New Litigation

December 18, 2013

J & J Sports Sues Cancun Mexican Grill and Its Owner Alleging Illegal Interception

Fort Wayne, Indiana – J & J Sports Productions, Inc. of Campbell, California (“J & J Sports”), via a complaint filed by its intellectual property lawyer, has sued in the Northern District of Indiana alleging that Christine Kotsopoulos, purportedly a managing member of Geo-Joe, LLP, which owns and operates Cancun Mexican Grill, all of Fort Wayne, Indiana, unlawfully intercepted and broadcast “Good v. Evil”: Miguel Angel Cotto v. Antonio Margaritio, WBA Super World Light Middleweight Championship Fight Program (the “Program”) telecast on December 3, 2011.

J & J Sports states that it is the exclusive domestic commercial distributor of the Program. It has sued Geo-Joe, as well as Christine Kotsopoulos as an individual, 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 on December 3, 2011 without a commercial 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, published, divulged, displayed, and/or exhibited by commercial entities unauthorized to do so, each and every one of the above named Defendants . . . did unlawfully intercept, receive, publish, divulge, display, and/or 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” and 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 entity, Geo-Joe, which apparently owns the restaurant, Plaintiff has also sued Kotsopoulos alleging that she had the right and ability to supervise the activities of Cancun Mexican Restaurant. J & J Sports asserts that the activities that she supervised included the unlawful interception of Plaintiff’s program. J & J Sports contends that Kotsopoulos specifically directed the employees of Cancun Mexican Restaurant to unlawfully intercept and broadcast Plaintiff’s program at Cancun Mexican Restaurant or, if she did not, that the actions of the employees of Cancun Mexican Restaurant are directly imputable to Kotsopoulos by virtue of her purported responsibility for the activities of the restaurant.

Kotsopoulos has also been named individually as a result of J & J Sports’ contention that she is a managing member of Geo-Joe. J & J Sports further asserts that Kotsopoulos, as an individual specifically identified on the liquor license for Cancun Mexican Restaurant, had an obvious and direct financial interest in the activities of Cancun Mexican Restaurant.

In the complaint, 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 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. § 605(e)(3)(B)(iii).

•Count II: Violation of Title 47 U.S.C. § 553. For this count, J & J Sports asks the court for (a) statutory damages for each violation in an amount to $10,000.00 pursuant to Title 47 U.S.C. § 553(c)(3)(A)(ii); (b) statutory damages for each willful violation in an amount to $50,000.00 pursuant to Title 47 U.S.C. § 553(c)(3)(B); (c) the recovery of full costs pursuant to Title 47 U.S.C. § 553 (c)(2)(C); and (d) and in the discretion of the court, reasonable attorneys’ fees, pursuant to Title 47 U.S.C. § 553 (c)(2)(C).

•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 this complaint was filed on December 2, 2013 almost exactly two years after the broadcast of the Program. J & J Sports initiated 708 lawsuits in 2011 alone. It appears that many of them were 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: J & J Sports has sued two entities: a limited liability company and an individual who is apparently a principal in that company. While limited liability companies are intended, as the name suggests, to limit the liability of the principals, they are not always successful in doing so. Where a principal is personally involved in certain types of illegal activity, legal mechanisms (such as a limited liability company) that are designed to shield the principal from liability may fail to do so.

Overhauser Law Offices, the publisher of this website, has represented several hundred persons and businesses accused of infringing satellite signals.

December 16, 2013

Cummins Alleges Trademark Infringement and Counterfeiting in Lawsuit

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Cummins Inc. of Columbus, Indiana has sued in the Southern District of Indiana alleging counterfeiting, trademark infringement and trademark dilution by T’Shirt Factory of Greenwood, Indiana; Freedom Custom Z of Bloomington, Indiana; Shamir Harutyunyan of Panama City Beach, Florida and Doe Defendants 1 – 10. Defendants are accused of infringing various trademarks, including those protected by Trademark Registration Nos. 4,103,161 and 1,090,272, which have been registered by the U.S. Patent and Trademark Office.

Cummins was founded nearly a century ago and is a global power leader with complementary business units that design, manufacture, distribute and service engines and related technologies, including fuel systems, controls, air handling, filtration, emission solutions and electrical power generation systems. Cummins employs approximately 46,000 people worldwide and serves customers in approximately 190 countries.

Defendants include T’Shirt Factory and Shamir Harutyunyan, who is alleged to be an owner, agent, and/or officer of T’Shirt Factory. Cummins claims that Harutyunyan was personally aware of, and authorized and/or participated in, the wrongful conduct alleged in Cummins’ complaint. Freedom Custom Z is also named as a Defendant. Its business purportedly includes the sale of t-shirts, sweatshirts and other apparel upon which logos have been printed or affixed. Doe Defendants 1 – 10, the identities of whom are currently unknown, have also been accused of the illegal acts alleged.

Cummins states that it owns and maintains hundreds of trademark registrations worldwide covering a broad spectrum of goods and services. Among those is Trademark Registration No. 4,126,680, which covers the following goods: “Men’s and women’s clothing, namely, sweatshirts, hooded sweatshirts, aprons, shirts, sport shirts, jackets, t-shirts, polo shirts, baseball caps and hats, ski caps, fleece caps, headbands, scarves, quilted vests, coveralls, leather jackets, t-shirts for toddlers and children” in International Class 25.

Cummins also asserts that it owns Trademark Registration No. 4,103,161. It indicates that this trademark registration covers the following goods: “Men’s and women’s clothing, namely, sweatshirts, hooded sweatshirts, aprons, shirts, sport shirts, jackets, t-shirts, polo shirts, baseball caps and hats, ski caps, fleece caps, headbands, scarves, quilted vests, coveralls, leather jackets, t-shirts for toddlers and children” in International Class 25. Cummins also states that it owns Trademark Registration No. 4,305,797, registered for similar goods.

Finally, Cummins claims Trademark Registration Nos. 579,346; 1,090,272 and 1,124,765, which also relate to the Cummins Mark, as its intellectual property.

In December 2013, Cummins employees observed apparel bearing the Cummins Marks offered for sale at kiosks located in the College Mall in Bloomington, Indiana; in the Greenwood Park Mall in Greenwood, Indiana; and in the Castleton Mall in Indianapolis, Indiana.

Trademark lawyers for Cummins have sued in the Southern District of Indiana. Cummins accuses Defendants of having acted intentionally, willfully and maliciously. It makes the following claims in its complaint:

• Count I: Trademark Infringement Under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)
• Count II: Trademark Dilution Under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c)
• Count III: Trademark Counterfeiting Under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1)

Cummins asks 1) for a temporary restraining order allowing inspection and seizure of the accused goods as well as enjoining Defendants from, inter alia, manufacturing or selling items bearing counterfeit Cummins Marks; 2) for preliminary and permanent injunctions prohibiting Defendants from, inter alia, manufacturing or selling items bearing counterfeit Cummins Marks; and 3) that the court order the destruction of all unauthorized goods.

It also asks the court to find that the Defendants 1) have infringed Cummins’ trademarks in violation of 15 U.S.C. § 1114; 2) have created a false designation of origin and false representation of association in violation of 15 U.S.C. § 1125(a); 3) have diluted Cummins’ famous trademarks in violation of 15 U.S.C. § 1125(c) and 4) have willfully infringed.

Cummins asks for Defendants’ profits from the sales of the infringing and counterfeit goods bearing the Cummins Marks; treble actual damages, costs, reasonable attorneys’ fees as well as pre-judgment and post-judgment interest.

Practice Tip: Repercussions for counterfeiting are not limited to the damages that can be awarded for civil wrongdoing. Increasingly, defendants who engage in counterfeiting, especially counterfeiting on a large scale or during high-profile events, can find themselves facing criminal charges (see, e.g., an arrest made on allegations of counterfeiting during Super Bowl XLVI) in addition to being sued by the owner of the trademark.

December 12, 2013

Redwall Sues ESG for Copyright Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Redwall Live Corp. (“Redwall”) has sued ESG Security, Inc. (“ESG”) in the Southern District of Indiana alleging copyright infringement, breach of contract and unjust enrichment. Both parties are located in Indianapolis, Indiana. The design at issue in this lawsuit has been registered by the U.S. Copyright Office under Registration No. VA 1-874-872.

Redwall is a consulting and design services firm engaged in the business of strategic branding and advertising. Its services include, but are not limited to, developing a clear message and a unique visual image as well as developing brand value for its clients.

Redwall states that it was engaged by ESG to reinvent ESG’s brand. As part of the design plan, Redwall indicates that it created a new logo design for ESG (the “Design”) to be utilized on ESG’s business cards, letterhead, brochures, and on ESG’s website. Redwall asserts that the agreement relating to the creation of the Design required that ESG’s business cards and letterhead be printed by Redwall and provided to ESG upon request.

In May 2013, Redwall registered the Design with the United States Copyright Office. A Certificate of Copyright Registration issued by the Register of Copyrights under Registration No. VA 1-874-872.

Redwall asserts that, despite its performance in full, ESG has failed to pay to Redwall the remaining balance for the work completed. It also claims that ESG has used and continues to use Redwall’s copyrighted Design on a variety of items including, but not limited to, its website and traffic barricades.

Copyright lawyers for Redwall filed a complaint against ESG asserting the following:

• Count I: Copyright Infringement
• Count II: Breach of Contract
• Count III: Unjust Enrichment

Redwall asks the court for findings that ESG committed copyright infringement, breached its contractual obligations to pay for services rendered and were unjustly enriched by such actions; temporary and permanent injunctions against using the Design; damages; impoundment of items containing the copyrighted Design; and attorneys’ fees and costs.

Practice Tip: Commissioning someone to create a copyrightable work does not necessarily mean the copyrights in the resulting work are owned by the commissioning party. The commissioning party will only own the work if it is a “work made for hire” under the Copyright Act. A “work made for hire” is usually limited to situations in which there is either an employer-employee relationship or where the work is a contribution to a “collective work.” Absent these circumstances, the commissioning party will own the work only if it is expressly assigned to it by the party preparing the work. A commissioning party should usually have a written agreement stating that the party preparing the work assigns its copyrights to the commissioning party.

December 11, 2013

Project Management Academy Sues Former Instructor for Misappropriation of Trade Secrets

By Overhauser Law Offices, LLC

Indianapolis, Indiana – eCity Market, Inc. d/b/a Project Management Academy (“PMA”) of Lafayette, Indiana has sued Vaughn Scott Burch (“Burch”) and Graywood Consulting Group, Inc. d/b/a Graywood Training Solutions of Leesburg, Virginia (collectively, “Graywood”) alleging infringement of its Project Management Professional examination and certification training. This suit was initially filed in Delaware County Circuit Court No. 4 but was removed to the Southern District of Indiana.

PMA offers preparation courses for the Project Management Institute’s Project Management Professional (“PMP”) examination and certification process. PMA states that Burch was one of its most-trusted PMP course instructors in the Washington, D.C. area and that, in connection with that position, PMA provided him with access to its proprietary manner of conducting its PMP-examination preparation courses. Moreover, PMA claims that it commissioned Burch and Graywood, Burch’s company, to draft and prepare as a “work for hire” certain training modules that would be for PMA’s exclusive use.

PMA alleges that Burch and Graywood are now teaching PMP courses that are in direct competition with PMA. It also contends that Defendants have stolen PMA’s confidential, proprietary and copyrighted materials to further their own course offerings. PMA further indicates that Defendants are violating the non-competition covenants by reproducing PMA’s copyrighted materials and are passing them off as their own. Finally, PMA contends that Defendants are attempting to engage in unfair competition with PMA by publishing student testimonials as if they were from Defendants’ students when, PMA states, the testimonials were actually given by the students of PMA.

An intellectual property lawyer for PMA filed a complaint alleging the following:

• Count I – Breach of Contract
• Count II – Breach of Duty of Loyalty
• Count III – Misappropriation of Trade Secrets
• Count IV – Theft/Conversion
• Count V – Tortious Interference with Prospective Business Relationship and Advantage
• Count VI – Lanham Act Violations
• Count VII – Unfair Competition

PMA asks for preliminary and permanent injunctions; an order requiring the return of all PMA materials; judgment in favor of PMA on the seven counts listed; damages, including treble and punitive damages; attorney’s fees and costs; and interest.

Practice Tip: There has also been a growing trend, perhaps fueled in part by states’ difficulties in paying increasing unemployment benefits, to limit via legislation the enforceability of non-compete agreements. Indiana considers non-compete agreements to be in restraint of trade and, thus, construes them narrowly. Among the states that have considered such limitations are Maryland, New Jersey, Minnesota, Massachusetts and Virginia. However, even in those cases where a non-compete agreement is found to be unenforceable, such a finding will not prevent a party from suing to protect its other rights, such as the intellectual property rights granted under copyright law.

December 10, 2013

BMI Sues Roadhouse Bar & Grill and Its Owner for Copyright Infringement

By Overhauser Law Offices, LLC

Hammond, Indiana – Broadcast Music, Inc. of New York, New York (“BMI”), along with the owners of the copyrights to various musical compositions, have filed a copyright infringement lawsuit in the Northern District of Indiana alleging that Stamper Properties, Inc. d/b/a Roadhouse Bar & Grill and R. Bruce Stamper of Valparaiso, Indiana infringed multiple copyrighted works which have been registered by the U.S. Copyright Office.

BMI is a “performing rights society” under 17 U.S.C. § 101 that operates on a non-profit-making basis and licenses the right to publicly perform copyrighted musical compositions on behalf of the copyright owners. The other Plaintiffs in this action own the copyrights to the ten compositions at issue in this lawsuit.

Stamper Properties is an Indiana corporation that operates Roadhouse Bar & Grill, an establishment which is asserted to publicly perform musical compositions and/or cause musical compositions to be publicly performed. BMI contends that Mr. Stamper has the right and ability to supervise the activities of Stamper Properties and that he has a direct financial interest in the company and the restaurant.

BMI and the other Plaintiffs, via this suit filed by a copyright lawyer, have asserted willful infringement of the ten copyrights-in-suit. They further claim that Defendants’ entire course of conduct, including the ongoing unauthorized public performances of the copyrighted works, has caused and is continuing to cause the Plaintiffs great and incalculable damage. They have asked the court for an injunction against further infringement. Plaintiffs also seek statutory damages pursuant to 17 U.S.C. §504(c) and costs, including reasonable attorneys’ fees.

Practice Tip:

Copyright protection is automatic upon creation of an original work, but registration of the copyright is required in order to bring an infringement suit.

The Copyright Act empowers a plaintiff to elect to receive an award of statutory damages between $750 and $30,000 per infringement in lieu of an award representing the plaintiffs’ actual damages and/or the defendants’ profits. In a case where the copyright owner proves that infringement was committed willfully, the court may increase the award of statutory damages to as much as $150,000 per infringed work. A finding of willful infringement will also support an award of attorney’s fees.

Furthermore, not only is the performer liable for infringement, but so is anyone who sponsors the performance. A corporate officer will be found jointly and severally liable with his corporation for copyright infringement if he (1) had the right and ability to supervise the infringing activity, and (2) has a direct financial interest in such activities.

December 6, 2013

Stant Sues Briggs & Stratton for Infringing Its Patented Fuel Cap

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Stant USA Corp. of Connersville, Indiana has sued for patent infringement in the Southern District of Indiana alleging that Briggs & Stratton Corp. of Wauwatosa, Wisconsin infringed its Evaporative Emissions Control Fuel Cap, Patent Number 7,261,093, which has been registered by the U.S. Patent and Trademark Office (“USPTO”).

Stant designs and manufactures vapor-management systems, fuel-delivery systems and thermal-management systems. Among its products are fuel caps intended for use as original equipment by automotive manufacturers and other manufacturers, including small engine manufacturers and for use as replacement parts in the aftermarket. Stant has been in business since 1898.

Briggs & Stratton, founded in 1908, holds itself out as the world’s largest producer of air-cooled gasoline engines for outdoor power equipment and has annual revenues in excess of $2 billion. The company builds over 9,000,000 engines in the U.S. each year and employs over 3,000 employees in six states.

It is alleged that Stant employees met with Briggs & Stratton employees in 2004 and disclosed to them a fuel cap for use on a lawn mower or other small engine that incorporated carbon to filter the fuel vapor before it escaped to the atmosphere.

On July 21, 2004, Stant filed U.S. provisional patent application no. 60/589,761 directed to an evaporative emissions control fuel cap. On July 19, 2005, Stant filed U.S. utility patent application no. 11/184,474 also directed to an evaporative emissions control fuel cap. Based on these applications, the USPTO issued U.S. Patent No. 7,261,093 (“the ‘093 patent”). The caps disclosed in these applications are purportedly similar to the caps disclosed to Briggs & Stratton in 2004.

Stant asserts that Briggs & Stratton has made, used, sold and/or offered for sale lawn mower engines that include a fuel cap that incorporates carbon particles to control evaporative emissions. It also contends that the fuel caps made by Briggs & Stratton embody the patented inventions of, and infringe at least claims 1 and 22 of, the ‘093 patent.

Patent attorneys for Stant ask the court for a permanent injunction; an order directing the destruction of all molds, machines, tooling or other equipment used in the manufacture of Briggs & Stratton’s fuel caps; damages, including up to treble damages; costs; fees and prejudgment interest.

Practice Tip: In the United States, an inventor has a grace period of one year from the time an invention is publicly disclosed and the time that a patent application may be filed, if patent protection for that invention is desired. However, many countries have no grace period. It is therefore wise to file a patent application before disclosing an invention publically. If that is not practicable, executing a written non-disclosure agreement prior to disclosure is advisable.

December 2, 2013

Wounded Warrior Project Sues Help Indiana Vets for False Advertising, Defamation and Unfair Competition

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Wounded Warrior Project, Inc. (“WWP”) of Jacksonville, Florida has sued in the Southern District of Indiana alleging that Dean M. Graham and Help Indiana Vets, Inc. (“HIVI”), both of Acton, Indiana, defamed WWP. The lawsuit also asserts that HIVI engaged in false advertising and unfair competition. While this suit did not allege trademark infringement, it included references to WWP’s trademark, U.S. Trademark Registration No. 30014447, which has been registered by the U.S. Trademark Office.

WWP is a Virginia nonprofit corporation, which has been registered with the Internal Revenue Service (“IRS”) as a 501(c)(3) nonprofit organization. It was founded in 2003 as a small nonprofit corporation to provide comfort items to service members injured in combat after September 11, 2001. In the years which followed, WWP grew into a complete rehabilitative effort to assist service members injured in combat with both visible and invisible injuries (such as post-traumatic stress disorder, combat and operational stress, and depression) as they recover and transition back to civilian life.

HIVI is believed to be an Indiana nonprofit corporation. WWP indicates that HIVI was founded in April 2013 by Graham. WWP asserts that HIVI’s business is to offer financial help to Indiana veterans through donor support as a nonprofit. As such, WWP contends, HIVI is a direct competitor of WWP.

WWP asserts that, over the last decade, it has invested substantial time and resources to develop the WWP mark through national direct-mail campaigns, marketing, corporate product promotions and press releases. WWP indicates that it has received substantial national and local press coverage for its efforts. It claims that its success is due in no small part to the support of the media and celebrities who support WWP. Finally, WWP indicates that, over the last decade, it has received approximately 30 billion media impressions with an estimated publicity value of $500 million. WWP claims that, due to its efforts, the WWP mark has become famous.

This suit is founded upon, inter alia, WWP’s contentions that HIVI published false and misleading statements of fact regarding WWP. The assertions allegedly made by HIVI included that Wounded Warrior Project is a fraud and that it is pulling the biggest “Oke Doke” ever pulled on the American public. WWP contends that, on the page containing the purportedly false and misleading statements about WWP, a PayPal link is included so that users of the HIVI site may make charitable donations to HIVI.

WWP further alleges that HIVI has contacted numerous government entities and officials, as well as multiple media outlets, claiming that WWP is a fraud.

Trademark attorneys for WWP assert the following in their complaint against Graham and HIVI:

• Count I: False Advertising – Lanham Act
• Count II: Criminal Deception – Indiana Crime Victims Act
• Count III: Defamation – Indiana Common Law
• Count IV: Unfair Competition – Indiana Common Law
• Count V: Tortious Interference with Business Relationships – Indiana Common Law
• Count VI: Unjust Enrichment – Indiana Common Law

WWP asks the court for a permanent injunction; treble damages under the Indiana Crime Victims Act; an order compelling Defendants to disgorge all financial benefits realized as a result of the alleged wrongful conduct; and an award of costs and attorneys’ fees.

Practice Tip: Paul Overhauser was interviewed regarding this unusual lawsuit between nonprofit entities. See here.

November 27, 2013

Eli Lilly Sues Actavis for Infringement of Patents Related to Axiron

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Eli Lilly and Company of Indianapolis, Indiana; Eli Lilly Export S.A. of Geneva, Switzerland (collectively, “Lilly”); and Acrux DDS Pty Ltd. of West Melbourne, Australia have filed a patent infringement lawsuit in the Southern District of Indiana alleging that Actavis, Inc. and Actavis Pharma, Inc., both of Parsippany, New Jersey, and Watson Laboratories, Inc. of Corona, California infringed Patent Nos. 6,299,900 – Dermal Penetration Enhancers and Drug Delivery Systems Involving Same; 6,818,226 – Dermal Penetration Enhancers and Drug Delivery Systems Involving Same; 6,923,983 – Transdermal Delivery of Hormones; 8,071,075 – Dermal Penetration Enhancers and Drug Delivery Systems Involving Same; 8,419,307 – Spreading Implement; and 8,435,944 – Method and Composition for Transdermal Drug Delivery (collectively, the “patents-in-suit”) which have been issued by the U.S. Patent Office.

Lilly is engaged in the business of research, development, manufacture and sale of pharmaceutical products. Acrux is engaged in the development and commercialization of pharmaceutical products. Both sell their products worldwide.

Actavis, Inc., along with its wholly owned subsidiaries Actavis Pharma and Watson Laboratories, (collectively, “Actavis”) are pharmaceutical companies that develop, manufacture, market and distribute generic pharmaceutical products for sale in the United States.

Lilly is the holder of approved New Drug Application No. 022504 for the manufacture and sale of a transdermal testosterone solution made at a concentration of 30 mg/1.5L, which it markets under the trade name “Axiron®.” This drug is used to treat males for conditions associated with a deficiency or absence of endogenous testosterone.

This action relates to the Abbreviated New Drug Application (“ANDA”) No. 205328 submitted by Watson Laboratories to the U.S. Food and Drug Administration (“FDA”) for approval to market a generic version of Lilly’s Axiron product. Defendants certified to the FDA that, in their opinion, the patents-in-suit were invalid, unenforceable and/or would not be infringed by the commercial manufacture, use or sale of the generic version of Axiron described in the ANDA.

As part of its ANDA filing, Defendants sent to Lilly and Acrux an “Offer of Confidential Access” which would allow limited access to Actavis’ ANDA. Lilly and Acrux were unsatisfied with the offer, stating that the restrictions it contained would prohibit crucial decision makers from having access to the ANDA. Lilly and Acrux also contended that the restrictions were improper as they were not directed to the purpose of protecting trade secrets and other confidential business information. While attempts to reach an agreement regarding access to the ANDA were made, they were not successful.

Plaintiffs contend that the submission of the ANDA to the FDA constitutes infringement by Defendants of the patents-in-suit. In their complaint, patent lawyers for Lilly and Acrux assert twenty-four separate counts related to patent infringement. For each of the patents-in-suit, there is one count of “Direct Infringement,” one count of “Inducement to Infringe,” one count of “Contributory Infringement” and one count for declaratory judgment.

The complaint asks for an injunction to stop Defendants from producing the generic version of Axiron until the expiration of Lilly’s patents-in-suit. In addition, Lilly asks that the court declare the patents to be valid and enforceable; that Defendants infringed upon all of the patents-in-suit by, inter alia, submitting ANDA No. 205328 to obtain approval to commercially manufacture, use, offer for sale, sell or import its generic version of the drug into the United States; that Defendants’ threatened acts constitute infringement of the patents-in-suit; that FDA approval of Defendants’ generic drug be effective no sooner than the expiration date of the patent that expires last; and that this is an exceptional case. Plaintiffs also ask for costs and attorneys’ fees.

Practice Tip #1: The FDA’s ANDA process for generic drugs has been abbreviated such that, in general, the generic drug seeking approval does not require pre-clinical (animal and in vitro) testing. Instead, the process focuses on establishing that the product is bioequivalent to the “innovator” drug that has already undergone the full approval process. The statute that created the abbreviated process, however, had also created some interesting issues with respect to the period of exclusivity. For a look at some of these issues, see here.

Practice Tip #2: An offer of confidential access to an ANDA “shall contain such restrictions as to persons entitled to access, and on the use and disposition of any information accessed, as would apply had a protective order been entered for the purpose of protecting trade secrets and other confidential business information.” 21 USC § 355(c)(3)(D)(i).

November 26, 2013

CleanTech Adds Western New York Energy as a Defendant in Patent Infringement Litigation

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Patent attorneys for GS CleanTech Corporation of Alpharetta, Georgia, have filed a patent infringement lawsuit in the Western District of New York alleging that Western New York Energy, LLC of Medina, New York infringed Patent Nos. 7,601,858, METHOD OF PROCESSING ETHANOL BYPRODUCTS AND RELATED SUBSYSTEMS, 8,008,516, METHOD OF PROCESSING ETHANOL BYPRODUCTS AND RELATED SUBSYSTEMS, 8,008,517, METHOD OF RECOVERING OIL FROM THIN STILLAGE, and 8,283,484, METHOD OF PROCESSING ETHANOL BYPRODUCTS AND RELATED SUBSYSTEMS, which have been issued by the U.S. Patent Office. The case was transferred to the Southern District of Indiana as part of Multidistrict Litigation No. 2181.

This Multidistrict Litigation (“MDL”) began with an assertion of patent infringement by CleanTech of the ‘858 patent, which was issued on October 13, 2009. CleanTech sued numerous Defendants alleging infringement of that patent shortly after its issuance. The Defendants accused of patent infringement in prior litigation include: 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.

Since September 29, 2011, when the court overseeing the MDL issued its order on claim construction with respect to the disputed claims of the ‘858 patent, patentees, GS CleanTech Corp., and its parent GreenShift Corp., have asserted three additional patents in the ‘858 patent family against the allegedly infringing Defendants, U.S. Patent Nos., 8,008,516 (the “‘516 patent”), 8,008,517 (the “‘517 patent”) and 8,283,484 (the “‘484 patent”) (the ‘858, ‘516, ‘517 and ‘484 patents are, collectively, the “‘858 patent family”).

In this current lawsuit, initiated in Western District of New York, subsidiary GS CleanTech Corp. is the sole Plaintiff. Patent lawyers for CleanTech assert the following counts against Western New York Energy:

• Count I: Infringement of U.S. Patent No. 7,601,858
• Count II: Infringement of U.S. Patent No. 8,008,516
• Count III: Infringement of U.S. Patent No. 8,008,517
• Count IV: Infringement of U.S. Patent No. 8,283,484

CleanTech asks the court for preliminary and permanent injunctions prohibiting further infringement of the patents-in-suit; an award of damages adequate to compensate CleanTech for the infringement that has occurred, but in no event less than a reasonable royalty for the use made of the inventions of the patents-in-suit as provided in 35 U.S.C. § 284, together with prejudgment interest from the date the infringement began; and an award to CleanTech of all remedies available under 35 U.S.C. §§ 284, 285 and 154(d).

Practice Tip: The United States Judicial Panel on Multidistrict Litigation, also known as the “MDL Panel” or, simply the “Panel,” consists of seven sitting federal judges, who are appointed to serve on the Panel by the Chief Justice of the United States. The job of the Panel is to (1) determine whether civil actions pending in different federal districts involve one or more common questions of fact such that the actions should be transferred to one federal district for coordinated or consolidated pretrial proceedings; and (2) select the judge or judges and court assigned to conduct such proceedings.

November 25, 2013

Eli Lilly Sues Singpet for Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Eli Lilly and Company of Indianapolis, Indiana has filed a trademark infringement lawsuit in the Southern District of Indiana alleging that Sebastian Wiradharma a/k/a Sebastian Singh (“Singh”) and Singpet Pte. Ltd., both of Singapore, infringed the trademark COMFORTIS, Registration Number 3,370,168, which has been registered by the U.S. Trademark Office.

Lilly, through its Elanco Animal Health Division, manufactures, markets and sells pet medicines, including flea-control preparations and treatments for parasitic infestations. It contends that it has made long and continuous of the name and mark “Elanco” in connection with veterinary preparations. It also asserts that it has long used the “Comfortis” mark, which was registered by the U.S. Trademark Office in 2008. Lilly claims that it has sold tens of millions of dollars’ worth of veterinary preparations, pet medicines and related goods and services under the Elanco and Comfortis marks.

Among Lilly’s products is Trifexis, a once-monthly veterinary medication, which contains the veterinary chemicals spinosad and milbemycin oxime. Trifexis is for the prevention of heartworms, fleas and intestinal worms. It is sold in the United States with what Lilly contends to be an inherently distinctive and non-functional trade dress. Trifexis is available only by prescription through licensed veterinarians. Lilly sells a similar product in Australia, with similar trade dress, under the name “Panoramis.”

Defendant Singh, who is allegedly the principal of Singpet, and Singpet do business over the Internet, including via websites at www.singpet.com, www.petcorporate.com, www.fleastuff.com and http://www.ourpetworld.net/home.asp, among others.

Defendants are accused of marketing and selling European and Australian versions of Elanco- and Comfortis-branded pet medicines to customers in the United States. Specifically, Lilly contends that Defendants market “Panoramis (Triflexis)” [sic] on their websites. While the Defendants are apparently based in Singapore, this marketing is allegedly directed at consumers in the United States. Lilly asserts that units designed for sale in markets such as Europe and Australia are neither intended nor authorized for sale in the United States.

Lilly further objects to the Defendants’ purported advertisement of units designed for the Australian and European markets as identical to or interchangeable with the units designed for sale in the United States. It states that that the Elanco-branded “Panoramis” pet medicines are materially different from its Elanco-branded “Trifexis” pet medicines sold in the United States.

Lilly contends that the Elanco- and Comfortis-branded pet medicines are tailored to meet the requirements of different geographic regions and countries to reflect the differences in language, climate, government regulations, units of measure, local addresses and telephone numbers, among other things.

Trademark attorneys for Lilly assert that Defendants are not authorized to use Lilly’s Elanco or Comfortis names and trade dress in connection with the sale of once-monthly spinosad and milbemycin oxime pet medicines outside of Australia. Lilly has sued Defendants, asserting willful infringement of its trademarks. It asserts the following in its complaint:

• First Claim for Relief: Trademark Infringement in Violation of Section 32 of the Lanham Act
• Second Claim for Relief: Unfair Competition in Violation of Section 43(a) of the Lanham Act
• Third Claim for Relief: False Advertising in Violation of Section 43(a) of the Lanham Act
• Fourth Claim for Relief: Unfair Competition in Violation of Indiana Common Law

Lilly asks for preliminary and permanent injunctions; damages, including treble damages; the Defendants to be required to notify all purchasers of the accused products, request the return of the products and refund the price paid; pre- and post-judgment interest and costs of the suit.

Practice Tip:

Lilly is objecting to the so-called “grey market” for its veterinary pharmaceuticals. Prices for drugs can vary considerably between countries, often as a result of government intervention in the market. As a result, a “grey market” – selling a drug intended for use in one country to consumers in another country – can emerge. In this complaint, Lilly has framed its objection to a grey market for its pet-care pharmaceuticals as an intellectual property dispute.

Intellectual property law requires a balancing of competing interests. On the one hand, innovation will be discouraged if inventors, authors and other creators of intellectual property are not allowed to benefit from their labors. Such a problem arises if others are allowed to use creators’ ideas without compensating them (the “free-rider problem”). On the other hand, the public good is promoted by encouraging free competition in the marketplace and easy alienability of property.

Under the first-sale defense to infringement, once a copy of an item protected by intellectual property laws has been sold to a purchaser, the creator of the intellectual property generally may not prevent that purchaser from reselling or otherwise disposing of the item. In patent and copyright law, the first-sale rule in most cases provides an absolute defense against infringement. In patent law, this is also referred to as “patent exhaustion.” As a result, the purchaser of a copy of the work and the owner of the intellectual property rights to that work may become competitors in the marketplace if the purchaser goes to resell a copy of the work.

The first-sale defense is not as broad in a trademark context. Enunciated in 1924 by the U.S. Supreme Court, the general rule for the resale of a trademark item provides that, after a trademark owner has sold a trademarked product, the buyer ordinarily may resell that product under the original mark without incurring any trademark liability. See Prestonettes, Inc. v. Coty, 264 U.S. 359 (1924). However, unlike patent or copyright law, trademark law has as one of its primary goals preventing confusion among potential purchasers. Typically, but not always, such confusion will not exist where a genuine article bearing an authentic trademark is sold. While there is a split among the circuits concerning the extent to which consumer confusion is a relevant factor, some hold that certain types of confusion about a product’s origin cause the first-sale defense to be inapplicable to the resale of a trademarked good. See Au-Tomotive Gold Inc. v. Volkswagen of America, Inc., 603 F.3d 1133, 1134 (9th Cir. 2010).