Indiana state law, and unjust enrichment. Trademark attorneys seek an injunction, an accounting of profits, damages, attorney fees and costs.

Practice Tip: The parties here are both selling water heaters using very similar marks: The plaintiff’s mark here is “Mr. Waterheater” and the defendant apparently using “Mr. Water Heater.” The Lanham Act, 15 U.S.C. § 1114(1)(b) defines infringement as using a copy or imitation of a mark upon good or service where “such use is likely to cause confusion, or to cause mistake, or to deceive”. Since the difference between the two marks is a space between “water” and “heater,” the marks are virtually identical and the likelihood of confusion is very high. The defendants, however, may have defenses available.
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September 19, 2011

Recent Seventh Circuit Opinion Held Trademark Licenses May Not Be Assigned Absent Consent: “Service Agreement” However Was Not Explicitly Trademark Licenses and Therefore Could Be Assigned in Bankruptcy Case

By Overhauser Law Offices, LLC

Chicago, Ill. – The Seventh Circuit Court of Appeals has affirmed the Northern District of Illinois assignment of a “service agreement” in a bankruptcy case, despite a trademark license owner’s claim that the agreement was a trademark sub-license. In 2009, XMH Corp. filed for bankruptcy and requested the bankruptcy court’s permission to sell a subsidiary’s assets to a purchaser. The assets sold would have included an assignment of an executory contract between the subsidiary and Western Glove Works. The contract allowed XMH’s subsidiary to use the trademark and provided a share of the profits for Western Glove. The contract did not provide for assignment and was not explicitly called a trademark license agreement. Western Glove Works objected to the bankruptcy court’s assignment of the contract, arguing that the contract was a trademark license contract and therefore could not be assigned without its permission.

The questions before the court were (1) whether a trademark is assignable without the licensor’s permission and (2) whether a trademark license can be implied in an agreement that does not explicitly create a trademark license. This appeal was brought on behalf of Western Globe Works, which owns a license to the trademark in question, titled “JAG JEANS” and registered with the US Trademark Office.

The appellate court held that the universal rule is that trademark licenses are not assignable in the absence of a clause expressly authorizing assignment.” The court noted that unauthorized assignments of a trademark license may result in diminished quality of the marked products and therefore damage to the brand reputation indicated by the trademark. However, since the parties in this case had not explicitly called their contract a trademark sublicense, the contract in question was not governed by this universal rule, and therefore could be assigned by the bankruptcy court. The judgment of the Northern District of Illinois was therefore affirmed.

Circuit Judge Richard Posner wrote the opinion of the court, which Circuit Judges Bauer and Williams joined. The case was In re XMH Corp., case numbers 10-2596, 10-2597, 10-2598, and 10-2599 in the Seventh Circuit Court of Appeals, an appeal from the Northern District of Illinois, Eastern Division.

Practice Tip: As illustrated in this case, trademark licenses cannot be assigned unless there is a specific provision in the license contract that allows assignment. See Miller v. Glenn Miller Productions, Inc., 454 F.3d 975, 988 (9th Cir. 2006) (per curiam).

September 15, 2011

Obama Poised to Sign America Invents Act, Patent Reform Bill Now Passed Both House and Senate

By Overhauser Law Offices, LLC

Washington, D.C. – The America Invents Act, also called the Leahy-Smith Patent Reform Act, was passed by the U.S. Senate last week. The bill was sent to President Obama’s desk, ready for his signature before it can become law. The President is expected to sign the bill.

President Obama repeatedly has mentioned the patent reform legislation in recent speeches on the economy. The America Invents Act has been touted as a job creating bill and as an economic stimulus. Proponents argue that the reforms will streamline the patent process and allow companies to more quickly realize profits from technology and thereby employ more workers. Senator Leahy, one of the bill’s sponsors, also commented that the reform will improve the quality of patents. He told the New York Times, “For years, low-quality patents have been a drain on our patent system, and in turn our economy, by undermining the value of what it means to hold a patent. Higher-quality patents will infuse greater certainty into the patent system, which will better incentivize investment in American businesses, create jobs and grow our economy.” These claims, however, are complicated and controversial among intellectual property attorney experts on patent policy.

The biggest change brought on by the reform will give patent protection to the “first to file” for the patent, rather than the “first to invent” under the current system. Indiana Intellectual Property Law News blogged on the specifics of the legislation last month.

September 13, 2011

Bear Archery Files Another Patent Infringement Suit Over Bow Site with Fiber Optics – This Time, Against Vital Hunting

By Overhauser Law Offices, LLC

Evansville, IN – Patent lawyers for SOP Services of Las Vegas, Nevada and Bear Archery of Evansville, Indiana filed a patent infringement suit in alleging Vital Hunting Gear, Inc. of Lexington, KY infringed patent no. 7,159,325 and 7,343,686, BOW SIGHT WITH FIBER OPTICS, which has been issued by the US Patent Office.

This is the second suit brought by Bear Archery’s patent attorneys in the last 3 months asserting infringement of these two patents. Another suit filed in June, 2011 is reported here, and about eight other suits have been filed in the last four years.

As with the June 2011 complaint, the Complaint alleges that the defendant “has manufactured and continues to manufacture, use, sell, offer to sell and distribute fiber optic sights which infringe certain claims of the Patents-In-Suit.” Bear Archery seeks a declaratory judgment, injunction, impounding order, damages, costs, and attorney’s fees. In addition, the complaint also includes a trademark infringement claim; Bear Archery alleges that is “famous” WHISKER BISCUIT mark is infringed by Vital Hunting’s use of the term TEFLON BISCUIT. Although Bear Archery’s trademark attorneys stated in the compliant that “A true copy of registration 3,833,665 is attached as Exhibit D” [to the complaint], registration 3,833,665 is for an INFINITY MAX logo, and is owned by George A. Atkinson. This appears to have nothing to do with the claim against Vital Hunting.

Note: On August 31, 2011, Bear Archery’s patent infringement attorneys dismissed the case they filed in June 2011 against Impact Archery involving the same two patents.
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September 12, 2011

Seventh Circuit Rule Change Now Requires All Documents to Be Electronically Filed and Service

By Overhauser Law Offices, LLC

Chicago, Ill. – The Seventh Circuit Court of Appeals has instituted a circuit rule change that now requires all documents to be filed and served electronically. The rule does not apply to unrepresented parties, unless the party is an attorney representing herself. It also allows a party to request an exception from this requirement.

The court also added Rule 27, which provides procedures to be used for emergency filings outside of normal business hours. The rule notes “Counsel should not expect that electronic filings will be read and acted on outside business hours, unless arrangements for the emergency filing have been made in advance.”

The changes went into effect on May 1, 2011 and are available here.