New Litigation

October 15, 2014

Indiana Copyright and Trademark Litigation: Edible Arrangements Sues Edible Creations and Owner

Fort Wayne, Indiana – An Indiana trademark attorney for Edible Arrangements, LLC (“EA”) and Edible Arrangements International, LLC (“EAI”) of Wallingford, Connecticut filed an intellectual property complaint in the Northern District of Indiana alleging trademark and copyright infringement by Tom Drummond and Edible Creations, LLC (“EC”) of Allen County, Indiana. Defendants are accused of infringing several trademarks (below), which have been issued by the U.S. Trademark Office, as well as a copyrighted work.

Since 1998, EAI has been using the phrase “Edible Arrangements,” together with various related design marks, in connection with various food products. Its products include fruit cut to look like flowers as well as other fruit products. EAI operates a franchise network of over 1,200 independent owner-operated franchise locations throughout the United States and internationally. It sublicenses the trademarks at issue in this Indiana litigation to its franchisees.

The other Plaintiff, EA, owns the following trademarks relating to “Edible” and “Edible Arrangements”:

In August 2013, Defendants Edible Creations and the company’s owner, Tom Drummond, Filed an application for what Plaintiffs content is a mark that is confusingly similar to one or more of EA’s trademarks:

In September 2013, Plaintiffs sent a cease-and-desist letter demanding that Edible Creations cease using the mark. It later filed an opposition before the Trademark Trial and Appeal Board (“TTAB”) challenging the registration on the grounds of deceptiveness, false suggestion of a connection between Edible Creations and EA, likelihood of confusion, dilution, misdescriptiveness and fraud. Edible Creations did not respond to EA’s opposition and the TTAB entered a default against Edible Creations and refused to register Edible Creations’ mark.In August 2013, Defendants Edible Creations and the company’s owner, Tom Drummond, filed an application for what Plaintiffs contend is a mark that is confusingly similar to one or more of EA’s trademarks:

In this lawsuit, Defendants have been accused of continuing to advertise, promote and sell fruit arrangements in Indiana using the phrase “Edible Creations” and “Edible Creations Creator of Edible Floral Arrangements.” They have also been accused of violating EA’s copyright in a sculpture known as the “Hearts and Berries Fruit Design” by displaying the copyrighted design in print, including on vehicles, and on the internet.

In its complaint, filed by an Indiana trademark and copyright lawyer, Plaintiffs list the following claims:

Trademark Infringement
False Designation of Origin
Trademark Dilution

By Blurring
By Tarnishment
Copyright Infringement
Unfair Competition
Unfair Competition

Plaintiffs seek damages, including punitive damages, as well as injunctive relief.

Practice Tip:

Allegations of trademark dilution involve a different analysis from claims of trademark infringement. The first type of trademark dilution is dilution by blurring. An allegation of dilution by blurring requires that the plaintiff prove, among other things, that its mark is “famous.” This is not an easy burden, requiring that the mark have “extensive public recognition and renown” within the population of average consumers. There are some marks, such as Chanel, Coke and Microsoft, for which establishing such renown is likely achievable. However, this bar is extremely high. Even trademarks that are very well known, such as Coach, which has been used since 1961 and under which several billion dollars of sales are made annually, have been found to be “not famous” for the purposes of a dilution analysis. Edible Arrangements will have a difficult time proving this claim.

The second type of trademark dilution is dilution by tarnishment. Edible Arrangements will also have a difficult time establishing the elements of this type of trademark dilution. This cause of action is generally brought when the reputation of a well-known mark is harmed by another’s use of that trademark or a similar mark within a sexual context. For example, in Kraft Foods Holdings, Inc. v. Helm, 205 F. Supp. 2d 942, 949-50 (N.D. Ill. 2002), the court held that the use of the term “VelVeeda” by a pornographic website tarnished the trademark held by the makers of Velveeta cheese. Courts may also find dilution by tarnishment where a defendant offers inferior products or services. It is unclear that Plaintiffs here have alleged facts sufficient to support a claim of tarnishment.

October 1, 2014

Indiana Trademark Litigation: KM Innovations Sues LTD Commodities

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana trademark attorney for KM Innovations LLC of New Castle, Indiana (“KM”) sued in the Southern District of Indiana alleging that LTD Commodities LLC of Bannockburn, Illinois (“LTD”) infringed the trademarked “INDOOR SNOWBALL FIGHT”, Trademark Registration No. 4,425,111 which has been issued by the U.S. Trademark Office.

KM sells synthetic “snowballs” for use in indoor “snowball fights.” It contends that it uses two distinct trademarks to market and sell these synthetic snowballs: “SNOWTIME anytime!” and INDOOR SNOWBALL FIGHT. KM has also sought patent protection for its indoor snowballs.

The SNOWTIME anytime!/”indoor snowball fight” concept was conceived in December 2012. At a party, several parents realized that a market might exist for “indoor snowballs,” which would enable children to have a “snowball fight” but without the usual requirements of snow or being outside. KM later introduced a product based on this idea.

In this Indiana trademark complaint, KM asserts that an item called an “Indoor Snowball Fight Set” is being offered and sold on by LTD on the LTD website. The retail price of the product offered by LTD is $9.95 per 12 synthetic balls, while an allegedly similar product is offered and sold by KM for somewhat more, with a retail price of about $1 per synthetic snowball.

KM contends that, by using the name “Indoor Snowball Fight Set,” LTD has deliberately misappropriated KM’s trademark rights. It claims that the use by LTD of this name demonstrates a wrongful attempt by LTD to utilize the goodwill associated with the KM synthetic-snowball product. KM also claims that LTD’s product is inferior and that, as a result, KM’s reputation will be damaged when consumers are confused into believing that KM is associated with LTD’s “Indoor Snowball Fight Set.”

In its complaint, filed by an Indiana trademark lawyer, KM claims the following:

• Count I: Infringement of Federal Trademark Registration No. 4,425,111
• Count II: False Designation of Origin/Unfair Competition – 35 U.S.C. § 1125(a)

KM asks the court for a judgment of trademark infringement and unfair competition. It requests that the court award damages, including treble damages; order the surrender of any infringing materials; prohibit the use of “Indoor Snowball Fight” by LTD and its agents; and award to KM its costs and attorneys’ fees.

Practice Tip #1: While not included as a separate count, KM did allege trademark dilution in paragraph 24 of the complaint. This cause of action is distinct from trademark infringement and applies to trademarks that are deemed to be famous. An action for dilution can assert either, or both, of two principal harms: blurring and tarnishment. Dilution by blurring, codified in 15 U.S.C. 1125(c)(2)(B), arises when association with another similar mark causes the distinctiveness of the famous mark to be compromised. In contrast, dilution by tarnishment under 15 U.S.C. § 1125(c)(2)(C) happens when the reputation of the famous mark is damaged by association with a similar mark.

Practice Tip #2: KM, no stranger to intellectual property litigation, has previously sued in Indiana federal court alleging trade dress infringement of the packaging for its synthetic snowballs.

September 24, 2014

J & J Sports Sues Soriano’s Mexican Restaurant and Owner for Illegal Signal Interception

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An intellectual property attorney for J & J Sports Production, Inc. of Campbell, California (“J & J Sports”) sued Minerva Soriano and Soriano’s Mexican Restaurant, LLC, both d/b/a Soriano’s Mexican Restaurant of Indianapolis, Indiana, in the Southern District of Indiana. Plaintiff alleges that Defendants illegally intercepted and broadcast the Julio Cesar Chavez, Jr. v. Sergio Martinez WBC Middleweight Championship Fight Program on September 15, 2012.

Defendant Minerva Soriano, alleged to be an owner and/or an individual with control, oversight and management of Soriano’s Mexican Restaurant has been sued for the illegal interception of the Julio Cesar Chavez, Jr. v. Sergio Martinez WBC Middleweight Championship Fight Program (the “Program”). Soriano’s Mexican Restaurant, LLC, the legal entity which apparently owns the restaurant, has also been sued.

Plaintiff J & J Sports alleges that it was granted the exclusive nationwide television distribution rights to the Program, including all under-card bouts and fight commentary included in the television broadcast of the event. It states that it entered into subsequent sublicensing agreements with various commercial entities, which were, in turn, granted certain commercial sublicensing rights to the Program.

J & J Sports contends that, “with full knowledge that the Program was not to be intercepted, received and exhibited by entities unauthorized to do so” Defendants and/or their agents unlawfully published, divulged and exhibited the Program. It further asserts that this conduct was “willful, malicious, and intentionally designed to harm” J & J Sports and to cause economic distress.

In the Indiana intellectual property complaint filed on behalf of J & J Sports, the following is alleged:

• Count I: Violation of Title 47 U.S.C. Section 605
• Count II: Violation of Title 47 U.S.C. Section 553
• Count III: Conversion

Regarding Count I, J & J Sports asks the court for the following: (a) Statutory damages for each willful violation in an amount to $100,000.00 pursuant to Title 47 U.S.C. 605(e)(3)(C)(ii), and (b) the recovery of full costs, including reasonable attorneys’ fees, pursuant to Title 47 U.S.C. Section 605(e)(3)(B)(iii).

Plaintiff requests the following remedies for the alleged violations of Count II: (a) Statutory damages for each willful violation in an amount to $50,000.00 pursuant to Title 47 U.S.C. 553 (b)(2) and (b) the recovery of full costs pursuant to Title 47 U.S.C. Section 553
(c)(2)(C), and (c) and reasonable attorneys’ fees, pursuant to Title 47 U.S.C. Section 553 (c)(2)(C).

Finally, for the count of conversion, J & J Sports asks: for compensatory damages in an amount according to proof against Defendants, and for reasonable attorney fees, and for all costs of the lawsuit, including but not limited to filing fees, service of process fees, investigative costs.

Practice Tip:

J & J Sports is a frequent litigant but it is relatively infrequent that a trial on the merits of its intellectual property claims is held. In 2010, it sued in the United States District Court for the Northern District of Texas alleging unauthorized interception and broadcast of the December 2007 “Undefeated” match between Floyd Mayweather and Ricky Hatton. Defendants argued that the broadcast had been authorized by its cable provider. Specifically, Time Warner Cable, which had been licensed to provide the non-commercial rights, expressly admitted that it had inadvertently authorized the commercial display of the broadcast. Time Warner Cable had also offered to pay to J & J Sports the liquidated damages that the contract required in cases of such a breach. On a motion for summary judgment, the trial court agreed with J & J Sports’ allegations that either a violation of § 605 or § 553 had occurred and awarded to J & J Sports statutory damages of $350 and costs and attorneys’ fees of $26,780.30.

The U.S. Court of Appeals for the Fifth Circuit reversed. The issue of whether § 605 applied was one of first impression for the court. It stated that § 605 did not apply to that case, holding that the receipt or interception of communications by wire from a cable system was not governed by § 605. The court then evaluated Defendants’ conduct under the “safe harbor” provision of § 553. That provision exempts from liability any cable recipient who is authorized by a cable company to receive a transmission. In this case,Time Warner Cable’s representative admitted that it had inadvertently sold the broadcast of the fight to Defendants for a non-commercial price, despite knowing that Defendants ran a commercial establishment. This, held the Fifth Circuit, was enough to create a material fact regarding whether Defendants in that case had violated § 553 making the trial court’s grant of summary judgment reversible error.

September 19, 2014

Indiana Unfair Competition Litigation: Property Damage Appraisers Sues Clinton Body Shop and Its Owner

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Texas defamation and franchise attorneys for Property Damage

Appraisers (“PDA”), in conjunction with Indiana co-counsel, sued alleging that John Mosley (“Mosley”), owner of the Clinton Body Shop, Inc. of Clinton, Mississippi, committed unfair competition under the Lanham Act by falsely representing the nature of an estimate made by one of PDA’s franchisees. Various state-law claims have also been pled to the court. This unfair competition lawsuit was initially filed in Indiana state court. It was removed from the Marion County Superior Court to the Southern District of Indiana by Indiana intellectual property attorneys for Defendants.

Plaintiff PDA is a national franchisor with a network of approximately 185 independent franchisees that are in the business of performing inspections on vehicles and other property. It has been in business for over 50 years. Defendant Mosley is the owner of the Clinton Body Shop. Clinton Body Shop advertises itself as a one-stop, full-service shop for automobile services.

Mosley is accused of inducing a PDA franchisee, John Larry Gentry, into providing a nonconforming auto-services estimate on PDA letterhead. PDA contends that Gentry was told that this estimate was only for comparison purposes and that it would be provided only to the Mississippi Attorney General’s office.

PDA claims that, instead, Mosley subsequently e-mailed this estimate to the Indiana Auto Body Association. PDA also asserts that Mosley mischaracterized the contents of, and process involved in writing, the estimate. According to the complaint, Mosley also delivered this nonconforming estimate to “other body shops around the country, making the same misrepresentations.”

In its complaint, filed by Texas defamation and franchise lawyers for PDA, in conjunction with Indiana co-counsel, the following counts are listed:

• Count I: Federal Unfair Competition (15 U.S.C. § 1125(a))
• Count II: State Unfair Competition
• Count III: Defamation
• Count IV: Tortious Interference with Business Relationships

PDA asks the court for damages, including exemplary damages; interest; attorneys’ fees, expenses and costs; and a permanent injunction.

Practice Tip: The vast majority of Indiana intellectual property litigation takes place in federal court, as the intellectual property causes of action that are most often litigated creations of federal statutory law. Thus, they may be heard in federal court under federal-question jurisdiction. However, some intellectual property lawsuits – for example, litigation involving a trademark that is registered only with the state of Indiana and used solely within Indiana’s boundaries – may occur in Indiana state court.

September 18, 2014

Indiana Utility Patent Litigation: Functional Devices Sues for Declaratory Judgment of Utility Patent Non-infringement and Invalidity

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Indiana patent attorneys for Functional Devices, Incorporated of

Russiaville, Indiana filed a declaratory judgment action asserting patent invalidity and non-infringement in the Southern District of Indiana. This intellectual property complaint alleges that Low Voltage Systems, Inc. d/b/a LVS, Inc. of San Leandro, California and Albert L. Hermans of Oakland, California wrongfully accused Functional Devices of infringing Utility Patent No. 7,045,964, “Emergency Lighting System with Automatic Diagnostic Test” (“the ‘964 Patent”), which was issued by the U.S. Patent Office.

Declaratory judgment Plaintiff Functional Devices been designing, manufacturing, and selling electronic devices in the United States since 1969. It sells relays, current sensors, power control, enclosures, power supplies, transformers, and accessories.

Declaratory judgment Defendant Low Voltage offers a line of electrical, low voltage, fire alarm, access control, security, video, and voice and data fiber optics products. It specializes in emergency lighting products, central-lighting inverters and power-control relays. Declaratory judgment Defendant Hermans is the owner of the ‘964 Patent. He is believed to have assigned or exclusively licensed the ‘964 Patent to Low Voltage.

Functional Devices asserts that it has been wrongly accused by LVS of infringing the ‘964 Patent. It indicates that, on August 28, 2014, patent counsel for LVS sent Functional Devices a demand letter contending that the manufacture, use, sale, and offer for sale of certain products infringes the ‘964 Patent. This letter, it claims, creates an actual, substantial, and continuing justiciable controversy between Functional Devices and LVS.

In its complaint, filed by Indiana patent lawyers, Functional Devices lists the following claims:

• Count I: Declaratory Judgment – Non-infringement of the ‘964 Patent
• Count II: Declaratory Judgment – Invalidity and Unenforceability of the ‘964 Patent

Functional Devices seeks a declaration from the court that 1) the ‘964 Patent is invalid and unenforceable and 2) no Functional Devices product infringes the ‘964 Patent. It also asks the court to order Low Voltage and Hermans to pay all costs and attorneys’ fees associated with the litigation.

Practice Tip #1: When the declaratory judgment plaintiff files in its home jurisdiction, establishing personal jurisdiction over declaratory judgment defendants is sometimes tricky and can lead to competing lawsuits in different jurisdictions. The first-to-file rule is a doctrine of federal comity that generally favors pursuing only the first-filed action when multiple lawsuits involving the same claims are filed in different jurisdictions. It was designed to avoid conflicting decisions and promote judicial efficiency. Finding an exception to the first-to-file rule requires a sound reason that would make it unjust or inefficient to continue the first-filed action.

Practice Tip #2: A court may also consider the extent to which a declaratory judgment action is anticipatory and motivated by forum shopping. However, the Federal Circuit has repeatedly held that a finding that a filing was anticipatory does not in itself constitute sufficient legal reason to transfer or dismiss the first-filed case.

September 15, 2014

G & G Joins J & J in Suing for Illegal Interception of Championship Fight

By Overhauser Law Offices, LLC

canelo-alvarez-v-josesito-lopez-20120915-214826-955.png

South Bend, Indiana – An intellectual property attorney for G & G Circuit Events, LLC (“G & G”) of Campbell, California sued in the Northern District of Indiana alleging that Juan Aguirre, Beatriz Zarate, Graciela Valles and Taqueria Los Gallos, Inc. illegally intercepted and broadcast “Knockout Kings: Canelo Alvarez v. Josesito Lopez Championship Fight” (the “Program”) on September 15, 2012.

G & G states that it is the exclusive domestic commercial distributor of the Program. It has sued multiple Defendants both individually and doing business as Taqueria Los Gallos under the Communications Act of 1934 and The Cable & Television Consumer Protection and Competition Act of 1992.

Specifically, Defendants have been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553 by displaying the Program at issue on September 15, 2012 without an appropriate license. Regarding the claim under 47 U.S.C. §605, the Complaint alleges that with “full knowledge that the Program was not to be intercepted, received, and exhibited” without authorization, “each and every one of the above named defendants . . . did unlawfully … exhibit the Program” for the purpose of commercial advantage and/or private financial gain. A count of conversion is also included. It asserts that Defendants’ acts were “willful, malicious, egregious, and intentionally designed to harm Plaintiff.”

In the Complaint, the intellectual property lawyer for G & G listed the following counts and requests for redress:

• Count I: Violation of Title 47 U.S.C. § 605. For this count, G & G requests (a) statutory damages for each willful violation in an amount to $100,000.00, and (b) the recovery of all costs, including reasonable attorneys’ fees.
• Count II: Violation of Title 47 U.S.C. § 553. For this count, G & G asks the court for (a) statutory damages of $50,000 for each willful violation; (b) the recovery of all costs; and (c) and in the discretion of the court, reasonable attorneys’ fees.
• Count III: Conversion. For this count, the court is requested to order both compensatory and punitive damages from Defendants as the result of the Defendants’ allegedly egregious conduct, theft, and conversion of the program and deliberate injury to G & G.

Practice Tip #1: Typically, an Indiana intellectual property plaintiff suing for interception cannot recover under both §§ 553 and 605, as the Seventh Circuit has held that those sections relate to two different kinds of piracy. Specifically, the Seventh Circuit has held that Section 553 governs the interception of cable television program traveling over a cable network. Section 605, in contrast, addresses interception of television programming traveling through the air. However, the federal appellate courts are not in agreement on this interpretation.

Practice Tip # 2:

This Complaint is very similar to the Complaint we blogged about on Friday, which was filed by the intellectual property counsel for J & J Sports. The complained-of activity (interception) is the same, the intellectual property that was allegedly intercepted (the Program) is the same and the Defendants are the same. One can also surmise that the Plaintiffs – J & J and G & G – may be related as well. Even the mysterious page-numbering notations found at the bottom of each page – “Page PAGE 7” [sic] – are the same on both Complaints.

The main substantive difference seems to be that Plaintiff J & J Sports asserts that it was granted “the exclusive nationwide commercial distribution (closed-circuit) rights” to the Program, while Plaintiff G & G asserts a right to “exclusive nationwide television distribution rights.”

September 12, 2014

J & J Sports Productions Sues For Illegal Interception of Satellite Signal

By Overhauser Law Offices, LLC

Hammond & South Bend, Indiana – An attorney for J & J Sports Productions, Inc., of

Campbell, California filed two Indiana intellectual property lawsuits alleging illegal interception of programming.

The first lawsuit was filed in South Bend, Indiana. It alleges that Juan C. Aguirre, Beatriz Zarate, Graciela Valles and Taqueria Los Gallos, Inc. of Logansport, Indiana illegally intercepted satellite signals and broadcast the “Julio Cesar Chavez, Jr. v. Sergio Martinez WBC Middleweight Championship Fight” Program. The second lawsuit alleged illegal interception of another program, “Knockout Kings: Canelo Alvarez v. Josesito Lopez Championship Fight” Program. This lawsuit was filed in Hammond, Indiana and listed Richard Serrano and Agave Mexican Restaurant of Hobart, Indiana as Defendants. Both Programs were broadcast on Saturday, September 15, 2012.

J & J Sports states that it is the exclusive domestic commercial distributor of the Programs. It has sued multiple Defendants both individually and doing business as commercial entities under the Communications Act of 1934 and The Cable & Television Consumer Protection and Competition Act of 1992.

Specifically, Defendants have been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553 by displaying the Programs at issue on September 15, 2012 without a commercial license. Regarding the claim under 47 U.S.C. § 605, the Complaints allege that with “full knowledge” that the Program was not to be intercepted, received, and exhibited without authorization, “each and every one of the above named defendants . . . did unlawfully … exhibit the Program” for the purpose of commercial advantage and/or private financial gain.

A count of conversion is also included. It asserts that Defendants’ acts were “willful, malicious, egregious, and intentionally designed to harm Plaintiff J & J Sports.” In the Complaint against Agave, J & J Sports asserts that, as a result of being deprived of their commercial license fee, J & J Sports suffered “severe economic distress and great financial loss.”

In addition to naming the separate legal entities which apparently owns the restaurants in question, Plaintiff has also sued the individuals alleging that they had the right and ability to supervise the activities of the restaurants. J & J Sports asserts that the activities that they supervised included the unlawful interception of Plaintiff’s program. J & J Sports contends that the individual Defendants specifically directed the employees of the restaurants to unlawfully intercept and broadcast Plaintiff’s program at the commercial establishments or, if they did not, that the actions of the employees of the restaurants are directly imputable to the individuals by virtue of their purported responsibility for the activities of their respective restaurants.

In the Complaints, the intellectual property attorney for J & J Sports listed the following counts and requests for redress:

•Count I: Violation of Title 47 U.S.C. § 605. For this count, J & J Sports requests (a) statutory damages for each willful violation in an amount to $100,000.00 [$110,000 in the Complaint against Agave], and (b) the recovery of all costs, including reasonable attorneys’ fees.

•Count II: Violation of Title 47 U.S.C. § 553. For this count, J & J Sports asks the court for (a) statutory damages; (b) additional statutory damages for each willful violation; (c) the recovery of all costs; and (d) and in the discretion of the court, reasonable attorneys’ fees. [A total of $50,000 was requested as against Taqueria Los Gallos on this Count, while a total of $60,000 was requested as against Agave.]

•Count III: Conversion. For this count, the court is requested to order both compensatory and punitive damages from Defendants as the result of the Defendants’ allegedly egregious conduct, theft, and conversion of the program and deliberate injury to J & J Sports.

Practice Tip #1: The interception claim has a two-year statute of limitations, which explains why these complaints were filed on September 11, 2014, almost exactly two years after the broadcast date of the Programs at issue. J & J Sports and similar plaintiffs are frequent litigants, filing thousands of lawsuits per year, usually seeking a settlement instead of litigation. It appears that many of them are also filed near the eve of the two-year anniversary of the broadcast of the program at issue in each individual lawsuit.

Practice Tip #2: Most of these intellectual property lawsuits, including similar complaints filed by Joe Hand Promotions, are initiated with cut-and-paste complaints, leading to not-infrequent, and sometimes odd, errors. In this set of complaints, the same misspelling of “Agave Mexican Restuarant [sic]”occurred 16 times; J & J Sports was listed as “a California corporation with its principal place of liquor [sic] located [in California].” In turn, the complaint against Taqueria Los Gallos includes “page PAGE 7” [sic] at the bottom of each page, an error we first noticed in a November 2013 complaint filed on behalf of Joe Hand Promotions.

September 5, 2014

Indiana Trademark Litigation: Chanel Sues Chanel’s Salon for Trademark Infringement and Dilution

By Overhauser Law Offices, LLC

Hammond, Indiana – An Indiana trademark lawyer for Chanel, Inc. of New York, New York, in conjunction with New York co-counsel, sued in the Northern District of Indiana alleging that Chanel’s Salon, LLC and Chanel Jones, both of Merrillville, Indiana, committed trademark infringement and trademark dilution of the trademark CHANEL, Registration Nos. 302,690; 510,992; 1,263,845; 1,348,842; 1,464,711; 1,559,404; 1,660,866; 3,134,695; and 4,105,557, which were issued by the U.S. Trademark Office.

Chanel is a fashion and beauty company. For over 85 years, Chanel has used CHANEL as a trade name, house mark and trademark to identify its goods and business. In addition to offering cosmetics, fragrances, and skin care products, Chanel’s goods include hair accessories, such as barrettes, hair clips, and men’s shampoo.

Chanel states that it has spent hundreds of millions of dollars to advertise and promote its goods. It indicates that last year in the United States it spent over $50 million dollars on advertising, all of which prominently featured the CHANEL mark. Consequently, it asserts, the CHANEL name and trademark is one of the most famous marks in the world and has become synonymous with Chanel.

At issue in this Indiana trademark infringement and trademark dilution lawsuit are the actions of Defendants Chanel’s Salon and its owner Chanel Jones. Defendants are accused of having begun to use the trade names CHANEL’S SALON and/or CHANEL’S COSMETOLOGY SALON in October 2012 in connection with their beauty salon without Chanel’s authorization and, in doing so, impinging on Chanel’s intellectual property rights.

Chanel contends in this lawsuit that Defendants are infringing the CHANEL trademark by, inter alia, offering goods and services that are related to those offered under the CHANEL mark, including cosmetics, beauty consultation services and hair accessories. Chanel also asserts that Defendants’ use of CHANEL dilutes the trademark, which Chanel claims is famous.

In July 2013, Chanel sent Defendants a cease-and-desist letter requesting that Defendants change the name of Chanel’s Salon to a name that did not include the word CHANEL. Chanel states that Defendants did not respond to this letter and that further attempts to resolve the dispute were unsuccessful.

In the complaint, filed by an Indiana trademark attorney, the following is alleged:

• Count I: Federal Trademark Dilution (15 U.S.C. § 1125(c))
• Count II: Federal Trademark Infringement (15 U.S.C. § 1114(1))
• Count III: Federal Unfair Competition (15 U.S.C. § 1125(a))
• Count IV: Trademark Infringement and Unfair Competition Under Indiana Common Law

Chanel asks the court for injunctive relief and “such other and further relief as the Court may deem just and proper.”

Practice Tip: This is an unusual trademark case in at least two respects. First, while trademark infringement lawsuits are relatively common, colorable assertions of trademark dilution are less so. This is due in large part to the requirement that the trademark that is allegedly diluted be “famous.” This trademark lawsuit is also unusual in that, while the complaint asks the court in passing for “such other and further relief as the Court may deem just and proper,” it does not explicitly seek damages for the alleged trademark infringement and dilution. Instead, the sole purpose of the complaint seems to be to obtain injunctive relief.

August 28, 2014

Indiana Copyright Litigation: Photographer Sues Theater and Publisher for Copyright Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Larry G. Philpot, a professional photographer from Indianapolis, Indiana, filed two new Indiana copyright infringement lawsuits in the Southern District of Indiana. These lawsuits are in addition to another intellectual property lawsuit filed by Philpot recently.

On October 4, 2009, Plaintiff Philpot photographed Willie Nelson during a performance in St. Louis, Missouri (“Nelson photograph”). On August 2, 2013, he photographed Chris Daughtry during a performance in Indianapolis, Indiana (“Daughtry Photograph”).

In an effort to increase his marketability and reputation and to gain more work, Philpot made the photographs of Nelson and Daughtry generally available through Wikimedia under the Creative Commons Attribution 2.0 Generic license (“CC BY 2.0”). Philpot asserts that CC BY 2.0 requires a licensee to (a) reference CC BY 2.0 with every copy of the photo used and (b) provide attribution in the manner specified by the author. He claims that these requirements applied to republication of his copyrighted photos of Nelson and Daughtry. The two new Indiana copyright infringement complaints assert that Defendants did not comply with these licensing requirements and are, consequently, liable for copyright infringement.

In the first complaint, Mansion America, LLC d/b/a Oak Ridge Boys Theater of Branson, Missouri is accused of copyright infringement of Philpot’s Willie Nelson photograph, Certificate Number VAu 1-132-411, which was issued by the U.S. Copyright Office.

In the second complaint, Everything Brooklyn Media, LLC d/b/a The Brooklyn Daily Eagle, is accused of copyright infringement of Philpot’s Nelson photograph and also the Daughtry Photograph, Certificate Number VAu 1-164-624, which was also issued by the U.S. Copyright Office.

In the copyright complaint against Mansion, filed by Philpot acting as a pro se litigant, the following claims are made:

• Count I: Copyright Infringement and Unfair Competition
• Count II: Unauthorized Distribution of Copyrighted Material
• Count III: Removal of Identifying Information

The copyright complaint filed against The Brooklyn Daily Eagle asserts only the first count (copyright infringement and unfair competition).

In both complaints, Philpot asks the court for an injunction, damages, costs and attorneys’ fees.

Practice Tip #1: Under 17 U.S.C. § 504(c)(1), a copyright owner may elect actual or statutory damages. Statutory damages range from a sum of not less than $750 to not more than $30,000 per infringed work.

Practice Tip #2: The claims in these complaints may trigger the “advertising injury” clause of many general business liability insurance policies. If a defendant has applicable business insurance, it may provide coverage for the expenses of a legal defense and damages found due as a result of unintentional copyright infringement. Overhauser Law Offices, publisher of this Site, counsels clients on insurance coverage for insurance claims.

August 25, 2014

Indiana Copyright Litigation: Bake Me A Wish Sued for Copyright Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Larry G. Philpot, a professional photographer from Indianapolis,

picture of a camera.jpg

Indiana, sued asserting a violation of his intellectual property rights by Bake Me A Wish, LLC of New York. The lawsuit, filed in the Southern District of Indiana, alleges that Defendant Bake Me A Wish infringed the copyright of Philpot’s photograph of Willie Nelson, Certificate No. VAu 1-132-411, which was issued by the U.S. Copyright Office.

On October 4, 2009, Plaintiff Philpot photographed Willie Nelson during a performance in St. Louis, Missouri. In an effort to increase his marketability and reputation and to gain more work, on May 31, 2011, Philpot made the photograph of Nelson generally available through Wikimedia under the Creative Commons Attribution 2.0 Generic license (“CC BY 2.0”). Philpot asserts that CC BY 2.0 requires a licensee to (a) reference CC BY 2.0 with every copy of the photo used and (b) provide attribution in the manner specified by the author. He claims that these requirements applied to republication of his copyrighted photo of Nelson.

Philpot states that Bake Me A Wish owns and operates the website www.bakemeawish.com and a related Facebook page and that those websites are used to generate business. Defendant Bake Me A Wish is accused of placing a copy of the Nelson photo on its Facebook page on April 30, 2013 without displaying the proper attribution to Philpot.

In the copyright complaint, filed by Philpot acting as a pro se litigant, the following claims are made:

• Count I: Copyright Infringement and Unfair Competition
• Count II: Unauthorized Distribution of Copyrighted Material
• Count III: Removal of Identifying Information

Philpot asks the court for an injunction, damages, costs and attorneys’ fees.

Practice Tip #1: This complaint suffers from a number of legal and factual deficiencies. Among them is that Philpot simultaneous admits that Bake Me A Wish removed the content when requested and also alleges not only willful conduct but ongoing willful conduct. The allegation of ongoing willful conduct is made by Plaintiff in support of his contention that Defendant’s conduct entitles him to the maximum statutory damages allowable. Statutory damages may be awarded in a sum not less than $750 or more than $30,000 for each finding of infringement. A determination of willful copyright infringement permits the court in its discretion to increase the award of statutory damages up to $150,000 per infringement.

Practice Tip #2: Defendants who fail to appear run a significant risk of having a default judgment entered against them. There is a significant disparity in the dollar amount awarded in default judgments against defendants in copyright infringement cases. In two separate cases, Judge William T. Lawrence ordered defendants who failed to appear to pay $20,000 for the copyright infringement that was deemed to have been admitted by the defendants’ failure to defend against the allegations. See here and here. However, in a similar case, Judge Jane Magnus-Stinson ordered an entry of default judgment against a defendant for $151,425, the full amount requested.

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