Civil Procedure

August 11, 2015

Indiana Copyright Litigation: Sovereign Immunity May Take a Toll on Bell’s Latest Copyright Lawsuit

Indianapolis, Indiana – Richard N. Bell of McCordsville, Indiana, who is both an Indiana copyright attorney and a professional photographer, filed a lawsuit alleging copyright infringement in the Southern District of Indiana. Bell claims that Indiana Procurement Technical Assistance Center of Indianapolis, Indiana infringed his copyrighted “Indianapolis Skyline” photo, U.S. Copyright Registration No. VA0001785115, which has been registered with the U.S. Copyright Office.

In 2000, Plaintiff Bell photographed the downtown Indianapolis skyline. Indiana Procurement Technical Assistance Center, a governmental unit of the state of Indiana, is accused of creating “a website to promote and advertise its own business” and displaying Bell’s copyrighted photo on that website. Bell further claims that this government entity “willfully and recklessly falsely claimed that it owned the copyrights of all images and photos” contained on its website, http://www.indianaptac.com/, including Bell’s photo of Indianapolis.

In this single-defendant lawsuit, Bell contends that “as a direct and proximate result of their wrongful conduct, Defendants have [sic] realized and continue to realize profits and other benefits rightfully belonging to Plaintiff.” The acts in question are alleged to have been committed willfully and deliberately and with oppression, fraud, and malice.

In this federal complaint, which copyright lawyer Bell filed on his own behalf, counts of copyright infringement and unfair competition are asserted. Bell asks for an accounting of all “gains, profits and advantages derived by Defendants [sic]” as a result of the alleged infringement and for statutory and/or actual damages. He also seeks reimbursement of costs and reasonable attorneys’ fees.

Practice Tip #1:

Bell will have to contend with the doctrine of sovereign immunity as an initial hurdle to proceeding with this copyright litigation. Sovereign immunity, as a general rule, bars lawsuits such as this one against states. Sovereign immunity may be waived by a state for a particular type of lawsuit. The federal government may also abrogate states’ sovereign immunity with respect to certain types of claims.

In 1990, Congress passed the Copyright Remedy Clarification Act. Under 17 U.S.C. § 511(a), “[a]ny State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity, shall not be immune, under the… doctrine of sovereign immunity, from suit in Federal court…for a violation of any of the exclusive rights of a copyright owner….”

On the surface, this language appears to constitute an abrogation of states’ sovereign immunity regarding copyright infringement. However, the U.S. Supreme Court has held that “Congress may not abrogate state sovereign immunity pursuant to its Article I powers.” Florida Prepaid Postsecondary Educ. Expense Bd. v. College Sav. Bank, 527 U.S 627, 636 (1999).

However, it appears that the Copyright Remedy Clarification Act has attempted to do just that. According to at least one recent decision out of a federal district court in Lexington, Kentucky, Article I is indeed what Congress relied upon to authorize the passage of the Act purporting to abrogate states’ rights with respect to copyright infringement lawsuits. This, the court held, rendered the attempted abrogation invalid. That litigation was consequently dismissed by the court as barred by the doctrine of sovereign immunity.

Practice Tip #2: Richard Bell has sued hundreds of defendants for copyright infringement in Indiana’s federal courts. Previous blog posts regarding his litigation include:

• Appellate Court Dismisses Copyright Appeal as Premature
• Bell Rings in the Holiday Weekend with a New Copyright Lawsuit
• Bell Files New Copyright Infringement Lawsuit
• Bell Sues Georgia-Base FindTicketsFast.com for Copyright Infringement
• Richard Bell Files Two New Copyright Infringement Lawsuits
• Court Prevents Copyright Plaintiff Bell from Outmaneuvering Legal System; Orders Bell to Pay Almost $34,000 in Fees and Costs
• Three Default Judgments of $2,500 Ordered for Copyright Infringement
• Court Orders Severance of Misjoined Copyright Infringement Complaint

• Richard Bell Files Another Copyright Infringement Lawsuit

July 28, 2015

Supreme Court Keeps Brulotte – Post-Expiration Patent Royalties are Still Unlawful Per Se

By Overhauser Law Offices, LLC

Washington, D.C. – The U.S. Supreme Court recently decided a patent-royalty lawsuit, Kimble v. Marvel Entertainment, LLC. The Court, divided 6-3, ruled against Kimble.

Stephen Kimble sued Marvel in 1997 for infringing his patent, U. S. Patent No. 5,072,856,

with its “Web Blaster,” a toy that allowed users to mimic Spider-Man’s web-slinging superpower. The litigation ended with a settlement wherein Marvel purchased Kimble’s patent for a lump sum and agreed to pay a 3% perpetual royalty on future sales.

April 28, 2015

Indiana Copyright Litigation: Magistrate Rejects Malibu Media’s Request for Fees and Sanctions

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Magistrate Judge Mark J. Dinsmore recommended that Judge William T. Lawrence deny Malibu Media’s motion for fees and sanctions against two Defendants and copyright lawyer Jonathan Phillips.

This Indiana federal lawsuit involves allegations of the use of BitTorrent to illegally download copyrighted adult films. Plaintiff Malibu Media, LLC of Malibu, California initiated copyright litigation in the Southern District of Indiana alleging that Charles and Kelley Tashiro, husband and wife, violated its intellectual property rights by downloading copyrighted videos without authorization.

On the morning of a scheduled evidentiary hearing in the matter, attorney Phillips, who at the time represented both husband and wife, learned of Mr. Tashiro’s intent to invoke his Fifth Amendment rights to avoid testifying about certain matters. The defense attorney for the Tashiros advised the court that, as a result, a conflict of interest between husband and wife had arisen and that he would be withdrawing as the defense attorney for Mr. Tashiro. As a result, the court postponed that day’s hearing.

Malibu Media subsequently filed a motion asking the court for sanctions, seeking to hold Mr. Tashiro and his copyright attorney jointly and severally liable for the costs and fees incurred in its preparations for the postponed hearing. Malibu Media contended that the defense lawyer’s failure to recognize the conflict of interest between the two Defendants in a timely manner had required Malibu Media to incur unnecessary expenses for the evidentiary hearing. More specifically, Malibu Media contended that it incurred several thousand dollars in unnecessary fees, travel expenses, and other costs. It sought to recover those fees, expenses, and costs 1) under Federal Rule of Civil Procedure 37; 2) under 28 U.S.C. § 1927; 3) through an exercise of the court’s inherent authority; and 4) under Federal Rule of Civil Procedure 16.

Magistrate Judge Dinsmore first concluded that FRCP 37 was inapplicable, as it was generally appropriate for “disputes or misconduct during discovery” and the delay of the evidentiary hearing had not resulted from discovery misconduct.

Plaintiff’s claim under 28 U.S.C. § 1927 was also rejected. That section provides that the court may order costs, expenses, and attorneys’ fees incurred as a result of an attorney’s unreasonable or vexatious expansion of the proceedings in litigation.

Malibu Media asserted that this section applied because the copyright attorney’s failure to timely recognize a conflict of interest between the husband-and-wife Defendants failed to meet the standard of care required of attorneys. The court disagreed, stating that the case had involved no incompatibility of the copyright Defendants’ positions, as both had steadfastly asserted that neither had infringed any of Malibu Media’s copyrighted material and that no evidence had been destroyed. Consequently, the defense attorney’s belief that he could provide concurrent representation to both Defendants was neither unreasonable nor vexatious and, thus, relief under 28 U.S.C. § 1927 was unavailable.

Moreover, the court explained, even had § 1927 applied, it provided recompense only for the excess costs and fees incurred – those that would not have been otherwise necessary. Because much of the material prepared by intellectual property counsel for Malibu Media would likely prove useful later in the litigation, those costs and fees had not been incurred unnecessarily.

Magistrate Judge Dinsmore also rejected Malibu Media’s argument that the court should sanction Mr. Tashiro and the defense attorney under the inherent authority that the court holds to manage its affairs through the sanctioning of a party that has abused the judicial process. The court had already determined during its analysis under § 1927 that the defense attorney had acted neither unreasonably nor vexatiously. Thus, a sanction against the defense attorney for abuse of process was similarly found to be improper. The court also declined to hold that Mr. Tashiro’s decision to invoke his Fifth Amendment rights was an abuse of judicial process.

The court then addressed Malibu Media’s contention that Federal Rule of Civil Procedure 16 authorized sanctions in this case. It concluded that, as the rule authorized the imposition of sanctions only in matters regarding scheduling conferences or other pre-trial conferences, it did not apply to the evidentiary hearing at issue in this request for sanctions.

Finally, Magistrate Judge Dinsmore recommended to Judge Lawrence that Malibu Media’s motion, which had been filed without the required statement showing that Plaintiff’s attorney made reasonable efforts to confer with opposing counsel prior to filing the motion for sanctions, be denied for failure to comply with Local Rule 7-1(g).

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.

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.

March 16, 2015

Indiana Trade Secret Law: Court Declines to Enter Protective Order Stipulated by Parties

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – In the matter of CCT Enterprises, LLC v. Kriss USA, Inc., trade secret lawyers for the parties agreed to a protective order and submitted it to the court pursuant to Federal Rule of Civil Procedure 26(c). United States Magistrate Judge Susan Collins of the Northern District of Indiana denied the parties’ request for a protective order, holding that the proposed order was overly broad and, thus, invalid.

Magistrate Judge Collins first noted that Rule 26(c) allows the court to enter a protective order for good cause shown. For material to be protected, it “must give the holder an economic advantage and threaten a competitive injury…business information whose release harms the holder only because the information is embarrassing or reveals weaknesses does not qualify for trade secret protection.”

In the parties’ proposed order, no categories of material were provided to restrict what discovery materials would be treated as confidential. Instead, it allowed either party “in good faith” to deem any discovery materials to be confidential. Magistrate Judge Collins held that this was overbroad and that a protective order must extend only to “properly demarcated categor[ies] of legitimately confidential information.” Moreover, a mere assertion of harm to a litigant’s competitive position would not suffice but rather “the motion must explain how.” Consequently, the court held that because a showing of good cause had not been made, the proposed protective order could not issue.

The court also noted that the proposed order provided that it would continue to be binding after the conclusion of the litigation, thus implying that the court would retain jurisdiction after the lawsuit had been resolved. The court refused to enter an order that would have such an effect. Instead, it suggested that the parties should agree contractually among themselves for the return of sensitive documents.

March 11, 2015

Indiana Intellectual Property Law: Patent Infringement Allegations of Pro Se Plaintiff Dismissed

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Judge Sarah Evans Barker of the Southern District of Indiana dismissed the patent infringement claims asserted in the amended complaint of pro se Plaintiff Dennis Lee Maxberry against ITT Technical Institute (“ITT”). Also included in Maxberry’s amended complaint were claims for copyright infringement, deprivation of disabled veterans’ benefits, sabotage of Maxberry’s bachelor’s degree, stalking, sabotage of Maxberry’s employment opportunities, RICO liability against ITT and the State of Wisconsin, malicious prosecution of intellectual property actions against Maxberry, violations of various executive orders relating to Maxberry’s service in the military, violations of the Higher Education Act, and violations of a number of Maxberry’s constitutional rights.

The parties in this patent infringement litigation are Defendant ITT, an Indiana-based for-profit higher education company, and Maxberry of West Allis, Wisconsin, who had previously been enrolled in an M.B.A. graduate course at ITT. In April 2014, Maxberry, acting as his own patent attorney, sued Defendant ITT alleging multiple harms, which the court summarized as follows:

It appears that Plaintiff accuses Defendant of stealing his federal student loan money, failing to award him grades for the classes that he completed, and applying money from his educational loans towards tuition payments even after he withdrew from school. Plaintiff also accuses Defendant of “being unconscious to the plaintiff by arbitrating the contract,” searching his person or property “without a warrant and without probable cause,” using excessive force upon him, failing to provide him with “needed medical care,” “false credit testimony, mayhem on property, defamation, false imcriminalization [sic], malicious prosecution, conspiracy, and/or any other claim that may be supported by the allegations of this complaint.” Plaintiff’s Complaint makes reference to 28 U.S.C. § 1983, 1985, and 1986, “Title IX, and Section 504 of the 1973 Rehabilitation Act,” the “False claim act,” and avers that “[t]he criminal proceeding by the defendants … [is] still pending,” but that Plaintiff “was innocent.”

The court dismissed Maxberry’s initial complaint on two grounds. First, Judge Barker noted that the Plaintiff was asking the Southern District of Indiana, a federal court, to review the rulings of a Wisconsin state court. Such a review, which would in effect place the Indiana federal court in the position of acting as a Wisconsin appellate court, was impermissible under the Rooker-Feldman doctrine. The court further found that the assertions in the complaint were “cast in such an incoherent and confusing manner that they must be dismissed under [Federal Rule of Civil Procedure 8(a)] based on Plaintiff’s failure to give Defendant (as well as the Court) fair notice of what they actually are.”

The court allowed Maxberry to file an amended complaint, which ITT moved to dismiss. In this complaint, Maxberry again made multiple claims, including five claims involving patent 8,632,592, for an “expandable vertebral body replacement device and method.” Maxberry asserted that this patent encompassed a cure for cancer, an automotive window-locking device, as well as a type of computer display equipment.

The court dismissed these “facially implausible” patent infringement claims with prejudice. Judge Barker noted that, not only was it wildly improbable that a single patent covered all of the asserted functions, but the records of the U.S. Patent and Trademark Office showed that the patent-in-suit was not registered to Maxberry.

The court also dismissed Maxberry’s other claims but granted him leave to reformulate those claims in a more understandable form and resubmit them.

February 19, 2015

Indiana Trademark Law: Court Strikes Response Brief Due to Untimely, Overlong Filing

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Judge Tanya Walton Pratt (pictured) of the Southern District of Indiana struck a response brief in the matter of Wine & Canvas Development, LLC. v. Theodore Weisser, Christopher Muylle, YN Canvas CA, LLC and Art Uncorked, noting that the brief was both late and longer than permitted.

In 2011, Wine & Canvas Development, LLC (“Wine & Canvas”) sued Muylle and others alleging the wrongful use of Wine and Canvas trademarks as well as the breach of non-competition agreements. Muylle counterclaimed against Wine and Canvas asserting abuse of process. In November 2014, after a four-day trial, the jury found for Muylle on all claims and awarded him $270,000.

After the conclusion of the trial, the Indiana trademark lawyer for Muylle petitioned the court for attorneys’ fees under § 1117(a) of the Lanham act, which provides that the court may award reasonable attorney fees to the prevailing party in “exceptional cases.” Muylle, via his trademark attorney, contended that this case was properly deemed exceptional as a result of the jury’s finding of abuse of process by Wine & Canvas. Muylle also noted that “the Court previously determined that ‘Wine & Canvas, Mr. Scott, [Ms. McCracken], and Mr. McCracken have flooded the Court with filings which has increased the work expended on the case and Wine & Canvas has filed numerous claims that the Court has found to be without merit.’ … And the Court has already sanctioned the Plaintiff not once but three times for failing to comply with discovery or court rules.” Muylle asked for $175,882.68 in attorneys’ fees.

Wine & Canvas asked for an extension of time to respond to this request, to January 15, 2015, which the court granted. Wine & Canvas subsequently requested an additional extension of time to file its response, specifically asking for a new deadline of January 19, 2015. The court granted this request, also.

Wine & Canvas filed its response brief on January 20, 2015. Muylle’s trademark attorney asked the court to strike that brief. The court noted that “[Wine & Canvas’] counsel’s repeated disregard for and supposed ignorance of the rules is no excuse, and an apology does not allow counsel to continue to disregard the rules and court orders” and admonished the trademark lawyer for Wine & Canvas for failing to meet his filing deadlines.

The court also noted that, in addition to the untimeliness of the filing, the 40-page brief was also overlong in violation of Local Rule 7-1(e)(1), which limits the length of response briefs to 35 pages.

Consequently, the court granted the motion to strike Wine & Canvas’ response brief. The court, however, also granted Wine & Canvas leave to file a belated response to Muylle’s petition for attorneys’ fees.

January 23, 2015

Indiana Copyright Law: Court Orders SVT to Provide Video to EEOC Despite Copyright Concerns

By Overhauser Law Offices, LLC

Hammond, Indiana – Magistrate Judge Paul R. Cherry of the Northern District of Indiana, Hammond Division, ordered SVT, LLC d/b/a Ultra Foods (“SVT”) to produce a copyrighted training video to the Equal Employment Opportunity Commission (“EEOC”) in ongoing gender-discrimination litigation.

In 2010, Tiffany Swagerty was rejected from a position as a night crew stocker at SVT’s Ultra Foods operation in Merrillville, Indiana. She complained to the EEOC contending that SVT’s hiring manager had told her that women that were not usually hired for night positions. The subsequent investigation by the EEOC corroborated Swagerty’s assertions. The EEOC later sued SVT for violations of Title VII seeking injunctive relief and, on behalf of Swagerty and other similarly rejected female applicants, monetary damages.

In this current opinion in the matter of Equal Employment Opportunity Commission v. SVT, LLC d/b/a Ultra Foods, the court ruled on several discovery disputes between the parties. Among those issues was whether SVT must produce to the EEOC copies of a copyrighted “stocking video” or whether, in order to obtain a copy, the EEOC must bear a portion of the cost of the materials.

Specifically, as part of its discovery requests, the EEOC asked SVT to provide “all documents containing job descriptions for all stocker positions … including hiring criteria, requirements, and responsibilities created.” SVT objected to providing one piece of responsive material – a stocking DVD that was shown to overnight stockers during orientation – on copyright grounds. SVT stated that, while it had made “in-house copies” of the video, it would not be able to produce a copy of the materials to the EEOC and that it would cost $700 for the EEOC to order and purchase a set of the DVDs. Instead of providing the DVD, SVT offered to have counsel for the EEOC either share in the cost of the DVDs or, in the alternative, to view the DVDs at counsel for SVT’s office during the breaks of depositions. EEOC refused this offer and filed a motion to compel the production of the video.

The court was not persuaded that either of SVT’s proposals was sufficient. The court stated instead that SVT had offered an “unclear … explanation of when and how it obtained the original and/or copies of the DVDs, the nature and extent of any copyright that might exist, and what the costs … were expended for.” Consequently, the court granted the EEOC’s motion to compel, holding that SVT had “not met its burden of demonstrating that the cost of this discovery should be shifted” and ordered SVT to produce the copyrighted material to the EEOC without cost to the EEOC.