New Albany, IN – Trademark lawyers for The American Automobile Association of Heathrow, Florida filed a lawsuit alleging AAA Affordable Insurance of Charlestown, Indiana, infringed Trademark Nos. 829,265, 2,158,654 and 1,101,726 for the mark AAA, as registered with the U.S. Trademark Office, and committed unfair competition and cyberpiracy.
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Chicago, IL– Intellectual property attorneys for Italian company Tecnomatic have filed a lawsuit in the Northern District of Illinois making patent ownership, trademark infringement and other claims against automotive part company Delco Remy of Pendleton, Indiana as well as Delco Remy of Mexico and other parties. The technology at issue is High Voltage Hairpin stator winding technology that is a component of electric motors for hybrid electric vehicles. Tecnomatic alleges that it shared its technology in anticipation of a possible joint venture and that Remy breached confidentiality agreements made as part of that proposal. Tecnomatic further alleges that Remy used its confidential technology to gain business and federal grants and attempted to file patent applications with the US Patent Office without crediting Tecnomatic as inventors.
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Indianapolis, IN – Patent lawyers for Knauf Insulation Limited of the United Kingdom has filed a patent infringement suit alleging CertainTeed Corporation of Valley Forge, Pennsylvania infringed Patent No. 7,854,980, FORMALDEHYDE-FREE MINERAL FIBRE INSULATION PRODUCT, which has been issued by the US Patent Office. Knauf Insulation USA is based in Shelbyville, Indiana where it employs 500 workers.
Knauf’s patent attorneys allege that CertainTeed makes and offers for sale a product known as “CertainTeed Sustainable Insulation” that infringers at least one of the claims of Knauf’s patent. According to coverage by the Indianapolis Star, Knauf’s patented technology allows it to make insulation with using formaldehyde. Knauf is seeking a declaratory judgment that CertainTeed has infringed the patent, injunction, damages and attorneys’ fees. According to Inside Indiana Business, CertainTeed has responded by publicly denying the allegations.
This case has been assigned to Judge Tanya Walton Pratt and Magistrate Judge Debra McVicker Lynch in the Southern District of Indiana, and assigned case no. 1:11-cv-00300-TWP-DML.
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Indianapolis, IN – Last week Mary E. Hining, Pro Se, of Durham, NC filed a copyright infringement suit against Rebecca L. Gregg of Indianapolis in the Southern District of Indiana. Ms. Hining alleges that Ms. Gregg sold painted glassware on Etsy.com, a website where artists offer their work for sale, in violation of 17 U.S.C. § 501. Ms. Hining owns Copyright Registration No. VA0001718592, which copyrighted work HAND-PAINTED GLASSWARE DESIGNED BY MARYWIBIS ALSO KNOWN AS MARYELIZABETHARTS. The copyright is registered by the US Copyright Office.
Ms. Hining creates and sells champagne tasting glasses with hand painted leaves and branches of various types of trees on Etsy.com under the name marywibis. She has copyrighted her work and registered the copyright with the US Copyright Office. In the complaint, which Ms. Hining filed on her own and with out the assistance of a copyright attorney, Ms. Hining alleges that Ms. Gregg offers for sale on Etsy.com glasses that are virtually identical and that infringe upon Ms. Hining’s copyright. Ms. Gregg offers the glasses under the name gnome292. Ms. Hining is seeking an injunction and damages.
Indianapolis – Last week, copyright attorneys for Joe Hand Promotions, a Pennsylvania corporation, filed a copyright infringement lawsuit against the owners of an Indiana bar who alleged displayed an Ultimate Fight Championship fight without authorization.
Ursula and Guenter Grote operate the Grote Trading Post and Gus’s Sports Bar in Lawrenceburg, Indiana. Joe Hand Promotions owns exclusive rights to distribute the Ultimate Fight Championship television broadcast on March 3, 2009, UFC broadcast #96. The complaint, filed in the Southern District of Indiana, alleges that the Grotes displayed the fight in their bar without authorization from Joe Hand Promotions. According to the complaint, Joe Hand’s copyright attorneys are unsure whether the Grote’s used satellite or cable television network to show the fight. The copyright attorneys therefore allege that the Grotes violated either 47 U.S.C. § 605(a) or 47 U.S.C. § 553. Joe Hand is seeking damages of up to $110,000, costs and attorneys’ fees.
Practice Tip: Most Satellite signal providers employ encryption to limit reception to certain groups, such as paying subscribers. If an individual has a “residential” agreement with a satellite provider, this does not give them the right to display the performance in a public setting like a bar or restaurant. This is the third copyright infringement lawsuit making similar claims that Joe Hand Promotions has filed in the Southern District of Indiana since 2010.
The case has been assigned to Chief Judge Richard L. Young and Magistrate William G. Hussmann. The docket number is 4:11-CV-016-RLY-WGH.
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Indianapolis, IN – Trademark lawyers for ChaCha Search, Inc. of Carmel, Indiana filed a trademark infringement suit alleging HTC America, Inc. of Washington state, a subsidiary of the HTC Corporation of Taiwan. ChaCha Search alleges that the defendants infringed the ChaCha trademark. ChaCha Search owns the mark and design “ChaCha” registered with the US Trademark Office with registration numbers 3,217,653; 3,217,654 and 3,501,101 for the CHACHA mark.
ChaCha Search has developed a search engine system where mobile phone users call in to an operator who provides answers to the user questions. ChaCha Search has registered the ChaCha mark in relation to this search service. In the complaint trademark attorneys filed last week, ChaCha Search alleges that HTC plans to begin offering a similar search service as part of a smart phone and that HTC plans to use the name and mark ChaCha for the smart phone. According to Yahoo! News, HTC revealed plans to release the phone at the Mobile World Congress trade convention in February. ChaCha Search’s trademark attorneys made claims for trademark infringement under 15 U.S.C. § 1114(1), unfair competition under 15 U.S.C. § 1125(a), trademark dilution under 15 U.S.C. § 1125(c), and common law unfair competition. ChaCha Search is seeking an injunction and damages.
This case has been assigned to Judge William T. Lawrence and Magistrate Judge Mark J. Dinsmore in the Southern District of Indiana, and assigned case no. 1:11-cv-00262-WTL-MJD.
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Indianapolis, IN – Rulings by district courts in Indiana and Arkansas have ensured that the Southern District Court of Indiana will decide a longstanding trademark dispute over a mark used in agricultural machinery. Last week, the Southern District Court declined to transfer Brandt Industries Limited (BIL) v. Pitonyak Machinery Corporation (PMC) to the Eastern District of Arkansas, and the Eastern District Court of Arkansas has transferred its version of the case to Indiana’s Southern District Court.
On July 6, 2010, attorneys for BIL filed a trademark infringement suit in the Southern District of Indiana seeking a declaratory judgment regarding rights to the trademark.
The next day, July 7, trademark attorneys for PMC filed suit in the Eastern District of Arkansas, making a nearly identical trademark infringement claims. Indiana Intellectual Property Lawyer Blog previously wrote about the case here: https://www.iniplaw.org/2010/07/brandt-industries-sues-for-a-d.html#more. PMC then sought transfer of the Indiana case to Arkansas federal court, arguing that all the witnesses were in Arkansas and therefore Arkansas would be a more convenient location for the trial. PMC, based in Carlisle, Arkansas, also argued that Indiana did not have a significant connection to the litigation. BIL is a Canadian company. BIL, however, listed numerous Indiana locations where products with the disputed trademark are sold. The rulings by the two district courts last week settle this dispute over which court will hear the case.
Practice Tip: This case illustrates the importance of being the first party to file a lawsuit when there is a trademark dispute about a product sold in multiple jurisdictions. Certainly, PMC’s argument that it will be inconvenient for it to litigate in Indiana since it is located in Arkansas is well taken. However, inconvenience to PMC was not a sufficient reason for the district courts to transfer the case to Arkansas. Had attorneys for PMC filed the trademark dispute in their preferred court before BIL filed the Indiana case, PMC may have been able to avoid litigating in an inconvenient location.
South Bend; IN – Trademark lawyers for Zimmer, Inc. of Warsaw, Indiana filed a trademark infringement suit alleging that Ari Kresch, a Michigan attorney, and other law firms and attorneys in Michigan and Texas infringed various trademark registrations, including Trademark No. 647,921, Trademark No. 1,778,807 and Trademark No. 1,707, 954 registered with the US Trademark Office.
Zimmer develops, manufactures and sells a line of knee replacement devices called NexGen®. Zimmer’s trademark attorneys alleged that these attorneys and law firms have used Zimmer’s trademarked graphics and logos on their websites and television advertisements to attempt to attract personal injury clients relating to the NexGen® knee replacement line and other Zimmer products. The law firms and attorneys apparently sought to bring personal injury lawsuits against Zimmer that would allege Zimmer’s products caused injury. According to Zimmer’s complaint, these attorneys and law firms used false information about Zimmer’s products in these attempts to gain clients. Allegedly, the defendants also sent letters to Zimmer’s customers advising them of potential problems with Zimmer’s products. Zimmer’s attorneys allege that the defendants have also registered an internet domain name that also infringes on the Zimmer’s trademarks. Trademark attorneys for Zimmer alleged trademark infringement, false advertising, false designation of origin, and unfair competition under the Lanham Act, 15 U.S.C. § 1125. Zimmer has also made a claim of “cybersquatting” as a violation of the Lanham Act, 15 U.S.C. § 1125(d), stating that the domain name registered by the defendants was confusingly similar to Zimmer’s trademarks and was in bad faith. The complaint also alleges common law trademark infringement, defamation, tortuous interference with business relationships, product disparagement, and common law unfair competition. Zimmer is seeking a permanent injunction barring the use of their trademarked materials by the defendants, as well as damages and attorneys’ fees.
Practice Tip: This case raises interesting questions about trademark rights versus the first amendment right to free speech, particularly in the context of attorney advertising. Trademark rights are not a total bar to one party use of another’s trademark material to advertise another product or service. For example, the Lanham Act, 15 U.S.C. § 1125(c)(3)(A)‘s fair use doctrine discusses use for advertising for comparison to another product and criticizing a trademarked good or service. The defendants are likely to claim that their use of the trademarked materials falls under this category.
This case has been assigned to Judge William C. Lee and Magistrate Judge Christopher A. Nuechterlein in the Northern District of Indiana, and assigned case no. 3:11-cv-00063-WCL-CAN.
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Indianapolis and Hammond, Indiana – Attorneys practicing in Indiana’s two federal district courts, the Northern District of Indiana and the Southern District of Indiana, expect numerous patent, copyright and trademark infringement lawsuits to be filed in 2011, continuing the trend of the last two years. In 2009 and 2010, the Indiana Northern and Southern District Courts had numerous intellectual property cases on their dockets.
The chart below shows the number of intellectual property cases filed in 2009 and 2010. The Southern District of Indiana had a total of 75 lawsuits filed making intellectual property claims, of which 46 were patent claims. Copyright attorneys filed 7 cases and trademark attorneys filed 22 cases in 2010. Attorneys in the Northern District of Indiana filed 43 intellectual property cases in 2010. Patent lawyers filed 11 cases in the Northern District of Indiana, while copyright lawyers filed 11 and trademark lawyers filed 20 lawsuits.
Indianapolis, IN – Copyright lawyers for Dion Designs of Quebec, Canada have filed an infringement suit against Allwin Powersports, Corporation, Inc., Arthur Liao, MHR Helmet Co., Ltd., Foshan Shunde Fengxing Helmets, Ltd., and Jiangmen Pengcheng Helmets, Ltd. Plaintiff Dion claims he is a famous designer of helmets, who signed an agreement in 2005 with the Defendants to receive $0.50 for each helmet sold using Dion’s deigns. Defendants paid Dion for some helmets, but terminated the agreement around 2010. However, Dion claims that Defendants used some of Dion’s latest designs to make several new helmets. While some of these designs have been marketed by the Defendants in Europe, Dion fears that they will be offered in the US at the Dealer Expo 2011 on February 18 – 20, 2011 in Indianapolis. Dion claims that he filed copyright applications and design patent applications on his designs, although none of those applications has resulted in a registration or issued patent.
The complaint asserts a veritable “kitchen sink” of claims, such as a Lanham Act claim based on a misrepresentation that Defendants have “authority to import and sell such products, without disclosing the absence of a valid license or agreement with the designer.” Claims are also alleged for copyright infringement, trade secret misappropriation, breach of contract, conversion, unfair competition, and for declaratory relief. Dion’s complaint is also accompanied by a Motion for Preliminary Injunction seeking to bar the “displaying or promoting” of the allegedly infringing helmets at the Dealer Expo on February 18-20, 2011, or on the Internet.
Practice Note: The Plaintiffs’ complaint appears to have several inconsistencies. The Lanham Act claim based on a “failure to disclose” is highly unusual; normally, a Lanham Act claim is predicated on an overt misrepresentation as to source. Although Dion states that the Defendants’ claim that the helmets were “designed in Europe” is false, even if this is the case, it is hard to see how the Plaintiff is harmed, especially since the complaint states that “Dion’s plans to make commercial use of those designs have been placed on hold.” The copyright infringement claim is suspect because, as discussed elsewhere on this site, the Plaintiffs did not obtain a copyright registration before filing a suit. Also, to support the trade secret misappropriation claim, the plaintiff claims that his designs “derive substantial commercial value from not being generally known.” However, even if the Plaintiffs’ designs were once “not generally known,” they certainly are now since the Plaintiff: (a) attached them to his complaint, (b) filed them with the US Copyright Office, and because (c) the designs are alleged to been sold in Europe for some time. Dion’s claim for “conversion” also appears to be preempted by the Copyright Act. Finally, it seems that Dion will have difficulty establishing the “irreparable harm” factor necessary to obtain preliminary injunctive relief, since his predominant complaint is that he has not received his $0.50 per royalty license fee.
Indiana Intellectual Property Law News