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June 24, 2016

Indiana Trademark Litigation: Fitness Studio Operator Accused of Trademark Infringement, Fraud

Indianapolis, Indiana – A Massachusetts trademark lawsuit filed in July 2015 was transferred to the Southern District of Indiana, Indianapolis Division. Plaintiff Get In Shape Franchise, Inc. (“GIS”), a Massachusetts-based franchisor, alleges that Defendants TFL Fishers, LLC and its sole member, Rosalyn Harris; Thinner For Life, Inc.; and Fit Chicks, LLC, all of Fishers, Indiana infringed its intellectual property rights. GIS asks the Indiana federal court: (1) to order the discontinuation of Defendant’s infringement of its registered trademarks; (2) for injunctive relief due to breach of contract, unfair competition and breach of the covenant of good faith; (3) to order compliance by Harris of her post-contractual obligations.

GIS sells fitness franchises under the service mark “Get In Shape For Women.” Registration Certificates for Plaintiff are as follows:

MARK	Reg. No.	Reg. Date
“Get in Shape for Women”	Service Mark Reg. 3,374,173	Jan. 22, 2008
“Your treatment is complete”	Service Mark Reg. 4,241,902	Nov. 13, 2012
“Get in Shape for Women Small Group Personal Training”	Service Mark Reg. 4,249,694	Nov. 27, 2012

Plaintiff contends that it entered into such a franchise agreement with TFL Fishers and Harris in April 2013 for use in the Fishers, Indiana market. This agreement provided for payment to the franchisor of a transfer fee as well as a royalty on the franchise’s gross sales. Plaintiff contends that, pursuant to the agreement, Harris also agreed to various restrictions on her activities, including prohibitions on certain activities that would compete with GIS.

According to the complaint, Harris notified GIS on June 24, 2015 that TFL Fishers was discontinuing its franchised business and had closed its Fishers fitness studio. Instead, contends Plaintiff, it discovered on June 30th that the Fishers studio continued to operate but that it had changed its name to “Fit Chicks.” GIS alleges that this was improper. It also accuses Defendants of other wrongful acts, such as willfully underreporting total sales and, consequently, underreporting the royalty fees due to GIS.

Trademark attorneys for Plaintiff list the following claims for the Indiana federal court’s review and adjudication:

• First Cause of Action: Violation of the Lanham Act
• Second Cause of Action: Breach of Contract – Injunctive Relief
• Third Cause of Action: Breach of Contract – Damages
• Fourth Cause of Action: Breach of the Covenants of Good Faith and Fair Dealings
• Fifth Cause of Action: Unjust Enrichment
• Sixth Cause of Action: Unfair Competition

• Seventh Cause of Action: Fraud

Plaintiff seeks damages, including treble damages, along with enforcement of the franchise agreement, equitable relief, attorney’s fees and costs.

October 27, 2015

Indiana Intellectual Property Litigation: Roche Seeks Declaration of Non-Infringement of Meso’s Rights to ECL Technology

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Indiana intellectual property attorneys for Plaintiff Roche Diagnostics Corporation of Indianapolis, Indiana filed a lawsuit in the Southern District of Indiana asking for a declaration of non-infringement of rights to patented technology licensed to Defendant Meso Scale Diagnostics, LLC of Rockville, Maryland.

At issue in this patent-related lawsuit is the right to use patented Electrochemiluminescence (“ECL”) technology owned by BioVeris Corporation. ECL is a detection technology that uses electricity, chemistry and light to detect and measure the presence of specific molecules in a test sample. It is used to detect, monitor, and guide the treatment of disease and other conditions.

In 1995, BioVeris licensed its ECL technology to Defendant Meso. Under this license, Meso was granted an exclusive license to use ECL technology for certain limited purposes. BioVeris later entered licensing agreements granting Roche Diagnostics use of ECL technology. Meso contends that Roche Diagnostics’ use of BioVeris’ ECL technology constitutes a violation of the exclusive rights granted to Meso. Roche Diagnostics asserts that its use does not violate Meso’s rights under the Meso license and that, while Meso was not a party to the first agreement licensing the ECL technology to Roche Diagnostics, executed in 2003, Meso expressly consented to that entire agreement. A second agreement licensing the technology was executed between BioVeris and Roche Diagnostics in 2007.

In 2013, a related dispute between Miso and Roche Diagnostics in Delaware state court was resolved in favor of Roche Diagnostics after a five-day bench trial. That judgment was affirmed by the Delaware Supreme Court in June 2015. Roche Diagnostics claims that, this concluded lawsuit notwithstanding, Meso continues to assert that Roche Diagnostics’ activities infringe Meso’s rights and continues to threaten litigation.

Indiana patent lawyers for Roche Diagnostics filed this action for declaratory judgment seeking a judgment declaring that it has not infringed Meso’s license rights in the ECL technology. Roche also seeks an award of attorney’s fees and costs.

Practice Tip: Because the validity of the BioVeris’ patents is not in dispute, and because Roche Diagnostics concedes that some of its products include BioVeris’ patented ECL technology, BioVeris was not included as a party in this lawsuit.

September 23, 2015

Indiana Copyright Litigation: Latitude 360 Indianapolis Sued for Copyright Infringement

By Overhauser Law Offices, LLC

Jacksonville, Florida – A copyright lawyer for Universal Music Corp., WB Music Corp., EMI April Music, Inc., Bovina Music, Inc., and B.I.G. Poppa Music, all members of the American Society of Composers, Authors, and Publishers (“ASCAP”), sued in the Middle District of Florida asserting copyright infringement against Latitude 360 Nevada, Inc., Latitude 360 Jacksonville LLC, Latitude 39 Group LLC, Latitude 360 Indianapolis LLC and Brent W. Brown. ASCAP is headquartered in New York, New York. Among the Defendants is Indianapolis restaurant Latitude 360 Indianapolis.

ASCAP is a membership association. It licenses and protects the public performance rights of more than half a million members, including songwriters, composers and music publishers. Latitude 360 Indianapolis is a place of business that offers public entertainment and refreshment.

Plaintiffs have asserted that Latitude Indianapolis 360 infringed multiple copyrighted works by permitting unlicensed performances of copyrighted works belonging to Plaintiffs. Plaintiffs claim that, since November 2012, they have attempted to contact Latitude 360 Indianapolis and/or other Defendants more than 40 times to offer an ASCAP license but that these offers were refused. Four causes of action for copyright infringement have been alleged in this copyright lawsuit.

Plaintiffs ask for injunctive relief against Defendants ordering them to cease publicly performing Plaintiffs’ compositions; and a judgment for statutory damages, attorney’s fees and costs.

July 20, 2015

Indiana Trademark Litigation: Trademark Infringement Litigation to Proceed in Federal Court

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana state court complaint filed by Indiana trademark attorneys for 7E Fit Spa Licensing Group LLC, 7E Holdings 1 LLC, and 7E LLC was removed to the Indianapolis Division of the Southern District of Indiana upon the request of trademark lawyers for Defendants 7EFS of Highlands Ranch, LLC, Spectrum Medspa, Gordon Smith and Jane Smith.

Plaintiffs contend that they entered into various agreements with Defendants, including licensing and operating agreements, and that Defendants breached portions of one or more of the agreements in the operation of Defendants’ Littleton, Colorado business establishment.

Defendants are accused of violating the Lanham Act – 15 U.S.C. § 1114(a), 15 U.S.C. § 1125(a) and 15 U.S.C. § l 125(c) – as well as common law trademark infringement, unfair competition, breach of contract, tortious interference, breach of fiduciary duties and conversion.

June 16, 2015

Indiana Copyright Law: Court Prevents Copyright Plaintiff Bell from Outmaneuvering Legal System; Orders Bell to Pay Almost $34,000 in Fees and Costs

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Plaintiff and Indiana copyright attorney Richard Bell of McCordsville, Indiana was ordered by Judge Tanya Walton Pratt of the Southern District of Indiana to pay almost $34,000 in attorney’s fees and costs to Defendant Charles Lantz, whom Bell had sued on unsupported allegations of copyright infringement.

Indiana copyright attorney Richard Bell, who is also a professional photographer, has sued hundreds for copyright infringement. The lawsuits began in 2011. At issue in Bell’s spate of litigation were allegations of unauthorized use of his copyrighted photograph of the Indianapolis skyline, which had been registered at the U.S. Copyright Office. The ongoing saga of this multiplicity of copyright lawsuits took an interesting, if unsurprising, turn last week.

According to an article in The Indiana Lawyer, Bell has said that most Defendants whom he has sued have settled early. Acknowledging the expense of litigation – and the relative ease of escaping litigation by simply paying a settlement without any finding of liability – Bell said, “A responsible lawyer and their clients, they obviously know it’s going to be far more expensive to try it.”

A current copyright-infringement lawsuit, filed January 8, 2013 by Bell, named forty-seven Defendants. Forty-six of those Defendants were dismissed from the lawsuit, including some who settled and some against whom a default judgment was issued. Default judgments of $2,500 were awarded in this litigation.

One Defendant, Charles Lantz, refused to pay for copyright infringement that he had not committed and hired Indiana intellectual property attorney Paul Overhauser (publisher of this blog) to defend him. In December 2014, Lantz’s perseverance paid off and the court granted an unopposed motion for voluntary dismissal of the litigation against Lantz. Last week, Lantz’s perseverance paid off again when Overhauser, on behalf of Lantz, sought and was awarded $33,974.65 in attorney’s fees and costs from Plaintiff Bell.

The court explained that, because Bell’s copyright litigation against Lantz had been dismissed with prejudice, Lantz became the “prevailing party” under the Copyright Act. Under 17 U.S.C. § 505, in any civil copyright action, the district court may award litigation costs, including attorney’s fees, to the prevailing party.

In evaluating whether to exercise its discretion to award such costs to Lantz, the court stated, “Defendants who defeat a copyright infringement action are entitled to a strong presumption in favor of a grant of fees.” The court looked to the Fogerty factors, which are so named after Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994), a U.S. Supreme Court case involving the shifting of costs in copyright litigation. These factors are nonexclusive and include: “(1) the frivolousness of the action; (2) the losing party’s motivation for filing or contesting the action; (3) the objective unreasonableness of the action; and (4) the need to advance considerations of compensation and deterrence.”

The court found that each of these factors weighed against Bell. It stated that Bell had possessed no evidence against Lantz that would prove either a conversion or a copyright claim. It also characterized Bell’s motivation for filing the lawsuit as “questionable,” noting that Bell had attempted to save himself “extensive filing fees” by improperly joining defendants and had “sued forty-seven defendants and then quickly offered settlements to defendants who were unwilling to pay for a legal defense.”

Regarding the third and fourth factors, the court held that the litigation was objectively unreasonable, given that Lantz had been sued “without any evidence to support the claims.” The court then turned to the last of the Fogerty factors, the need to advance considerations of compensation and deterrence. It noted that Bell had leveraged his status as a practicing attorney “to file meritless suits and to attempt to outmaneuver the legal system” (which was perhaps a hat tip to the now-famous opinion written by Judge Otis D. Wright III, who employed similar language against another copyright plaintiff widely regarded as a copyright troll).

Finally, the court was not swayed by Bell’s assertions that Lantz had failed to inform Bell that the wrong defendant had been sued and that Lantz had incurred unnecessary attorney’s fees. In response to these claims, the court noted that Lantz had “denied liability at his first opportunity.” The court also opined that, while defense counsel is not required to take the most economical defense strategy in defending a copyright lawsuit, it appeared that the “most economical approach feasible” may have been taken.

With all Fogerty factors weighing against Bell and no viable opposition permitting either an escape from fees and costs or a lessening of the amount, the court awarded to Defendant Lantz $33,974.65, the full amount requested.

Practice Tip: The Indiana Lawyer wrote an interesting piece regarding Judge Pratt’s order. That article may be viewed here.

May 18, 2015

Indiana Patent Litigation: Klink Trucking Sues Seaboard Asphalt for Declaration of Non-Infringement

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – Indiana patent attorneys for Klink Trucking Inc., K-Tech Specialty Coatings, Inc., BIT MAT Products of Indiana, Inc. and BIT MAT Products of Michigan, Inc. (collectively the “Klink Group”), all of Ashley, Indiana, initiated an intellectual property lawsuit in the Northern District of Indiana alleging that Seaboard Asphalt Products Company (“Seaboard Asphalt”) of Baltimore, Maryland wrongly accused Klink Group of infringing Seaboard Asphalt’s patented “Trackless Tack Coat,” Patent No. 8,764,340, which has been issued by the U.S. Patent Office.

Seaboard Asphalt claims ownership of U.S. Patent No. 8,764,340 for a “Trackless Tack Coat” (“the ‘340 patent”). This patent protects an “asphalt emulsion available for high performing, trackless tack coat applications. The tack coat can be used with hot mix asphalt, warm mix asphalt or cold mix asphalt to provide a tack coat on an existing bituminous or concrete pavement surface. The tack coat can also be used for repair of potholes, utility cuts, and general pavement patching areas.”

On April 28, 2015, Seaboard Asphalt contacted Klink Group. According to a document filed with the Indiana court, Seaboard Asphalt stated that it believed that Klink Group’s “AE-NT Trackless Tack Coat” infringed Seaboard Asphalt’s ‘340 patent and requested that Klink Group “discontinue production and distribution for sale of your AE-NT and all versions of Trackless Tack Coat which violate our Patent” until Klink Group and Seaboard Asphalt had entered into a licensing agreement.

This Indiana litigation arises from that assertion and request by Seaboard Asphalt. Klink Group asserts that it has no liability for infringement of the ‘340 patent because none of the Klink Group entities have infringed any valid and enforceable claim of the ‘340 patent. Plaintiffs have sued under the Declaratory Judgment Act. They ask the Indiana federal court for two declarations with respect to the patent-in-suit:

• Count I – Declaration of Non-Infringement

• Count II – Declaration of Invalidity

Plaintiffs also ask the court to declare this case to be exceptional under 35 U.S.C. § 285 and, pursuant to such a declaration, to award to Plaintiffs its reasonable attorneys’ fees, expenses and costs relating to this patent litigation.

April 23, 2015

USPTO Announces Patents for Humanity Winners

By Overhauser Law Offices, LLC

Washington, D.C. – The U.S. Commerce Department’s United States Patent and Trademark Office (“USPTO”) recently announced the latest winners of the Patents for Humanity program. The Patents for Humanity program was launched by the USPTO in February 2012 as part of an Obama administration initiative promoting game-changing innovations to solve long-standing development challenges.

“As innovation and economic progress have made the world increasingly connected, more and more industries are realizing that their technologies can improve lives everywhere,” said Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office Michelle K. Lee. “The experiences of businesses across industries have shown that helping the less fortunate can go hand in hand with developing commercial markets, and that humanitarian entrepreneurship provides new opportunities for those with vision to pursue them.”

The Patents for Humanity Award is the top award for applicants best representing the Patents for Humanity principles. Award recipients will receive public recognition at an award ceremony sponsored by the USPTO. They will also receive a certificate to accelerate certain matters before the USPTO: a patent application, ex parte reexam, or an ex parte appeal to the Patent Trial and Appeal Board. Inter partes matters and other post-grant proceedings may not currently be accelerated. Honorable mentions will receive accelerated examination of one patent application and a featured write-up on the USPTO website. A portion of honorable mentions may be awarded for the best up-and-coming technologies.

April 9, 2015

Indiana Trademark Lawsuit: Bekins Sues Licensee of “Bekins” Trademark

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana trademark lawyer for Wheaton Van Lines, Inc. and Bekins Van Lines, Inc., both of Indianapolis, Indiana (collectively, “Bekins”), filed a trademark-infringement lawsuit in the Southern District of Indiana alleging that Faulk-Collier Moving & Storage, LLC and David Vaughn, both of Louisiana, infringed the trademark BEKINS®, which has been registered by the U.S. Trademark Office as Trademark Registration No. 2427605.

Faulk-Collier, a moving-and-storage company in business since 1932, has been sued by Bekins for both trademark infringement and breach of contract. Bekins, which was founded in 1891, contends that it has made extensive use of the Bekins trademark, which it asserts has become both incontestable and famous. Bekins’ uses, it states, include inclusion in all of Bekins’ advertising materials, as well as being emblazoned on the side of all of the trucks, vans and trailers operating under Bekins’ authority for over ten years. Bekins has also sued Vaughn for more than $73,000, alleging that he personally guaranteed payment to Bekins.

In its Indiana trademark complaint, Bekins states that, in February 2014, it entered into an agreement with Faulk-Collier under which Faulk-Collier would serve as an interstate household agent for Bekins. Bekins further claims that, due to uncured breaches of that agreement by Faulk-Collier, Bekins terminated the arrangement in October 2014. After terminating the agreement, Bekins advised Defendants that they must cease all use of logos and trademarks owned by Bekins, including the removal of the Bekins trademark from all advertising, trucks, equipment, websites, and similar.

Nonetheless, contends Bekins, Faulk-Collier has continued to advertise moving services under the name “Bekins.” The accused uses include advertising on social media as well as operating numerous pieces of equipment in interstate commerce which bear one or more trademarks owned by Bekins. Bekins states that these uses by Faulk-Collier are unauthorized.

This federal lawsuit followed. In its complaint, filed by an Indiana trademark attorney, Bekins asserts the following:

• Count I – Breach of Contract
• Count II – Account Stated
• Count III – Federal Trademark Infringement

• Count IV – Federal and State Unfair Competition/Trademark Dilution

Bekins asks the court to enter preliminary and permanent injunctions; award Bekins monetary damages, statutory and otherwise, and punitive damages; and order Defendants to pay Bekins’ attorneys’ fees and costs.

March 27, 2015

Indiana Trade Secret Litigation: Precision Drone Sues Channel Masters for Misappropriating Trade Secrets

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Indiana intellectual property lawyers for Precision Drone, LLC of Hamilton County, Indiana (“Precision”) commenced trade secret litigation in Hamilton County Superior Court alleging that Channel Masters, LLC of Wisconsin (“Channel”) breached its contract with Precision by improperly misappropriating and revealing trade secrets belonging to Precision.

Precision designs, engineers, manufactures and sells drones for use by farmers to monitor crops. It also develops and sells related software. Defendant Channel connects companies offering products to dealers of those products.

According to the complaint, in September 2014, Precision engaged Channel to sell the PaceSetter™ Drone to dealers of such products. To assist in Channel’s sales efforts, Precision provided Channel with equipment and training, some of which Precision contends is protected by Indiana trade secret law. As part of the sales agreement that the parties entered into, Precision states that Channel was prohibited from disclosing any of Precision’s confidential information without written authorization. The agreement also prohibited Channel from adversely interfering with Precision’s customers and prospective customers.

Plaintiff Precision alleges that, while Channel was working for Precision, it was also promoting and selling crop-imaging drones offered by AgriImage, a company that competes with Precision. Plaintiff also contends that Channel used Plaintiff’s images and training manual to demonstrate the competing AgriImage drones.

Precision claims copyright protection for the website that it uses to promote and advertise its products, as well as contending that at least one of its images was improperly displayed at a trade show by Channel, but the complaint listed no overt assertion of copyright infringement. The complaint, filed by Indiana intellectual property attorneys for Precision, instead alleges the following:

• Count I: Breach of Contract

• Count II: Misappropriation of Trade Secrets

Precision seeks judgment in its favor including damages, attorneys’ fees and costs.

Indiana copyright lawyers for Channel have removed the case to the Southern District of Indiana, arguing that such a removal is proper based both on federal question jurisdiction and diversity of citizenship.

February 27, 2015

Copyright Law: Federal Circuit Upholds $540,000 in Royalties for USPS Copyright Infringement

By Overhauser Law Offices, LLC

Washington, D.C. – The United States Court of Appeals for the Federal Circuit affirmed a royalty award in Gaylord v. United States for copyright infringement committed by the United States Postal Service.

Frank Gaylord, a World War II veteran and renowned sculptor, created The Column, consisting of nineteen stainless steel statues depicting a squad of soldiers on patrol. This work, completed and dedicated in 1995, formed a central part of the Korean War Veterans Memorial located on the National Mall in Washington, D.C. For his efforts in creating the work, Gaylord was paid $775,000.

Shortly after the completion of the work, an amateur photographer named John Alli visited the Memorial during a heavy snowstorm and photographed The Column. In 2002, the United States Postal Service decided to issue a stamp to commemorate the upcoming fiftieth anniversary of the Korean War armistice. It settled on Alli’s photo of The Column for the stamp face and paid Alli a one-time fee for the right to use his photo. The Postal Service made no payment to Gaylord.

Gaylord sued for copyright infringement. The United States Court of Federal Claims acted as the trial court in the litigation. Twice prior to the instant appeal, an appeal was made to the Federal Circuit, first in 2010 and again in 2012. In Gaylord I, the Federal Circuit held that the government was liable to Gaylord for copyright infringement. Upon remand, the Court of Federal Claims awarded Gaylord a total of $5,000 to compensate for the infringement of his copyright. This award was vacated by the Federal Circuit in Gaylord II and the lawsuit remanded with instructions to “determine the fair market value of a license for Mr. Gaylord’s work based on a hypothetical negotiation with the government.”

Upon remand, the trial court split the calculations of damages for the infringement into three categories: (1) stamps used to send mail; (2) commercial merchandise featuring an image of the stamp; and (3) unused stamps purchased by collectors. The parties agreed that no damages would be paid for stamps used to send mail and that a royalty of 10% of revenues would be appropriate for commercial merchandise featuring the copyrighted work.

The only disputed issue was the appropriate measure of copyright infringement damages for the stamps purchased by collectors. The lower court determined that the Postal Service received $5.4 million in revenue, which was deemed “almost pure profit,” from these sales. It then found that an appropriate copyright royalty would be 10%, or $540,000.

At issue in this latest appeal, Gaylord III, is whether this royalty was appropriate. The Federal Circuit applied the “hypothetical negotiation” analysis in reviewing the Court of Federal Claims’ award to Gaylord, stating that “actual damages for copyright infringement may be based on a reasonable royalty representing the fair market value of a license covering the defendant’s use.” Determining that “fair market value,” in turn could be done employing a valuation tool used in the context of patent infringement litigation: a hypothetical negotiation that would determine “the reasonable license fee on which a willing buyer and a willing seller would have agreed for the use taken by the infringer.”

The Federal Circuit held that the lower court neither committed clear error nor abused its discretion in arriving at a 10% royalty rate affirmed the award of $540,000.