New Litigation

May 23, 2013

Keystone Management and Lockridge Sue Alleging Copyright Infringement of Architectural Work

Indianapolis, Ind. — Copyright lawyers for Keystone Management Systems, Inc. f/k/a Keystone Builders Resource Group, Inc. (“Keystone Management”) and Lockridge Homes-Indianapolis, LLC (“Lockridge”), both of Richmond, Va., filed a copyright infringement lawsuit alleging William Clyde Moore, Jr. (“Moore”) and Carol Cooper (“Cooper”), d/b/a DrafTech, both of Indianapolis, Ind., infringed the copyrighted work “Birkshire II” (architectural work: 1-396-233; and technical drawings: VA 1-396-224), which is registered with the U.S. Copyright Office.

Keystone Management is in the business of creating, designing, producing, distributing and marketing original architectural working drawings, architectural works and related technical drawings (“the Keystone Designs”). Lockridge is in the business of constructing, marketing and selling distinctive single-family residential homes. Keystone Management has granted to Lockridge the right to use the Keystone Designs.

Moore allegedly asked to purchase one of the Keystone Designs but no agreement was reached. He also allegedly discussed various home plans with Lockridge for the purpose of constructing a single-family home on his property. As a part of this discussion, Lockridge provided Moore with a rendering of the floor plan for the Birkshire II design. Moore then allegedly provided these plans to Cooper for the purpose of constructing a home in the Birkshire II design. Construction is either underway or completed.

Keystone Management and Lockridge sued in the Southern District of Indiana. They list two counts in their complaint: copyright infringement and unjust enrichment. They seek an injunction; impoundment and destruction of any homes built from the Keystone Designs; for damages up to $150,000 for each infringement; costs and fees.

We have blogged about similar cases here, here and here.

Practice Tip #1: Copyright protection extends to any architectural work created on or after December 1, 1990, but architectural designs embodied in buildings constructed prior to that date are not eligible for copyright protection.

Practice Tip #2: The second claim, for unjust enrichment, is preempted by The Copyright Act.
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May 22, 2013

J & J Sports Sues Five Restaurants for Unauthorized Interception and Broadcast of Championship Fight

By Overhauser Law Offices, LLC

Indianapolis, Ind. — Intellectual property lawyers for J & J Sports Productions, Inc. (“J&J Sports”) of Campbell, Calif. have sued five Indianapolis restaurants and their owners in the Southern District of Indiana for illegally displaying the 2011 World Boxing Organization Welterweight Championship Fight.

J & J Sports was granted exclusive nationwide commercial rights to the closed-circuit distribution of the “Manny Pacquiao v. Shane Mosley, WBO World Welterweight Championship Fight” Program (“the Program”), which was telecast nationwide on Saturday, May 7, 2011.

In five separate but similar complaints, J&J Sports has alleged such wrongful acts as interception, reception, publication, divulgence, display, exhibition, and tortious conversion of the Program. The claims have been made both against the restaurants and as personal liability claims against the owners. The five restaurants that have been sued are: Fandango’s Night Club, La Favorita Mexican Restaurant, El Rey Del Taco Mexican Restaurant, Taqueria Night Club and Costa Brava Mexican Restaurant. Of these, at least one, Fandango’s Night Club, has been sued before under similar circumstances.

Each group of defendants has been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553. Each complaint also lists a count of conversion. Among its assertions of wrongdoing, J&J Sports has alleged interception under 47 U.S.C. 605, which is a different cause of action from copyright infringement. The interception claim has a two-year statute of limitations, which explains why the complaints were filed on May 6, 2013.

The complaints seek statutory damages of $100,000 for each violation of 47 U.S.C. § 605; $10,000 for each violation of 47 U.S.C. § 553; $50,000 for each willful violation of 47 U.S.C. § 553; costs and attorney fees.

In 2011, J&J Sports filed 708 lawsuits. We have blogged before about J&J Sports here, here and here.

Practice Tip: All of these lawsuits were filed on the eve of the two-year anniversary of the program that the defendants are alleged to have illegally broadcast. When Congress passed the Cable Communication Act, a statute of limitations was not included. Some federal courts have determined that a two-year statute of limitation is appropriate while other federal courts have used a three-year statute of limitations.

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

May 9, 2013

Tough Mudder Sues Mudderland for Trademark and Service Mark Infringement

By Overhauser Law Offices, LLC

South Bend, Ind. — Tough Mudder LLC of Brooklyn, N.Y. sued alleging trademark infringement by Mudderland of Kingsbury, Ind.; and Rick and Susan Hollaway, both of Hebron, Ind. of Tough Mudder trademarks registered under Registration Nos. 3,810,118; 4,131,912; 4,308,918; 4,131,913; 4,241,510; 4,241,512; 4,241,513; and 4,233,607 for marks containing “MUDDER,” which have been registered with the U.S. Trademark Office.

Tough Mudder is in the obstacle-course industry with challenges such as multi-mile mud obstacle courses. In the past three years, Tough Mudder has held such challenges in the United States, Canada, the United Kingdom and Australia with over a million registrations. Tough Mudder has been recognized by such well-known news sources as The Wall Street Journal, ESPN, National Geographic and Sports Illustrated.

In addition to federally registered marks, Tough Mudder asserts that it is the owner of common law and federal service mark rights available without registration in the words “Mudder” and “Mudders” for use in connection with various outdoor events. It also asserts common law and federal unregistered service mark rights in the phrases “Walk the Plank” and “Berlins Walls” that are also used in conjunction with outdoor obstacle courses and similar events.

Also in the obstacle-course industry, Rick and Susan Hollaway co-own and co-operate an unincorporated entity named “Mudderland.” In 2012, the Hollaways designed, organized and promoted an obstacle-course mud challenge under the name “Mudderland” which was similar to those held by Tough Mudder. In doing so, Tough Mudder alleges that the Holloways were attempting to benefit illegally from Tough Mudder’s brand by using the similar name “Mudderland” for an obstacle-course event. The Hollaways also included other similar indicia such as the color orange and similar-or-identical obstacle names. After having been contacted by Tough Mudder, Susan Hollaway agreed to cease using the name “Mudderland” and to abandon the domain name www.mudderland.com.

Despite this purported agreement to discontinue the use of the name “Mudderland” and the associated domain name, Tough Mudder learned in 2013 that the Hollaways had resumed using both. The Hollaways planned to host a 2013 event which would also include an event named “Walk the Plank” and another named “Berlin Wall,” both of which are similar to names claimed by Tough Mudder. The Holloways’ “Mudderland” website is again using the same color scheme as Tough Mudder’s website, with orange as the predominant color.

Trademark lawyers for Tough Mudder brought this case after the Holloways failed to abide by the alleged earlier agreement by the Holloways to cease what the complaint calls their “admittedly infringing activity” of Tough Mudder’s “extraordinarily valuable trademark rights.”

Tough Mudder claims that its first use in commerce of both the Tough Mudder mark and the Mudder family of marks predate the Hollaways’ first use and therefore Tough Mudder’s use of the marks has priority. The complaint asserts that, in addition to the constructive notice of the Mudder marks provided by the federal trademark registrations, the Holloways also had actual notice of Tough Mudder’s rights in the marks as of May 21, 2012 when Tough Mudder sent the first cease-and-desist letter via e-mail to the Hollaways. Further, it is asserted that the Holloways knew of Tough Mudder’s rights and acted with wanton disregard for those rights and with the willful intent of benefiting from the goodwill of the Tough Mudder marks. Tough Mudder asserts that the Hollaways’ actions are likely to cause confusion, to cause mistake and to deceive consumers as to the source, nature and quality of the goods and services offered by the Hollaways and/or Tough Mudder.

Tough Mudder’s complaint lists ten counts:

· Count 1: Federal and State Trademark Infringement

· Count 2: Trade Name Infringement

· Count 3: State Trademark Infringement

· Count 4: Federal Statutory Unfair Competition

· Count 5: False Designation of Origin

· Count 6: Common Law Unfair Competition

· Count 7: Trademark Dilution, § 1125(c)

· Count 8: Trademark Dilution, Indiana Code § 24-2-1-13.5

· Count 9: Violation of the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d)(1)(A)

· Count 10: False Advertising, 15 U.S.C. 1125(a)

Tough Mudder lists 20 separate requests for relief, among them: preliminary and permanent injunctions; transfer of the domain name www.mudderland.com to Tough Mudder; destruction of infringing items; an accounting of the profits by Mudderland attributable to infringement or other wrongful conduct; an accounting of damages to Tough Mudder; statutory damages; punitive and/or treble damages; costs of the action; and attorneys’ fees.

Practice Tip: There are facts weighing in favor of both parties in this case and, perhaps, that is why the Hollaways have decided to continue with the allegedly infringing activities. Tough Mudder has in its favor such elements as similarity of various names, along with use of the color orange, in conjunction with muddy endurance races. On the other hand, courts are reluctant to set aside colors for any one entity (see here). Also, both the terms “Mudder” (a racehorse that runs well on a muddy racetrack) and “Mudderland” (when considered to be a whimsical spelling of “Motherland”) have meaning independent of any given to them through commercial use.

May 8, 2013

Malibu Media Sues Twenty-Eight Additional “John Doe” Defendants for Copyright Infringement

By Overhauser Law Offices, LLC

Indianapolis, Ind. — Malibu Media, LLC of Los Angeles, Calif. has sued twenty-eight “John Does” for copyright infringement in separate complaints filed in the Northern District of Indiana and Southern District of Indiana.

Copyright lawyer Paul Nicoletti is again in federal court on behalf of Malibu Media. The company has filed twenty-eight similar lawsuits claiming copyright infringement. The “John Doe” defendants allegedly used the BitTorrent file-sharing protocol to illegally download, copy and distribute elements of various works of Malibu Media’s copyrighted material.

We have previously blogged about Malibu Media here and here. We have also blogged about some of the other copyright-infringement litigation filed by Paul Nicoletti here.

Malibu Media seeks a permanent injunction against infringing activities; an order by the court to remove infringing materials from all computers of each defendant; an award of statutory damages of $150,000 per infringed work and reasonable attorneys’ fees and costs.

Practice Tip: The actions of companies such as Patrick Collins and Malibu Media have been called “extortionate” and, in at least one case, a class action suit has been filed against these “trolls.” The issue of “trolls” has also caught the attention of at least one U.S. lawmaker. Senator Charles Schumer has proposed legislation wherein the U.S. Patent and Trademark Office would review patent infringement suits before they could be filed in court. Of course, such legislation is not directly relevant to actions sounding in copyright, such as the multiplicity of lawsuits filed by Malibu Media. It may, however, sound a warning bell that tolerance of the questionable activities of intellectual-property trolls of all varieties is wearing thin.

May 6, 2013

Manchester University Sues Sportswear for Trademark Infringement

By Overhauser Law Offices, LLC

Ft. Wayne, Ind. — Trademark lawyers for Manchester University, Inc. (“Manchester”) of North Manchester, Ind. sued Sportswear, Inc. of Seattle, Wash. alleging trademark infringement of the “Manchester University” trademark, Registration No. 3,375,265, which is registered with the U.S. Trademark Office.

Manchester is an independent, liberal-arts university with campuses in North Manchester, Ind. and Fort Wayne, Ind. It owns a federal trademark for “Manchester University.” The use of the Manchester mark dates back to 1895.

Sportswear, doing business as “Prep Sportswear” and “Campus Team Shop,” operates the “Manchester University Spartans Apparel Store” as part of its online presence. The store carries items for men, women and children including assorted shirts, sweatshirts, pants, hats and accessories that bear the name “Manchester,” often with another word or words (e.g., “Spartans” or “University”).

Manchester has sent at least two letters to Sportswear asking it to discontinue selling goods bearing these markings, which Manchester claims infringe upon its trademark. Despite these requests to stop, Sportswear continues to sell goods bearing the Manchester name.

In counts one and two of its complaint, Manchester alleges federal trademark infringement under §§ 32 and 43 of the Lanham Act, respectively. Count three asserts trademark infringement and unfair competition under common law. Manchester further contends that Sportswear’s infringement is intentional, deliberate and willful.

Manchester asks for preliminary and permanent injunctions; damages, including treble damages; Sportswear’s profits; interest; costs and attorneys’ fees. It also lists a separate request for punitive damages.

Practice Tip:

Litigation can be time consuming and expensive for parties. To best protect their clients, litigators usually have the possibility of settlement in mind. In a settlement, no one typically gets “everything they want.” Everyone, however, usually gets something (even if it’s merely paying less in damages than they would likely pay after a trial). But, to settle, parties need to find common ground. Sometimes, instead of finding that common ground, they seem determined to compound the dispute.

This case is an interesting illustration wherein, even in the complaint, one can see the parties moving farther apart. For example, the complaint includes several exhibits. One shows a page from the Sportswear website from September 2012 advertising “Manchester College” goods. A September 2012 letter from Manchester College asked Sportswear to cease infringing. A November 2012 letter followed, also demanding that the unauthorized use of the “Manchester” name cease. In that letter, written on Manchester University stationery, the attorney for Manchester also noted that the institution’s name had been changed from “Manchester College” to “Manchester University.”

Instead of evidence of an attempt to reach an understanding, and also visible in the exhibits to the complaint, is Sportswear’s response. The screenshots of its website that had been captured prior to the letter from “Manchester University” showed “Manchester College” apparel available for sale. After Manchester’s attorney mentioned the name change in the subsequent letter, Sportswear began carrying new merchandise bearing the “Manchester University” name. For example, under “New Stuff” on the Sportswear website, you can find items featuring “Manchester University Spartans,” apparently designed and ordered after (and, perhaps, somewhat ironically, as a result of) receiving the November 2012 cease-and-desist letter. Sportswear has also added a disclaimer to its “Manchester University Spartans Apparel Store” in an attempt to avoid liability: “This store is not sponsored or endorsed by Manchester University.”

April 29, 2013

Gravity Defyer Sues Under Armour and Multiple Retailers, Including Indiana-Based Finish Line, for Trademark Infringement of G Defy Mark

By Overhauser Law Offices, LLC

Los Angeles, Calif. — Trademark lawyers for Gravity Defyer Corporation of Pacoima, Calif. sued Under Armour, Inc. of Baltimore, Md., sixteen retailers and nine “Doe” defendants alleging infringement of the trademarked “G Defy,” Registration No. 3,749,223, which is registered with the U.S. Trademark Office.

Gravity Defyer has been engaged in the business of manufacturing and selling specialty shoes in the U.S. and elsewhere since 2006, primarily online and through catalogs. The patent-pending shoes and related products are sold under the mark “G DEFY®.” Recently, Gravity Defyer became aware of Under Armour’s use of “G Defy” in the U.S. and elsewhere for similar specialty shoes.

Under Armour, Inc. and nine unidentified “Does” were listed as defendants in the original trademark-infringement complaint. Gravity Defyer recently amended its complaint, adding Finish Line, Inc. of Indianapolis, Ind., Foot Locker, Inc. of New York, N.Y., Nordstrom, Inc. of Seattle, Wash., Dick’s Sporting Goods, Inc. of Albany, N.Y., Champs Sports, Inc. of Tarrytown, N.Y., Sport Chalet, Inc.

of La Canada, Calif., Amazon.com, Inc. of Turnwater, Wash., Zappos IP, Inc. of Henderson, Nev., Backcountry.com, Inc. of Park City, Utah, Rogan’s Shoes, Inc. of Racine, Wis., Road Runner Sports Retail, Inc. of San Diego, Calif., MonkeySports, Inc. of Corona, Calif., Holabird Sports, LLC of Baltimore, Md., Eastbay, Inc. of Madison, Wis., and Dodd Shoe Company, Inc. of Laramie, Wyo.

Under Armour uses the mark “Micro G Defy” on shoes. In the complaint, Gravity Defyer alleges that Under Armour’s use of the G Defy mark as part of “Micro G Defy,” particularly for shoes having similar features, is likely to cause confusion, mistake or deception. Gravity Defyer alleges that those encountering defendants’ products may mistakenly assume, at least initially, that Under Armour products are in some way connected with Gravity Defyer.

Gravity Defyer further asserts that, as a result of the care and skill it has exercised in the conduct of its business, the high quality of its products offered under its marks, and the long-running advertising, sale and promotion of Gravity Defyer’s products bearing the marks, the marks have acquired secondary meaning. It also contends that Under Armour infringed purposely and with the wrongful intent of trading upon Gravity Defyer’s goodwill.

The complaint lists two counts, each against all defendants: trademark infringement under federal law and unfair competition under California law. It asks for a preliminary and permanent injunction; for a finding that this is an exceptional case; for damages, including enhanced damages; and for costs and expenses. Gravity Defyer has demanded a jury trial.

Practice Tip: Under Armour is no stranger to trademark infringement suits. In 2012, it sued BodyArmor, a maker of sports drinks, alleging that BodyArmor’s name and logo infringed upon Under Armour’s trademarks. In February 2013, it sued Nike alleging trademark infringement of Under Armour’s advertising phrase “I will.”

April 25, 2013

American Professional Nursing Resources Sues Medical Staffing Worldwide for Various Unfair Trade Practices

By Overhauser Law Offices, LLC

Indianapolis, Ind. — Trademark lawyers for American Professional Nursing Resources, LLC (“APNR”) and Doyle Silvers (“Silvers”) of La Fontaine, Ind. sued Medical Staffing Worldwide, LLC (“MSW”) of Marion, Ind. et al. for use of APNR’s trademark and trade secrets; for breach of contract and fiduciary duty; for tortious interference with contracts and for violation of § 43(a) of the Lanham Act.

In March 2004, Silvers formed APNR, a global recruitment company that assists domestic employers in recruiting foreign medical professionals by providing domestic screening, training tools and foreign processing facilities. APNR and Silvers recruited Larry Myers (“Myers”), Tom Reto (“Reto”), Jon Marler (“Marler”), Dan Hasslinger (“Hasslinger”) and James Greg Bowers (“Bowers”) to develop APNR into a fully operational business. Benny Spensieri (“Spensieri”), who signed a Non-Disclosure Agreement (“NDA”), was also recruited. Myers, Reto, Marler, Hasslinger, Bowers and Spensieri agreed to maintain the secrecy of APNR’s confidential, proprietary and trade-secret information.

Silvers provided Myers, Reto, Marler, Hasslinger, Bowers and Spensieri with confidential, proprietary and trade-secret information of APNR including its business plan, business model, financial information, and methods and techniques for global recruitment, immigration, screening and training of foreign medical professionals.

In the summer of 2012, Myers, Reto, Marler, Hasslinger, and Bowers reserved the business name “Medical Staffing Worldwide, LLC.” Using that name, they formed a company that allegedly had the same business plan, business model and financial projections as APNR and that used identical methods and techniques for global recruitment, immigration, screening, and training of foreign medical professionals as APNR. MSW also began using APNR’s trademark, “The Future of Medical Staffing,” which APNR had used since 2005.

APNR and Silvers filed suit alleging breach of contract, breach of fiduciary duty, misappropriation of trade secrets, tortious interference with contracts and violation of § 43(a) of the Lanham Act. They ask for actual, consequential and punitive damages; attorneys’ fees; costs; and pre-judgment and post-judgment interest.

Practice Tip: Indiana considers non-compete agreements to be in restraint of trade and, thus, construes them narrowly. In other states, there has also been a growing trend, fueled in no small part by states’ difficulties in paying increasing unemployment benefits, to limit via legislation the enforceability of non-compete agreements. Among the states that have considered such limitations are Maryland, New Jersey, Minnesota, Massachusetts and Virginia.

April 15, 2013

Civil Filing Fee Increase

By Overhauser Law Offices, LLC

Effective May 1, 2013, the civil case filing fee for the United States District Court for the Southern District of Indiana, will increase from $350 to $400, as approved by the Judicial Conference in its March 2013 session. This fee includes cases related patent, trademark, copyright or other intellectual property litigation. The fee increase does not apply to miscellaneous case filings, for which the fee remains $46.

March 27, 2013

Robert Payne Sues Northern Tool & Equipment et al. for Trademark Infringement, False Advertising and Breach of Contract

By Overhauser Law Offices, LLC

Hammond, Ind. – Robert Payne (“Payne”) d/b/a Paynes Products, Paynes Forks and Payne Tools of LaPorte, Ind. sued Northern Tool & Equipment Company, Inc. and Northern Tool & Equipment Catalog Company, Inc. (collectively, “Northern Tool”) of Burnsville, Minn. for alleged violations of Payne’s intellectual property rights, false advertising and breach of contract.

Payne alleges a prior business relationship with Northern Tool in which Northern Tool sold Payne’s products in Northern Tool’s stores, via its catalogs and via the Internet pursuant to various agreements between the parties. Around October 2012, Northern Tool apparently informed Payne that it was terminating the agreements. Payne alleges that, despite this, Northern Tool continues to advertise Payne’s products and has been fulfilling orders with products made by Northern Tool.

The plaintiff complains of trademark infringement, palming off, false advertising and false designation of origin under Section 43 of the Lanham Act as a result of Northern Tool allegedly continuing to advertise and sell imitation Paynes products.

Payne further complains of “Unfair Competition by Infringement of Common-Law Rights,” listing as his authority Indiana Code §§24-2-1-13 and 24-2-1-14. Payne has also asserted a claim for breach of contract against Northern Tool for failure to disgorge “excessive funds” to Payne.

Finally, the complaint lists as separate counts one of the remedies sought – an injunction – and a count demanding a jury trial. We have blogged in the past about this method of pleading here.

Practice Tip: The occasional typographic error is no stranger to many types of documents, even legal documents. However, there comes a point where such errors erode credibility and hinder readability. This complaint had obvious errors on every page and probably in more paragraphs than not. Such drafting does not endear the lawyer to the judge – or the client – and should be avoided.
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March 27, 2013

John Bauer Sues Wildgame Innovations for Patent Infringement for Sale of Knock-off Game Calls

By Overhauser Law Offices, LLC

Evansville, Ind. – John Bauer of Vanderburgh County, Ind. filed a patent infringement suit alleging that Wildgame Innovations, LLC of Broussard, La. infringed Patent No. 7,241,195 (the “‘195 Patent”) which has been issued by the U.S. Patent Office.

Bauer is listed as the owner of the ‘195 Patent entitled “Game Call Striker.” Patent attorneys for Bauer filed suit in the Southern District of Indiana alleging that Wildgame has been, and still is, infringing the ‘195 Patent by making, using, selling, offering for sale, and/or importing “knock-off” game calls and inducing others to do likewise. One example of a knock-off, contends Bauer, is Wildgame’s “Run-n-Gun” game call.

Bauer alleges that Wildgame’s infringement has been, and continues to be, intentional, willful, deliberate and with conscious disregard for his intellectual property rights. He seeks a declaration that the ‘195 Patent has been infringed; an accounting of all of Wildgame’s gains, profits, and advantages realized from its alleged infringement of the ‘195 Patent; lost profits and a reasonable royalty for the allegedly infringing activity; an injunction against further infringement; costs; attorneys’ fees and pre-judgment interest. Bauer also asks the court for a determination that Wildgame infringed in a willful, intentional, and deliberate manner and for treble damages pursuant to that finding.

Practice Tip: According to a recent survey conducted by the American Intellectual Property Law Association, even a “small” patent-infringement lawsuit (one with less than $1 million at risk) has a median litigation cost of $650,000 – and that is separate from any damages that might have to be paid at the conclusion of the litigation. If you are unsure whether a product you are launching might infringe on another’s patent, consider having your patent attorney conduct a “freedom-to-operate” (FTO) search beforehand.