Breach of Contract

July 23, 2015

Indiana Trade Secret Litigation: Angie’s List Alleges Theft of Trade Secrets by Amazon Local and Employees

Indianapolis, Indiana – Indiana intellectual property lawyers for Angie’s List Inc. of Indianapolis, Indiana sued in the Southern District of Indiana alleging theft of trade secrets. The Defendants in this litigation are AmazonLocal LLC of Seattle, Washington, Michael Albo, Kristin Baker, Dan Beary, Colton Bozigian, Jake Connerton, Adam DiVincenzo, Brandon Goodwyn, Kristen Haught, Justin Hillman, Amit Jain, Joshua Keezer, Olivia Landergan, Daniel Malamud, Raissa Masket, Samantha McDonald, Jason Patrao, Sharon Porter, Darren Reinstein, Billy Restrepo, Michael Shmunis, and Jacquelyn Vail.

In its 42-page complaint, Angie’s List alleges that competing business Amazon Local

and some of its employees misappropriated proprietary information belonging to Angie’s List by fraudulently obtaining membership accounts and, using this members-only access, obtained and misused proprietary information about thousands of service providers about which Angie’s List had gathered data.

July 20, 2015

Indiana Trademark Litigation: Trademark Infringement Litigation to Proceed in Federal Court

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana state court complaint filed by Indiana trademark attorneys for 7E Fit Spa Licensing Group LLC, 7E Holdings 1 LLC, and 7E LLC was removed to the Indianapolis Division of the Southern District of Indiana upon the request of trademark lawyers for Defendants 7EFS of Highlands Ranch, LLC, Spectrum Medspa, Gordon Smith and Jane Smith.

Plaintiffs contend that they entered into various agreements with Defendants, including licensing and operating agreements, and that Defendants breached portions of one or more of the agreements in the operation of Defendants’ Littleton, Colorado business establishment.

Defendants are accused of violating the Lanham Act – 15 U.S.C. § 1114(a), 15 U.S.C. § 1125(a) and 15 U.S.C. § l 125(c) – as well as common law trademark infringement, unfair competition, breach of contract, tortious interference, breach of fiduciary duties and conversion.

June 29, 2015

Seventh Circuit Trademark Law: District Court Has Discretion Regarding Award of Attorneys’ Fees Under Lanham Act

By Overhauser Law Offices, LLC

Chicago, Illinois – The Seventh Circuit affirmed the denial of attorneys’ fees under the Lanham Act by the District Court for the Southern District of Illinois.

Plaintiff William Burford and Defendant Accounting Practice Sales, Inc. (“APS”) were parties to a contract under which Burford had agreed to market and facilitate the purchase and sale of accounting practices on behalf of APS. APS terminated the contract. Shortly thereafter, Burford started a competing business. For this business, Burford chose the name “American Accounting Practice Sales.” Burford also sued APS and Gary Holmes, the owner of APS, for breach of contract.

In response to Burford’s contract-claims lawsuit, APS filed a four-count counterclaim. Included in those counterclaims was an allegation that Burford had misappropriated APS’s trade name in violation of the Lanham Act, 15 U.S.C. § 1051 et seq. by using the business name “American Accounting Practice Sales.”

The district court held for APS on the contract claim, reasoning that the contract between the parties was of indefinite duration and was therefore terminable at will. After this ruling in favor of APS, but before the district court could consider the counterclaim, APS voluntarily dismissed its counterclaim under the Lanham Act with prejudice.

Burford then contended that, as the prevailing party on the Lanham Act claim, he was entitled to attorneys’ fees under 15 U.S.C. § 1117(a), asserting that APS’s pursuit of the Lanham Act claim was meritless and amounted to an abuse of process. The district court refused to grant attorneys’ fees on the theory that APS’s claim under the Lanham Act claim could have been pursued by a rational party seeking to protect its trademark.

Burford appealed. As part of his appeal, he asked the Seventh Circuit to reverse the district court’s denial of his request for attorneys’ fees under the Lanham Act. Circuit Judges William J. Bauer and David F. Hamilton, and District Court Judge Sara L. Ellis, sitting by designation, heard the matter.

The Seventh Circuit first held that the district court had erred in holding that the contract had not been breached. While indefinite-term contracts are by default terminable at will, it noted that the parties had contracted around that general rule by providing that APS could terminate the contract only if Burford violated the terms of the contract. On this issue, the Seventh Circuit reversed the district court.

On the question of attorneys’ fees, the Seventh Circuit affirmed the district court. Under 15 U.S.C. § 1117(a)(3), district courts have the discretion to award attorneys’ fees to those prevailing under the Act in “exceptional cases.” Such an “exceptional case” within the meaning of the Lanham Act can be found in those cases where the district court determines that the decision to bring the claim could be called an abuse of process.

In turn, such an abuse of process can be discerned in cases where, for example, “a rational litigant would pursue [the claim] only because it would impose disproportionate costs on his opponent” or where there was evidence that the party advancing the Lanham Act claim had done so “to obtain an advantage unrelated to obtaining a favorable judgment.”

The Seventh Circuit noted that Burford had failed to persuade the district court that the pursuit of the claim was objectively unreasonable or was intended to harass or to obtain an advantage unrelated to winning a favorable judgment. Consequently, because decision whether to award attorneys’ fees under the Lanham Act is left to the district court’s sound discretion, the lower court’s refusal to grant such fees was affirmed.

May 20, 2015

Indiana Trademark Litigation: Integrity Trade Services Sues Ex-Employees Alleging Conspiracy and Conversion

By Overhauser Law Offices, LLC

South Bend, Indiana – Trademark attorneys for Integrity Trade Services, Inc. (“ITS”) of Frankfort, Illinois filed an intellectual property complaint in the Northern District of Indiana naming as Defendants Integrity Employment Partners, LLC, Integrity Trade Services, LLC, Janice Hernandez, James Hernandez, Michaela Williams, and Jason Reis, all of Indiana, and alleging multiple claims, including trademark infringement, conversion of ITS trade secrets, breach of contract, and tortious interference with business relationships.

ITS is a national staffing services company, doing businesses in multiple states, including Indiana, Florida, Illinois, and Texas. ITS is wholly owned by John E. Cumbee, III. In 2008, ITS acquired all of the operational assets of the Knox, Indiana branch of a staffing company owned by CES America, Inc. ITS also hired most, if not all, of the CES employees then working at the Knox facility, including defendants James and Janice Hernandez.

ITS contends that, since purchasing the Knox facility, it has invested well over $1 million to build the Knox business and the ITS brand as it is related to that facility. It asserts in this federal lawsuit, inter alia, that Defendants conspired to convert ITS’ customers, employees and trade secrets for their own use.

The accused in this case are husband and wife Janice Hernandez and James Hernandez; several family members of Janice Hernandez, including Michaela Williams, and Jason Reis; and two entities apparently owned by the Hernandezes, Integrity Employment Partners, LLC, Integrity Trade Services, LLC.

Defendant James Hernandez (“James”) worked for ITS from the time that ITS acquired the business until April 30, 2015 when he was fired. ITS asserts that James engaged in a conspiracy to solicit away and convert (a) ITS’ office employees at the Knox location, (b) at least the active ITS field employees servicing the Knox location, and (c) customers comprising the Knox-area business. He is accused of attempting to transfer them to Integrity Employment Partners, LLC, an Indiana limited liability company formed to process the Knox business converted from ITS for his benefit and the benefit of the other co-conspirators.

Defendant Janice Hernandez (“Janice”), also became employed by ITS when ITS was acquired from its prior owner. She has been accused of not only being an integral part of the alleged conspiracy but also of being “likely its “‘mastermind.'” Defendant Michaela Williams is Janice’s daughter. Defendant Jason Reis is the ex-son-in-law of James and Janice, having been married to another of Janice’s daughters.

ITS states that, in the last two weeks in April 2015, it discovered various anomalies in the Knox business. These anomalies alerted ITS to the activities that triggered this federal lawsuit. They included a drop off in weekly gross sales, the formation of Integrity Employment Partners, LLC (“IEP”), and checks issued by existing ITS customers made payable to IEP (and not ITS).

Defendants are accused of orchestrating a scheme to confuse ITS’ customers and employees regarding with which staffing businesses using the name “Integrity” – Plaintiff’s firm or Defendants’ firms – those customers and employees were transacting business. In doing so, ITS contends, Defendants attempted with some success to convert ITS’ business assets and relationships for Defendants’ benefit. Allegations of criminal conduct by Defendants were also made. In a 48-page complaint, filed by trademark lawyers for Plaintiff, those claims and others are made:

• Count I: Federal Trademark Infringement
• Count II: Federal Unfair Competition
• Count III: Illinois Deceptive Trade Practices Act
• Count IV: Breach of Fiduciary Duty
• Count V: Breach of Agreement
• Count VI: Tortious Interference with Contract
• Count VII: Tortious Interference with Business Relationships
• Count VIII: Conversion
• Count IX: Computer Fraud and Abuse Act
• Count X: Uniform Trade Secrets Act
• Count XI: Civil Conspiracy
• Count XII: Unjust Enrichment

• Count XIII: Breach of Contract

Plaintiff asks the court for, inter alia, injunctive relief, compensatory damages, punitive damages, attorneys’ fees, interest and costs.

April 16, 2015

Indiana Trade Secret Law: Think Tank’s Information Was Not a Trade Secret as a Matter of Law

By Overhauser Law Offices, LLC

Indianapolis, Indiana – The Court of Appeals of Indiana affirmed the directed verdict of Special Judge William E. Alexa of Porter Superior Court. Writing for the Indiana appellate court, Judge John Baker concluded that the trial court had not erred in ruling that Defendants’ information was insufficiently private to constitute trade secrets.

Appellant-Plaintiff Think Tank Software Development Corporation, d/b/a Think Tank Networking Technologies Group and Think Tank Information Systems (“Think Tank”) is engaged in computer-related business activities, including systems and network engineering, problem solving, systems design, implementation, sales, client training, and computer maintenance. During 2001 and 2002, multiple employees left Think Tank and joined its competitor, Chester, Inc.

In 2002, Think Tank sued Chester as well as former Think Tank employees Mike Heinhold, John Mario, Joel Parker, Thomas Guelinas, Jon Meyer, Daniel Curry, Eric M. Wojciechoswki, Michael Gee, Philip Ryan Turner and Carl Zuhl alleging: 1) breach of the covenant not to compete, 2) breach of the confidentiality clause, 3) breach of the agreement not to solicit its employees for other work, 3) tortious interference with contracts, 4) misappropriation of trade secrets, 5) tortious interference with business relationships, 6) unjust enrichment, and 7) defamation. Think Tank also included a claim for unfair competition against Chester.

After much litigation, including two prior appeals to the Indiana Court of Appeals, this Indiana trade secret lawsuit was again heard by the trial court on the remaining claims: misappropriation of trade secrets, tortious interference with contracts, and breach of the covenant not to compete and confidentiality provisions.

The most interesting of the claims in this lawsuit is Think Tank’s assertion of misappropriation of trade secrets. Defendants moved for a directed verdict on that count, as well as all other claims against them. The trial court granted the directed verdict on Think Tank’s claim for misappropriation of trade secrets, reasoning that, “[it] is a question of law for the Court relative to what is and what is not a trade secret. Plaintiff has failed to show that the information obtained was ever, in law, a trade secret.”

Shortly after this ruling, Think Tank sought review a third time from the Indiana Court of Appeals. It claimed that its trade secrets included: 1) the nature and design of its technical solutions; 2) the design of its customers’ computer systems; 3) pricing; and 4) customer identities. Think Tank further argued that the trial court could not determine as a matter of law whether information was a trade secret under Indiana Code section 24-2-3-2, which defines a trade secret as:

information, including a formula, pattern, compilation, program, device, method, technique, or process, that:

(1) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and

(2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

The Indiana appellate court declined to address Think Tank’s argument whether a trial court could determine as a matter of law whether information was a trade secret under Indiana law. However, it concluded that Think Tank had failed in its burden to avoid the directed verdict: “as a matter of law, Think Tank failed to produce enough evidence to allow a reasonable fact finder to determine that the proffered information was trade secrets.” Specifically, it found that Think Tank failed to show that any of the information alleged to be trade secrets was not generally known to or ascertainable by the public.

The appellate court agreed with the Indiana trial court that: 1) the computer certifications and intellectual capital that Think Tank possessed was readily available information; 2) knowledge of customers’ computer systems and current or future needs was readily ascertainable, as such information belonged to the customers in question; and 3) pricing information did not constitute a trade secret, as it too was readily available from the customers. Thus, the information was not a trade secret.

The Indiana appellate court continued that Think Tank appeared not to be trying to protect its trade secrets, but instead to prevent competition. Such a goal, the court said, might be effectuated by a non-competition agreement. However, the use of Indiana legislation designed to protect trade secrets could not properly be stretched to hinder the use of information that appeared to be generally known or readily obtained from another source.

April 13, 2015

Indiana Copyright Litigation: Court Grants Plaintiff’s Motion to Dismiss Copyright Lawsuit

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Indiana copyright attorneys for Redwall Live Corporation (“Redwall”) of Indianapolis, Indiana asked the Southern District of Indiana to dismiss Redwall’s own copyright litigation. Redwall’s complaint alleged that ESG Security, Inc. (“ESG”), also of Indianapolis, Indiana, infringed the logo that Redwall had designed for ESG. That logo has been registered by the U.S. Copyright Office. The court dismissed the complaint in its entirety. Redwall will be permitted to refile the non-copyright counts in Indiana state court but the copyright count was dismissed with prejudice.

Redwall is a consulting and design-services firm engaged in the business of strategic branding and advertising. Its services include developing a clear message and a unique visual image as well as developing brand value for its clients.

In its 2013 complaint against ESG, Redwall stated that it had been hired by ESG to reinvent ESG’s brand. As part of this project, it created a new logo design for ESG, which was copyrighted under Registration No. VA 1-874-872. Redwall asserted that ESG had failed to pay Redwall in full for the work done and that ESG nonetheless had continued to use Redwall’s copyrighted logo on a variety of items. Indiana copyright lawyers for Redwall sued for copyright infringement under federal law, as well as breach of contract and unjust enrichment under Indiana state law.

Redwall later decided that pursuing the copyright portion of the claim was not worth the expense. As the Judge Sarah Evans Barker put it, they concluded that “the game is not worth the candle.” Copyright attorneys for Redwall asked the court to dismiss the copyright complaint without prejudice. Attorneys for ESG asked the court instead to dismiss Redwall’s copyright claim with prejudice.

In evaluating Redwall’s motion to dismiss, the court cited its discretion to attach conditions to the dismissal of a lawsuit – “the quid for the quo of allowing the plaintiff to dismiss his suit without being prevented by the doctrine of res judicata from bringing the same suit again.” The court noted that Redwall seemed to have added a less-than-robust copyright claim as leverage to obtain its true goal of payment under its contract with ESG. Judge Barker concluded that to allow Redwall to withdraw that copyright claim without any res judicata consequences would reward that gamesmanship. The court determined that, as a proper exercise of its discretion, it would dismiss Redwall’s copyright claim with prejudice but permit Redwall’s remaining state-law claims to be refiled in state court.

Practice Tip: Filing a copyright lawsuit can be perilous, as the plaintiff may later be unable to dismiss that litigation without incurring liability for the defendant’s attorney fees. As the Seventh Circuit held in Riviera Distribs., Inc. v. Jones, a voluntary dismissal of a copyright claim by the plaintiff – if that claim is dismissed with prejudice – is sufficient to trigger the duty of the plaintiff to pay the attorney’s fees incurred defending against the allegations of copyright infringement: “[Defendant] Midwest obtained a favorable judgment. That this came about when [Plaintiff] Riviera threw in the towel does not make Midwest less the victor than it would have been had the judge granted summary judgment or a jury returned a verdict in its favor. Riviera sued; Midwest won; no more is required.” Similarly here, ESG qualifies as a “prevailing party” under the Copyright Act and is thus presumptively entitled to attorneys’ fees for the litigation of that claim under 17 U.S.C. § 505.

April 9, 2015

Indiana Trademark Lawsuit: Bekins Sues Licensee of “Bekins” Trademark

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana trademark lawyer for Wheaton Van Lines, Inc. and Bekins Van Lines, Inc., both of Indianapolis, Indiana (collectively, “Bekins”), filed a trademark-infringement lawsuit in the Southern District of Indiana alleging that Faulk-Collier Moving & Storage, LLC and David Vaughn, both of Louisiana, infringed the trademark BEKINS®, which has been registered by the U.S. Trademark Office as Trademark Registration No. 2427605.

Faulk-Collier, a moving-and-storage company in business since 1932, has been sued by Bekins for both trademark infringement and breach of contract. Bekins, which was founded in 1891, contends that it has made extensive use of the Bekins trademark, which it asserts has become both incontestable and famous. Bekins’ uses, it states, include inclusion in all of Bekins’ advertising materials, as well as being emblazoned on the side of all of the trucks, vans and trailers operating under Bekins’ authority for over ten years. Bekins has also sued Vaughn for more than $73,000, alleging that he personally guaranteed payment to Bekins.

In its Indiana trademark complaint, Bekins states that, in February 2014, it entered into an agreement with Faulk-Collier under which Faulk-Collier would serve as an interstate household agent for Bekins. Bekins further claims that, due to uncured breaches of that agreement by Faulk-Collier, Bekins terminated the arrangement in October 2014. After terminating the agreement, Bekins advised Defendants that they must cease all use of logos and trademarks owned by Bekins, including the removal of the Bekins trademark from all advertising, trucks, equipment, websites, and similar.

Nonetheless, contends Bekins, Faulk-Collier has continued to advertise moving services under the name “Bekins.” The accused uses include advertising on social media as well as operating numerous pieces of equipment in interstate commerce which bear one or more trademarks owned by Bekins. Bekins states that these uses by Faulk-Collier are unauthorized.

This federal lawsuit followed. In its complaint, filed by an Indiana trademark attorney, Bekins asserts the following:

• Count I – Breach of Contract
• Count II – Account Stated
• Count III – Federal Trademark Infringement

• Count IV – Federal and State Unfair Competition/Trademark Dilution

Bekins asks the court to enter preliminary and permanent injunctions; award Bekins monetary damages, statutory and otherwise, and punitive damages; and order Defendants to pay Bekins’ attorneys’ fees and costs.

March 27, 2015

Indiana Trade Secret Litigation: Precision Drone Sues Channel Masters for Misappropriating Trade Secrets

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Indiana intellectual property lawyers for Precision Drone, LLC of Hamilton County, Indiana (“Precision”) commenced trade secret litigation in Hamilton County Superior Court alleging that Channel Masters, LLC of Wisconsin (“Channel”) breached its contract with Precision by improperly misappropriating and revealing trade secrets belonging to Precision.

Precision designs, engineers, manufactures and sells drones for use by farmers to monitor crops. It also develops and sells related software. Defendant Channel connects companies offering products to dealers of those products.

According to the complaint, in September 2014, Precision engaged Channel to sell the PaceSetter™ Drone to dealers of such products. To assist in Channel’s sales efforts, Precision provided Channel with equipment and training, some of which Precision contends is protected by Indiana trade secret law. As part of the sales agreement that the parties entered into, Precision states that Channel was prohibited from disclosing any of Precision’s confidential information without written authorization. The agreement also prohibited Channel from adversely interfering with Precision’s customers and prospective customers.

Plaintiff Precision alleges that, while Channel was working for Precision, it was also promoting and selling crop-imaging drones offered by AgriImage, a company that competes with Precision. Plaintiff also contends that Channel used Plaintiff’s images and training manual to demonstrate the competing AgriImage drones.

Precision claims copyright protection for the website that it uses to promote and advertise its products, as well as contending that at least one of its images was improperly displayed at a trade show by Channel, but the complaint listed no overt assertion of copyright infringement. The complaint, filed by Indiana intellectual property attorneys for Precision, instead alleges the following:

• Count I: Breach of Contract

• Count II: Misappropriation of Trade Secrets

Precision seeks judgment in its favor including damages, attorneys’ fees and costs.

Indiana copyright lawyers for Channel have removed the case to the Southern District of Indiana, arguing that such a removal is proper based both on federal question jurisdiction and diversity of citizenship.

February 27, 2015

Copyright Law: Federal Circuit Upholds $540,000 in Royalties for USPS Copyright Infringement

By Overhauser Law Offices, LLC

Washington, D.C. – The United States Court of Appeals for the Federal Circuit affirmed a royalty award in Gaylord v. United States for copyright infringement committed by the United States Postal Service.

Frank Gaylord, a World War II veteran and renowned sculptor, created The Column, consisting of nineteen stainless steel statues depicting a squad of soldiers on patrol. This work, completed and dedicated in 1995, formed a central part of the Korean War Veterans Memorial located on the National Mall in Washington, D.C. For his efforts in creating the work, Gaylord was paid $775,000.

Shortly after the completion of the work, an amateur photographer named John Alli visited the Memorial during a heavy snowstorm and photographed The Column. In 2002, the United States Postal Service decided to issue a stamp to commemorate the upcoming fiftieth anniversary of the Korean War armistice. It settled on Alli’s photo of The Column for the stamp face and paid Alli a one-time fee for the right to use his photo. The Postal Service made no payment to Gaylord.

Gaylord sued for copyright infringement. The United States Court of Federal Claims acted as the trial court in the litigation. Twice prior to the instant appeal, an appeal was made to the Federal Circuit, first in 2010 and again in 2012. In Gaylord I, the Federal Circuit held that the government was liable to Gaylord for copyright infringement. Upon remand, the Court of Federal Claims awarded Gaylord a total of $5,000 to compensate for the infringement of his copyright. This award was vacated by the Federal Circuit in Gaylord II and the lawsuit remanded with instructions to “determine the fair market value of a license for Mr. Gaylord’s work based on a hypothetical negotiation with the government.”

Upon remand, the trial court split the calculations of damages for the infringement into three categories: (1) stamps used to send mail; (2) commercial merchandise featuring an image of the stamp; and (3) unused stamps purchased by collectors. The parties agreed that no damages would be paid for stamps used to send mail and that a royalty of 10% of revenues would be appropriate for commercial merchandise featuring the copyrighted work.

The only disputed issue was the appropriate measure of copyright infringement damages for the stamps purchased by collectors. The lower court determined that the Postal Service received $5.4 million in revenue, which was deemed “almost pure profit,” from these sales. It then found that an appropriate copyright royalty would be 10%, or $540,000.

At issue in this latest appeal, Gaylord III, is whether this royalty was appropriate. The Federal Circuit applied the “hypothetical negotiation” analysis in reviewing the Court of Federal Claims’ award to Gaylord, stating that “actual damages for copyright infringement may be based on a reasonable royalty representing the fair market value of a license covering the defendant’s use.” Determining that “fair market value,” in turn could be done employing a valuation tool used in the context of patent infringement litigation: a hypothetical negotiation that would determine “the reasonable license fee on which a willing buyer and a willing seller would have agreed for the use taken by the infringer.”

The Federal Circuit held that the lower court neither committed clear error nor abused its discretion in arriving at a 10% royalty rate affirmed the award of $540,000.

February 26, 2015

Copyright Litigation: Nike Sued for Infringement of Michael Jordan Photo – 1

By Overhauser Law Offices, LLC

Portland, Oregon – Copyright attorneys for Jacobus Rentmeester of Westhampton Beach, New York sued for copyright infringement in the District Court of Oregon, Portland Division alleging that Nike, Inc. of Beaverton, Oregon infringed Rentmeester’s copyrighted photo of Michael Jordan. This photo, Registration Number VA0001937374, has been registered with the U.S. Copyright Office.

Rentmeester, a New York photographer, commenced this litigation against Nike for Nike’s use of the iconic “Jumpman” photo in promoting its Jordan brand. In the lawsuit, Plaintiff Rentmeester contends that Nike directly, contributorily, and vicariously infringed his copyrighted image of Michael Jordan.

Rentmeester claims that he created the “Jordan Photo” for inclusion in a 1984 Olympic edition of Life Magazine, as part of a photo essay that he produced for the magazine. Among the athletes featured in Rentmeester’s photo essay, in addition to Jordan, were Carl Lewis and Greg Louganis.

At issue in this litigation is Rentmeester’s Jordan Photo. Rentmeester contends that he “conceived the central creative elements of the photograph.” These elements included portraying Jordan alone against the sky, “soar[ing] elegantly” and in a modified version of a grand jeté, a ballet jump during in which the person performs the splits in midair. According to the complaint, this type of jump was not typical for Jordan.

Rentmeester states that, after his photo was published, he agreed to accept a fee of $150 from Nike for temporary use of the photo for a “slide presentation only, no layouts or any other duplication.”

Nike later paid Rentmeester $15,000 for a limited license to use a modified work, although Plaintiff states that this agreement was reached only after Nike had already begun infringing use of the work and Rentmeester had complained to Nike of copyright infringement. Rentmeester contends that this license was limited to two years of use, on posters and billboards only, and for use within North America only. Rentmeester alleges that Nike exceeded the terms of that limited license by using the modified image other than on posters or billboards as well as outside North America. He also asserts that Nike’s use of the Jordan Photo constitutes willful copyright infringement as of the expiration of the license in 1987.

In the complaint, filed by copyright lawyers for Plaintiff, the following counts are enumerated:

• First Cause of Action: Copyright Infringement

• Second Cause of Action: Vicarious Copyright Infringement

• Third Cause of Action: Contributory Copyright Infringement

• Fourth Cause of Action: Violations of the Digital Millennium Copyright Act

Rentmeester, via his copyright attorneys, asks the court for a judgment of infringement; for an injunction; for impoundment of all infringing works; for actual and statutory damages, including profits attributable to infringement of Rentmeester’s copyright; for punitive damages; for a finding that neither Nike nor any independent infringers can assert copyright protection in any of the infringing works; and for costs and attorneys’ fees.