Indiana Intellectual Property Law News

September 8, 2014

Apple Entitled to $400M in Samsung Profits, Indiana University Maurer School of Law Professors Say in Amicus Brief

Bloomington, Indiana – In a highly publicized intellectual property case involving the design features of smartphones and tablets, the Federal Circuit will decide whether to force Samsung to pay Apple nearly $400 million – Samsung’s total profits on products that infringed Apple’s design patents. Though several high-profile academics have lined up in support of Samsung, Apple’s position on the total profits rule should prevail, according to Indiana University Maurer School of Law experts who have filed an amicus curiae brief in the case.

Apple and Samsung have been battling in dozens of complex intellectual property infringement cases in several countries. At trial in one of the U.S. cases, a jury found that several Samsung devices infringed Apple’s design patents, and awarded Apple all of Samsung’s profits on those devices. On appeal, Samsung is arguing that it should only be required to give up the portion of its profits that can be linked directly to the infringing design features of the products, a theory called “apportionment.”

“Congress debated this same question over a century ago and rejected apportionment,” said Mark D. Janis, the Robert A. Lucas Chair of Law and director of the Center for Intellectual Property Research at the IU Maurer School of Law. He explained that in the mid-1880s, the Supreme Court decided two cases involving carpet designs in which the infringers made thousands of dollars in profits, but the design patent holder was awarded only 6 cents because it failed to prove how much of the profit was attributable to the carpets’ appearance.

September 5, 2014

Indiana Trademark Litigation: Chanel Sues Chanel’s Salon for Trademark Infringement and Dilution

By Overhauser Law Offices, LLC

Hammond, Indiana – An Indiana trademark lawyer for Chanel, Inc. of New York, New York, in conjunction with New York co-counsel, sued in the Northern District of Indiana alleging that Chanel’s Salon, LLC and Chanel Jones, both of Merrillville, Indiana, committed trademark infringement and trademark dilution of the trademark CHANEL, Registration Nos. 302,690; 510,992; 1,263,845; 1,348,842; 1,464,711; 1,559,404; 1,660,866; 3,134,695; and 4,105,557, which were issued by the U.S. Trademark Office.

Chanel is a fashion and beauty company. For over 85 years, Chanel has used CHANEL as a trade name, house mark and trademark to identify its goods and business. In addition to offering cosmetics, fragrances, and skin care products, Chanel’s goods include hair accessories, such as barrettes, hair clips, and men’s shampoo.

Chanel states that it has spent hundreds of millions of dollars to advertise and promote its goods. It indicates that last year in the United States it spent over $50 million dollars on advertising, all of which prominently featured the CHANEL mark. Consequently, it asserts, the CHANEL name and trademark is one of the most famous marks in the world and has become synonymous with Chanel.

At issue in this Indiana trademark infringement and trademark dilution lawsuit are the actions of Defendants Chanel’s Salon and its owner Chanel Jones. Defendants are accused of having begun to use the trade names CHANEL’S SALON and/or CHANEL’S COSMETOLOGY SALON in October 2012 in connection with their beauty salon without Chanel’s authorization and, in doing so, impinging on Chanel’s intellectual property rights.

Chanel contends in this lawsuit that Defendants are infringing the CHANEL trademark by, inter alia, offering goods and services that are related to those offered under the CHANEL mark, including cosmetics, beauty consultation services and hair accessories. Chanel also asserts that Defendants’ use of CHANEL dilutes the trademark, which Chanel claims is famous.

In July 2013, Chanel sent Defendants a cease-and-desist letter requesting that Defendants change the name of Chanel’s Salon to a name that did not include the word CHANEL. Chanel states that Defendants did not respond to this letter and that further attempts to resolve the dispute were unsuccessful.

In the complaint, filed by an Indiana trademark attorney, the following is alleged:

• Count I: Federal Trademark Dilution (15 U.S.C. § 1125(c))
• Count II: Federal Trademark Infringement (15 U.S.C. § 1114(1))
• Count III: Federal Unfair Competition (15 U.S.C. § 1125(a))
• Count IV: Trademark Infringement and Unfair Competition Under Indiana Common Law

Chanel asks the court for injunctive relief and “such other and further relief as the Court may deem just and proper.”

Practice Tip: This is an unusual trademark case in at least two respects. First, while trademark infringement lawsuits are relatively common, colorable assertions of trademark dilution are less so. This is due in large part to the requirement that the trademark that is allegedly diluted be “famous.” This trademark lawsuit is also unusual in that, while the complaint asks the court in passing for “such other and further relief as the Court may deem just and proper,” it does not explicitly seek damages for the alleged trademark infringement and dilution. Instead, the sole purpose of the complaint seems to be to obtain injunctive relief.

September 4, 2014

Patent Office Issues 168 Patents To Indiana Citizens in August 2014

By Overhauser Law Offices, LLC

The U.S. Patent Office issued the following 168 patent registrations to persons and businesses in Indiana in August 2014, based on applications filed by Indiana patent attorneys:

Patent No.		Title
D712,016		Toilet
D711,670		Furniture support frame and panel
D711,668		Shelving
D711,667		Shelving
D711,666		Shelving
8819849		Customer support account with restricted patient data access

September 3, 2014

192 Trademark Registrations Issued to Indiana Companies in August 2014

By Overhauser Law Offices, LLC

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

August 29, 2014

USPTO to Host America Invents Act Roadshow in Seven Cities Nationwide

By Overhauser Law Offices, LLC

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.

August 28, 2014

Indiana Copyright Litigation: Photographer Sues Theater and Publisher for Copyright Infringement

By Overhauser Law Offices, LLC

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.

August 25, 2014

Indiana Copyright Litigation: Bake Me A Wish Sued for Copyright Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Larry G. Philpot, a professional photographer from Indianapolis,

picture of a camera.jpg

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.

August 22, 2014

Indiana Patent Litigation: Kimball International Sues Westin-Nielsen for Infringement of Two Design Patents

By Overhauser Law Offices, LLC

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.”

August 21, 2014

U.S. Copyright Office Announces Release of Draft of the Compendium of U.S. Copyright Office Practices, Third Edition

By Overhauser Law Offices, LLC

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.”

August 20, 2014

United States Patent Law: Supreme Court Holds Prevailing Defendants in “Unreasonable” Patent Lawsuit Can Be Awarded Legal Fees; Federal Circuit Review Curtailed

By Overhauser Law Offices, LLC

Picture of SS.jpg

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.”