The U.S. Trademark Office issued the following 183 trademark registrations to persons and businesses in Indiana in July 2014 based on applications filed by Indiana trademark attorneys:
| Reg. Number |
Mark | Click to view |
| 86188876 | SABOTAGE | View |
| 86158448 | PL”8″TED | View |
| 86151387 | KINGFISHER | View |
| 86146172 | TURTLEBACK | View |
| 86134928 | TEAM FILM | View |
| 86133861 | THE TRAVEL ADDICT | View |
| 86133176 | COMPASSION KEY | View |
| 86126781 | BAD MAMMA JAMMA FITNESS | View |
WASHINGTON, D.C. – USPTO officials will discuss the First Inventor to File provision of the America Invents Act.
The U.S. Department of Commerce’s United States Patent and Trademark Office (“USPTO”)
announced this week that it will host seven roadshows across the country between September 16 and October 9, 2014. These events are designed to increase understanding of the First Inventor to File (“FITF”) provisions of the America Invents Act (“AIA”). The public meetings will serve as an opportunity for USPTO subject-matter experts and stakeholders to discuss the FITF provisions and updates since its implementation in March 2013.
Indianapolis, Indiana – Larry G. Philpot, a professional photographer from Indianapolis, Indiana, filed two new Indiana copyright infringement lawsuits in the Southern District of Indiana. These lawsuits are in addition to another intellectual property lawsuit filed by Philpot recently.
On October 4, 2009, Plaintiff Philpot photographed Willie Nelson during a performance in St. Louis, Missouri (“Nelson photograph”). On August 2, 2013, he photographed Chris Daughtry during a performance in Indianapolis, Indiana (“Daughtry Photograph”).
In an effort to increase his marketability and reputation and to gain more work, Philpot made the photographs of Nelson and Daughtry generally available through Wikimedia under the Creative Commons Attribution 2.0 Generic license (“CC BY 2.0”). Philpot asserts that CC BY 2.0 requires a licensee to (a) reference CC BY 2.0 with every copy of the photo used and (b) provide attribution in the manner specified by the author. He claims that these requirements applied to republication of his copyrighted photos of Nelson and Daughtry. The two new Indiana copyright infringement complaints assert that Defendants did not comply with these licensing requirements and are, consequently, liable for copyright infringement.
In the first complaint, Mansion America, LLC d/b/a Oak Ridge Boys Theater of Branson, Missouri is accused of copyright infringement of Philpot’s Willie Nelson photograph, Certificate Number VAu 1-132-411, which was issued by the U.S. Copyright Office.
In the second complaint, Everything Brooklyn Media, LLC d/b/a The Brooklyn Daily Eagle, is accused of copyright infringement of Philpot’s Nelson photograph and also the Daughtry Photograph, Certificate Number VAu 1-164-624, which was also issued by the U.S. Copyright Office.
In the copyright complaint against Mansion, filed by Philpot acting as a pro se litigant, the following claims are made:
• Count I: Copyright Infringement and Unfair Competition
• Count II: Unauthorized Distribution of Copyrighted Material
• Count III: Removal of Identifying Information
The copyright complaint filed against The Brooklyn Daily Eagle asserts only the first count (copyright infringement and unfair competition).
In both complaints, Philpot asks the court for an injunction, damages, costs and attorneys’ fees.
Practice Tip #1: Under 17 U.S.C. § 504(c)(1), a copyright owner may elect actual or statutory damages. Statutory damages range from a sum of not less than $750 to not more than $30,000 per infringed work.
Practice Tip #2: The claims in these complaints may trigger the “advertising injury” clause of many general business liability insurance policies. If a defendant has applicable business insurance, it may provide coverage for the expenses of a legal defense and damages found due as a result of unintentional copyright infringement. Overhauser Law Offices, publisher of this Site, counsels clients on insurance coverage for insurance claims.
Indianapolis, Indiana – Larry G. Philpot, a professional photographer from Indianapolis,
Indiana, sued asserting a violation of his intellectual property rights by Bake Me A Wish, LLC of New York. The lawsuit, filed in the Southern District of Indiana, alleges that Defendant Bake Me A Wish infringed the copyright of Philpot’s photograph of Willie Nelson, Certificate No. VAu 1-132-411, which was issued by the U.S. Copyright Office.
On October 4, 2009, Plaintiff Philpot photographed Willie Nelson during a performance in St. Louis, Missouri. In an effort to increase his marketability and reputation and to gain more work, on May 31, 2011, Philpot made the photograph of Nelson generally available through Wikimedia under the Creative Commons Attribution 2.0 Generic license (“CC BY 2.0”). Philpot asserts that CC BY 2.0 requires a licensee to (a) reference CC BY 2.0 with every copy of the photo used and (b) provide attribution in the manner specified by the author. He claims that these requirements applied to republication of his copyrighted photo of Nelson.
Philpot states that Bake Me A Wish owns and operates the website www.bakemeawish.com and a related Facebook page and that those websites are used to generate business. Defendant Bake Me A Wish is accused of placing a copy of the Nelson photo on its Facebook page on April 30, 2013 without displaying the proper attribution to Philpot.
In the copyright complaint, filed by Philpot acting as a pro se litigant, the following claims are made:
• Count I: Copyright Infringement and Unfair Competition
• Count II: Unauthorized Distribution of Copyrighted Material
• Count III: Removal of Identifying Information
Philpot asks the court for an injunction, damages, costs and attorneys’ fees.
Practice Tip #1: This complaint suffers from a number of legal and factual deficiencies. Among them is that Philpot simultaneous admits that Bake Me A Wish removed the content when requested and also alleges not only willful conduct but ongoing willful conduct. The allegation of ongoing willful conduct is made by Plaintiff in support of his contention that Defendant’s conduct entitles him to the maximum statutory damages allowable. Statutory damages may be awarded in a sum not less than $750 or more than $30,000 for each finding of infringement. A determination of willful copyright infringement permits the court in its discretion to increase the award of statutory damages up to $150,000 per infringement.
Practice Tip #2: Defendants who fail to appear run a significant risk of having a default judgment entered against them. There is a significant disparity in the dollar amount awarded in default judgments against defendants in copyright infringement cases. In two separate cases, Judge William T. Lawrence ordered defendants who failed to appear to pay $20,000 for the copyright infringement that was deemed to have been admitted by the defendants’ failure to defend against the allegations. See here and here. However, in a similar case, Judge Jane Magnus-Stinson ordered an entry of default judgment against a defendant for $151,425, the full amount requested.
Overhauser Law Offices, the publisher of this website, has represented several hundred persons and businesses regarding copyright infringement and similar matters.
Indianapolis, Indiana – Indiana patent attorneys for Kimball International, Inc. of Jasper, Indiana commenced intellectual property litigation in the Southern District of Indiana alleging that NWN, Inc., d/b/a Westin-Nielsen, infringed Design Patent Nos. D654,718 for a “Side Chair” and D665,188, also for a “Side Chair.” These design patents have been issued by the U.S. Patent Office.
Kimball, a furniture design and manufacturing company that has operated for over four decades, asserts that Westin-Nielsen’s “Cascade” line of chairs infringes Kimball’s intellectual property rights in two design patents. The Cascade line of chairs, named after the Cascade River in northern Minnesota, is designed for plus-sized seating.
At issue in this design patent litigation are United States Design Patent Nos. D654,718 (the “‘718 Patent”) and D665,188 (the “‘188 Patent”). Westin-Nielsen is accused of infringing these patented designs, either directly or contributorily, by making, using, selling, offering for sale, or supplying products such as Westin-Nielsen’s Cascade line of chairs. Kimball asserts that Westin-Nielsen will continue to do so unless enjoined.
The complaint, filed by Indiana patent lawyers for Kimball, lists the following counts:
• Infringement of United States Design Patent No. D654,718
• Infringement of United States Design Patent No. D665,188
Kimball asks that the court:
• Adjudge that NWN has infringed the ‘718 and ‘188 Patents in violation of 35 U.S.C. § 271;
• Issue preliminary and permanent injunctive relief prohibiting NWN and its agents from infringing the ‘718 and ‘188 Patents pursuant to 35 U.S.C. § 283;
• Award Kimball damages for patent infringement, and prejudgment interest and costs against NWN pursuant to 35 U.S.C. § 284;
• Adjudge that NWN’s infringement of the ‘718 and ‘188 Patents has been deliberate, willful, and wanton;
• Adjudge that NWN’s infringement of the ‘718 and ‘188 Patents has been exceptional under 35 U.S.C. § 285;
• Treble the damage award under 35 U.S.C. § 284;
• Award Kimball its reasonable attorneys’ fees under 35 U.S.C. § 285; and
• Award Kimball the total profits received or derived by NWN from the manufacture, marketing, sale, offering for sale, and/or distribution of products bearing or using any copy or colorable imitation of the ‘718 and ‘188 Patents pursuant to 35 U.S.C. § 289.
Practice Tip: The U.S. Supreme Court ruled this year that a trial court may award attorneys’ fees in case of patent infringement litigation that it deems “exceptional.” These Supreme Court rulings revisiting how “exceptional” is defined may benefit any company which is the target of a questionable patent infringement lawsuit, as trial judges will now have greater latitude to award attorneys’ fees in those cases in which they determine that the conduct of the losing party “stands out from others.”
This Tuesday Register of Copyrights Maria A. Pallante (pictured) released a public draft of the
Compendium of U.S. Copyright Office Practices, Third Edition (the “Third Edition”). The first major revision in more than two decades, the draft presents more than 1200 pages of administrative practices and sets the stage for a number of long-term improvements in registration and recordation policy. It will remain in draft form for approximately 120 days pending final review and implementation, taking effect on or around December 15, 2014.
“The new Compendium is an exhaustive undertaking that explains and reconciles the many legal interpretations, regulations, and procedures of the Copyright Office in administering the copyright law,” said Pallante. “At the same time, it provides a necessary and authoritative foundation for ongoing policy and regulatory discussions that are pertinent to the digital era.”
Washington, D.C. – In two related rulings, the United States Supreme Court addressed the standards for granting and reviewing awards of legal fees in patent infringement lawsuits.
In the first matter, Octane Fitness, LLC was sued by Icon Health & Fitness, Inc. At issue was Icon’s contention that the use of a particular component in elliptical fitness machines constituted patent infringement. After Octane prevailed, it sought $1.8 million in attorneys’ fees. The district court denied these fees and an appeal was taken on the issue.
In its review, the Federal Circuit applied the rule from Brooks Furniture Mfg., Inc. v. Dutailier Int’l, Inc. In Brooks Furniture, the Federal Circuit had defined an “exceptional case,” which would warrant an award of legal fees, as one that either involves “material inappropriate conduct” or is both “objectively baseless” and “brought in subjective bad faith.” It then rejected Octane’s assertion – that attorneys’ fees were appropriate because Icon had asserted an unreasonable claim construction – as not falling within the Brooks Furniture definition and declined to overrule the district court’s denial of attorney’s fees.
In Octane Fitness v. Icon Health & Fitness, Case No. 12-1184, the Supreme Court reversed and remanded. Justice Sotomayor, writing for a unanimous court, said that the Federal Circuit’s interpretation of 35 U.S.C. §285 was overly rigid and “superimposes an inflexible framework onto statutory text that is inherently flexible.” Instead, the Court held that “an ‘exceptional’ case is simply one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.
The Court also revised the standard of proof that had been required by the Federal Circuit. In Brooks Furniture, the Federal Circuit had held that §285 requires that parties establish the “exceptional” nature of a case by “clear and convincing evidence.” The Supreme Court opined that such a high standard was not supported by the statute. Instead, as patent infringement litigation is generally governed by a preponderance-of-the-evidence standard, that standard was also appropriate for the award of attorneys’ fees.
The second patent infringement litigation decided by the Supreme Court pertained to a patent infringement lawsuit filed by Allcare Health management Systems. After Allcare lost in the district court, the district judge awarded $5 million in attorneys’ fees to Highmark. The Federal Circuit reviewed the district court’s judgment de novo and reversed the award.
In Highmark v. Allcare Health Management Systems, Case No. 12-1163, the Supreme Court reversed the Federal Circuit’s reversal, holding that, in light of the traditional framework of review, the Federal Circuit should be more deferential to the trial court on the issue of the award of fees. The Supreme Court stated, “Traditionally, decisions on ‘questions of law’ are ‘reviewable de novo,’ decisions on ‘questions of fact’ are ‘reviewable for clear error,’ and decisions on ‘matters of discretion’ are ‘reviewable for abuse of discretion.'” The determination of whether a case should be considered to be “exceptional” for the purposes of awarding attorneys’ fees is a matter of discretion. As such, it is properly reviewed not de novo but instead for abuse of discretion.
Practice Tip: Under U.S. patent law, a trial court may award attorneys’ fees in case of patent infringement litigation that it deems “exceptional.” These Supreme Court rulings revisiting how “exceptional” is defined may benefit Google, Apple and other large technology companies, which are often targets of questionable patent infringement lawsuits, as trial judges will now have greater latitude to award attorneys’ fees in those cases in which they determine that the conduct of the losing party “stands out from others.”
Indianapolis, Indiana – The Southern District of Indiana has released a public notice regarding the reappointment of Incumbent Magistrate Judge Craig M. McKee. Magistrate Judge McKee (pictured left) is currently in office at Terre Haute, Indiana, and his current term is set to expire on August 22, 2015.
By law, the Court is required to seek and establish a panel to reconsider the reappointment of Magistrate Judge McKee to a new four-year term. Comments from members of the bar and the public are invited as to the reappointment. All comments should be directed to Laura A. Briggs, Clerk, Attn: Reappointment Panel, United States District Court, 46 East Ohio Street, Room 105, Indianapolis, Indiana 46204 or via email to: localrules@insd.uscourts.gov.
Comments must be received no later than August 29, 2014.
Alexandria, Virginia – The United States Patent and Trademark Office (“USPTO”) has repeated its warning about unsolicited communications regarding maintenance fees.
Many patent owners have received unsolicited communications that at first glance appear to be “official” but are not actually from the USPTO. These communications usually contain warnings about the expiration of patents for failure to pay the maintenance fees of the patent. The communications often sound urgent, in hopes that recipients will be intimidated into paying the fees listed, which frequently include the cost to maintain the patent as well as a “service charge” for the third party’s trouble.
While maintenance fees must be paid three, seven, and 11 years after the patent issues, a patent owner can pay the fee without the assistance of a third party. In fact, the USPTO has made it possible for a patent owner to pay the fee online easily and securely. Further, if you need assistance with determining when maintenance fees are due, you can check online or contact the USPTO at the Inventor Assistance Center at 1-800-786-9199 for assistance.
South Bend, Indiana – In conjunction with New York intellectual property co-counsel,
Indiana patent attorneys for CeraMedic LLC of Plano, Texas sued in the Northern District of Indiana alleging that DePuy Orthopaedics, Inc. of Warsaw, Indiana (“DePuy”) infringed “Sintered AL₂O₃ Material, Process for Its Production and Use of the Material,” Patent No. 6,066,584 (the “‘584 patent”), which has been issued by the U.S. Patent Office.
The ‘584 patent relates to the field of ceramics and concerns sintered Al₂O₃ compositions and methods for the use of such material as medical implants or tool material. It was issued in May 2000 to Fraunhofer-Gesellschaft zur Förderung der Angewandten Forschung e.V., Germany (“Fraunhofer”), Europe’s largest application-oriented research organization. CeraMedic states that Fraunhofer, the assignee of over 1,500 U.S. patents, assigned ownership of the ‘584 patent to CeraMedic in early 2014.
CeraMedic indicates that non-party CeramTec GmbH (“CeramTec”) developed and manufactures BIOLOX Delta, an aluminum oxide matrix composite ceramic consisting of approximately 82% alumina (Al₂O₃), 17% zirconia (ZrO₂), and other trace elements.
CeraMedic then states that Defendant DePuy “designs, develops, manufactures, offers for sale, sells, uses, distributes, and markets hip implants, many of which include” CeramTec’s BIOLOX Delta and that such actions constitute infringement of the ‘584 patent. DePuy is accused of infringing the ‘584 patent directly, literally, and/or by equivalents.
The complaint, filed by New York patent attorneys in conjunction with Indiana patent lawyers, lists a single count: infringement of the ‘584 patent. CeraMedic asks the court for a judgment against DePuy determining that DePuy has infringed and continues to infringe one or more claims of the ‘584 patent; enjoining DePuy and its agents from further infringing the ‘584 patent; ordering DePuy to account for and pay to CeraMedic all damages suffered by CeraMedic as a consequence of DePuy’s alleged infringement of the ‘584 patent, together with interest and costs; trebling or otherwise increasing CeraMedic’s damages under 35 U.S.C. § 284 upon a finding that the asserted infringement by DePuy of the ‘584 patent was deliberate and willful; and declaring that this case is exceptional and awarding to CeraMedic its costs and attorneys’ fees in accordance with 35 U.S.C. § 285.
Practice Tip: DePuy Orthopaedics Inc. has been involved in similar Indiana patent infringement litigation before. See, e.g.:
• Howmedica Osteonics Corp. and Stryker Ireland Ltd. Sues DePuy Orthopaedics Inc.
for Patent Infringement of a Surgical Implant Used in Hip Replacement Procedures
• Orthopaedic Hospital Seeks Injunction and Damages for Patent Infringement
