Counterfeit

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 1, 2011

Allison Transmission Inc. Sues Defeo Manufacturing Inc. for Trademark Infringement Over Transmission Speed Sensors and Parts

By Overhauser Law Offices, LLC

Indianapolis, IN – Trademark lawyers for Allison Transmission Inc. of Indianapolis, Indiana filed a trademark infringement suit in alleging Defeo Manufacturing, Inc. of Brookfield, Connecticut infringed various ALLISON TRANSMISSION trademarks, including registration nos. 2,866,798, 2,625,008, 1,666,977, 1,624,473 , 3,821,442and 2,678,354; along with registration no. 2,615,428 for the ALLISON ELECTRIC DRIVES, all registered with US Trademark Office.

According to the complaint, Defeo manufactures and supplies replacement parts for Allison transmissions, including aftermarket, refurbished, and used parts. The complaint states that Allison is not associated with Defeo in any way. Allison alleges that Defeo “has a history of deceiving the public as to sponsorship, affiliation, or endorsement of its products by Allison.” In 2009, Allison became aware that Defeo’s website falsely claimed its products met all Allison’s quality standards. After Allison demanded the false advertising be removed, the website claims were taken down. Subsequently, however, Allison became aware that Defeo was responsible for the unauthorized manufacturing of transmission turbine speed sensors that bore the Allison trademarks without authorization. Allison alleges these speed sensors are counterfeit products, and though the products are not authorized by Allison, are advertised as “genuine Allison” products. The complaint makes claims of counterfeiting, federal trademark infringement, false designation of origin, false advertising, Indiana common law unfair competition, common law trademark infringement and seeks seizure of all “counterfeit” products and advertising, an injunction, profits, actual damages, punitive damages, costs and attorney fees.

This is at least the fifth suit filed by Allison since 2009 against a seller of replacement parts for Allison’s products.

Practice Tip: Allison Transmission’s trademark attorneys do not allege any specific infringing sales in Indiana by Defeo Manufacturing. Instead they only said that Defeo “does business in . . . has caused harm in . . and the conduct . . . complained of . . . has occurred in this judicial district.” However, the Complaint only identifies a website maintained by Defeo used to offer allegedly infringing products. This case has been assigned to Judge Sarah Evans Barker, who in similar cases, has refused to find specific personal jurisdiction based on merely maintaining an interactive website not “specifically directed” toward Indiana. To improve the chances of obtaining personal jurisdiction, it is advisable to make at least one purchase of an allegedly infringing product and have it shipped to the jurisdiction where the suit is to be filed.It is also curious that Allison alleges infringement of Federal Registration No. 2,615,428, since this registration was cancelled long ago.
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August 15, 2011

Indiana Court of Appeals Affirms Counterfeiting Conviction and Seven and a Half Years Suspended Sentence for Mail Order Form Counterfeit

By Overhauser Law Offices, LLC

Indianapolis, IN – The Indiana Court of Appeals examined Indiana’s criminal counterfeiting law in affirming a criminal counterfeiting conviction and sentence. The defendant was charged with five counts of counterfeiting, a Class D felony, after he filled out mail order forms and caused an Indiana State Trooper to receive and become indebted for “various collectable items that neither he nor any member of his household had ordered.” The defendant argued that the verdict should be overturned because the order forms were not “written instruments” as defined by the criminal counterfeiting statute. The court found that the order forms were written instruments. They examined the definition, citing I.C. § 35-43-5-1(t) and noted “a written instrument is defined as ‘a paper, a document, or other instrument containing written matter and includes ‘a list of specific items and ‘other objects or symbols of value, right, privilege, or identification.’

The court also affirmed the trial court’s sentence of seven and a half years, suspended with five years of probation. The sentence represented eighteen months for each of the five counterfeiting convictions to run consecutively. The court noted that crimes were committed “to retaliate against Trooper Kaizer for carrying out his duties as a police officer by issuing Trainor a traffic citation.” The court described how the Trooper had cited Trainor for making an illegal U-turn just before committing the criminal acts. Trainor contended his actions were a “prank.”

Practice Tip: Intellectual property attorneys sometimes make additional claims in trademark and copyright infringement cases that allege violations of criminal laws, particularly Indiana’s counterfeiting and conversion criminal statutes. For example, Indiana Intellectual Property Law News reported in February on a trademark infringement case that also made a claim of conversion, knowingly or intentionally exerting control over property of another. In June, Coach filed two trademark infringement lawsuits that also made claims under Indiana’s criminal counterfeit and forgery laws.

June 16, 2011

Coach Files Two Trademark and Copyright Infringement Lawsuits in Northern District Over Knock-Off Coach Items

By Overhauser Law Offices, LLC

South Bend; IN – Trademark and copyright lawyers for Coach, Inc. and Coach Services, Inc. of New York, New York filed two trademark infringement lawsuits in the Northern District of Indiana.

In the first lawsuit, intellectual property attorneys have alleged that Diva’s House of Style and Elizabeth “Beth” Bond of Elkhart, Indiana infringed fifty-one marks that have been registered with the US Trademark Office. The complaint also alleges that Diva’s House and Ms. Bond infringed the copyrighted works LEGACY STRIPE and SIGNATURE C, which have been registered by the US Copyright Office. The complaint alleges that Diva House and Ms. Bond have been designing, manufacturing, and/or selling “studied imitations” of Coach products that bear the Coach trade marks, trade dress and copyrighted works. Coach alleges that Diva House and Ms. Bond advertised the knock-off products on Facebook. A Coach representative used e-mail and phone to correspond with the defendants and purchased a purse from her. The representative then determined that the purse was not a genuine Coach purse and was a knock-off of inferior quality. The complaint makes claims of trademark counterfeiting, trademark infringement, trade dress infringement, false designation of origin and false advertising, trademark dilution, copyright infringement, common law trademark infringement, unfair competition, forgery and counterfeiting. This case has been assigned to Judge Jon E. DeGuilio and Magistrate Judge Christopher A. Nuechterlein in the Northern District of Indiana, and assigned Case No. 3:11-cv-00253-JD-CAN.

In the second lawsuit, intellectual property attorneys allege that Lyn-Maree’s LLC of Auburn, Indiana, and its owners, Emma Taylor and Lynn Siples, infringed fifty-one marks that have been registered with the US Trademark Office. The complaint also alleges that Lyn-Maree’s and its owners infringed the copyrighted works LEGACY STRIPE and SIGNATURE C, which have been registered by the US Copyright Office. The complaint states that a Coach representative purchased a hand bag, wallet and sunglasses labeled “Coach” at the Lyn Maree’s retail store. The items were examined by Coach and determined to be not genuine Coach items, but knock-off items of inferior quality. The complaint makes claims of trademark counterfeiting, trademark infringement, trade dress infringement, false designation of origin and false advertising, trademark dilution, copyright infringement, common law trademark infringement, unfair competition, forgery and counterfeiting.

Practice Tip: Coach has a reputation for vigorously defending their intellectual property. Coach filed two trademark lawsuits in the Northern District of Indiana in April of this year, which were reported on in Indiana Intellectual Property Law News. It seems that a Coach representative is monitoring businesses in the Northern District of Indiana and purchasing knock-off goods that then become the basis of these lawsuits.