Unfair Competition

August 16, 2016

Seventh Circuit – Trademark Law: Unauthorized Copying of Karaoke Tracks May be Piracy, but Not Trademark Infringement

Chicago, Illinois – The Seventh Circuit Court of Appeals ruled against Plaintiffs Slep-Tone Entertainment Corp. and its successor in interest Phoenix Entertainment Partners LLC (collectively, “Slep-Tone”) in a Lanham Act lawsuit asserting trademark infringement and trade dress infringement.

Trademark attorneys for serial litigant Slep-Tone have filed more than 150 lawsuits throughout the country under the Lanham Act alleging unauthorized copying and performance of Slep-Tone’s karaoke tracks. Slep-Tone contends that such activities constitute trademark infringement and trade dress infringement.

This federal litigation springs from a technology upgrade available to Slep-Tone customers. Earlier formats on which karaoke songs were offered included CD+G compact discs (with the +G referring to the graphic component) and MP3+G media. With the advent of large-capacity hard drives, some customers opted to transfer the files contained on their lawfully purchased CD+G or MP3+G to a hard drive, a practice known as “media shifting.” Because many compact discs can be stored on one hard drive, media shifting removed the need to swap between multiple discs to access different songs. This transfer was permitted by Slep-Tone as long as the customers notified Slep-Tone, agreed to certain terms that restricted multiple copies from being made and agreed to submit to an audit to certify compliance with Slep-Tone’s media-shifting policy.

In this lawsuit, filed against Defendants Basket Case Pub, Inc. of Peoria, Illinois and Dannette Rumsey, its president and owner, Slep-Tone alleged that Defendants violated the media-shifting policy. This, it asserted, resulted in an improper “passing off” of illegitimate “bootleg” copies of tracks as genuine Slep-Tone tracks.

Slep-Tone contended that when these unauthorized copies were played by Defendants, the pub’s customers would be confused, believing that “they are seeing and hearing a legitimate, authentic Slep-Tone track, when in fact they are seeing an unauthorized copy.” This conduct, it claims, is prohibited trademark and trade dress infringement.

A district court in the Central District of Illinois concluded that Slep-Tone had not plausibly alleged that Defendants’ conduct resulted in consumer confusion as to the source of any tangible good sold in the marketplace and dismissed Plaintiffs’ complaint.

The Seventh Circuit agreed. While the appellate court granted that Slep-Tone may have had a plausible complaint of copyright infringement for “theft, piracy, and violation of Slep-Tone’s [media-shifting] policy,” consumer confusion is the touchstone of trademark infringement and such confusion was not present. It stated:

What pub patrons see and hear is the intangible content of the karaoke tracks. They will see Slep-Tone’s trademark and trade dress and believe, rightly, that Slep-Tone is the source of that intangible content. But patrons will neither see nor care about the physical medium from which the karaoke tracks are played; consequently, any confusion is not about the source of the tangible good containing the karaoke tracks.

Because Slep-Tone’s assertions did not constitute trademark infringement or trade dress infringement, the Seventh Circuit affirmed the district court’s dismissal of the lawsuit.

July 29, 2016

Indiana Trademark Litigation: Lilly Sues Australian Seller of Gray-Market Veterinary Products

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Trademark attorneys for Eli Lilly and Company of Indianapolis, Indiana and Novartis Tiergesundheit AG of Basel, Switzerland filed a lawsuit in the Southern District of Indiana alleging trademark infringement and unfair competition.

Plaintiffs offer pet medications, such as flea-control and heartworm treatments, for sale in the U.S. and other countries worldwide. Among these medications are the following trademarked products, which have been registered by the U.S. Patent and Trademark Office:

ELANCO, registration number 710,473
COMFORTIS, registration number 3,370,168
INTERCEPTOR, registration number 2,015,850
CAPSTAR, registration number 2,510,863

TRIFEXIS, registration number 3,944,743

Plaintiffs allege that Defendants Scott Martin d/b/a Best Value Pet Supplies of Queensland, Australia and various unknown “Doe” Defendants infringed the trademarks at issue by selling in the U.S. trademarked products that were intended for sale in other countries via their website, www.bestvaluepetsupplies.com.

Plaintiffs contend that these products are materially different from products intended for sale in the U.S., citing differences such as different units of measure as well as non-U.S. addresses and telephone numbers listed on packaging as contact information.

In this Indiana trademark lawsuit, the following counts are alleged:

• Count I: Trademark Infringement in Violation of Section 32 of the Lanham Act
• Count II: Unfair Competition in Violation of Section 43(a) of the Lanham Act
• Count III: Unfair Competition in Violation of Indiana Common Law

Plaintiffs contend that Defendants’ conduct was willful and ask the court to order equitable relief, as well as the payment of compensatory and punitive damages, attorneys’ fees and costs of this litigation.

July 18, 2016

Indiana Trademark Litigation: Eye 4 Group Sues Over Use of Eyefourgroup.com

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Trademark attorneys for Eye 4 Group, LLC Corporation (“E4G”) of Fishers, Indiana filed an intellectual property lawsuit in the Southern District of Indiana. Defendants are Indianapolis Signworks, Inc. (“ISW”) of Indianapolis, Indiana and Andrew Chapman of Carmel, Indiana, the owner of ISW.

Plaintiff E4G is in the business of graphic design, sign manufacturing, metal fabrication, promotional material and apparel. It owns a registration for the trademark EYE 4 GROUP, Reg. No. 4,694,655, which has been issued by the U.S. Patent and Trademark Office. It has also an application for the registration of a second trademark for EYE 4, pending under Serial No. 87/018,205.

E4G states that Defendant ISW is a direct competitor in the business of making signs as well as associated tools and products. E4G, which owns and operates the website eye4group.com, contends that ISW has used the internet domain name “eyefourgroup.com” and, in doing so, has infringed E4G’s intellectual property. E4G asserts that Defendants’ actions constitute a knowing infringement of its trademark rights and that those actions were intentional, willful and in bad faith.

In this Indiana lawsuit, Plaintiff alleges direct and contributory trademark infringement, false designation of origin, and unfair competition arising under the Lanham Act; dilution under the Federal Trademark Dilution Act; violations of the Anticybersquatting Consumer Protection Act and related wrongdoing under Indiana state law.

Plaintiff seeks injunctive relief and monetary relief, including punitive damages, attorney fees and costs of the litigation.

June 23, 2016

Indiana Copyright Litigation: Attorney/Photographer Sues North Carolina Hotel Operator

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Plaintiff Richard Bell of McCordsville, Indiana sued Defendant Alliance Hospitality Management, LLC of Raleigh, North Carolina in the Southern District of Indiana alleging copyright infringement.

Bell, an Indiana copyright attorney and professional photographer, asserts that Defendant infringed his intellectual property rights in a photo of the Indianapolis skyline entitled “Indianapolis Photo,” which has been registered with the U.S. Copyright Office as Registration No. VA0001785115.

In this Indiana litigation, which Bell filed on his own behalf, a single count of “Copyright Infringement and Unfair Competition” is listed. Bell asks the court to award the maximum statutory damages allowable, asserting that Alliance Hospitality Management has infringed willfully and “with oppression, fraud, and malice.” Bell seeks injunctive relief, damages, costs and attorneys’ fees.

Practice Tip: Bell is a frequent litigant in Indiana federal courts and has been discussed here on numerous occasions. See:

• Attorney/Plaintiff Bell Files Three New Lawsuits Over Photo of Indianapolis Skyline
• Eight New Infringement Lawsuits Filed by Attorney/Plaintiff
• Attorney/Photographer Files Two New Infringement Lawsuits
• Lawsuit by Frequent Copyright Litigant Dismissed for Lack of Jurisdiction
• District Court Terminates Copyright Suit Over Photo; Plaintiff Appeals
• Remaining Copyright Defendants in Bell Lawsuit to be Dismissed
• Attorney/Photographer Sues Georgia Real Estate Company for Infringing Copyrighted Photo
• Sovereign Immunity May Take a Toll on Bell’s Latest Copyright Lawsuit
• Appellate Court Dismisses Copyright Appeal as Premature
• Bell Rings in the Holiday Weekend with a New Copyright Lawsuit
• Bell Files New Copyright Infringement Lawsuit
• Bell Sues Georgia-Based FindTicketsFast.com for Copyright Infringement
• Richard Bell Files Two New Copyright Infringement Lawsuits
• Court Prevents Copyright Plaintiff Bell from Outmaneuvering Legal System; Orders Bell to Pay Almost $34,000 in Fees and Costs
• Three Default Judgments of $2,500 Ordered for Copyright Infringement
• Court Orders Severance of Misjoined Copyright Infringement Complaint

• Richard Bell Files Another Copyright Infringement Lawsuit

June 20, 2016

Indiana Trademark Litigation: Botanic Gardens Asserts Infringement of 91-Year-Old Trademark

By Overhauser Law Offices, LLC

Hammond, Indiana – Trademark attorneys for Plaintiff Indiana Botanic Gardens, Inc. of Hobart, Indiana sued Defendant Snyder Manufacturing Corporation of Long Beach, California, which does business as Eurospa Aromatics and Eurospa Chemicals, alleging trademark infringement and related causes of action.

At issue in the lawsuit is U.S. Trademark Registration No. 1,327,965 for the trademark EUCAMINT for camphorated ointment. Plaintiff states that it owns this registration, which was issued April 2, 1985. It also states that the mark was first used in commerce in 1925. Plaintiff contends that Defendant’s use of EUCAMINT to market an aromatic shower mist infringes its trademark.

This litigation, filed by Indiana trademark lawyers for Plaintiff, asserts the following causes of action:

• Count I: Federal Trademark Infringement
• Count II: Unfair Competition Under Federal Law

• Count III: Common Law Trademark Infringement and Unfair Competition Under Indiana Law

Plaintiff Indiana Botanic Gardens claims that Defendant Snyder Manufacturing acted intentionally and willfully in an attempt to trade upon the goodwill of the EUCAMINT trademark. Plaintiff asks that the court order the payment of damages, including punitive damages. It also seeks equitable relief, costs and attorneys’ fees.

June 6, 2016

Indiana Trademark Litigation: Brew Pub Accused of Infringing Use of Yeti Trademarks

By Overhauser Law Offices, LLC

New Albany, Indiana – Trademark attorneys for Plaintiff Great Divide Brewing Company of Denver, Colorado filed an infringement lawsuit in the Southern District of Indiana against Defendant Red Yeti Brewing Company, Inc. of Jeffersonville, Indiana.

Defendant is listed in the complaint as the owner of a restaurant and brewery named “Red Yeti Brewing Co.” a/k/a “Red Yeti Restaurant and Brewpub.” The complaint asserts that Red Yeti Brewing Co. wrongfully employs the term “Yeti” and a yeti design in its marketing.

Specifically, Plaintiff contends that Defendant Red Yeti’s conduct infringes two of its trademarks, U.S. Trademark Registration No. 2,957,257 for a Yeti word mark and U.S. Trademark Registration No. 4,115,050 for a Yeti design mark. Both have been registered by the U.S. Patent and Trademark Office.

Plaintiff asserts that Red Yeti’s actions constitute a deliberate attempt to trade upon Defendant’s goodwill and reputation and that its actions are willful and malicious. In this Indiana federal lawsuit, filed by trademark lawyers for Plaintiff, the following claims for relief are listed:

• Trademark Infringement in Violation of 15 U.S.C. § 1114(1)
• Unfair Competition – False Designation of Origin in Violation of 15 U.S.C. 1125(a)
• Federal Dilution
• Common Law Unfair Competition
• Common Law Trademark Infringement

• Deceptive Trade Practices in Violation of C.R.S. § 6-1-113

Great Divide seeks damages, including punitive damages, along with equitable relief, costs and attorneys’ fees.

May 18, 2016

Indiana Trademark Litigation: Bedding Wholesaler Sues Competitor Alleging Infringing Use of “Bamboo Luxury” Mark

By Overhauser Law Offices, LLC

Hammond, Indiana – Plaintiff Duke Imports Inc. of Angola, Indiana sued in the Northern District of Indiana alleging that Defendant All That Jazz Trading LLC of LaGrange, Indiana infringed its trademark for BAMBOO LUXURY.

Duke, a wholesaler of bedding, towels and related products asserts ownership to Trademark Registration No. 4,923,500 for BAMBOO LUXURY, which has been registered by the U.S. Patent and Trademark Office. Duke claims that it first used the trademark in connection with the sale of sheets and other bedding products in April 2015.

It contends that All That Jazz, which also wholesales bedding, towels and related products, has sold sheets using the BAMBOO LUXURY trademark. Duke states that Defendant used BAMBOO LUXURY with “actual and/or constructive knowledge of Duke Imports’ senior use and ownership” of the trademark and that the use was a willful infringement.

In a lawsuit filed by an Indiana trademark attorney, the following claims are asserted against Defendant:

• Count One: 15 U.S.C.§ 1125(a)

• Count Two: Common Law Unfair Competition

Plaintiff seeks damages, equitable relief, attorneys’ fees, interest, and costs.

May 12, 2016

Indiana Trademark Litigation: Usage of “Hyperpure” Alleged to Infringe Hydrapure Trademark

By Overhauser Law Offices, LLC

Hammond, Indiana – A trademark attorney for Plaintiff NIBCO Inc. of Elkhart, Indiana commenced trademark infringement litigation in the Northern District of Indiana.

Defendant in the litigation is Legend Valve & Fitting, Inc. of Auburn Hills, Michigan. It is accused of infringing NIBCO’s HYDRAPURE trademark, which has been registered with the U.S. Patent and Trademark Office under Trademark Registration Nos. 4,296,125 and 4,314,186 in conjunction with the sale of metal pipe fittings.

Plaintiff alleges Defendant’s use of HYPERPURE to market its goods creates an identical commercial impression to Plaintiff’s HYDRAPURE trademark. Calling Defendant’s use “a reproduction, counterfeit, copy, or colorable imitation” of its own trademark, Plaintiff states that Defendant’s use of HYPERPURE will confuse consumers as to the source of the goods.

Plaintiff further contends that Defendant Legend chose the HYPERPURE mark in bad faith in an attempt to associate Defendant’s products with Plaintiff’s trademark and, in so doing, appropriate the goodwill that Plaintiff has built in the brand.

In this Indiana lawsuit, a trademark lawyer for NIBCO lists the following claims:

• Count I: Federal Trademark Infringement
• Count II: Federal Unfair Competition/False Designation of Origin
• Count III: Common Law Trademark Infringement
• Count IV: Common Law Unfair Competition

• Count V: Federal Trademark Dilution

NIBCO asks the court for equitable relief; damages, including punitive damages; costs and attorney fees.

May 11, 2016

Indiana Copyright Litigation: Attorney/Photographer Files Two New Infringement Lawsuits

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Photographer Richard Bell of McCordsville, Indiana, who is also both the filing attorney and Plaintiff, filed two new lawsuits in the Southern District of Indiana alleging infringement of two of his copyrighted photos, “Indianapolis Night Photo” and “Indianapolis Photo.” Bell states in his complaint that both photos have been registered with the U.S. Copyright Office under Registration No. VA0001785115.

Defendant in the first lawsuit, TeamSoft, Inc. of Middleton, Wisconsin is accused of infringing Bell’s “Indianapolis Night Photo,” while Defendant in the second lawsuit, Michael Patrick of Indianapolis, Indiana, has been accused of infringing Bell’s “Indianapolis Photo.”

The two federal complaints, which are similar to each other as well as to the previous copyright infringement lawsuits filed by Bell, each list a single count: copyright infringement and unfair competition. Both Defendants are accused of “willfully and deliberately” engaging in copyright infringement “with oppression, fraud, and malice.”

Bell seeks injunctive relief along with statutory damages, costs and attorney’s fees.

Practice Tip: We have blogged in the past about Bell’s prolific litigation. See:

• District Court Terminates Copyright Suit Over Photo; Plaintiff Appeals
• Remaining Copyright Defendants in Bell Lawsuit to be Dismissed
• Attorney/Photographer Sues Georgia Real Estate Company for Infringing Copyrighted Photo
• Sovereign Immunity May Take a Toll on Bell’s Latest Copyright Lawsuit
• Appellate Court Dismisses Copyright Appeal as Premature
• Bell Rings in the Holiday Weekend with a New Copyright Lawsuit
• Bell Files New Copyright Infringement Lawsuit
• Bell Sues Georgia-Based FindTicketsFast.com for Copyright Infringement
• Richard Bell Files Two New Copyright Infringement Lawsuits
• Court Prevents Copyright Plaintiff Bell from Outmaneuvering Legal System; Orders Bell to Pay Almost $34,000 in Fees and Costs
• Three Default Judgments of $2,500 Ordered for Copyright Infringement
• Court Orders Severance of Misjoined Copyright Infringement Complaint

• Richard Bell Files Another Copyright Infringement Lawsuit

May 6, 2016

Indiana Trademark Litigation: Klipsch Alleges “Grey Market” Seller Infringed Klipsch Trademarks

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana trademark lawyer for Plaintiff Klipsch Group, Inc. of Indianapolis, Indiana sued Defendant Steve Myers d/b/a HumanAudio in the Southern District of Indiana on allegations of trademark infringement and unfair competition.

Defendant HumanAudio, an eBay seller with its principal place of business in Studio City, California, is accused of offering “grey market” Klipsch products to the public. Klipsch contends that HumanAudio advertises “brand new” Klipsch audio products for sale via Defendant’s eBay store. However, Klipsch states, Defendant’s products are materially different from those purchased from an authorized distributor because the sale through Defendant’s unauthorized store voids the warranty that Klipsch normally provides to the original purchasers of its products. Klipsch also contends that HumanAudio removed the serial numbers on Klipsch goods and replaced them with fake serial numbers.

Klipsch alleges that Defendant has infringed three KLIPSCH trademarks: U.S. Trademark Registration Nos. 978,949; 2,917,215 and 3,863,511. In this Indiana federal lawsuit, the following claims are made:

• Count I: Federal Trademark Infringement in Violation of 15 U.S.C. § 1114

• Count II: Federal Unfair Competition in Violation of 15 U.S.C. § 1125

Plaintiff seeks equitable relief, damages, attorneys’ fees and costs.