Indiana State Law

April 4, 2012

Continued Use of Trademark By Successor Company Relevant to “Piercing the Corporate Veil” and Successor Liability for Breach of Contract

Indianapolis, IN – The Indiana Court of Appeals has held that a successor company’s continued use of a trademark created a genuine issue of fact as to whether the successor should be liable for a breach of contract by its predecessor. Attorneys for Zeise & Sons Excavating, Inc. of Crown Point,Indiana had sued Boyer Construction Group Corporation (“Group”) of Highland, Indiana in the Lake County Superior Court for breach of contract and had argued that Group should be liable for the breach by its predecessor company, Boyer Construction Corporation (“Corporation”), under theories of breaching the corporate veil of an alter ego corporation. Zeise also argued that Group should be liable under a theory of successor liability. The contract in question involved construction of a retail development. It was undisputed that Zeise had performed all of its obligations under the contract and that Corporation had failed to pay as provided by the contract. The Lake County Superior court had granted Group a partial summary judgment in favor of Group, finding neither of Zeise’s theories created liability for Group.

The Court of Appeals reversed the summary judgment. The court noted that a decision to pierce to corporate veil requires a fact-sensitive inquiry. The court noted that Zeise had presented numerous facts to support piercing the corporate veil, including continued use of trademarks, logos and website address. In addition, the Court of Appeals found that continued use of trademarks, logos and website address created issues of material fact regarding Ziese’s successor liability claim. The court, however, declined to issue a summary judgment in favor of Ziese. Rather, the court found that Ziese raised a genuine question of a material fact and therefore summary judgment was not appropriate. The case has been remanded for trial.

Practice Tip: When a company sells its assets to another company, it is important to remember intellectual property such as trademarks, patents and copyrights. Failure to document an assignment or license can result the “piercing the corporate veil,” and personal liability of the business owners.

March 9, 2012

Bill to Expand Indiana’s Right to Publicity Law Won’t Pass This Year

By Overhauser Law Offices, LLC

Indianapolis, IN – Today is the last day of the Indiana General Assembly’s legislative session, called Sine Die, and it looks like the session will end without passing of proposed changes to the Indiana Right to Publicity law. The bill would have clarified that a person who died before 1994 does have the publicity rights provided by the law. This bill is co-authored by Representatives <a href="http://www.in.gov/h57/" font ShelbyvilleSean Eberhart of Shelbyville and Ralph Foley of Martinsville. As we blogged, the bill was passed by the Indiana House, but did not make it through the Senate committee.

As we have previously blogged about Indiana Right to Publicity law is considered one of the strongest in the world.

Practice Tip: The authors of this bill are free to propose it again next year. This year’s legislative session was a “short session” and the law makers were focused on several high-publicity issues. It looks like the right to publicity bill had some initial momentum, but the lawmakers ran out of time to get it passed.

February 20, 2012

More on the Pending Bill to Expand Indiana’s Right to Publicity Law

By Overhauser Law Offices, LLC

Indianapolis, IN – In an update to our earlier blogs, the Hollywood Report has published a long article about Indiana’s Right of Publicity Law, I.C. 32-36-1-8, and the pending bill to amend that law. The article states that dead celebrities “enjoy phenomenal legal rights in the state.” Several Indiana intellectual property attorneys who represent the estates of deceased celebrities are quoted.

The article focuses on the recent decision of the John Dillinger case involving the Right to Publicity law, which Indiana Intellectual Property Law and News blogged about here.

As we have previously blogged about, Indiana’s Right to Publicity law is considered one of the strongest in the world.

Practice Tip: In order to pass this session, the bill must pass the Senate no later than March 14, 2012 since the General Assembly is in a short session this year. As we blogged, the bill has already passed the Indiana House. At this point, the bill is in a senate committee, but no hearings are scheduled for next week.
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February 8, 2012

Update: Right of Publicity Bill Passes Indiana House, Now Before Indiana Senate

By Overhauser Law Offices, LLC

Indianapolis, IN – In an update to our blog last week, a bill in the Indiana General Assembly that would make changes to Indiana’s Right of Publicity Law, I.C. 32-36-1-8, passed the Indiana House, 85-7, on January 30. The bill is now before the Senate Committee on Public Policy. No hearing is scheduled at this time.

As we have previously blogged about, Indiana’s Right to Publicity law is considered one of the strongest in the world.

Practice Tip: Now that the bill has passed the Indiana House, it must pass the senate and be signed by Governor Daniels to become law. It looks like it is moving quickly enough that it could be enacted by the March 14 short session deadline.
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January 24, 2012

Indiana House Bill Looks Right of Publicity

By Overhauser Law Offices, LLC

Indianapolis, IN – A bill pending in the Indiana General Assembly would make changes to Indiana’s Right of Publicity Law, I.C. 32-36-1-8. The bill would clarify that a person who died before 1994 does have the publicity rights provided by the law.

This bill is co-authored by Representatives Sean Eberhart of Shelbyville and Ralph Foley of Martinsville. It has been referred to the House Judiciary Committee. The Indianapolis Star quoted Representative Foley as explaining the need for the law as confusion in federal courts regarding whether the publicity rights attach to persons who died before 1994.

As we have previously blogged about, Indiana’s Right to Publicity law is considered one of the strongest in the world. This bill, if passed, appears to strengthen that law even further. The Indiana Law Blog has compiled some recent blogs regarding the Right to Publicity law.

Practice Tip: The Indiana General Assembly has a “short session” this year, meaning March 14 will be the last day of the session. If this bill is to become a law this session, it must move quickly through the House and Senate committees in the next several weeks in order to get to Governor Daniel’s desk by March 14.
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December 27, 2011

Brightpoint Suing Former Executive Over Trade Secrets

By Overhauser Law Offices, LLC

Indianapolis, IN – Brightpoint of Indianapolis has filed a lawsuit against former executive, Mitch Black, of Miami, Florida, alleging he has breached an employment contract that included protection of Brightpoint’s trade secrets. The lawsuit also names Brightstar Corporation as a defendant, arguing that the company knew or should have known that Mr. Black had violated trade secret laws.

According to an Indianapolis Star news report, Mr. Black left Brightpoint in 2010 and has recently taken a new job at Brightstar Corporation of Miami, Florida. Mr. Black served as senior vice president and was in charge of North American division. The complaint states that Mr. Black had daily access to trade secrets including strategic planning. According to a report from the Indianapolis Business Journal, Mr. Black has admitted to removing confidential information such as business plans, spreadsheets, accounting information and customer lists from Brightpoint.

Practice Tip: This case makes a claim under Indiana’s Trade Secrets Act, which allows a plaintiff to seek an injunction and damages when someone has misappropriated a trade secret.

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.

By Overhauser Law Offices, LLC

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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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.

July 28, 2011

Indiana’s Unique Right to Publicity Law Examined

By Overhauser Law Offices, LLC

Indianapolis, IN – Indiana, like eighteen other states, has a right to publicity law that can be described as the right to control the commercial use of one’s identity. The right to publicity, sometimes called personality rights, are state law rights, unlike most intellectual property rights, which are federal rights. According to Wikipedia, Indiana’s right to publicity is considered to be the most far reaching right to publicity law in the world. Indiana’s current right of publicity law, I.C. 32-36-1 et seq., was enacted in 1994. Indiana’s law grants a proprietary interest to a personality’s name, voice, signature, photograph, image, likeness, distinctive appearance, gesture or mannerisms where the personality has commercial value. The law requires permission before another uses one’s personality for commercial purposes and provides for damages if the personality is used without consent. Rightofpublicity.com has an interesting blog entry on the history of the right to publicity.

Indiana Intellectual Property Law News blogged last month about the recent decision of the Southern District Court of Indiana in the Dillinger case. The Indiana Court of Appeals has also examined a case involving the right of publicity and coincidentally also concerning the John Dillinger personality. In that case, Phillips v. Scalf, 778 N.E.2d 480 (Ind. Ct. App. 2002), Scalf alleged he owned the Dillinger right to publicity and that Phillips was operating a restaurant in Steuben County that utilized the Dillinger personality without permission. This decision, however, involved the question of venue and did not substantively examine the right to publicity statute. Indeed, it appears that neither the Indiana Supreme Court nor the Indiana Court of Appeals have issued substantive decisions on the Indiana Right to Publicity.