Federal Jurisdiction

October 10, 2011

Home Depot Successfully Defends Copyright Infringement Suit in Seventh Circuit Court of Appeals

Chicago, IL — Copyright lawyers for Home Depot successfully defended a copyright infringement lawsuit that had been appealed to the Seventh Circuit Court of Appeals.

Edgenet, Inc. of Waukesha, Wisconsin had filed a copyright infringement lawsuit in the Eastern District of Wisconsin alleging that Home Depot of Atlanta, Georgia infringed the copyrighted work BIG HAMMER MASTER COLLECTION TAXONOMY , which has been registered by the US Copyright Office.

Home Depot had contracted with Edgenet to develop a “taxonomy” which is essentially a method of categorizing different types of products. The parties successfully worked together for several years, but at some point Home Depot decided to develop their own taxonomy in-house that was built upon Edgenet’s system. At that point, Edgenet caught wind and filed to copyright its taxonomy, calling it Big Hammer Master Collection Taxonomy. Home Depot offered Edgenet $100,000 for a perpetual license and informed Edgenet that it would discontinue using its services. Edgenet, however, declined the check and filed suit alleging copyright infringement. In an opinion by Judge Easterbrook, the Seventh Circuit Court of Appeals found that Home Depot had not infringed the copyrighted work. The court found Home Depot had a right to use the intellectual property pursuant the parties’ contract, which did not limit types of uses.

Practice Tip: In this case, the Court of Appeals asked for supplemental briefing because it was not sure whether the federal courts would have jurisdiction over the case. The court noted that federal jurisdiction is available if the case involves a federal question (28 U.S.C. 1331) or if there is diversity of citizenship. Since both corporations were registered in Delaware, diversity of citizenship was not available. The question the court was concerned with was whether this was simply a contract dispute, which would be a state law question, or whether the controversy was really copyright infringement, a federal question. The court noted the T.B. Harms doctrine, which states that “the fact that a copyright is a contract’s subject matter does not change the status of a claim that arises under the contract.” According to the court, the supplemental briefs confirmed that the controversy was a copyright infringement claim.
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July 26, 2011

Saeilo Enterprises Sues Scottwerx in Hamilton County for Trademark Infringement of Tommy Gun Mark: Case Removed to Federal Court

By Overhauser Law Offices, LLC

Indianapolis, IN – A trademark infringement lawsuit filed in Hamilton County, Indiana Superior Court was removed to Southern District of Indiana. Trademark lawyers for Saeilo Enterprises, Inc. of Pearl River, New York had filed a trademark infringement lawsuit in the Hamilton County Superior Court alleging Scottwerx LLC of LaCrescenta, California infringed trademark registration no.2,885,628 for the mark TOMMY GUN which has been registered with the US Trademark Office.

The complaint alleges that Scottwerx has manufactured, produced and sold replica firearm kits that bear Saeilo’s registered trademarks without authorization from Saeilo. The complaint has attached a picture from Scottwerx’s website of the allegedly infringing product. The complaint alleges Indiana courts have jurisdiction because Scottwerx offers the product for sale in Indiana. However, the complaint does not mention any specific sales in Indiana and only refers to Scottwerx’s website. Saeilo’s complaint asserts claims of federal trademark infringement, federal trademark dilution, false designation of origin, false advertising, trade dress infringement, common law trademark infringement, unfair competition, conversion, forgery, counterfeiting, and deception. The complaint seeks a permanent injunction, damages, treble damages, profits, attorney’s fees and costs.

Practice Tip: Last month, Saeilo filed a very similar trademark infringement lawsuit in Hamilton County that was also removed to federal court. Indiana Intellectual Property Law News blogged about that case here. That case alleged that Buzz Bee Toys infringed the same trademarks that are at issue in this lawsuit. According to PACER, trademark attorneys have reached a settlement in the Buzz Bee case. The terms of the settlement are undisclosed.

June 3, 2011

Saeilo Enterprises, Inc. Sues Buzz Bee Toys, Inc. for Trademark Infringement of Tommy Gun Registered Trademark in Hamilton County, But Case Removed to Federal Court

By Overhauser Law Offices, LLC

Indianapolis, IN – Trademark lawyers for Saeilo Enterprises, Inc. of Pearl River, New York filed a trademark infringement suit alleging Buzz Bee Toys, Inc. of Mt. Laurel, New Jersey infringed the following trademarks: Trademark Registration No. 2,885,628 for the mark TOMMY GUN filed with the US Trademark Office and Indiana State Registration No. 20090707-13956, Registration No. 20090707-13957, and Registration No. 20090707-13958 for the TOMMY GUN design marks filed with the Indiana Secretary of State.

Saeilo originally filed the lawsuit in Hamilton County Superior Court. Trademark attorneys for Buzz Bee, however, successfully moved to remove the case to federal district court, noting that federal court has jurisdiction due to the federal trademark claim and the diversity of the parties. According to the complaint filed by Saeilo, Buzz Bee offers for sale toy guns using the words “Tommy” on the packaging.

The complaint states that the infringing conduct occurred in Hamilton County, Indiana, but does not specify when or where. Saeilo has attached pictures of the toy guns and packaging that appear to be in store and being offered for sale. Pictures of the allegedly infringing toy guns are also online, but the complaint does not make reference to Buzz Bee’s website. Saeilo’s complaint asserts claims of federal trademark infringement, federal trademark dilution, false designation of origin, false advertising, trade dress infringement, common law trademark infringement, unfair competition, conversion, forgery, counterfeiting, and deception. The complaint seeks a permanent injunction, damages, treble damages, profits, attorney’s fees and costs.

Practice Tip: The complaint was signed by a lawyer at Continental Enterprises, which is an Indianapolis corporation that claims to “non-traditional strategies to combat infringers domestically and around the globe and provide effective solutions for seemingly intractable IP problems.” Continental Enterprises, however, has recently been the subject of highly critical press coverage. For example, one website accused the company of “using untrained staff to troll the internet for victims.”