Articles Posted in New Litigation

By

 

New Albany, IN – Magistrate Judge William G. Hussmann of the Southern District of Indiana has denied a Motion to Quash Subpoena filed by Defendant Doe No. 2 in First Time Video v. Indiana John Does 1-18. A copyright infringement attorney had filed a motion to quash subpoena on behalf of John Doe Number 2. Copyright lawyers for First Time Video did not know the names and addresses of the person who allegedly committed copyright infringement by downloading adult videosThumbnail image for Thumbnail image for BitTorrentPicture.JPG and had named 18 “John Does” when the suit was filed. First Time Video then served subpoenas on the internet service providers seeking the names and addresses of certain IP addresses which were alleged to have downloaded the copyrighted works. John Doe 2’s copyright attorney argued that the internet service provider subpoena should be quashed because it sought protected information and the subpoena was unduly burdensome.

The court’s order denied the motion to quash, meaning the internet service providers can be expected to turn over the names and addresses of the subscribers with the IP addresses that First Time has identified. The court’s order also reveals that John Doe 2 claims to be a woman who denies downloading the adult video. While denying the motion to quash, the Court made a very interesting notation at the end of the order:

The Magistrate Judge notes Doe No. 2’s concerns that the disclosure of her identity can lead to unwarranted embarrassing public disclosures, extortion-like attempts to force settlements, or lawsuits brought against defendants who have no liability. Those concerns are not far-fetched. However, the Rules of Professional Responsibility and Rule 11 of the Federal Rules of Civil Procedure stand as barriers to such conduct. Plaintiff’s attorneys are admonished to carefully consider these rules before determining what use to make of the information garnered from the Subpoena.

This case was previously blogged about by Indiana Intellectual Property Law News when it was filed. This is one of three suits currently pending in the Southern District of Indiana that are copyright infringement suits alleging infringement of adult videos by Indiana John Does using the BitTorrent“distribution protocol”.

Practice Tip: Pursuant Federal Rule of Civil Procedure 45(c)(3), the Court could quash a subpoena if it requests protected information or if it is unduly burdensome. The court here noted “there is no expectation of privacy in Internet subscriber information because it has already been exposed to a third party, the Internet Service Provider.” Regarding the undue burden argument, the court noted “Courts that have addressed this issue have concluded that the issuance of a subpoena to the Internet Service Provider of putative defendants does not create an undue burden on the putative defendants because they are not required to produce anything.”

Continue reading

By

 

Indianapolis, IN – Trademark lawyers for Coach, Inc. of New York, New York have filed a trademark infringement suit in the Southern District of Indiana alleging J & JS Petroleum, Inc. of Indianapolis, Indiana infringed the forty-eight trademarks registered with the US Trademark Office. In this suit, CoachThumbnail image for Thumbnail image for Coach.jpg also alleges J & JS infringed the copyrighted works of Registration No. VAu000704542, LEGACY STRIPE, Registration No. VA0001228917, SIGNATURE C DESIGNS, Registration No. VAu1-046658, COACH 70th ANNIVERSARY SNAPHEAD PRINT AND Registration No. VA1-010-918, COACH CLOVER DESIGN which have been registered by the US Copyright Office.

The complaint against J & JS alleges that the company operates a gas station and convenience store at 9025 Brookville Road in Indianapolis where a Coach representative purchased a purse labeled “Coach” on August 21, 2011. The knock-off purse was purchased for $59.99, rather than the normal retail price of the Coach purse of approximately $298. Coach had not authorized the use of the “Coach” mark on the purse sold. The Coach representative viewed additional product labeled “Coach” for sale in the store. The complaint makes claims of trademark counterfeiting, trademark infringement, trade dress infringement, false designation of origin and false advertising, trademark dilution, copyright infringement, unfair competition, criminal forgery, and criminal counterfeiting.

Practice Tip: Coach has recently been very aggressively defending its intellectual property rights in Indiana. Indiana Intellectual Property Law News has previously reported on several cases here:

Coach Files Two Trademark and Copyright Infringement Lawsuits in Northern District Over Knock-Off Coach Items

Coach, Inc. Sues Chaos of Muncie and Angelina’s Unique Boutique for Trademark and Trade Dress Infringement For Sale of Coach Knock-Off Products

Coach, Inc. and Coach Services, Inc. Sue Diggz Clothing LLC and Lori Harth for trademark and trade dress infringement
Continue reading

By

 

Fort Wayne, IN – Trademark lawyers for James Buchanan and J.B. Custom, Inc. of Huntertown, Indiana filed a trademark infringement suit in Allen County, Indiana Superior Court alleging Henry Repeating Arms Company of Bayonne, New Jersey infringed trademark registration no. 3645700 for the mark MARE’S LEG, registered with the US Trademark Office. On September 20, 2011, the case was removed to the Northern District of Indiana upon motion of trademark attorneys for Henry Repeating Arms Company.

According to the complaint, J.B. Custom owns trade dress rights to unique shapes, designs, and appearances of certain pistols designs, including the “Mare’s Leg”Maresleg.jpg lever-action pistol. J.B. Custom advertises the Mare’s Leg pistol design using unique likenesses of Mr. James Buchanan in cowboy attire, including on its website www.maresleg.com. The complaint alleges that Henry’s 2011 catalog included advertisement for a product called “Henry’s Mare’s Leg.” The product advertisement also appeared on Henry’s website. The complaint alleges the Henry’s Mare’s Leg is virtually identical and confusingly similar to J.B. Custom’s product. The complaint also states that Henry has used Mr. Buchanan’s likeness in advertising the Henry’s Mare’s Leg. Trademark attorneys have made claims of misuse of publicity right relating to the unauthorized use of Mr. Buchanan’s likeness, trade dress infringement, false designation of origin, passing off, false advertising and unfair competition.

Practice Tip: In addition to trademark and trade dress claims, which are covered by the federal Lanham Act, the plaintiffs have made a claim under Indiana’s Right of Publicity law because the defendant has alleged used Mr. Buchanan’s likeness in advertisements without Mr. Buchanan’s permission. Indiana Intellectual Property Law News blogged about Indiana’s unique right to publicity law here. The right of publicity protects the right to control the commercial use of a person’s identity.
Continue reading

By

 

Los Angeles, CA – Wesley DeSoto of Los Angeles, California has pleaded guilty to a charge of criminal copyright infringement in a rare federal criminal prosecution of copyright infringement, which was brought in the Central District of California. Mr. DeSoto allegedly uploaded copies of the copyrighted films Black SwanThumbnail image for Thumbnail image for Black Swan.jpg, The Fighter, The King’s Speech, 127 Hours and Rabbit Hole on to the website The Pirate Bay. Mr. DeSoto allegedlyBitTorrentPicture.JPG used the bittorrent protocol to share these films in January 2011 using the username “mf34inc.” According to Wired.com, the FBI raided Mr. DeSoto’s apartment earlier this year after being alerted of the alleged infringement by the Motion Picture Association of America. Mr. DeSoto is an actor and member of the Screen Actor’s Guild. He had obtained advanced copies of the films through his SAG membership. Investigators were able to identify Mr. DeSoto as “mf34inc” by tracing username’s Internet Protocol address to Mr. DeSoto.

On September 12, 2011, Mr. DeSoto and copyright infringement attorneys at U.S. Attorney’s Office filed a plea agreement with the court. Mr. DeSoto agreed to plead guilty and the U.S. Attorney’s Office is recommending a sentence of three years of probation. The judge in the case, however, will not be bound by the sentencing recommendation. The offense carries a maximum sentence of three years of incarceration.

Practice Tip: Mr. DeSoto was charged under 17 U.S.C. § 506(1)(C), which criminalizing the distribution of a copyrighted work that is being prepared for commercial distribution by making it available on a computer network to the public. This provision was passed in 2005. Mr. DeSoto’s case is a rare prosecution under this statute.
Continue reading

By

 

Fort Wayne, IN – Trademark lawyers for 80/20, Inc. of Columbia City, Indiana filed a trademark infringement suit in the Northern District of Indianaalleging Parco Inc of Huntertown, Indiana and Phillip Andrew Roser of Fort Wayne, Indiana infringed trademark registration no. 2,699,302 for the mark 80/20 and no. 3,362,571 for the mark AUTO QUOTER registered by the US Trademark Office as well as three unregistered trademarks. 80/20 also alleges Parco has infringed five registered copyrights owned by 80/20.

80/20 is a leading seller of aluminum extrusion products and accessories. The complaint alleges that Parco is a former distributor of 80/20 products, and Mr. Roser is the president and majority shareholder of Parco. 80/20 alleges that Parco and Mr. Roser “created a scheme whereby they would use Parco’s status as a distributor to form and launch a direct competitor to 80/20.” Thumbnail image for 8020-Parco-3.jpgThe complaint states that Parco has been using 80/20 trademarks and copyrighted material on its online advertising and in catalogs. 80/20 alleges that Parco registered an internet domain name “parco8020.com” which used the 80/20 mark without authorization. 80/20 sent a cease and desist letter to Parco on June 14, 2011, and Parco then removed allegedly infringing material from its website. 80/20 alleges that Parco subsequently used photos of 80/20 products to create Parco promotional material, including a YouTube video. 80/20’s copyright and trademark attorneys have made claims of copyright infringement, federal trademark infringement, Lanham Act violation of “passing off,” common law trademark infringement, common law unfair competition, “anti-cyber squatting,” Indiana law unfair competition and deceptive trade practices. 80/20 is seeking to hold Mr. Roser individually liable, through theories of personal liability arising under copyright and trademark law and vicarious liability. 80/20 seeks an injunction, accounting of profits, impoundment and destruction of infringing catalogs, actual damages, attorney fees and costs.

Practice Tip: 80/20 has designated one of its claims “passing off” and cites 15 U.S.C. 1125(a). The federal law calls this type of claim a false designation of origin and false description. The law prohibits any use of marks or words that create a likelihood of confusion as to the origin, sponsorship or approval of a product.
Continue reading

By

 

Indianapolis, IN – Trademark lawyers for Allison Transmission Inc of Indianapolis, Indiana filed a trademark infringement suit in the Southern District of Indiana alleging Authorized Transmission Remanufacturing, Inc. of Vernon Hills, Illinois, infringed trademark registration no. 2,686,798 and 3,821,441 for the mark ALLISON TRANSMISSION (words only), 2,720,112, ALLISON DOC (words only) mark, 4,013,075 ALLISON TANSMISSION OPTIMIZED mark, 4,013.074, ALLISON HYBRID mark, 1,666,977, 1,624,473, and 2,625,008, ALLISON TRANSMISSION mark, all registered with the US Trademark Office.

Allison manufactures automotive transmissions and innovative automotive technology. The complaint alleges that Authorized Transmission is in the business of remanufacturing, selling and installing remanufactured Allison TransmissionThumbnail image for Thumbnail image for allison.jpg products. Authorized Transmission allegedly displays signs and distributes advertising stating that it is “authorized” by Allison Transmission. However, Allison states it has not granted any “authorization” to Authorized Transmission. The complaint notes that in February 2009, Allison filed a similar lawsuit against Authorized Transmission. That lawsuit was dismissed without prejudice as part of a settlement agreement. The complaint alleges that Authorized has violated the settlement agreement by continuing to display signs and distributing advertising that states it is an “authorized” Allison dealer. The complaint makes claims of false designation of origin, unfair competition, deceptive acts and breach of contract. Allison’s trademark lawyers are seeking a permanent injunction, profits, a declaration that Authorized has breached the settlement agreement, costs, attorney fees, and destruction of the all items with the term “authorized” associated with Allison products.

Practice Tip: This is the second trademark infringement case filed by Allison’s intellectual property attorneys this month. Indiana Intellectual Property Law News blogged about the first case. According to Justia, Allison filed two trademark infringement cases in 2010. Allison is relatively aggressive about enforcing their trademark rights.
Continue reading

By

 

Indianapolis, IN – Trademark lawyers for Mr. Waterheater Enterprises, Inc. and MRW National, Inc., both of North Versailles, Pennsylvania filed a trademark infringement suit in the Southern District of Indiana alleging Greater Midwest Building Solutions, LLC and Ronald O’Connor of Franklin, Indiana infringed trademark registration no. 3,338,117, for the mark MR. WATERHEATER KEEPING WATER HOT,Thumbnail image for Mr Waterheater Mark.jpg registered by the US Trademark Office.

The complaint states that Mr. Waterheater has been selling water heaters using the Mr. Waterheater mark and the trademarked slogan since at least 1988 and spends significant resources to advertise its brand. The complaint alleges that the defendants sell water heaters using the confusingly similar mark “Mr. Water Heater” and uses the confusingly similar website url www.mr-waterheater.com. mr-water heater.jpgThe complaint states that Mr. Waterheater’s trademark attorneys sent a cease and desist letter to the defendants in June 2011, but the defendant did not cease using their confusingly similar marks. The complaint makes claims of trademark infringement, false designation of origin, unfair competition under Indiana state law, and unjust enrichment. Trademark attorneys seek an injunction, an accounting of profits, damages, attorney fees and costs.

Practice Tip: The parties here are both selling water heaters using very similar marks: The plaintiff’s mark here is “Mr. Waterheater” and the defendant apparently using “Mr. Water Heater.” The Lanham Act, 15 U.S.C. § 1114(1)(b) defines infringement as using a copy or imitation of a mark upon good or service where “such use is likely to cause confusion, or to cause mistake, or to deceive”. Since the difference between the two marks is a space between “water” and “heater,” the marks are virtually identical and the likelihood of confusion is very high. The defendants, however, may have defenses available.
Continue reading

By

 

Evansville, IN – Patent lawyers for SOP Services of Las Vegas, Nevada and Bear Archery of Evansville, Indiana filed a patent infringement suit in alleging Vital Hunting Gear, Inc. of Lexington, KY infringed patent no. 7,159,325 and 7,343,686, Patent Picture.jpgBOW SIGHT WITH FIBER OPTICS, which has been issued by the US Patent Office.

This is the second suit brought by Bear Archery’s patent attorneys in the last 3 months asserting infringement of these two patents. Another suit filed in June, 2011 is reported here, and about eight other suits have been filed in the last four years.

As with the June 2011 complaint, the Complaint alleges that the defendant “has manufactured and continues to manufacture, use, sell, offer to sell and distribute fiber optic sights which infringe certain claims of the Patents-In-Suit.” Bear Archery seeks a declaratory judgment, injunction, impounding order, damages, costs, and attorney’s fees. In addition, the complaint also includes a trademark infringement claim; Bear Archery alleges that is “famous” WHISKER BISCUIT mark is infringed by Vital Hunting’s use of the term TEFLON BISCUIT. Although Bear Archery’s trademark attorneys stated in the compliant that “A true copy of registration 3,833,665 is attached as Exhibit D” [to the complaint], registration 3,833,665 is for an INFINITY MAX logo, and is owned by George A. Atkinson. This appears to have nothing to do with the claim against Vital Hunting.

Note: On August 31, 2011, Bear Archery’s patent infringement attorneys dismissed the case they filed in June 2011 against Impact Archery involving the same two patents.
Continue reading

By

 

Evansville IN – Patent lawyers for GHJ Holdings of Texarkana, Texas filed a patent infringement suit in the Eastern District of Texas alleging Indian Industries, Inc. d/b/a Escalade Sports of Evansville, Indiana falsely marked products with expired and inapplicable patent no. 5,899,824, SNAP-FIT DART AND ADAPTER, 5,498,004, GAME DART, 5,271,625, FLEXIBLE  POINT DART, 5,067,728, LAWN DART WITH SAFETY FEATURE, D425,943, and D425,572,FINS FOR A GAME DART, and D446,275 TONGUE AND GROOVE WOOD COVERED OUTDOOR POOL TABLE which have been issued by the US Patent Office. The case was transferred to the Southern District of Indiana on August 24, 2011 upon motion of Indian Industries.

The complaint alleges that packaging of Indian Industries product Accudart® Flight Savers states the productThumbnail image for Indian-Industries.jpg is protected by numerous patents, however, the patents listed on the packaging cover completely different types of products. The Flight Savers are an attachment to the back end of a dart. The patents listed on its packaging, however, cover a dart shaft and fin designs. The complaint alleges the packaging of Indian Industries product Mizerak™ Deluxe Chalk Cue and various other billiard equipment products are falsely marked with a patent ‘275, which covers a billiards table cover. The complaint seeks civil monetary fines, damages, costs, attorney fees and an injunction.

Practice Tip: This case has been brought qui tam, meaning GHJ has initiated the suit but it is the United States government who has been injured. The Patent Act essentially assigns the interest of the United State to private parties who may seek to enforce the false marking claim. 35 U.S.C. 292 states:

(a) . . .Whoever marks upon, or affixes to . . . any unpatented article, the word “patent” or any word or number importing that the same is patented, for the purpose of deceiving the public
. . .
Shall be fined not more than $500 for every such offense.
(b) . . . Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.

(emphasis added). In this case, before it was transferred to the Southern District of Indiana, the United States Attorney had filed an unopposed motion to intervene.
Continue reading

By

 

Indianapolis, IN – Trademark lawyers for Allison Transmission Inc. of Indianapolis, Indiana filed a trademark infringement suit in alleging Defeo Manufacturing, Inc. of Brookfield, Connecticut infringed various ALLISON TRANSMISSION trademarks,Thumbnail image for Thumbnail image for allison.jpg including registration nos. 2,866,798, 2,625,008, 1,666,977, 1,624,473 , 3,821,442and 2,678,354; along with registration no. 2,615,428 for the ALLISON ELECTRIC DRIVES, all registered with US Trademark Office.

According to the complaint, Defeo manufactures and supplies replacement parts for Allison transmissions, including aftermarket, refurbished, and used parts. The complaint states that Allison is not associated with Defeo in any way. Allison alleges that Defeo “has a history of deceiving the public as to sponsorship, affiliation, or endorsement of its products by Allison.” In 2009, Allison became aware that Defeo’s website falsely claimed its products met all Allison’s quality standards. After Allison demanded the false advertising be removed, the website claims were taken down. Subsequently, however, Allison became aware that Defeo was responsible for the unauthorized manufacturing of transmission turbine speed sensors that bore the Allison trademarks without authorization.Thumbnail image for Thumbnail image for Infringement2.jpg Allison alleges these speed sensors are counterfeit products, and though the products are not authorized by Allison, are advertised as “genuine Allison” products. The complaint makes claims of counterfeiting, federal trademark infringement, false designation of origin, false advertising, Indiana common law unfair competition, common law trademark infringement and seeks seizure of all “counterfeit” products and advertising, an injunction, profits, actual damages, punitive damages, costs and attorney fees.

This is at least the fifth suit filed by Allison since 2009 against a seller of replacement parts for Allison’s products.

Practice Tip: Allison Transmission’s trademark attorneys do not allege any specific infringing sales in Indiana by Defeo Manufacturing. Instead they only said that Defeo “does business in . . . has caused harm in . . and the conduct . . . complained of . . . has occurred in this judicial district.” However, the Complaint only identifies a website maintained by Defeo used to offer allegedly infringing products. This case has been assigned to Judge Sarah Evans Barker, who in similar cases, has refused to find specific personal jurisdiction based on merely maintaining an interactive website not “specifically directed” toward Indiana. To improve the chances of obtaining personal jurisdiction, it is advisable to make at least one purchase of an allegedly infringing product and have it shipped to the jurisdiction where the suit is to be filed.It is also curious that Allison alleges infringement of Federal Registration No. 2,615,428, since this registration was cancelled long ago.
Continue reading

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

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

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

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