Indiana State Law

June 14, 2013

Leon Isaac Kennedy Sues GoDaddy, Spirit Media, Arthur Phoenix and Five Doe Defendants for Purchase of Leonisaackennedy.com

Indianapolis, Ind. – A trademark lawyer for American actor, minister, producer and writer Leon Isaac Kennedy of Burbank, Calif. sued alleging Lanham Act violations, unfair competition and violations of various Indiana state statutes as a result of defendants’ purchase of the domain name Leonisaackennedy.com. The defendants are GoDaddy.com, LLC of Scottsdale, Ariz., Spirit Media of Phoenix, Ariz., Arthur Phoenix of Phoenix, Ariz. and John Does 1-5.

In a complaint for damages and injunctive relief, Kennedy alleges that the defendants have violated his intellectual property rights by purchasing a domain name consisting of Kennedy’s first, middle and last name. Spirit Media is the registrant and owner of the domain name. Phoenix is also listed as a registrant. GoDaddy is the current registrar.

Kennedy claims that no content has ever been placed on the domain website and that the defendants have offered the domain name for sale for $5,000 at a domain auction. He asserts that this “use of the Domain violates the “Anti Cybersquatting Piracy [sic] Act.”

Kennedy asserts ownership of all interests in his name, image, likeness and voice (“Kennedy right of publicity”) as well as other intellectual property rights such as trademarks, copyrights and rights of association as associated with the Kennedy right of publicity. He alleges that the purchase constitutes unauthorized and illegal commercial use and registration of a domain name and violates his personal and/or property rights. He further claims that this commercial use has siphoned the goodwill from his various property interests and asserts that he has been irreparably harmed as a result.

The complaint lists seven claims:

· Count I: Violation of Section 1125 (a) of the Lanham Act

· Count II: Violation of Section 1125 (d) of the Lanham Act

· Count III: Unfair Competition

· Count IV: Violation of Indiana Right of Publicity

· Count V: Conversion (I.C. § 35-43-4-3)

· Count VI: Deception I.C. § 35-43-5-3(a)(6)

· Count VII: Indiana Crime Victims’ Act I.C. § 35-24-3-1

Kennedy asks for the immediate transfer of the domain name to him; an injunction enjoining the defendants from future use of Kennedy’s intellectual property; an order directing the immediate surrender of any materials featuring Kennedy’s intellectual property; damages, including treble damages; costs and attorneys’ fees.

This complaint, initially filed in an Indiana state court, was removed by GoDaddy to federal court.

Practice Tip #1: The Anticybersquatting Consumer Protection Act was enacted to create a cause of action for registering, trafficking in or using a domain name confusingly similar to, or dilutive of, a trademark or personal name. Despite alleging malicious behavior on the part of all defendants, including GoDaddy, it will be tricky to pursue this count against GoDaddy, a domain-name registrar. Under § 1125(d)(2)(D)(ii), the “domain name registrar or registry or other domain name authority shall not be liable for injunctive or monetary relief under this paragraph except in the case of bad faith or reckless disregard, which includes a willful failure to comply with any such court order.”

Practice Tip #2: I.C. §§ 35-43-4-3 and 35-43-5-3(a)(6) are criminal statutes, claimed in the complaint in conjunction with an attempt to parlay the accusation into an award for damages, costs and attorneys’ fees. The Indiana Court of Appeals has discussed “theft” and “conversion” as they pertain to takings of intellectual property in several recent cases (see, for example, here and here) and has made it clear that criminal statutes often apply differently to an unlawful taking of intellectual property.

Practice Tip #3: This complaint was submitted by Theodore Minch, who is, coincidentally, also the attorney for LeeWay Media, about which we blogged yesterday. As with LeeWay, none of the parties seems to have much connection to Indiana. It will be interesting as the case develops to analyze the rationale behind the decision to file in an Indiana court.
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May 16, 2013

Serenity Springs Prevails Against Allegations of Trademark Infringement and Cybersquatting

By Overhauser Law Offices, LLC

Indianapolis, Ind. — The Indiana Court of Appeals has vacated a trial court’s judgment in favor of the LaPorte County Convention and Visitors Bureau (the “Bureau”) of LaPorte, Ind., holding that neither trademark infringement nor cybersquatting had been committed by Serenity Springs (“Serenity”) of LaPorte, Ind.

Serenity operates a resort in LaPorte County. The Bureau is a special-purpose governmental unit charged with representing the visitor industry by marketing to potential visitors to the LaPorte area.

On September 9, 2009, the Bureau announced at a public meeting that it planned to adopt the phrase “Visit Michigan City LaPorte” as its branding identifier for the area. A representative of Serenity was in attendance. Immediately afterward, an employee for Serenity registered the domain name “visitmichigancitylaporte.com” and set it up to redirect internet traffic to Serenity’s website.

The Bureau sent a cease-and-desist letter claiming trademark infringement and cybersquatting. Serenity responded that (1) it had registered and begun using the domain name before the Bureau had made any commercial use of it and (2) the designation was not protectable as a trademark because it was merely descriptive and had not acquired distinctiveness.

In April 2010, the Bureau filed an application with the Indiana Secretary of State to register “Visit Michigan City LaPorte” as a trademark under the Indiana Trademark Act. In its application, the Bureau indicated that it had first used the mark in commerce on September 9, 2009. The application was approved. Nonetheless, Serenity continued using the visitmichigancitylaporte.com domain name.

The Bureau sued Serenity in the LaPorte Superior Court alleging, inter alia, trademark infringement, cybersquatting and unfair competition by Serenity. The trial court permanently enjoined Serenity from using “Visit Michigan City LaPorte” and ordered the transfer of the domain name “visitmichigancitylaporte.com” to the Bureau.

Serenity appealed the trial court’s holding that it had committed trademark infringement and cybersquatting. The trial court had held that, due to the Bureau’s status as a governmental entity, it was entitled to a different application of trademark law. Specifically, it held that there was a lesser requirement for using the mark to acquire trademark rights.

The appellate court disagreed. It has long been held that the exclusive right to use a mark is acquired through adoption and use of the mark in commerce. The appellate court also held that this mark was clearly geographical in nature and that it was “difficult to conceive of a mark that falls more squarely within the category of geographically descriptive marks.” Geographically descriptive designations generally fall within the descriptive category; thus, to be protected, the must have acquire secondary meaning.

The trial court considered the entirety of the time that the Bureau had been using the mark in considering whether the Bureau had established secondary meaning. It found that such secondary meaning had been established. However, the correct test for secondary meaning is to evaluate whether secondary meaning had been established by the senior user immediately prior to the time and place that the junior user began to use the mark. As this was, on its face, entirely unsupported by evidence, the appellate court held that the trial court erred in its determination that the Bureau had acquired secondary meaning in the mark. The appellate court reversed the trial court’s judgment, holding that the Bureau had not established that it held a valid and protectable trademark in the designation “Visit Michigan City LaPorte.”

The appellate court did, however, point out that additional claims had been made by the Bureau which had not been reached by the trial court. One of the claims, unfair competition, does not require the existence of a protectable trademark. Instead, it is an open-ended category of torts designed to protect “commercial values.” The appellate court remanded with instructions to the trial court to vacate its judgment as to trademark infringement and cybersquatting and to adjudicate the Bureau’s remaining claims.

Practice Tip #1: While the Indiana Trademark Act and the Lanham Act have many similarities, the former does not provide all of the protections afforded by the latter. While the Lanham Act provides that federal registration of a mark provides prima facie evidence of its validity, the Indiana Trademark Act contains no such provisions. A certificate of registration with the Indiana Secretary of State is proof of registration only (although such a registration is necessary to support a claim of infringement under the Indiana Trademark Act).

Practice Tip #2: One wonders if the entirety of this litigation might have been avoided by taking one simple step: registering the domain name before making the public announcement.
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May 9, 2013

Tough Mudder Sues Mudderland for Trademark and Service Mark Infringement

By Overhauser Law Offices, LLC

South Bend, Ind. — Tough Mudder LLC of Brooklyn, N.Y. sued alleging trademark infringement by Mudderland of Kingsbury, Ind.; and Rick and Susan Hollaway, both of Hebron, Ind. of Tough Mudder trademarks registered under Registration Nos. 3,810,118; 4,131,912; 4,308,918; 4,131,913; 4,241,510; 4,241,512; 4,241,513; and 4,233,607 for marks containing “MUDDER,” which have been registered with the U.S. Trademark Office.

Tough Mudder is in the obstacle-course industry with challenges such as multi-mile mud obstacle courses. In the past three years, Tough Mudder has held such challenges in the United States, Canada, the United Kingdom and Australia with over a million registrations. Tough Mudder has been recognized by such well-known news sources as The Wall Street Journal, ESPN, National Geographic and Sports Illustrated.

In addition to federally registered marks, Tough Mudder asserts that it is the owner of common law and federal service mark rights available without registration in the words “Mudder” and “Mudders” for use in connection with various outdoor events. It also asserts common law and federal unregistered service mark rights in the phrases “Walk the Plank” and “Berlins Walls” that are also used in conjunction with outdoor obstacle courses and similar events.

Also in the obstacle-course industry, Rick and Susan Hollaway co-own and co-operate an unincorporated entity named “Mudderland.” In 2012, the Hollaways designed, organized and promoted an obstacle-course mud challenge under the name “Mudderland” which was similar to those held by Tough Mudder. In doing so, Tough Mudder alleges that the Holloways were attempting to benefit illegally from Tough Mudder’s brand by using the similar name “Mudderland” for an obstacle-course event. The Hollaways also included other similar indicia such as the color orange and similar-or-identical obstacle names. After having been contacted by Tough Mudder, Susan Hollaway agreed to cease using the name “Mudderland” and to abandon the domain name www.mudderland.com.

Despite this purported agreement to discontinue the use of the name “Mudderland” and the associated domain name, Tough Mudder learned in 2013 that the Hollaways had resumed using both. The Hollaways planned to host a 2013 event which would also include an event named “Walk the Plank” and another named “Berlin Wall,” both of which are similar to names claimed by Tough Mudder. The Holloways’ “Mudderland” website is again using the same color scheme as Tough Mudder’s website, with orange as the predominant color.

Trademark lawyers for Tough Mudder brought this case after the Holloways failed to abide by the alleged earlier agreement by the Holloways to cease what the complaint calls their “admittedly infringing activity” of Tough Mudder’s “extraordinarily valuable trademark rights.”

Tough Mudder claims that its first use in commerce of both the Tough Mudder mark and the Mudder family of marks predate the Hollaways’ first use and therefore Tough Mudder’s use of the marks has priority. The complaint asserts that, in addition to the constructive notice of the Mudder marks provided by the federal trademark registrations, the Holloways also had actual notice of Tough Mudder’s rights in the marks as of May 21, 2012 when Tough Mudder sent the first cease-and-desist letter via e-mail to the Hollaways. Further, it is asserted that the Holloways knew of Tough Mudder’s rights and acted with wanton disregard for those rights and with the willful intent of benefiting from the goodwill of the Tough Mudder marks. Tough Mudder asserts that the Hollaways’ actions are likely to cause confusion, to cause mistake and to deceive consumers as to the source, nature and quality of the goods and services offered by the Hollaways and/or Tough Mudder.

Tough Mudder’s complaint lists ten counts:

· Count 1: Federal and State Trademark Infringement

· Count 2: Trade Name Infringement

· Count 3: State Trademark Infringement

· Count 4: Federal Statutory Unfair Competition

· Count 5: False Designation of Origin

· Count 6: Common Law Unfair Competition

· Count 7: Trademark Dilution, § 1125(c)

· Count 8: Trademark Dilution, Indiana Code § 24-2-1-13.5

· Count 9: Violation of the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d)(1)(A)

· Count 10: False Advertising, 15 U.S.C. 1125(a)

Tough Mudder lists 20 separate requests for relief, among them: preliminary and permanent injunctions; transfer of the domain name www.mudderland.com to Tough Mudder; destruction of infringing items; an accounting of the profits by Mudderland attributable to infringement or other wrongful conduct; an accounting of damages to Tough Mudder; statutory damages; punitive and/or treble damages; costs of the action; and attorneys’ fees.

Practice Tip: There are facts weighing in favor of both parties in this case and, perhaps, that is why the Hollaways have decided to continue with the allegedly infringing activities. Tough Mudder has in its favor such elements as similarity of various names, along with use of the color orange, in conjunction with muddy endurance races. On the other hand, courts are reluctant to set aside colors for any one entity (see here). Also, both the terms “Mudder” (a racehorse that runs well on a muddy racetrack) and “Mudderland” (when considered to be a whimsical spelling of “Motherland”) have meaning independent of any given to them through commercial use.

May 3, 2013

District Court Dismisses Two Counts in Konecranes’ Suit Against Industrial Crane Service

By Overhauser Law Offices, LLC

Indianapolis, Ind. — The Southern District of Indiana has dismissed two of four claims by Konecranes, Inc. of Pascagoula, Miss. against Industrial Crane Service, Inc. of Pascagoula, Miss. and Brian Scott Davis of Marion County, Ind.

Plaintiff Konecranes, Inc. (“Konecranes”) provides lifting equipment and services to various clientele including manufacturing and process industries, shipyards, ports and terminals. To serve its customers, Konecranes enters into agreements with subcontractors to assist it in the performance of the maintenance agreements it has entered into.

Industrial Crane Service, Inc. (“ICS”) has served as a subcontractor for Konecranes, although ICS and Konecranes also compete for customers to enter into maintenance agreements with them directly.

Brian Scott Davis (“Davis”) was employed at Konecranes as a Service Manager. During that employment, he and Konecranes entered into a noncompetition and confidentiality agreement, which contained provisions to keep certain Konecranes information confidential. Davis and ICS both worked for Konecranes on various maintenance and service contracts with Nucor Sheet Metal Group (“Nucor”) and Steel Dynamics Incorporated (“SDI”).

In May 2012, Davis resigned from Konecranes and began working for ICS. Since Davis began working for ICS, Nucor has cancelled purchase orders with Konecranes and SDI did not renew an existing purchase order with Konecranes. Instead, both have contracted with ICS to perform the work. Konecranes also alleged that Davis and ICS have been actively soliciting other customers to change their crane maintenance provider from Konecranes to ICS.

In response to the activities of Davis and ICS, Konecranes sued for injunctive relief and damages, asserting claims for: (1) breach of contract, (2) breach of fiduciary duty and/or duty of loyalty, (3) tortious interference with contractual relationships and (4) unfair competition. Davis and ICS moved to dismiss the claims for tortious interference with contractual relationships and unfair competition.

The court granted the motion on both counts. On the claim of tortious interference with contractual relationships, the court found that the plaintiff had “pled itself out of court” by admitting in its pleadings that an element of its claim was not present. Under Indiana law, the elements of a claim for tortious interference with a contract are: (1) the existence of a valid and enforceable contract; (2) defendant’s knowledge of the existence of the contract; (3) defendant’s intentional inducement of breach of the contract; (4) the absence of justification; and (5) damages resulting from defendant’s wrongful inducement of the breach.

While Konecranes did allege the element of “absence of justification” in its complaint, it also alleged that Davis and ICS had induced Nucor, SDI and others to break their contracts with Konecranes, or not renew them, so that ICS could gain their business. The court held that this amounted to an acknowledgement that the actions of Davis and ICS were motivated at least in part by a legitimate business interest — their own desire to secure new customers. The court held that this constituted justification under Indiana law. Having admitted in its pleadings that it lacked an element of this claim, Konecranes was barred from pursuing it.

On the claim of unfair competition, the court cited the Indiana Uniform Trade Secret Act, Ind. Code § 24-2-3-1(b) and (c) (the “IUTSA”) which “‘abolishes…causes of action for theft or misuse of confidential, proprietary, or otherwise secret information falling short of trade secret status….” It held that, under the facts of the case, Konecranes’ unfair competition claim was preempted by the IUTSA and not cognizable under Indiana law.

Practice Tip: As the court notes, while the claim under unfair competition failed, Konecranes may still pursue claims for misappropriation of information or ideas that are protected by contract. This is a good reminder to those whose practice of law includes shielding sensitive information from disclosure: if you want it protected, get it in writing.

April 1, 2013

Indiana Court of Appeals Holds that Forfeiture for Fraud in the Form of Copyright Infringement Requires Nexus Between Fraud and Forfeited Property

By Overhauser Law Offices, LLC

Indianapolis, Ind. – The Indiana Court of Appeals granted Indiana’s petition for rehearing and reaffirmed its January ruling in favor of defendant Michael Curtis that a conviction for fraud in the form of copyright infringement was, by itself, an insufficient predicate for forfeiture.

Curtis was charged with four counts of Class D felony fraud for selling pirated movies out of his truck. He pleaded guilty to one count of fraud, which was entered as a misdemeanor, and the remaining charges were dropped. The state also filed a complaint for forfeiture of Curtis’s truck under Indiana Code § 34-24-1-1(a)(1)(B) (2009), which allows the seizure of vehicles “if they are used . . . to transport . . . stolen [IC §35-43-4-2] or converted property.” The trial court granted the forfeiture.

The Indiana Court of Appeals reversed the decision, holding that fraud in the form of copyright infringement was neither garden-variety theft nor conversion and, thus, was not within the scope of the forfeiture statute. We blogged about that decision here.

The state asked for and was granted a rehearing. It argued that Yao v. State, 975 N.E.2d 1273 (Ind. 2012), required a different outcome. The appellate court disagreed, stating that, while Yao “might support the proposition that pirated movies constitute stolen property,” it failed to answer the question of forfeiture. On that issue, the court looked to Katner v. State, 655 N.E.2d 345 (Ind. 1995).

In Katner, the Indiana Supreme Court reversed the forfeiture of a vehicle predicated on an empty container in the possession of the driver that was found to have cocaine residue. There, the trial court had ordered the defendant’s vehicle forfeited under a statute allowing forfeiture where a vehicle was used to transport a “controlled substance for the purpose of. . . [p]ossession of cocaine.” The Court held that the state had not met its burden under the forfeiture provision to show a nexus between the property to be forfeited and the underlying offense.

The appellate court in this case held that such a nexus analysis was also appropriate for the forfeiture provision which applies to stolen or converted property. As the state had apparently had not shown a nexus between the use of the truck and the sales of the pirated movies, the court affirmed its earlier decision.

Practice Tip: It looks like Curtis can keep his truck. However, in the January decision, the appellate court suggested that legislation would likely be required to allow forfeiture in cases involving copyright infringement. In contrast, this current decision seems to hold that, should the required nexus between property and copyright infringement be proven at trial, a forfeiture statute could be used to seize property involved in that infringement.
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March 22, 2013

Royal Purple Sues Liqui Moly GmbH for Trademark Infringement for Selling Purple Lubricants

By Overhauser Law Offices, LLC

Indianapolis, IN – Trademark lawyers for Royal Purple, LLC of Indianapolis, Indiana sued Liqui Moly GmbH of Ulm, Germany in the Southern District of Indiana alleging trademark infringement for selling purple automotive lubricants.

At the center of this litigation is the right to use the color purple. Royal Purple claims it has sold lubricants for more than 20 years and has trademarked the color purple. It owns several federal trademark registrations for the color purple as applied to lubricating oils for automotive, industrial and household uses. Among the trademarks are U.S. Registration Nos. 2,691,774; 2,953,996 and 3,819,988 which cover the following:

It also owns multiple trademarks incorporating the word “purple” as applied to various goods. These trademarks are registered with the US Trademark Office. Purple was chosen for its association with royalty. (Historically, purple dye was so expensive to produce that it was used only by royalty.) Royal Purple’s purple-identified lubricant products are sold in over 20,000 retailers in the United States and Royal Purple claims a strong secondary meaning and substantial goodwill in its trademark as a result of this use.

Liqui Moly sells Liqui Moly and Lubra Moly brand motor oil, both of which have packaging that is supposedly purple prior to sale. Royal Purple alleges that Liqui Moly’s use of the color purple in conjunction with the sale of motor oil is likely confuse consumers. According to Liqui Moly’s website, its products are sold in a variety of different containers:

Royal Purple also alleges that Liqui Moly’s use is a purposeful attempt to trade upon Royal Purple’s trademark and that Liqui Moly’s use will dilute the “distinctive quality” Royal Purple’s trademarks. Finally, it alleges that Liqui Moly’s use removes from Royal Purple its ability to control the quality of products and services provided under Royal Purple’s trademark, by placing them partially under the control of Liqui Moly, an unrelated third party.

The federal claims include trademark infringement, unfair competition and dilution under the Lanham Act; Royal Purple has also alleged dilution, trademark infringement, unfair competition and unjust enrichment under Indiana common law. Royal Purple seeks a preliminary and permanent injunction, the destruction of all allegedly infringing inventory, treble damages, costs and attorneys’ fees.

Practice Tip: Color can serve as a useful identifier of the source of goods to consumers. The courts, however, have had to draw some narrow lines to balance the various interests. On the one hand, companies often invest significant amounts of money in promoting their brands and color is frequently a component of that promotion. On the other hand, there are a limited number of colors – and an even more limited number of colors that are pleasing and appropriate for any given type of product – and courts are wary of providing a monopoly on any given color to any one company. After all, if such a monopoly is first provided to one company, all too soon the entire spectrum may be spoken for.
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January 29, 2013

Indiana Court of Appeals Vacates Trial Court’s Order to Forfeit Truck Used for Sales of Pirated Movies

By Overhauser Law Offices, LLC

Indianapolis, IN – The Indiana Court of Appeals has vacated the decision of The Honorable Timothy Oakes, Marion County Superior Court, to seize the truck of a defendant who pled guilty to fraud for having sold pirated movies from the truck.

In December 2009, the State charged Michael Curtis with felony fraud for selling pirated movies out of his truck. The State also sought forfeiture of the truck from which the movies had been sold under 34-24-1-1(a)(1)(B) which allows for the seizure of vehicles that are used to facilitate the transportation of “stolen . . . or converted property” valued at $100 or more.

Curtis pled guilty to one count of fraud and the remaining charges were dismissed. The court granted the State’s motion to seize the truck. Curtis filed a motion in opposition, which was not granted, and later appealed.

Upon appeal, Curtis cited Dowling v. United States, 473 U.S. 207 (1985) as precedent and the Indiana Court of Appeals discussed the case.

The U.S. Supreme Court held that a copyright was “no ordinary chattel,” Dowling, 473 at 216. Theft of a copyrighted work via infringement was held to be distinguishable from theft of tangible property as it “plainly implicates a more complex set of property interests than does run-of-the-mill theft, conversion, or fraud.” Id. at 218.

In Dowling, the defendant had engaged in infringement but had been convicted under the portion of the National Stolen Property Act (“NSPA”) which criminalized actions wherein items, subject to other conditions, were “stolen, converted or taken by fraud.” 18 U. S. C. § 2314. The Court ruled that the language of “stolen, converted or taken by fraud” did not include copyright infringement. Under the rule of lenity — a rule which calls for construing ambiguous criminal statutes in favor of criminal defendants — the Court held that the defendant had not violated the NSPA by infringing upon a copyright.

In Dowling, the rule of lenity caused the Court to construe the language of a criminal statute narrowly. Here, the Indiana Court of Appeals was asked to interpret a statute authorizing forfeiture, another type of statute that is strictly construed. As the language “stolen . . . or converted” did not include either fraud or copyright infringement, the order of the trial court to forfeit the truck was vacated.

Practice Tip: While the penalties for copyright infringement can be significant, the rule in Dowling will presumably prevent many statutes prohibiting theft of tangible items from being applicable to copyright infringement unless the legislature makes clear its intent to include copyright infringement in the language of the statute.

January 10, 2013

Attorney and Professional Photographer Richard Bell of McCordsville, IN Sues Seventy-Three Defendants in Two Separate Complaints Filed in the Southern District of Indiana Alleging Copyright Infringement

By Overhauser Law Offices, LLC

Indianapolis, IN – Attorney and self-proclaimed professional photographer Richard N. Bell, suing on his own behalf, filed two separate complaints alleging copyright infringement and unfair competition under the Copyright Act and conversion under Indiana statutory law as a result of the unauthorized use of a photograph he had taken and which had been registered with the United States Copyright Office. Bell is seeking damages, injunctive relief and a declaratory judgment. Mr. Bell has been disciplined by the Indiana Supreme Court for violating the Rules of Professional Responsibility. (See Disciplinary Action here.)

In the first complaint, filed January 4, 2013, Bell named twenty-five separate Defendants: Greg Bayers, LLC; Leppart Associates; crazy-frankenstein.com; Hometown Rentals; Frank Kirchner; Brent Bythewood; Pixmule.com; InternMatch; Team Champion; Electraproducts; Alex Bruni; Mark Groff; Greatimes Family Fun Park; Peter Brzycki; Tom Kelly; Relociti.net; gerberbabycontest.net; MerchantCircle, Inc; Amber Russell; WSBT, Inc.; Delia Askew; Intercontinental Industries; The Friedman Foundation for Educational Choice; Linen Finder, Inc.; and Radio One of Indiana.

In the second complaint, filed January 8, 2013, Bell named the remaining forty-eight Defendants: Jerry Gordon; Demand Media, Inc.; Bryce Welker; Royal Corniche Travel Ltd.; VRBO.com, Inc.; Experience Credit Unions, LLC; Jaclothing.com; Glacier International; ABNHotels.com; 1&1 Internet, Inc.; Conde Nast Digital; Flixter, Inc.; Financing-USA.com; SodaHead, Inc.; NuMedia Marketing, Inc.; Jynell Berkshire; Tzvetelin Petrov; Los Pentecostales del Area de la Bahia; 10Best, Inc.; Keyes Outdoor Advertising; Zoom Communications Inc.; Christine Nevogt; Zarzar, Inc.; Hydro-Gear; Tam T. Dang; Lon Dunn; William McLaws, Trustee; Natl-electronic Residential Payment History Recording Agency; CVI; Constant Contact, Inc.; Charles Lantz; Schumacher Cargo Logistics; Eventbrite, Inc.; Celebrity Entertainment Corp.; Association of Equipment Manufacturers; Yardi Systems Inc.; DiamondIndyLimo.com; Marcelo Santos; National Rural Recruitment & Retention Network; Anbritt Stengele; Pinnacle Sports Equipment, Inc.; Marygrove College; RunAnyCity.com; Buzzle.com, Inc.; Charles Onuska; University of Indianapolis; and PersephoneMagazine.com.

July 31, 2012

CP Productions, Inc. Sues John Doe for copyright Infringement of Video: “GH Hustlers – Maryjane’s Second Visit”

By Overhauser Law Offices, LLC

Indianapolis IN – Copyright lawyers for CP Productions, Inc. of Phoenix, AZ filed a copyright infringement declaratory judgment suit in alleging John Doe, an alleged serial infringer known at this time only by an IP address, infringed the copyrighted work “GH Hustlers – Maryjane’s Second Visit” which has been registered by the US Copyright Office.

In the complaint filed by attorneys for CP Productions, John Doe and other un-named parties are believed to have infringed a copyrighted video belonging to CP Productions. CP Productions is a producer of adult entertainment and seeks judgment against John Doe and others for the alleged serial infringement of the video “GH Hustlers–Maryjane’s Second Visit” to which the Plaintiff owns the copyright. John Doe and the joint tortfeasers are not known by name but rather, through their IP address and attorneys for CP Productions will be filing a Motion for Leave to Take Discovery in order to ascertain the actual identities of the Defendants from their ISPs. CP Productions is seeking judgment from counts including copyright infringement, civil conspiracy, and contributory infringement. CP Productions claims to have observed John Doe’s infringing multiple copyrighted content through agents the Plaintiff has employed using the BitTorrent protocol because the Plaintiff employs P2P netword forensic software to provide real time monitoring of the BitTorrent swarm that distributes the video. This software allowed CP Productions to log John Doe and the joint tortfeasers unlawful activities. CP Productions further alleges that John Doe and the joint tortfeasers intentionally downloaded a torrent file particular to the Plaintiff’s video, purposefully uploaded the torrent into their BitTorrent clients and entered a BitTorrent swarm particular to the Plaintiff’s video and reproduced and distributed the copyrighted video among themselves and third parties thereby becoming both and uploader and downloader of the video. By doing so, CP Productions claims that this “ever growing swarm will jointly contribute to the complete download of the Video for all individuals that enter the swarm at any given moment.” CP Productions believes that this lawsuit is the only practical means by which to combat BitTorrent based infringement. Because the damage claimed by CP Prodcutions includes economic and reputation losses, to which Plaintiff asserts will continue, the Complaint sets out demand for actual or statutory damages allowed under the Copyright Law, compensatory damages for the counts of civil conspiracy and contributory infringement, and an order or impoundment for all copies of Plaintiff’s works, photographs or other materials in the Defendant’s possession or control.

Practice Tip: The BitTorrent protocol is a decentralized method that allows users to distribute data via the Internet, and has become an extremely popular method for unlawful copying, reproducing and distributing files in violation of the copyright laws. Where this market was once consumed by music copyright violations, the adult entertainment industry has seen an increase in litigation against infringers using BitTorrent-based technology. Although no concrete rules govern jurisdiction of the Internet, Indiana’s long arm statute (Indiana Rule of Trial Procedure 4.4) permit personal jurisdiction of Defendants if they either downloaded or uploaded the copyrighted material.

May 2, 2012

Aaron Suozzi Sues Coman Publishing Company for Copyright Infringement of Photographs

By Overhauser Law Offices, LLC

Fort Wayne; IN – Copyright attorneys for Aaron Suozzi of Fort Wayne, Indiana filed a copyright infringement suit in the Allen County Superior Court alleging Coman Publishing of Durham, North Carolina infringed the copyrighted work of photographs which has been registered by the US Copyright Office. Upon the request of the defendant, the case was removed to the Northern District of Indiana.

Aaron Suozzi is a freelance photographer who provided his services to Coman Publishing. On December 8, 2011, Suozzi was informed that his services would no longer be used by Coman. He immediately demanded his photographs back and that Coman cease using his copyrighted photographs. Coman continued to use Suozzi’s copyrighted photographs; the January issue of Blue and Gold Illustrated, published on December 13, 2011 contained 16 of Suozzi’s copyrighted photographs, one being the magazine’s cover photo. According to the complaint, on December 15, Coman again informed Suozzi that they would no longer be using his services. Suozzi sent a cease and desist letter to Coman to stop using any of Suozzi’s copyrighted photographs in their magazine and on their website. Coman failed to do so. The complaint alleges Coman’s continued use of the copyrighted photographs violates Indiana Code §35-43-5-3 and that Coman’s knowing misapplication of Suozzi’s property involved substantial risk of loss to Suozzi. Suozzi seeks to recover $6,000, which includes his damages and attorney fees, plus interest, and court costs.

Practice Tip: Any case filed in state court that makes a federal claim can be removed to federal court upon request. Most intellectual property cases involve a federal claim under the federal patent, trademark or copyright laws. Here, however, the plaintiff has not explicitly stated a federal claim. However, it is clear he seeks protection of “copyrighted” photographs, which would invoke federal copyright law.