Articles Posted in New Decisions

By

Indianapolis, IN – The Southern District of Indiana has denied all summary judgment motions of both plaintiff CleanTech and all defendants in this multi-district litigation involving patents issued by the US Patent Office.

GreenShift Corp. Thumbnail image for GreenShift-Logo.jpgand its subsidiary GS CleanTech Corp. (“CleanTech”) have brought a series of suits alleging infringement of their family of patented methods of extracting corn oil from byproducts of ethanol manufacturing.  This multi-district litigation, In re Method of Processing Ethanol Byproducts and Related Subsystems (‘858) Patent Litigation, consolidates 11 separate actions in multiple states involving several similar patents in the Southern District of Indiana. 

The defendants are: Big River Resources Galva, LLC; Big River Resources West Burlington, LLC; Cardinal Ethanol, LLC; ICM, Inc.; LincolnLand Agri-Energy, LLC; David J. Vander Griend; Iroquois Bio-Energy Co., LLC; Al-Corn Clean Fuel; Blue Flint Ethanol, LLC; ACE Ethanol, LLC; Lincolnway Energy, LLC; United Wisconsin Grain Producers, LLC; Bushmills Ethanol, Inc.; Chippewa Valley Ethanol Co.; Heartland Corn Products and Adkins Energy, LLC.

The initial litigation alleged infringement of one patent, U.S. Patent No. 7,601,858 (the “‘858 patent”), which was issued on October 13, 2009.  CleanTech sued GEA Westfalia Separator, Inc. (not a party in this matter) and others alleging infringement of that patent shortly after its issuance.

Allegations of infringement of three additional patents, U.S. Patent Nos., 8,008,516 (the “‘516 patent”), 8,008,517 (the “‘517 patent”) and 8,283,484 (the “‘484 patent”; collectively known, together with the ‘858 patent, as the “‘858 patent family”) were later added.  The patents in the ‘858 family share an identical specification and have substantially similar claim terms.  As such, the court concluded that the construction of the ‘858 patent applied to all of the asserted claims in the other patents in the ‘858 family.

CleanTech’s patented methods recover corn oil by evaporating, concentrating and mechanically separating thin stillage (“stillage”), a byproduct of ethanol produced from corn, into two components: corn oil and a post-recovery syrup (“syrup”) with most of its corn oil removed.  In the patents, the term “substantially oil free” (and the essentially identical term “substantially free of oil”) had been used to describe the syrup after the patented process had removed the corn oil. 

The defendants argued that this language required that, to infringe upon the patented processing, a removal process must remove almost all of the corn oil from the syrup.  The defendants moved for a finding on summary judgment that they had not infringed, arguing that the patented process did not include one which did not render the processed syrup “substantially oil free.”  The court disagreed that this was the proper construction of the term.

Defendants also asked the court to construe “substantially oil free” to require that at least 95% of the oil from the unprocessed stillage be removed by the patented oil-removal process, thus rendering any less efficient process non-infringing.  While the court agreed that a comparison between the oil levels in the input stillage and the output syrup was appropriate when considering the term, it declined to limit the protection afforded by the patent to this, or any, specific percentage and held that the term “substantially oil free” was to be interpreted according to its ordinary meaning.

In addressing the issue, the court discussed the language of the various patents and noted that, across the entire ‘858 patent family, the term “substantially oil free” had been found in only two substantially similar claims.  Further, the one reference found in the specification had been parenthetical — “[r]ecombining the syrup (which is substantially free of oil) from the centrifuge…” — and, according to the court, “almost an afterthought.” 

In sum, on this issue, the court found that none of the claims in the ‘858 patent family required that the post-oil-recovery syrup be substantially free of oil and concluded, instead, that the ‘858 patent family merely disclosed that the post-oil-recovery syrup was “substantially free of oil.”  The court held that the primary focus of the invention was not the amount of oil that remained in the syrup but, instead, on the recovery of oil.

Additionally, the defendants (except Adkins) asked the court to revisit an earlier construction of the term “substantially oil,” as applied to the corn oil captured, asking that it be held to mean that the oil must be nearly pure.  Defendant Cardinal further argued that the “substantially oil” term should be construed to mean nearly 100% pure, with only trace amounts of contaminants.  The court declined to readdress the construction of this term. 

The court also denied CleanTech’s motions for summary judgment against various defendants.

Finally, the court acknowledged that, since receiving the parties’ summary judgment motions, it had allowed CleanTech to amend its complaints against each defendant such that nearly all patents in the ‘858 family were asserted against each defendant.  Consequently, all summary judgment motions were denied without prejudice and with leave to re-file them to address the amended complaint. 

Practice Tip #1: Multi-district litigation affords consistency and judicial economy, as well as allowing plaintiffs and defendants to concentrate their efforts in one forum.  However, lawsuits that are not settled before trial must later be remanded to the transferring court and to a judge who has had little opportunity to become familiar with the issues.

Practice Tip #2: In this case, CleanTech filed suit almost immediately after the issuance of the first of the patents in the ‘858 family.  Thus, damages are limited to a reasonable royalty upon a showing that an infringer had actual notice of the published patent application and that the patent was subsequently issued on essentially the same claims.  As such, if a patent is filed in anticipation of litigation, it is wise to provide such notice immediately upon publication of the patent application. 

Continue reading

By

Geneva, Switzerland – The World Trade Organization (“WTO”) has granted its permission for the twin-island nation of Antigua and Barbuda (“Antigua”) to disregard intellectual property rights granted by the United States (i.e., patents, copyrights and trademarks).  The decision follows nearly ten years of negotiations and litigation pursuant to a 2003 complaint to the WTO by Antigua.

In the United States, there are three separate federal laws (the “Wire Act,” the “Travel Act” and the “Illegal Gambling Business Act”) and various state laws promulgated by Louisiana, Massachusetts, South Dakota and Utah that prohibit certain means of delivering gambling services, most particularly the interstate delivery such services.  The dispute centered on the conformance of these laws with an international trade agreement when the laws restricted online gambling services offered in the U.S. by Antigua.  [NB: Other WTO members participated as complainants but, by 2009, the U.S. had negotiated agreements with each of them.]

Via its attorneys, Antigua alleged that, together, the federal and state restrictions amounted to discrimination against foreign companies and constituted a breach of the United States’ agreement under the WTO’s General Agreement on Trade in Services (“GATS”).  Antigua stated that its economy, which had, without the restrictions, included a substantial volume of online gambling services offered to the residents of the U.S., had been significantly damaged.

Continue reading

By

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.

Thumbnail image for 11_ram1500_outdoorsman.jpgUpon 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.

Continue reading

By

Fort Wayne, IN – Copyright attorney Paul Nicoletti filed a lawsuit on behalf of Malibu Media in the Northern District of Indiana alleging copyright infringement of the pornographic movie “Romantic Memories.” It alleges the infringement occurred by downloading it using the Internet file sharing “bittorrent” protocol. The suit was against 14 as-yet-unnamed Indiana Defendants, John Does 1-14. “Romantic Memories” had been coded with a “Unique Hash Number,” and upon investigation, 14 Internet Protocol (“IP”) addresses were identified. Upon receiving permission from the court, Plaintiff served third party subpoenas on two Internet Service Providers (“ISPs”) to discover the names and other contact information of each Defendant.

Defendant John Doe No. 12, acting pro se, filed a Motion to Dismiss or Sever for Misjoinder and to Quash Plaintiff’s Subpoena. The court rejected the Motion to Dismiss on a technicality, noting that under local rules motions must be filed separately, and denied the Motions for Severance and to Quash.

Doe No. 12’s Motion to Quash under Fed. R. Civ. P. 45(a) argued that there was no evidence that any improper use of his IP address would be sufficient to support an assertion that he was responsible for such misuse. The Court acknowledged that Doe No. 12 had standing to object to the subpoena on the grounds that it would implicate his privacy interest. However, it went on to reject his argument as a mere denial of liability and not relevant to a Motion to Quash. Doe No. 12 further asserted that the subpoena should be quashed as a burden on his ISP. The court found that argument unpersuasive as 1) the subpoena would not burden Doe No. 12 personally and 2) Rule 45 only requires a court to quash a subpoena when it subjects a person to an undue burden. Fed. R. Civ. P. 45(c)(3)(A)(iv). Further, the court held that no exception for privilege was applicable, as courts have consistently held that “there is no expectation of privacy in Internet subscriber information because it has already been exposed to a third party, the Internet Service Provider.”

Doe No.12’s Motion to Sever under either Federal Rule of Civil Procedure 20 or 21 argued, that there was no single transaction or series of transactions as is required for permissive joinder. Courts across the country are split regarding whether joining anonymous defendants alleged to have participated in a single BitTorrent “swarm” in a single suit is appropriate. The court here allowed joinder as the Plaintiff alleged a set of facts sufficient to support a finding that the separate actions were part of the same series of transactions, noting that the file sharing protocol required each participant to send and receive portions of the work in order to download and view the entire work. The second requirement for joinder under Rule 20, a “common question of law or fact,” was sufficiently pled by the Plaintiff’s assertion, without exception, of the same counts of copyright infringement against all Defendants. Discretionary severance under Rule 21 was also denied as unnecessarily cumbersome at this stage of the litigation.

Finally, the court issued a warning to plaintiffs in situations such as these, stating that “the litigation strategy Plaintiff has employed in this case has a history of becoming abusive and potentially giving rise to sanctions under Rule 11.” The court further cautioned plaintiffs against improperly leveraging a defendant’s reluctance to have his identity revealed to coerce a settlement.

Continue reading

By

South Bend, IN – Trademark attorneys for Coach, Inc. of Jacksonville, FL, filed a lawsuit in the Northern District of Indiana against Defendants Diva’s House of Style and its owner Elizabeth Bond of Elkhart, IN, alleging multiple violations of intellectual property laws under the Lanham Act, the Copyright Act, Indiana common law and Indiana statutory law.

Lawyers for Coach sought partial summary judgment as to liability on three of its counts under the Lanham Act: trademark infringement, unfair competition and counterfeiting for the sale of products labeled as “Coach” which had not been manufactured by Plaintiffs (i.e., “knock-offs”).

Defendant Bond, proceeding pro se, failed to respond to Plaintiffs’ motion for summary judgment, as she had earlier failed to respond to the Plaintiffs’ request for admissions. Defendant Diva’s House of Style also attempted to proceed pro se despite the court’s explicit warning that the company was not permitted to do so.

As a result of Defendant Bond’s earlier failure to respond, 19 separate facts were deemed by the court to have been admitted. The undisputed facts were sufficiently robust to support summary judgment on the issue of liability for each of the three counts in question. The remaining counts, as well as a determination of damages for those counts for which Defendants were liable, were not addressed. The court also held that Ms. Bond could be held personally liable for her store’s infringement as a result of her personal involvement in the misconduct.

Practice Tip: Pro se litigants should remember that failing to respond to a lawsuit – including failing to respond in a timely and procedurally appropriate manner – can have serious consequences. Moreover, when any business is operated through a corporation or LLC, the business owner is not allowed to represent the business. The business must hire a lawyer, preferably one experienced in litigation, to represent the business. Finally, while corporations are often used to shield owners of personal liability, that protection often does not apply to intellectual property infringement cases, such as those involving patents, trademarks or copyrights.

Continue reading

By

Washington, DC The Federal Circuit on October 9, 2012 granted en banc review of a case in which a Federal Circuit panel held that a claim must not be deemed inadequate under 35 U.S.C. §101 if, after taking all of the claim recitations into consideration, it is not “manifestly evident” that a claim is directed to a patent ineligible abstract idea. The court vacated the panel decision and requested briefing on the following questions:

  1. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?
  2. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?

The panel decision stressed that patent eligibility must be determined by what is evident from specific, concrete applications of the ideas behind an invention disclosed in the claims. The panel opinion, written in the wake of the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012), included the following observation:

“[N]othing in the Supreme Court’s precedent, nor in ours, allows a court to go hunting for abstractions by ignoring the concrete, palpable, tangible, and otherwise not abstract invention the patentee actually claims. It is fundamentally improper to paraphrase a claim in overly simplistic generalities in assessing whether the claim falls under the limited “abstract ideas” exception to patent eligibility under 35 USC §101. Patent eligibility must be evaluated based on what the claims recite, not merely on the ideas upon which they are premised.”

Practice Note:

The challenged patents in this case are directed to a computerized trading platform for exchanging obligations in which a trusted third party settles obligations between a first and second party so as to eliminate “settlement risk.” The district court granted a summary judgment motion that the claims were not patent eligible because they are directed to an abstract idea. On appeal the Federal Circuit panel reversed, concluding that the system, method, and media claims are directed to practical applications of an invention falling within the categories of patent eligible subject matter defined by Section 101.

Continue reading

By

Indianapolis, IN – The Southern District of Indiana dismissed multiple claims by Plaintiff Wine & Canvas in its trademark infringement suit against YN Canvas, et al.

Wine & Canvas organizes parties where guests can take a painting class while enjoying cocktails.  Anthony Scott (“Scott”), one of the founders of Wine & Canvas, sued multiple Wine&CanvasLogo.JPGdefendants.  He alleged that he entered into a business venture wherein he would license the Wine & Canvas business model to Christopher Muylle (“Muylle”) and Theodore Weisser (“Weisser”) for use in San Francisco, both to operate a new Wine & Canvas location and to license others to operate under the Wine & Canvas name and business model.  Instead, Scott alleged, the defendants breached that agreement, appropriated the Wine & Canvas model and proceeded without Scott as YN Canvas CA, LLC (“YN Canvas”).  Defendants, in turn, alleged that they breached no agreement but instead merely parted ways, changing their business name to “Art Uncorked,” when Wine & Canvas insisted on a new agreement with additional terms that were unfavorable to the defendants.

Plaintiff Wine & Canvas Development, LLC (“Wine & Canvas”), via its attorneys, sued multiple defendants: (1) YN Canvas, a Nevada limited liability company with its principal place of business in California; (2) www.art-uncorked.com, the corporate website for Art Uncorked; (3) Weisser, an officer of YN Canvas; and (4) Muylle, an officer of YN Canvas (collectively, “defendants”).  [NB: Art Uncorked was also named as a defendant but, as that was merely the new name of YN Canvas, which had already been named as a defendant, the court chose to refer to both by the one name, “YN Canvas.”]

The eleven-count complaint was originally filed in Hamilton County Circuit Court and included claims for trademark infringement, false designation of origin, trademark dilution, sales of counterfeit items/services, unfair competition, declaratory judgment, civil action under the Indiana Crime Victims Act, breach of contract, fraud, permanent injunctive relief, and request for writ of attachment.  It was removed to the Southern District of Indiana as its Lanham Act issues provided federal question jurisdiction.  We previously blogged about that element of this case here.

The parties came to the court with several motions.  After a detailed discussion on personal jurisdiction, the court held that it could exercise specific jurisdiction over both Weisser and YN Canvas and denied the motion to dismiss for lack of personal jurisdiction as to them.  The motion to dismiss the website as a defendant was granted, with the court finding that, “[b]ased on common sense and Indiana precedent, it is obvious to this Court that a website alone is not an entity capable of being sued.” 

The court declined to discuss jurisdiction regarding “Art Uncorked,” finding that it was merely the new name of YN Canvas and, as such, it need not be considered separately.  Any references to YN Canvas would also apply to Art Uncorked.

The court then moved to the defendants’ 12(b)(6) motions to dismiss for failure to state a claim.  Two counts – trademark infringement under 15 U.S.C. § 1114(1)(a) and use of a counterfeit mark under 15 U.S.C. § 1116(d) – were dismissed.  Each of those claims required a registered mark, which Wine & Canvas conceded it did not have.  However, the court dismissed the counts without prejudice, as the registration of the marks is pending. 

The court next moved to two “counts” – permanent injunction and attachment – and dismissed them summarily as inappropriate pleading.  “Because these remedies are based on causes of actions in other counts within the Wine & Canvas’s complaint and are included within the Wine & Canvas’s prayer for relief,” the court held, “it is unnecessary to dedicate a separate count for each specific remedy.”

Defendants next asked the court to dismiss the claim of fraud for failure to meet the heightened standard required for pleading fraud.  As no time frame or location of the alleged fraud had been included in the plaintiff’s complaint, the court dismissed the fraud claim without prejudice.

Finally, as with the “counts” for permanent injunction and attachment noted earlier, the court addressed another “count” by Wine & Canvas seeking a declaratory judgment.  Ruling here on the defendants’ motion to strike, the court cited Federal Rule of Civil Procedure 12(f) allowing a court to strike “redundant, immaterial, impertinent, or scandalous matter” from any pleading and, again, held that the “count” was redundant, as appropriate remedies would be addressed in the adjudication of the substantive claims, and granted the defendants’ motion to strike.

Practice Tip #1: The decision to sue a website is a curious one and seems to be the modern-day equivalent of suing a book.  It is notable that this has, however, happened.  See, e.g., here.  On the one hand, it is an attorney’s duty to pursue zealously his clients’ interests and, at times, that leads to maintaining a cause of action that is not a “sure thing.”  On the other hand, the law is unambiguous that a website is neither a real person nor a legal entity capable of being sued and, thus, it would have been wiser to omit this “defendant.”

Practice Tip #2: The decision to include various remedies that a party is seeking as separate causes of action is also curious but, instead of zealous advocacy run amok, it merely seems to reflect improper drafting.
Continue reading

By

Indianapolis IN. Lawyers representing the defendant, Loparex, LLC were awarded their attorneys’ fees in a trade secret infringement case filed against it by MPI Release, LLC. Loparex had previously filed a trade secret case in Illinois against one defendant, Mr. Kerber. However, when Loparex sought a temporary restraining order in the case, the Illinois judge told Loparex that “I don’t think you have identified protectable trade secrets.This is a very broad list of claimed secrets, supposedly, that I think largely are under the umbrella of skill that he has developed having worked in this industry for such a long time.” Thumbnail image for Thumbnail image for Loparex.JPGShortly after that hearing, Loparex dismissed the Illinois suit and then filed a new suit in Indiana, which added defendant, MPI Release and another person as a defendant.

When Loparex sought a preliminary injunction in the Indiana case, the Court commented stating, “You brought this lawsuit and have the burden of proof, and you have a particularized burden here with a request for a preliminary injunction to show that specific trade secrets were misappropriated.” Following this comment, Loparex withdrew its motion citing its inability to establish “actual misappropriation”, despite “substantial discovery.” The Court later granted a summary judgment in favor of the defendants, and the defendant MPI sought to recover its attorneys’ fees.

The Court found that MPI was entitled to recover its attorneys’ fees under the Illinois Uniform Trade Secrets Act because the claim had been made “in bad faith.” In addition, the defendants separately sought attorneys’ fees under 28 USC § 1927, which allows an award of attorneys’ fees against an attorney “who so multiplies the proceedings in any case unreasonably and vexatiously.” M.JPGThe Court found the case suitable for an award of attorneys’ fees under 28 USC § 1927. Significantly, the Court held one of Loparex’s attorneys personally liable for MPI’s attorneys’ fees, stating, “He could and should have intervened when MPI sought a take-no-prisoners litigation strategy. As an enabler of the client’s unreasonable litigation desires, he becomes personally liable for them too.” Accordingly, Loparex’s attorney was found liable for MPI defendant’s attorneys’ fees, $475,332.70.

Practice Tip:

This ruling is significant because it is rare for a Court to award sanctions under 28 USC § 1927. It appears the Court found it significant that plaintiff asserted the claims even though it had dismissed the same claim filed previously in an Illinois court. Loparex also sought to avoid sanctions under 28 USC § 1927 by arguing that the defense counsel had alleged unclean hands, namely “unreasonably aggressive litigation from the other side.” The Court did not consider that argument, rejecting “and if you can do it, I can do it too” attitude towards litigation misconduct. The Court instead stated that the plaintiff, Loparex, or its attorney, Mr. Pautsch, should have filed a § 1927 motion against defense counsel when it established unreasonable behavior on defense counsel’s part.

Continue reading

By

Washington, D.C.: The Supreme Court has recently decided to hear a case that could reconcile two competing sections within The Copyright Act–section 602(a)(1) which prohibits the importation of a work without the authority of the owner and section 109(a) which allows copyrighted works to be sold without the copyright owner’s permission–which will determine the applicability of foreign copyright owners’ control of the sale and distribution of their work.

On April 16, 2012 the Supreme Court Granted cert in the case of Kirtsaeng v. John Wiley & Sons in an attempt to resolve the issue of the copyright protections of gray market goods. Reuters.com reports that Kirtsaeng, a graduate student at The University of Southern California, is from Thailand and had his family purchase textbooks cheaply overseas and then shipped to him. He then resold them on eBay for a profit, in order to make money for school. According to Kirtsaeng’s petition for cert, he claims to have researched the Copyright Law including the Doctrine of First Sale, section 109(a), and felt that it was applicable to him. However, John Wiley & Sons, whose Asian subsidiary produced some of the books sold, SCT.jpgdisagreed with the interpretation and filed an infringement suit in 2008. Although Kirtsaeng profited $37,000 from the Sale of books produced by John Wiley & Sons, a jury found him liable of infringement and imposed damages of $600,000.

According to SCOTUSblog.com, the 2nd Circuit upheld the ruling, stating that the Doctrine of First Sale only applies to U.S. made goods. In their ruling, the 2nd circuit applied the Costco Wholesale Corp. v. Costco case, in which the court split 4-4 in its decision to apply the Doctrine of First Sale to U.S. made goods sold by businesses, and extended its reach to individuals as well. When the Supreme Court hears Kirtsaeng’s case, it will seek to resolve the discrepancy in the Copyright Law and the issue of whether the Copyright Law applies to a copy that was made and legally acquired abroad and then imported into the United States, SCOUTUSblog.com reports. According to supremecourt.gov, the time for the parties to file their briefs on the merits has been extended until August 31, 2012. The case will be heard next term, reports abajournal.com.

Continue reading

By

Fort Wayne; IN – The Northern District of Indiana has granted a partial summary judgment for Forks RV of Shipshewana, Indiana that dismisses copyright infringement claims in a dispute over a recreational vehicle sales agreement and design. Copyright attorneys for Amy and James Ortega had filed a lawsuit against Forks RV of Shipshewana, Indiana alleging that Fork breached a sales distribution agreement and also alleged copyright infringement over Fork’s use of Ortega’s designs for a custom RV. The court summarily dismissed the copyright infringement claim because Ortega had not registered his designs with the U.S. Copyright Office. The court noted “The Copyright Act states that “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” 17 U.S.C. § 411(a).

The court, however, denied summary judgment on the breach of contract claim relating to the distribution and/or sales agreement. The court found that there was a genuine dispute of material fact, and therefore, summary judgment would be inappropriate.

Practice Tip: Copyright attorneys for Fork had requested attorney’s fees in defending the copyright infringement claim. The court granted this request, noting that . There is a strong presumption that the “prevailing party” in a copyright infringement case is entitled to recover attorney’s fees in the 7th Circuit, and that a copyright registration must be obtained before pursing an infringement claim (in most instances). Thus, plaintiffs must take care to register their copyrights before filing a copyright infringement suit, at the peril of being liable for the defendant’s attorney’s fees.

Continue reading

Contact Information
Indiana Intellectual Property: IP Litigation, Patents, Trademarks, Copyrights
  • Seventh Circuit
  • Northern District of Indiana
  • Southern District of Indiana
Paul B. Overhauser
Overhauser Law Offices, LLC
Greenfield
18 E Main St #202
Greenfield, IN 46140
Phone: 317.467.9100
Fax: 866.283.8549
Indianapolis
101 W Ohio St #2000
Indianapolis, IN 46204
Phone: 317.891.1500
Fax: 866.283.8549

This site is protected by reCAPTCHA and the Google Privacy Policy and Terms of Service apply.

Please do not include any confidential or sensitive information in a contact form, text message, or voicemail. The contact form sends information by non-encrypted email, which is not secure. Submitting a contact form, sending a text message, making a phone call, or leaving a voicemail does not create an attorney-client relationship.

Copyright © 2016 – 2024, Overhauser Law Offices, LLC
JUSTIA Law Firm Blog Design