Indiana Intellectual Property Law News

December 11, 2015

Indiana Trademark Litigation: Trademark Lawsuit Filed Over Use of “All Star” Name

Indianapolis, Indiana – Plaintiff All Star Heating & Cooling, Inc. (“All Star”) of Camby, Indiana sued in the Southern District of Indiana alleging that Quality Heating and Air, Inc. (“Quality Heating”) d/b/a All Star Air and Richard Cusick (“Cusick”) of New Palestine, Indiana are infringing its trade name.

Both Plaintiff and Defendants are in the business of providing heating, venting and air conditioning service, installation and repair. Plaintiff All Star states that it began business in December of 2005 and that it has used the same name since that time. It also indicates that it has been using “the same trade dress since 2011.” This trademark infringement complaint does not indicate that Plaintiff’s business name has been registered by the U.S. Patent and Trademark Office.

The complaint states that Defendant Cusick, who is believed to be the owner and operator of Defendant Quality Heating, began business in 2014 under the assumed business name All Star Air. Plaintiff asserts that Quality Heating is currently located less than 30 miles from Plaintiff’s location.

Plaintiff All Star contends that customers and vendors have been confused by Defendants’ use of the All Star name, stating that they have “wrongly believed that there is an association or connection between the Plaintiff’s business and the Defendants’ business.” Plaintiff avers that, as a consequence, Defendants are liable for trade name infringement and unfair competition.

In its lawsuit, filed by an Indiana trademark lawyer, Plaintiff lists the following counts:

• Count I: Federal Unfair Competition
• Count II: State and Common Law Trademark Infringement

• Count III: Common Law Unfair Competition

All Star seeks equitable relief, including an injunction; damages, including treble damages; costs and attorney fees.

December 8, 2015

Indiana Copyright Litigation: Brick Shirt House Alleges Infringement of Copyrighted Image of Beer Mug in the Shape of Indiana

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Plaintiff The Brick Shirt House, LLC of Indianapolis, Indiana filed a copyright infringement complaint in the Southern District of Indiana. The lawsuit alleges that Indiana on Tap, LLC of Fishers, Indiana infringed Plaintiff’s copyrighted art work “Drink Indiana,” Copyright Registration No. VA0001895289, which has been registered with the U.S. Copyright Office.

Brick Shirt House is engaged in the business of printing on apparel and other merchandise. An Indiana copyright attorney for Brick Shirt House asserts in this lawsuit that the visual art at issue in this litigation, “Drink Indiana,” was created in October 2011 by Alex Janeczek, manager and owner of Brick Shirt House. The art work features an Indiana-shaped beer mug with beer foam spilling over the top.

Around December 16, 2013, Janeczek discovered a drawing in use by Indiana On Tap that Plaintiffs contend is “substantially similar to Drink Indiana Beer Mug, as it copied, verbatim, the essential elements of Drink Indiana Beer Mug.” He also learned of Indiana On Tap’s intent to distribute merchandise with the accused artwork. That same day or shortly thereafter, Brick Shirt House indicates that it registered its art work with the U.S. Copyright Office. Approximately a week later, Brick Shirt House e-mailed Indiana On Tap and requested that Indiana On Tap cease using the artwork, stating its belief that the Indiana On Tap work infringed Brick Shirt House’s copyrighted art. Several e-mails were exchanged but apparently no resolution was reached.

In July 2014, Indiana On Tap again advertised its intent to sell t-shirts incorporating the accused artwork. In response, a copyright attorney for Brick Shirt House sent a cease and desist demand letter to Indiana On Tap. Indiana On Tap denied infringement and refused to cease use of the graphic. Plaintiffs indicate that additional instances of copyright infringement were subsequently committed by Indiana On Tap.

This lawsuit, filed December 4, 2015 by an Indiana copyright lawyer for Brick Shirt House, lists a single count: copyright infringement, which Plaintiffs state has been done willfully. Brick Shirt House seeks equitable relief, including impoundment; damages; costs and attorney’s fees.

December 7, 2015

Criminal Counterfeit Law: U.S. Marshals Selling Thousands of Bottles of Non-Counterfeit Wine of Convicted Wine Counterfeiter

By Overhauser Law Offices, LLC

Washington, D.C. – The U.S. Marshals are currently auctioning approximately 4,711 bottles of wine, deemed authentic, that belonged to Rudy Kurniawan, the man convicted of fraud in federal court in 2013 for producing and selling millions of dollars of counterfeit wine.

The wine is being sold in two online auctions, one that started November 24 and one that started December 1 at www.txauction.com. The auctions close on December 8 and December 15, respectively.

“It may sound ironic that we are selling wine that belonged to a convicted wine counterfeiter,” said Assistant Program Manager Jason Martinez of the U.S. Marshals Service Asset Forfeiture Division, “but we are duty-bound to recoup as much value from the sale of these authentic wines as possible to compensate those who were victims of his fraud.”

December 4, 2015

Federal Circuit Patent Law: Quality Control Testing Is Not Patent Infringement; Does Not “Make” a Product as Contemplated Under § 271(g)

By Overhauser Law Offices, LLC

Washington, D.C. – The United States Court of Appeals for the Federal Circuit heard a patent infringement lawsuit styled Momenta Pharms., Inc. v. Teva Pharms. USA Inc. on the issue of whether Defendants’ quality control procedures infringed the patent-in-suit. This appeal included a companion case, Momenta Pharms., Inc. v. Amphastar et al. Both cases were heard at the trial court level in the United States District Court for the District of Massachusetts by Judge Nathaniel M. Gorton.

Momenta was the first to market enoxaparin, an anticoagulant drug, in generic form. Momenta also owns U.S. Patent No. 7,575,886 (“the ‘886 patent”), which includes claimed methods designed to ensure that every batch of enoxaparin was of sufficient quality. Momenta asserted the ‘886 patent against other manufacturers, including Teva and Amphastar, which also wanted to bring a generic version of enoxaparin to market. It contended that Defendants’ quality-control measures infringed the ‘886 patent.

In this litigation, the United States District Court for the District of Massachusetts determined that patent infringement had not taken place, listing two separate grounds. First, the asserted claims were directed towards analyzing enoxaparin for the purpose of quality control, not manufacture of the drug, which did not amount to patent infringement. Second, the district court found that use of the analytical methods of the ‘886 patent were protected under the safe harbor provisions of 35 U.S.C § 271(e)(1). Momenta appealed.

Circuit Judges Dyk, Moore and Wallach of the Federal Circuit ruled on this appeal in November. Writing for the court, Judge Wallach affirmed the trial court’s ruling that Defendants Teva and Amphastar had not infringed the ‘886 patent, holding that infringement under 35 U.S.C. § 271(g) occurs when “making” a product and that quality-control testing, thus, did not constitute patent infringement.

The Federal Circuit vacated the district court’s judgment that the activities were also protected under the “safe harbor” provisions within § 271(e)(1) and remanded this issue to the district court for further inquiry.

December 1, 2015

161 Trademark Registrations Issued to Indiana Companies in November 2015

By Overhauser Law Offices, LLC

The U.S. Trademark Office issued the following 161 trademark registrations to persons and businesses in Indiana in November 2015 based on applications filed by Indiana trademark attorneys:

Registration No.	Word Mark	Click To View
4844317	SYMPHONY RANGEVUE	View
4859897	K-POOL	View
4859843	BELLESENTIALS	View
4859816	BRUSYBRUSH	View
4859491	PAINT YOUR PET PARTY	View
4859402	FIRSTCUT	View
4859302	ZAYCON	View
4859276	TURILLIUM	View

December 1, 2015

Patent Office Issues 175 Patents To Indiana Citizens in November 2015

By Overhauser Law Offices, LLC

The U.S. Patent Office issued the following 175 patent registrations to persons and businesses in Indiana in November 2015, based on applications filed by Indiana patent attorneys:

PAT. NO.		Title
9198301		Printed circuit assembly for a solenoid module for an automatic transmission
9198280		Via structure for transmitting differential signals
9198236		System and method for controlling a multiple-color lighting device
9197115		Electric machine cooling
9194852		Method and apparatus for accelerating the equilibration of a fluid
9194760		Capacitive pressure sensor with reduced parasitic capacitance
9194453		Gas spring assembly and method

November 30, 2015

Criminal Copyright Law: Operator of Second-Largest Music Piracy Website in the U.S. Sentenced to 3 Years for Criminal Copyright Infringement

By Overhauser Law Offices, LLC

Norfolk, Virginia – District Judge Rebecca Beach Smith of the Eastern District of Virginia sentenced copyright infringer to prison.

Rocky P. Ouprasith, 23, of Charlotte, North Carolina, was sentenced recently to 36 months in prison for reproducing and distributing without permission millions of infringing digital copies of copyrighted works, including copies of popular songs and albums before they were commercially available. Ouprasith was also sentenced to two years of supervised release, ordered to pay restitution in the amount of $45,288.62, and to forfeit $50,851.05.

This case represents the first criminal copyright infringement sentence imposed for a cyberlocker operator in the United States.

“Ouprasith operated the second largest online file sharing site in the United States, averaging nearly 4.5 million visits per month and resulting in an estimated collective loss of more than $10 million per month to the rightful owners,” said Dana J. Boente, U.S. Attorney for the Eastern District of Virginia. “I believe this sentence reflects the seriousness of the crime and will promote greater respect for the law and property rights of others.”

“HSI is responsible for enforcing federal regulations that exist to protect American businesses from unfair trade practices and intellectual property theft,” said Clark E. Settles, Special Agent in Charge of U.S. Immigration and Customs Enforcement‘s Homeland Security Investigations (“HSI”). “Online piracy has a serious financial impact to business, which is felt at every level of a transaction – from the producer to the point-of-sales clerk.”

Ouprasith pleaded guilty on Aug. 21, 2015. According to court documents, between May 2011 and October 2014, Ouprasith operated RockDizMusic.com, a website originally hosted on servers in France and later in Canada, from which Internet users could find and download infringing digital copies of popular copyrighted songs and albums. Ouprasith admitted that he obtained digital copies of copyrighted songs and albums from online sources, and that he encouraged and solicited others, referred to as “affiliates,” to upload digital copies of copyrighted songs and albums to websites, including RockDizFile.com, that were hosted on servers in Russia, France and the Netherlands, and that hosted hyperlinks to content being offered for download on RockDizMusic.com. Ouprasith further admitted that to encourage such activity, he agreed to pay the affiliates based on the number of downloads from his website.

According to the Recording Industry Association of America, in 2013, RockDizFile.com was the second-largest online file sharing website specializing in the reproduction and distribution of infringing copies of copyrighted music in the United States. Ouprasith admitted that in 2013 and 2014, he either ignored or pretended to take remedial action in response to complaints from copyright holders and their representatives that the website contained links to infringing copies protected songs and albums.

In October 2014, federal law enforcement authorities shut down RockDizMusic.com and RockDizFile.com, and law enforcement authorities in the Netherlands and France seized file-hosting servers utilized by Ouprasith.

According to court documents, the market value of Ouprasith’s illegally pirated material was more than $6 million.

This sentencing is related to the many efforts being undertaken by the Department of Justice Task Force on Intellectual Property (“IP Task Force”). The IP Task Force supports prosecution priorities, promotes innovation through heightened civil enforcement, enhances coordination among federal, state, and local law enforcement partners, and focuses on international enforcement efforts, including reinforcing relationships with key foreign partners and U.S. industry leaders.

Practice Tip: To learn more about the IP Task Force, go to www.justice.gov/dag/iptaskforce.

November 24, 2015

Indiana Patent Law: Request to Limit Discovery Denied but Judge Orders Reimbursement if Certain Discovered Evidence is Largely Duplicative

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Magistrate Judge Mark Dinsmore of the Southern District of Indiana denied Defendants’ motion to limit discovery in the patent infringement litigation between Knauf Insulation, LLC et al. and Johns Manville Corp. et al. Judge Dinsmore also recently denied Defendants’ motion to bifurcate the trial.

This federal litigation alleges infringement of U.S. Patents Nos. 8,114,210; 8,940,089; D631,670; 9,039,827 and 9,040,652, which Plaintiffs Knauf Insulation, LLC, Knauf Insulation GmbH and Knauf Insulation SPRL contend were infringed by Defendants Johns Manville Corporation and Johns Manville, Inc.

This court order addresses Defendants’ motion, filed by patent attorneys for Defendants, for limitations on electronic discovery. Specifically, Defendants asked the court to implement a date cutoff of January 1, 2007 for all electronically stored discovery and to limit the number of e-mail custodians from which Defendants must produce e-mail. Defendants asserted that these restrictions would reduce its discovery-related expenses by approximately $49,400.

The request to limit the time was denied. The court noted that there was a high likelihood that relevant evidence that was not available from any other source would be found in Defendants’ materials prior to 2007. Further, the cost of obtaining that evidence was not excessive in light of the amount in controversy in the litigation. Consequently, the court held that Defendants had not met their burden of showing that the cost of the proposed discovery to Defendants outweighed the benefit to Plaintiffs.

Defendants also requested that the court limit electronic discovery to 10 of Defendants’ 38 e-mail custodians. Patent lawyers for Defendants argued that such a limitation would result in a savings of $18,000 and would also facilitate the predictive coding process.

The court was again unpersuaded. It noted that, while discovery couldn’t guarantee that 100% of responsive material would be produced, eliminating material held by 28 of Defendants’ 38 e-mail custodians from the scope of discovery would “guarantee a zero percent recall for the 28 custodians not chosen.” After asking itself the question, “how many relevant responsive documents are too many to voluntarily walk away from?,” the court concluded that it had insufficient evidence to weight the benefit of the e-mails that would be produced as a result of including the 28 custodians that Defendants proposed be omitted from discovery. Moreover, it opined that in high-value litigation such as this lawsuit, the burden of the additional $18,000 expense does not outweigh the potential benefit to Knauf of receiving those emails.

The court ordered Defendants to produce discovery from all 38 e-mail custodians but also ordered that, should the search of the additional 28 custodians yield fewer than 500 responsive documents, Plaintiffs must reimburse Defendants $18,000 for the cost of loading the additional data from those 28 e-mail custodians.

November 20, 2015

Indiana Trademark Litigation: Texas A&M Sues the Indianapolis Colts Over Use of “12th Man” Mark

By Overhauser Law Offices, LLC

Houston, Texas – Via its trademark attorneys, Plaintiff Texas A&M University of College Station, Texas filed a trademark lawsuit in the Southern District of Texas alleging that the Indianapolis Colts, Inc. infringed its intellectual property rights in the “12TH MAN” mark, Trademark Registration Nos. 1,612,053; 1,948,306; and 3,354,769, which were issued by the U.S. Patent and Trademark Office. Also alleged were federal unfair competition and false designation of origin as well as unfair competition and trademark dilution under Texas state law.

Texas A&M asserts that, as early as 1922, it has used the trademark 12TH MAN in connection with sporting events and numerous products and services. It contends that the 12TH MAN mark identifies and distinguishes Texas A&M in connection with all of its athletic entertainment services and events. Texas A&M also licenses the mark, including having granted a license to Football Northwest, LLC for use by the Seattle Seahawks professional football team.

Plaintiff contends that the Indianapolis Costs first used 12TH MAN trademark inside of its stadium around 2006. In response to this use, Plaintiff indicates that it sent a cease and desist letter to Defendant, which appeared to result in a resolution of the matter. Texas A&M states that it again became aware of use of the 12TH MAN mark by the Indianapolis Colts in 2012, which again resulted in a cease and desist letter sent to Defendant.

According to the complaint, Texas A&M most recently became aware of use of the 12TH MAN mark by the Indianapolis Colts in July 2015, when Defendant e-mailed a solicitation including the mark to an individual in Texas A&M’s home town of College Station, Texas. Plaintiff claims that this use of the 12TH MAN mark is one of multiple current uses of the trademark by the Indianapolis Colts.

In the complaint, filed by trademark lawyers for Texas A&M, the following claims are listed:

• Count I: Trademark Infringement Under 15 U.S.C. §1114 et seq.
• Count II: Unfair Competition, False Designation and Infringement Under 15 U.S.C. §1125(a)
• Count III: Texas Trademark Dilution

• Count IV: Common Law Unfair Competition

Texas A&M seeks injunctive relief, attorneys’ fees and costs.

November 19, 2015

Indiana Patent Law: Bifurcation of Patent Infringement Trial Held to be Unwarranted

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Magistrate Judge Mark Dinsmore of the Southern District of Indiana denied a motion to bifurcate the patent infringement trial in ongoing litigation styled Knauf Insulation, LLC et al. v. Johns Manville Corp. et al.

This Indiana patent litigation began in January 2015 when Knauf Insulation, LLC, Knauf Insulation GmbH, and Knauf Insulation SPRL (“Plaintiffs”) sued Johns Manville Corporation and Johns Manville, Inc. (“Defendants”). Plaintiffs contended that Defendants had infringed U.S. Patents Nos. 8,114,210; 8,940,089; D631,670; 9,039,827 and 9,040,652 (“the ‘652 patent”).

Patent attorneys for Denver-based Defendants asked the court to bifurcate the trial, asking it to hear the claims of patent infringement of the ‘652 patent separately from the infringement claims regarding the other patents. Defendants supported its motion for bifurcation by asserting that the ‘652 patent is made from binding chemistry different from the other patents and that this difference might confuse the jury.

Whether or not to bifurcate a trial is within the discretion of the trial court, subject to certain conditions: (1) the bifurcation should avoid prejudice to a party or promote judicial economy; (2) the bifurcation should not unfairly prejudice the non-moving party; and (3) the bifurcation must not be granted if doing so would violate the Seventh Amendment.

The court noted that the burden of establishing that bifurcation is appropriate rests on the party seeking it and that “bifurcation remains the exception, not the rule.” It held that Defendants had failed to meet that burden. Instead, the difference in binder chemistry by itself did not outweigh the benefits of a single trial during which the finder of fact could evaluate the “many common facts” relating to all of the patents-in-suit.

The court finally noted that, even if bifurcation might at some point be appropriate, it was too early in the litigation for it to be ordered. The parties were advised that the court would review a motion for bifurcation, should a party choose to submit one, when the matter was closer to trial.