Copyright Infringement

December 10, 2013

BMI Sues Roadhouse Bar & Grill and Its Owner for Copyright Infringement

Hammond, Indiana – Broadcast Music, Inc. of New York, New York (“BMI”), along with the owners of the copyrights to various musical compositions, have filed a copyright infringement lawsuit in the Northern District of Indiana alleging that Stamper Properties, Inc. d/b/a Roadhouse Bar & Grill and R. Bruce Stamper of Valparaiso, Indiana infringed multiple copyrighted works which have been registered by the U.S. Copyright Office.

BMI is a “performing rights society” under 17 U.S.C. § 101 that operates on a non-profit-making basis and licenses the right to publicly perform copyrighted musical compositions on behalf of the copyright owners. The other Plaintiffs in this action own the copyrights to the ten compositions at issue in this lawsuit.

Stamper Properties is an Indiana corporation that operates Roadhouse Bar & Grill, an establishment which is asserted to publicly perform musical compositions and/or cause musical compositions to be publicly performed. BMI contends that Mr. Stamper has the right and ability to supervise the activities of Stamper Properties and that he has a direct financial interest in the company and the restaurant.

BMI and the other Plaintiffs, via this suit filed by a copyright lawyer, have asserted willful infringement of the ten copyrights-in-suit. They further claim that Defendants’ entire course of conduct, including the ongoing unauthorized public performances of the copyrighted works, has caused and is continuing to cause the Plaintiffs great and incalculable damage. They have asked the court for an injunction against further infringement. Plaintiffs also seek statutory damages pursuant to 17 U.S.C. §504(c) and costs, including reasonable attorneys’ fees.

Practice Tip:

Copyright protection is automatic upon creation of an original work, but registration of the copyright is required in order to bring an infringement suit.

The Copyright Act empowers a plaintiff to elect to receive an award of statutory damages between $750 and $30,000 per infringement in lieu of an award representing the plaintiffs’ actual damages and/or the defendants’ profits. In a case where the copyright owner proves that infringement was committed willfully, the court may increase the award of statutory damages to as much as $150,000 per infringed work. A finding of willful infringement will also support an award of attorney’s fees.

Furthermore, not only is the performer liable for infringement, but so is anyone who sponsors the performance. A corporate officer will be found jointly and severally liable with his corporation for copyright infringement if he (1) had the right and ability to supervise the infringing activity, and (2) has a direct financial interest in such activities.

November 6, 2013

Silver Streak Industries Sues Squire Boone Caverns for Copyright Infringement

By Overhauser Law Offices, LLC

New Albany, Indiana – Silver Streak Industries, LLC of Tempe, Arizona (“Silver Streak”) has filed a copyright infringement lawsuit in the Southern District of Indiana alleging that Squire Boone Caverns, Inc. of Floyd County, Indiana (“Squire Boone”) infringed the copyrighted work Ore Car display and game card which has been registered by the U.S. Copyright Office.

Silver Streak’s Ore Car display and game card (the “Work”), a whimsical representation of a mining ore car used to display polished stones and an accompanying brochure that lists the type of stones displayed, was copyrighted in 1995. Retail consumers may select stones for purchase. They are able to keep track of each type of stone collected with the brochure. Silver Streak generates revenue through the sales of copies of the Work to third parties retail establishments, such as travel centers, and through re-supply of the polished stones displayed with the Work.

Silver Streak alleges that, within the nine-month period prior to the filing of this action for copyright infringement, Squire Boone deliberately and willfully infringed Silver Streak’s copyright in the Work by producing an “Ore Car and Tumbled Stone” product, which it claims infringes the copyrighted Ore Car display.

Intellectual property attorneys for Silver Streak contend that Squire Boone offered its purportedly infringing product to one of Silver Streak’s existing customers at a retail-merchandise trade show in early 2013 at a deeply discounted price. It also asserts that Squire Boone has made at least one sale of the Ore Car to Six Flags, a potential customer of Silver Streak.

In its complaint, Silver Streak lists two causes of action:

• Count I: Copyright Infringement
• Count II: Tortious Interference with Contract

Silver Streak asks the court to impound and destroy all copies of the allegedly infringing work;
enjoin Squire Boone from further infringement; enjoin Squire Boone from unlawfully interfering with existing or prospective contracts between Silver Streak and its customers; order an accounting of profits and other damages that resulted from copyright infringement or interference with contract and prospective advantage; award to Silver Streak actual damages and profits under 17 U.S.C. § 504(a)(1) and § 504(b), or in the alternative, statutory damages for copyright infringement pursuant to 17 U.S.C. § 504 (a)(2) and § 504(c); award punitive damages; and award to Silver Streak its costs and expenses, including reasonable attorney’s fees.

Practice Tip: The Copyright Act empowers a plaintiff to elect to receive an award of statutory damages between $750 and $30,000 per infringement in lieu of an award representing the plaintiff’s actual damages and/or the defendant’s profits. In a case where the copyright owner proves that infringement was committed willfully (as was asserted here), the court may increase the award of statutory damages to as much as $150,000 per infringed work. A finding of willful infringement will also support an award of attorney’s fees.

October 25, 2013

Patrick Collins Twice Requests to Dismiss Lund; Lund Dismissed; Court Denies Patrick Collins’ Request to Reinstate

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Magistrate Judge Mark J. Dinsmore of the Southern District of Indiana has recommended that Plaintiff Patrick Collins, Inc.’s request to void the judgment entered as a result of Plaintiff’s two earlier requests for voluntary dismissal of Defendant Derrick Lund be denied.

[Full Disclosure – Overhauser Law Offices, the publisher of Indiana Intellectual Property Law News, represented the successful defendant in this case.]

Attorney Paul Nicoletti, copyright counsel for Plaintiff Patrick Collins, filed a complaint in June 2012 against thirteen “John Doe” Defendants identified only by their Internet Protocol addresses. Patrick Collins claimed that the Defendants had infringed upon its copyrighted films by downloading them using BitTorrent, a peer-to-peer file-sharing service. Defendant Derrick Lund was identified following a subpoena to his internet service provider.

Initially, Lund filed neither an answer nor any other pleading. Consequently, a default judgment was granted against him. What followed was a series of requests to the court by counsel for Patrick Collins that was characterized by the court as a “complicated procedural history.” On the day following the default judgment against Lund, Nicoletti filed a notice of voluntary dismissal against Lund, seeking to dismiss him with prejudice. On that same day, Nicoletti also filed an unopposed motion making the same request: to vacate the default judgment against Lund and to dismiss him with prejudice. Judge Pratt granted Patrick Collins’ motion the next day.

One day following Judge Pratt’s order, Patrick Collins filed a motion to withdraw the voluntary dismissal. The court granted this motion and reinstated Lund as an active Defendant. Lund filed a motion for reconsideration on Lund’s reinstatement. The court granted Lund’s motion and vacated its reinstatement order, finding that Lund had not been properly served.

In this current opinion, the court again considered Patrick Collins’ motion to withdraw its voluntary dismissal, asking “whether Plaintiff can just ‘withdraw’ this notice of dismissal.” The court answered, “[s]imply, the answer is no, as the dismissal [constituted] a final judgment.” Once the Plaintiff filed a notice of dismissal, “the case is closed and the plaintiff may not unilaterally withdraw or amend the notice.”

In its latest request to the court, Patrick Collins had neither cited Rule 60(b) of the Federal Rules of Civil Procedure nor given reasons under this Rule that the judgment should be subject to vacatur. Instead, Plaintiff had simply argued that “the parties had not reached a settlement agreement and therefore the dismissal with prejudice was unintentional.”

Nonetheless, the court sua sponte considered whether the final judgment should be set aside under Rule 60(b). Again, the court was not inclined to grant the Plaintiff’s plea to void an order that the Plaintiff itself had requested. While Rule 60(b) permits the Plaintiff to ask the court to vacate a dismissal, relief from a final judgment is an extraordinary measure and may only be granted in the exceptional circumstances.

Rule 60(b) permits a court to relive a party from a final judgment, order or proceeding for the following reasons:

1) mistake, inadvertence, surprise, or excusable neglect;
2) newly discovered evidence;
3) fraud, misrepresentation, or misconduct by an opposing party;
4) the judgment is void;
5) the judgment has been satisfied, released or discharged; it is based on an earlier judgment that has been reversed or vacated; or applying it prospectively is no longer equitable; or
6) any other reason that justifies relief.

The court noted that “Plaintiff twice filed requests with the Court – each filing being hours apart – to not only dismiss the action against Lund, but to dismiss it with prejudice. These filings show an unequivocal intent to dismiss Lund with prejudice.” Magistrate Judge Dinsmore concluded that Patrick Collins had not demonstrated “how its argument amounts to mistake, inadvertence, surprise, or excusable neglect” and recommended that Judge Pratt deny Plaintiff’s motion to withdraw voluntary dismissal.

Practice Tip #1: This case highlights the distinction between a dismissal “with prejudice” and “without prejudice.” The opinion focuses on whether Plaintiff Patrick Collins, Inc. could obtain “relief” from its own dismissal. Why would a litigant need “relief” from a court order granting its own motion? Because the dismissal was “with prejudice,” meaning that Patrick Collins was not allowed to simply file a second suit asserting the same claim. Because the dismissal was “with prejudice,” the defendant may be a considered a “prevailing party,” even though a judgment was never entered in either party’s favor. Nonetheless, because the Copyright Act allows a “prevailing party” to recover its attorney’s fees, the defendant can recover them.

Practice Tip #2: Patrick Collins, Inc. is represented by Paul Nicoletti, one of the country’s most notorious “copyright troll” attorneys. In addition to filing suits on behalf of Patrick Collins, Inc., he has also sued hundreds of defendants on behalf of copyright trolls Malibu Media, LLC and TCYK, LLC. (Search for these company names on this site to find articles about those other suits, or visit www.fightcopyrighttrolls.comor www.dietrolldie.com.)

October 24, 2013

BMI Asserts Copyright Infringement Against Blu

By Overhauser Law Offices, LLC

Indianapolis, Indiana — Broadcast Music, Inc. of New York, New York (“BMI”) has filed a copyright infringement lawsuit in the Southern District of Indiana alleging that SC Entertainment, LLC d/b/a Blu and Shawn Cannon (“Cannon”), both of Indianapolis, Indiana, infringed the copyrighted works LAST NIGHT A D.J. SAVED MY LIFE, SHOW ME LOVE, and I’LL BE AROUND which have been registered by the U.S. Copyright Office. Five other Plaintiffs,Comart Music, EMI Virgin Songs, Inc. dba EMI Longitude Music, EMI Blackwood Music, Inc, Song A Tron Music, and Warner-Tamerlane Publishing Corporation, are also listed in the complaint.

Broadcast Music, Inc. (“BMI”) is a “performing rights society” under 17 U.S.C. § 101 that operates on a non-profit-making basis and licenses the right to publicly perform copyrighted musical works on behalf of the copyright owners of these works. The other Plaintiffs in this action are the copyright owners of the three compositions at issue in this lawsuit.
SC Entertainment is an Indiana limited liability company that operates Blu, an establishment which is asserted to publicly perform musical compositions and/or cause musical compositions to be publicly performed.

BMI asserts that Cannon is a member of SC Entertainment and that he has primary responsibility for the operation and management of the company and of Blu. Cannon also allegedly has the right and ability to supervise the activities of SC Entertainment and a direct financial interest in the company and in Blu.

BMI and the other Plaintiffs, via copyright counsel, have asserted willful copyright infringement of the three copyrights-in-suit in their complaint. They further claim that the Defendants’ entire course of conduct, including the ongoing unauthorized public performances of the copyrighted works, has caused and is continuing to cause the Plaintiffs great and incalculable damage.

Practice Tip:

The Copyright Act empowers a plaintiff to elect to receive an award of statutory damages between $750 and $30,000 per infringement in lieu of an award representing the plaintiffs’ actual damages and/or the defendants’ profits. In a case where the copyright owner proves that infringement was committed willfully, the court may increase the award of statutory damages to as much as $150,000 per infringed work. A finding of willful infringement will also support an award of attorney’s fees.

Furthermore, not only is the performer liable for infringement, but so is anyone who sponsors the performance. A corporate officer will be found jointly and severally liable with his corporation for copyright infringement if he (1) had the right and ability to supervise the infringing activity, and (2) has a direct financial interest in such activities.

October 18, 2013

Aiuppy Sues Jeepers Dollhouse Miniatures for Infringing Copyrighted Photos

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Laurance B. Aiuppy of Park County, Montana (“Aiuppy”) has sued Ufnowski Enterprises, LLC of Morgantown, Indiana (“Ufnowski”) d/b/a “Jeepers Dollhouse Miniatures” in the Southern District of Indiana alleging infringement of a copyrighted photograph or photographs which have been registered by the U.S. Copyright Office.

Plaintiff Aiuppy (also referred to in the complaint as “Plaintiff Auippy”) provides entertainment-related photojournalism goods and services featuring celebrities, which it licenses to online and print publications.

Defendant Ufnowski, which offers miniatures, dollhouses, and related accessories, is asserted to own and operate the website http://www.jeepersminiatures.com and to have copied, modified and displayed Aiuppy’s photograph or photographs on the Jeepers Dollhouse Miniatures website without Aiuppy’s permission. It is further contended that this conduct was knowing and in violation of U.S. copyright laws. The complaint also asserts that Ufnowski received a financial benefit directly attributable to the alleged infringement(s), and claims that as a result of the display of the photographs, the website had increased traffic and, in turn, realized an increase in their advertising revenues and/or merchandise sales.

The complaint, filed by the intellectual property counsel for Aiuppy, states the following claims:

· First Count: Direct Copyright Infringement, 17 U.S.C. § 501 et seq.

· Second Count: Contributory Copyright Infringement

· Third Count: Vicarious Copyright Infringement

· Fourth Count: Inducement of Copyright Infringement

· Fifth Count: Injunction Pursuant to 17 U.S.C. § 502

· Sixth Count: Attorney Fees and Costs Pursuant to 17 U.S.C. § 505

Aiuppy asks for a judgment that Ufnowski has infringed directly, contributorily and/or vicariously; for a judgment that Ufnowski has induced others to violate Aiuppy’s copyrighted photographs(s); for statutory damages against Ufnowski of $150,000 per infringement, or actual damages and Ufnowski’s profits; for a permanent injunction pursuant to 17 U.S.C. § 502; and for attorneys’ fees and costs.

Practice Tip: As part of its complaint, Aiuppy has asserted that Ufnowski had “red flag” knowledge under 17 U.S.C. §512(c)(1)(A)(i) (sic) of the alleged infringements and yet failed to remove the allegedly infringing photographs. The “red flag” provision, codified as 17 U.S.C. §512(c)(1)(A)(ii), is part of the Digital Millennium Copyright Act (“DMCA”).

Title II of the DMCA, separately titled the “Online Copyright Infringement Liability Limitation Act” (“OCILLA”), was designed to clarify the liability faced by service providers who transmit potentially infringing material over their networks.

But rather than embarking upon a wholesale clarification of various copyright doctrines, Congress elected to leave current law in its evolving state and, instead, to create a series of “safe harbors” for certain common activities of service providers. To that end, under 17 U.S.C. § 512(a)-(d), OCILLA established a series of four “safe harbors” that allow qualifying service providers to limit their liability for claims of copyright infringement based on (a) transitory digital network communications, (b) system caching, (c) information residing on systems or networks at [the] direction of users, and (d) information location tools.

To qualify for protection under any of the safe harbors, a party must meet a set of threshold criteria. First, the party must in fact be a “service provider,” defined, in pertinent part, as “a provider of online services or network access, or the operator of facilities therefor.” 17 U.S.C. § 512(k)(1)(B). A party that qualifies as a service provider must also satisfy certain “conditions of eligibility,” including the adoption and reasonable implementation of a “repeat infringer” policy that “provides for the termination in appropriate circumstances of subscribers and account holders of the service provider’s system or network.” Id. § 512(i)(1)(A). In addition, a qualifying service provider must accommodate “standard technical measures” that are “used by copyright owners to identify or protect copyrighted works.” Id. § 512(i)(1)(B), (i)(2).

Beyond the threshold criteria, a service provider must satisfy the requirements of a particular safe harbor. In this case, the safe harbor presumably at issue is § 512(c), which covers infringement claims that arise “by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider.” The § 512(c) safe harbor will apply only if the service provider:

(A) (i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing;

(ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or

(iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;

(B) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and

(C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.

It is in § 512(c)(1)(A)(ii) that the so-called “red flag” knowledge exception to the safe harbor provision for service providers is found.

As the safe harbor acts as an affirmative defense, and the “red flag” knowledge, in turn, is available to defeat that defense, it is interesting that this seems to have been included in the complaint as part of the prima facie case against Ufnowski. Moreover, it will be interesting to see what use Plaintiff’s copyright attorney makes of this assertion, given that Ufnowski appears from the complaint to be a merchant of dollhouse miniatures, not an Internet service provider.

October 17, 2013

Another Fourteen Anonymous Defendants Accused of Infringing Robert Redford Movie

By Overhauser Law Offices, LLC

Indianapolis, Indiana — Copyright lawyer Paul Nicoletti has sued fourteen additional Doe Defendants, all allegedly located in Indiana, in the Southern District of Indiana on behalf of TCYK, LLC of Los Angeles, California (“TCYK”) alleging infringement of the copyrighted movie “The Company You Keep,” which has been registered by the U.S. Copyright Office. The movie stars Robert Redford, Susan Sarandon, Shia LaBeouf, Anna Kendrick, Julie Christie and Nick Nolte. It was directed by Robert Redford.

TCYK alleges that the infringing transfer and copying of this movie, which was released on DVD on August 13, 2013, was accomplished by Defendants using BitTorrent, a peer-to-peer file-sharing protocol. Specifically, the Doe Defendants are accused of deliberately participating in a peer-to-peer “swarm,” and illegally reproducing and/or distributing portions of the movie in digital form with other Defendants. TCYK indicates in its complaint that it used geolocation technology to determine that the Doe Defendants were located in Indiana.

The complaint lists a single count: copyright infringement. The intellectual property attorney for Plaintiff TCYK asks the court for permanent injunctions prohibiting infringement of Plaintiff’s movie by all Doe Defendants; the destruction of all copies of infringing works in any Defendant’s control; judgment that Defendants have willfully infringed Plaintiff’s copyrighted work; judgment that Defendants have otherwise injured the business reputation and business of Plaintiffs; for actual damages or statutory damages; and for attorneys’ fees and litigation expenses.

Practice Tip:

Under 17 U.S.C. § 504(c)(1), a copyright owner may elect actual or statutory damages. Statutory damages range from a sum of not less than $750 to not more than $30,000 per infringed work. The determination of the exact amount is left to the discretion of the court.

If a defendant fails to appear, the court will take as true all of the plaintiff’s well-pled allegations. That typically leads to a default judgment against the defendant. There is a significant disparity in the dollar amounts awarded in default judgments against defendants in copyright infringement cases involving BitTorrent. In two separate cases, Judge William T. Lawrence recently ordered two defendants who failed to appear to pay $20,000 in statutory damages for copyright infringement that was deemed to have been admitted by the defendants’ failure to defend against the allegations. See here and here. However, in a similar case, Judge Jane Magnus-Stinson ordered an entry of default judgment against a defendant for $151,425. Judge Sarah Evans Barker has issued several default judgments for $36,000 plus attorneys’ fees against BitTorrent defendants who failed to appear.

October 11, 2013

Copyright Infringement Using BitTorrent Asserted, Judgment of $38,645 Granted Against Defendant Who Failed to Appear

By Overhauser Law Offices, LLC

Indianapolis, Indiana — Judge Sarah Evans Barker of the Southern District of Indiana has entered a default judgment for copyright infringement in favor of Malibu Media, LLC of Los Angeles, California. The copyrighted works at issue had been registered by the U.S. Copyright Office.

In June 2012, copyright attorney Paul Nicoletti filed another copyright infringement lawsuit in the Southern District of Indiana on behalf of serial plaintiff Malibu Media. The lawsuit listed multiple defendants, including William Meeks Sr. of Decatur, Indiana. In its complaint, Malibu Media alleged that Meeks had infringed 16 copyrighted works. Specifically, Malibu Media contended that Meeks and others directly and contributorily infringed its copyrighted works when they downloaded and disseminated all or a portion of the works using BitTorrent, a peer-to-peer file-sharing protocol. The initial complaint was served upon 23 defendants. Discussed in this opinion are the allegations, findings and judgments against Meeks only.

Judge Barker held that, as a result of his failure to defend against Malibu Media’s assertions, Meeks was deemed to have admitted to willful copyright infringement. Judge Barker also held that, without an injunction, Meeks’ use of the BitTorrent protocol would continue to cause Malibu Media irreparable injury, stating that there existed a “threat of continued violations” of Malibu Media’s exclusive rights to reproduce, distribute, perform and display the 16 copyrighted works.

The court entered a permanent injunction against Meeks after finding that such an injunction promoted creativity and individual effort and was therefore in the public interest. Meeks was also ordered to pay to Malibu Media $36,000.00 in statutory damages, as authorized under 17 U.S.C. § 504(c)(1), and $2,645.00 for attorneys’ fees and costs, as authorized under 17 U.S.C. § 505, for a total of $38,645.00. He was further ordered to pay post-judgment interest accruing under 28 U.S.C. § 1961 as of the date of the default judgment until the date of its satisfaction. Finally, Meeks was ordered to destroy all copies of Malibu Media’s works that he had downloaded onto any computer hard drive without proper authorization, including all copies that he had in his possession, custody or control.

Practice Tip #1:

Under 17 U.S.C. § 504(c)(1), a copyright owner may elect actual or statutory damages. Statutory damages range from a sum of not less than $750 to not more than $30,000 per infringed work. The determination of the exact amount is left to the discretion of the court.

There is a significant disparity in the dollar amount awarded in default judgments against defendants in copyright infringement cases involving BitTorrent. In two separate cases, Judge William T. Lawrence recently ordered two defendants who failed to appear to pay $20,000 in statutory damages for copyright infringement that was deemed to have been admitted by the defendants’ failure to defend against the allegations. See here and here. However, in a similar case, Judge Jane Magnus-Stinson ordered an entry of default judgment against a defendant for $151,425. Judge Barker has issued several prior default judgments in this case, each for $36,000 plus attorneys’ fees.

Practice Tip #2:

Deciding to simply ignore a complaint, as William Meeks Sr. apparently did, can be a costly error. Failing to present the defendant’s version of the facts and arguments results in the court considering only the plaintiff’s side of the story. Here, because the defendant chose to leave the complaint unanswered, the well-pled allegations of the plaintiff relating to liability were taken as true.

After the entry of default judgment, the court then conducted an inquiry to ascertain the amount of damages with “reasonable certainty.” Again, in such circumstances, it serves a defendant well to plead his case — to present the court with reasons that the plaintiff should not get 100% of what he requests.

Overhauser Law Offices, the publisher of this website, has represented several hundred persons and businesses regarding copyright infringement and similar matters.

October 4, 2013

Malibu Media Files Seven New Copyright Infringement Lawsuits Against John Doe Defendants

By Overhauser Law Offices, LLC

Indianapolis, Indiana — An intellectual property attorney has filed seven new copyright suits in the Southern District of Indiana on behalf of Malibu Media, LLC of Los Angeles, California alleging that seven John Doe defendants infringed Malibu Media’s copyrighted works.

Copyright lawyer Paul Nicoletti is again in federal court on behalf of Malibu Media asserting infringement of the company’s intellectual property. In this current round, Malibu Media’s latest incursion into the federal court system, seven new and nearly identical lawsuits have been filed against anonymous John Doe defendants, each claiming copyright infringement. The Defendants allegedly used the BitTorrent file-sharing protocol to illegally download, copy and distribute elements of various works of Malibu Media’s copyrighted material.

Malibu Media seeks a permanent injunction barring the Defendants from engaging in infringing activities; an order by the court to remove infringing materials from all computers of each Defendant; an award of statutory damages of $150,000 per infringed work and reasonable attorneys’ fees and costs.

Practice Tip: There is a significant disparity in the dollar amount awarded in default judgments against defendants in copyright infringement cases involving BitTorrent. In two separate cases, Judge William T. Lawrence recently ordered two defendants who failed to appear to pay $20,000 for the copyright infringement that was deemed to have been admitted by the defendants’ failure to defend against the allegations. See here and here. However, in a similar case, Judge Jane Magnus-Stinson ordered an entry of default judgment against a defendant for $151,425, the full amount requested.

September 19, 2013

TCYK Sues Nine John Doe Defendants for Copyright Infringement of “The Company You Keep”

By Overhauser Law Offices, LLC

Hammond, Indiana — Copyright lawyers for TCYK LLC of Los Angeles, CA sued for copyright infringement in the Northern District of Indiana alleging that John Does 1-9, all allegedly located in Indiana, infringed the copyrighted work “The Company You Keep,” which has been registered by the U.S. Copyright Office.

The movie stars Robert Redford, Susan Sarandon, Shia LaBeouf, Anna Kendrick, Julie Christie and Nick Nolte. It was directed by Robert Redford. TCYK alleges that the infringing transfer and copying of this movie, which was released on DVD on August 13, 2013, was accomplished by Defendants using BitTorrent, a peer-to-peer file-sharing protocol. Specifically, the Doe Defendants are accused of deliberately participating in a peer-to-peer “swarm,” and illegally reproducing and/or distributing portions of the movie in digital form with other Defendants. TCYK indicates in its complaint that it used geolocation technology to determine that the Doe Defendants were located in Indiana.

The complaint lists a single count of copyright infringement. Copyright attorneys for Plaintiff ask the court for permanent injunctions prohibiting infringement of Plaintiff’s movie; the destruction of all copies of infringing works in any Defendant’s control; judgment that Defendants have willfully infringed Plaintiff’s copyrighted work; judgment that Defendants have otherwise injured the business reputation and business of Plaintiffs; for actual damages or statutory damages; and for attorneys’ fees and litigation expenses.

Practice Tip #1: The impact of distributing large files on servers and networks can be reduced by using BitTorrent. Instead of downloading a file from a single server, the BitTorrent protocol allows users to join a “swarm” of hosts, each of which downloads and uploads data from the others simultaneously.

Practice Tip #2: TCYK has filed dozens of lawsuits in federal courts claiming copyright infringement of “The Company You Keep”, including courts in Indiana, Florida, Illinois, Minnesota, Ohio and Wisconsin. It is estimated that thousands of defendants have been sued by TCYK on the allegation that they have infringed this copyrighted work. TCYK is also featured in an interesting article on the growing practice of using the court system to monetize infringement committed by individual infringers.

Practice Tip #3: It is curious that apparently neither the filing fee nor form AO 121 (Report on the Filing or Determination of an Action or Appeal Regarding a Copyright) was submitted to the court in conjunction with the filing of this complaint.

September 6, 2013

Texas Roadhouse Sues Multiple Restaurants Operating as “Texas Corral” or “Amarillo Roadhouse”

By Overhauser Law Offices, LLC

Grand Rapids, Michigan — Trademark lawyers for Texas Roadhouse, Inc. and Texas Roadhouse Delaware LLC, both of Louisville, Kentucky (collectively, “Texas Roadhouse”) sued for trademark infringement in the Western District of Michigan alleging that the Defendants, including those doing business as multiple Texas Corral restaurants located in Indiana (collectively “Texas Corral”), as well as one Amarillo Roadhouse restaurant, also located in Indiana, infringed the service mark TEXAS ROADHOUSE, Trademark Registration Nos. 1,833,533; 2,231,309; and 2,250,966, which have been registered by the U.S. Trademark Office.

Texas Roadhouse operates a Texas-themed restaurant chain. The first Texas Roadhouse restaurant opened in Clarksville, Indiana in 1993. As of March 2013, there were 397 Texas Roadhouse restaurants in 47 states and three countries.

Texas Roadhouse contends that each of the restaurants is required to comply with strict exterior and interior design requirements so that the look and feel is substantially identical across all Texas Roadhouse locations. It lists three U.S. Service Mark Registrations that include the mark “Texas Roadhouse” and asserts that each of them is incontestable. Texas Roadhouse also claims ownership of various unregistered marks that include the word “Texas” and “Roadhouse” as well as copyright protection, including a U.S. Copyright registration, of its marquee. Finally, Texas Roadhouse claims intellectual-property rights in the trade dress of its restaurants, including the look of the exterior design of the building, the interior décor, the music and the menu.

Texas Corral, against which Texas Roadhouse filed this complaint, also operates casual, western-themed, family restaurants. It owns and operates nine restaurant locations doing business under the name “Texas Corral.” A total of ten locations are at issue in this lawsuit. Six Indiana cities have “Texas Corral” restaurants: Highland, Merrillville, Portage, Michigan City, Martinsville and Shelbyville. Texas Corral also purportedly owns and operates a location that does business as “Amarillo Roadhouse” in Indiana, which is also at issue in this trademark-infringement lawsuit. In addition, three other Texas Corral restaurants have been listed in the complaint: two in Michigan and one in Illinois.

Also listed in the complaint are Paul Switzer, asserted to be the franchisor/licensor of Texas Corral restaurants and Victor Spina, asserted to be a franchisee/licensee. “John Doe Corp.,” a fictitious name intended to represent entities or individuals whose actual identity is not currently known to Texas Roadhouse, is also listed as a Defendant.

In the complaint, trademark attorneys for Texas Roadhouse assert that Texas Corral and Amarillo Roadhouse routinely use trade dress, trademarks, service marks, trade names, designs or logos that are confusingly similar to or copies of intellectual property owned by Texas Roadhouse. This purportedly infringing use is asserted to be visible in signage, print and electronic promotional materials, menus, décor, building design and websites.

Texas Roadhouse’s complaint against Texas Corral and Amarillo Roadhouse lists the following:

· Count I: Trade Dress Infringement

· Count II: Federal Trademark Infringement

· Count III: Trademark Infringement Under Mich. Comp. Laws § 429.42

· Count IV: Trademark Infringement Under Ind. Code § 24-2-1-13

· Count V: Trademark Infringement Under Common Law

· Count VI: Copyright Infringement Under 17 U.S.C. § 101 et seq.

· Count VII: Unfair Competition Under Michigan and Indiana Common Law

Texas Roadhouse asks for a judgment that Texas Roadhouse owns enforceable rights in the Texas Roadhouse intellectual property and that all registrations for the Texas Roadhouse intellectual property are valid; a judgment that the Defendants have been and are directly or indirectly infringing the Texas Roadhouse intellectual property; a judgment that the Defendants have been and are engaging in unfair competition by their unauthorized use of the Texas Roadhouse intellectual property; a judgment that Defendants acted deliberately, willfully, intentionally or with malicious intent; an injunction against Defendants prohibiting infringement; damages, including treble damages; a judgment that this case is exceptional and that the Defendants be ordered to pay all of Texas Roadhouse’s attorney fees associated with this action pursuant to 15 U.S.C. § 1117 and 17 U.S.C. § 505; and a judgment that the defendants be ordered to pay all costs and expenses incurred by Texas Roadhouse in this action.

Practice Tip:

The U.S. Supreme Court has addressed the requirements for trade dress protection in a similar context. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). At issue in Two Pesos was similar restaurant décor. Taco Cabana had sued rival Two Pesos for copying the look of its restaurant, described as “a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors. The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme.” The lawsuit alleged that Two Pesos had imitated this scheme and had thereby infringed on Taco Cabana’s trade dress. Among the issues considered was whether trade dress which was inherently distinctive must also be shown to have secondary meaning to be granted protection under the Lanham Act. The Supreme Court held that trade dress which is inherently distinctive is protectable under § 43(a) of the Lanham Act without a showing that it has acquired secondary meaning, since such trade dress itself is capable of identifying products or services as coming from a specific source.

Also at issue in this case, among other matters, will be the eligibility of the words “Texas” and “Roadhouse” for protection under federal and Indiana intellectual-property laws. Under the Lanham Act, a federal law, the holder of a mark may ask the United States Patent and Trademark Office to register the mark on the principal register. 15 U.S.C.A. § 1051, et seq. Marks that are “primarily descriptive” and “primarily geographically descriptive” of the goods or services with which they are associated are not eligible for registration on the principal register unless they have “become distinctive of the applicant’s goods in commerce.” 15 U.S.C.A. § 1052(e), (f). Thus, registration of a descriptive mark on the principal register requires a showing of secondary meaning.

Although the Lanham Act protects both registered and unregistered marks, registration is desirable because it constitutes prima facie evidence of the mark’s validity. See 15 U.S.C.A. §§ 1057(b), 1115(a). Thus, federal registration of a mark “‘entitles the plaintiff to a presumption that its registered trademark is not merely descriptive or generic, or, if merely descriptive, is accorded secondary meaning.'” The plaintiff bears the burden, however, of establishing that an unregistered mark is entitled to protection.

The Indiana Trademark Act is similar, and in some respects identical, to the Lanham Act. Although Indiana’s body of trademark law is relatively undeveloped, the General Assembly has specified that the Indiana Trademark Act “is intended to provide a system of state trademark registration and protection that is consistent with the federal system of trademark registration and protection under the Trademark Act of 1946.” Ind. Code Ann. § 24-2-1-0.5. Moreover, “[a] judicial or an administrative interpretation of a provision of the federal Trademark Act may be considered as persuasive authority in construing a provision of the Indiana Trademark Act.

The Indiana Trademark Act’s definitions of “trademark” and “service mark” track the Lanham Act’s definitions of those terms nearly verbatim. See I.C. § 24-2-1-2(8), (9). Like the Lanham Act, the Indiana Trademark Act does not adversely affect common-law trademark rights. See I.C. § 24-2-1-15. Registration of a trademark or service mark with the office of the Indiana Secretary of State provides a registrant with a remedy for the infringement thereof under the Indiana Trademark Act. I.C. § 24-2-1-14(a). Like the Lanham Act, the Indiana Trademark Act prohibits the registration of marks that are “primarily geographically descriptive or deceptively geographically misdescriptive of the goods or services[.]” I.C. § 24-2-1-3. This provision does not, however, prevent the registration of a mark that is used in Indiana by the applicant and has become distinctive of the applicant’s goods or services. In other words, a geographically descriptive mark may be registered under the Indiana Trademark Act if it has acquired secondary meaning.
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