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Washington, D.C. – The opinion in Blackhorse v. Pro Football, Inc., TTAB Cancellation No. Redskins-Helmet.jpg92046185, resolved the petition of five Native Americans who filed for the cancellation of six “Redskins” trademarks with the U.S. Patent and Trademark Office (“USPTO”).

Yesterday, in a 177-page opinion, the Trademark Trial and Appeal Board (“TTAB” or “Board”) canceled six trademark registrations belonging to The Washington Redskins. All of the trademark registrations included the term “Redskins.”

Trademark attorneys for the petitioners argued that the term “Redskins” was disparaging of Native Americans. Under 15 U.S.C. § 1052, registration of a mark may be denied if that mark “Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

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New Albany, Indiana – Trademark attorneys for Liquid Palace, LLC and Robert W. Kaiser, LiquidGeniePicture.jpgJr., both of New Albany, Indiana, filed an intellectual property lawsuit alleging that E Liquid Palace, LLC and Austin Simon, both of Jeffersonville, Indiana, and Russell Simon of Louisville, Kentucky infringed registered trademarks “Genie” and “Liquid Genie“, serial numbers 86107913 and 86107799 by using the registered trademark “Electric Genie“, serial number 86194345. This Indiana trademark litigation, initially filed in Indiana state court, was removed to the Southern District of Indiana.

Liquid Palace manufactures, distributes and sells electronic cigarettes, also known as e-cigarettes, and related products through brick-and-mortar and e-commerce channels. Liquid Palace indicates that it began conducting business on or around March 21, 2013. It claims that, in the next few days, it registered the domain name “liquidpalace.com” and began using the trademark “Liquid Genie” along with an accompanying image of a genie. Liquid Palace submitted applications for trademarks to the U.S. Patent and Trademark Office (“USPTO”) for the “Genie” and “Liquid Genie” word marks, with an accompanying image, in November 2013.

E Liquid Palace, which does business as “Electric Genie,” engages in a similar business approximately 6 miles from Liquid Palace’s retail store. Defendant Austin Simon is asserted to be the sole member of E Liquid Palace. On April 4, 2013, two weeks after Plaintiffs’ claimed business-opening date, Defendants submitted articles of organization to the Indiana Secretary of State to form E Liquid Palace, LLC, while Defendant Russell Simon is listed as the owner of the “Electric Genie” trademark.

Liquid Palace contends that it owns rights to the marks “Genie”, “Liquid Genie” and “Electronic Genie”. It claims that Defendants are using those marks and/or marks that are substantially similar. Liquid Palace asserts that these actions violate its trademark rights.

In its complaint, filed by trademark attorneys for Plaintiffs, the following counts are alleged:

• Count I: Violations of 15 U.S.C. § 1051 et seq.
• Count II: Common Law Trademark Infringement
• Count III: Intentional Interference with Prospective Business Advantage and/or Intentional Interference with Business Relationships
• Count IV: Unfair Competition
• Count V: Injunctive Relief

Plaintiffs seek damages, including compensatory and punitive damages; statutory and/or liquidated damages under 15 U.S.C. § 1051; interest; injunctive relief and costs and attorneys’ fees.

Practice Tip:

Plaintiffs may have a difficult case to prove. They claim that at “the time the Defendants’ submitted articles of organization for [E Liquid Palace], the Defendants knew or should have known that the Plaintiff’s [sic] claimed a right to use ‘Liquid Palace’ in its business operations and that the intentional registration of ‘E Liquid Palace, LLC’ would confuse and/or mislead the consuming public.” However, Plaintiffs’ entity, Liquid Palace, LLC, is shown on the website of the Indiana Secretary of State to have been created in Kentucky on April 9, 2013, after the creation of E Liquid Palace, LLC.

Moreover, given that E Liquid Palace, LLC is the Defendants’ legal name, not the name under which they present themselves to the public, Liquid Palace is going to have a hard time showing confusion in the marketplace resulting from any similarities between the legal names of the entities.

It will also be interesting to see how the court handles any competing rights conferred by the registration of the marks at issue, given that both Plaintiff(s) and Defendant(s) have rights in federally registered marks.

Finally, the core infringement standard for trademark law is the “likelihood of confusion” test. This test imposes liability if a substantial number of consumers are likely to be confused by a defendant’s use of a trademark in which the plaintiff in the litigation has intellectual property rights. Given the exceedingly short period of time for which Plaintiffs here claim exclusive use of any mark in question, proving that consumers have come to identify Plaintiffs’ marks exclusively with their goods will be challenging.

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Washington, D.C. – The United States Court of Appeals for the District of Columbia handed Copyright-Troll-Crossing.jpgcopyright trolls a major defeat recently by removing one of their most powerful tactics: the ability to sue large groups of John Doe defendants together with minimal evidence.

The case, AF Holdings v. Does 1-1058, is one of the few mass copyright cases to reach an appellate court, and the first to look into fundamental procedural problems that have tilted the playing field firmly against the Doe Defendants. With this decision on the books, it appears likely that even more federal trial courts will disallow cookie-cutter lawsuits seeking cash payouts from dozens or even hundreds of Internet subscribers.

The appeal was brought by several internet service providers (Verizon, Comcast, AT&T and affiliates) with amicus support from copyright attorneys for the Electronic Frontier Foundation (“EFF”), the ACLU, the ACLU of the Nation’s Capital, Public Citizen, and Public Knowledge.

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Indianapolis, Indiana – An intellectual property lawyer for DirecTV, LLC of El Segundo, DirecTV-picture.jpgCalifornia has sued in the Southern District of Indiana alleging that Jeremy Jennings and Regal Enterprises, LLC d/b/a Ron-De-Voo Inn, all of Hagerstown, Indiana illegally utilized a satellite signal that had been licensed for residential service by displaying the satellite programming in a commercial establishment. DirecTV seeks declaratory and injunctive relief as well as damages for the improper receipt, transmission and exhibition of its satellite programming signals.

DirecTV distributes satellite programming throughout the United States. Through its operations, DirecTV provides this programming via specialized satellite-signal receiving equipment to subscribers who purchase a programming license by paying a subscription fee.

This intellectual property lawsuit was brought under the Cable Communications Policy Act of 1984, 47 U.S.C. §521, et seq., and 47 U.S.C. §605. The complaint alleges that Jennings, in his capacity as an owner and individual with close control over internal operating procedures of Regal Enterprises, LLC and Ron-De-Voo Inn willfully and unlawfully used a residential subscription to DirecTV in a commercial establishment. Jennings has been sued both individually and as an officer, director, shareholder, principal, manager and/or member of Regal Enterprises, LLC, which does business as Ron-De-Voo Inn.

The complaint, filed by an intellectual property attorney for DirecTV, cites three causes of action:

• Count One: Damages for Violations of Cable Communications Policy Act under 47 U.S.C. §605(e)(3)(c);
• Count Two: Damages for Violations of 18 U.S.C. §2511; and
• Count Three: Civil Conversion.

DirecTV asks for the following: a declaration that the defendants’ use of DirecTV was a violation of §2511 and §605, that such violations were willful and for the purpose of commercial advantage; an injunction against further violations; statutory damages under 18 U.S.C. §2511; statutory damages under 47 U.S.C. §605; punitive damages and costs, attorney’s fees and interest.

Practice Tip #1: DirecTV provides services to homes based on residential rates and to commercial establishments under commercial rates. Jennings and Regal Enterprises are accused of surreptitiously gaining access to DirecTV programming without proper authorization by subscribing to DirecTV services under a residential account and then installing/moving the equipment to the business establishment and utilizing the services, licensed at a residential rate, in a commercial environment.

Practice Tip #2: As part of its complaint, DirecTV claims that its goodwill and reputation have been usurped. It will be interesting to see what evidence it offers as proof that, as a result of allegedly receiving a lower monthly fee for the programming provided to the defendants – a circumstance, if true, presumably known to few other than Jennings – its goodwill or reputation have been impacted.

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Hammond, Indiana – An intellectual property attorney for J & J Sports Productions, Inc.250px-Pacquiao_vs_Bradleypicture.jpg (“J & J Sports”) of Campbell, California sued Sheila M. Kikalos individually and d/b/a Valla Del Sol a/k/a Villa Del Sol of Merrillville, Indiana in the Northern District of Indiana alleging the illegal interception and broadcast of Manny Pacqiao v. Timothy Bradley, WBO World Welterweight Championship Fight Program (the “Program”), which was telecast nationwide on June 9, 2012.

J & J Sports states that it is the exclusive domestic commercial distributor of the Program. It has sued Sheila M. Kikalos individually and d/b/a Villa Del Sol, under the Communications Act of 1934 and The Cable & Television Consumer Protection and Competition Act of 1992.

Specifically, Kikalos has been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553 by displaying the Program without a commercial license on the day of its broadcast. Regarding the claim under 47 U.S.C. § 605, the complaint alleges that with “full knowledge that the Program was not to be intercepted, received, published, divulged, displayed, and/or exhibited by commercial entities unauthorized to do so, each and every one of the above named Defendants . . . did unlawfully intercept, receive, publish, divulge, display, and/or exhibit the Program” for the purpose of commercial advantage and/or private financial gain.

A count of conversion is also included in the complaint. It asserts that the alleged acts of interception and exhibition were “willful, malicious, egregious, and intentionally designed to harm Plaintiff J & J Sports” and that, as a result of being deprived of their commercial license fee, J & J Sports suffered “severe economic distress and great financial loss.”

As there appears to be no separate legal entity, the lone defendant is Kikalos, who has been named both individually and doing business as Villa Del Sol. As an individual, J & J Sports asserts that Kikalos is responsible for the alleged unlawful activity, contending that she had the right and ability to supervise the activities of the establishment. J & J Sports asserts that the activities that she supervised included the unlawful interception of Plaintiff’s program. J & J Sports contends that Kikalos specifically directed the employees of Villa Del Sol to unlawfully intercept and broadcast Plaintiff’s program at Villa Del Sol and Grill or, if she did not, that the actions of the employees of Villa Del Sol are directly imputable to Kikalos by virtue of her purported responsibility for the activities of the restaurant.

J & J Sports further asserts that Kikalos as an individual specifically identified on the liquor license for Villa Del Sol, had an obvious and direct financial interest in the activities of Villa Del Sol.

In the complaint, the intellectual property lawyer for J & J Sports listed the following counts and requests for redress:

• Count I: Violation of Title 47 U.S.C. § 605. For this count, J & J Sports requests (a) statutory damages for each willful violation in an amount to $100,000.00 pursuant to Title 47 U.S.C. 605(e)(3)(C)(ii), and (b) the recovery of full costs, including reasonable attorneys’ fees, pursuant to Title 47 U.S.C. § 605(e)(3)(B)(iii).
• Count II: Violation of Title 47 U.S.C. § 553. For this count, J & J Sports asks the court for (a) statutory damages for each violation in an amount to $10,000.00 pursuant to Title 47 U.S.C. § 553(c)(3)(A)(ii); (b) statutory damages for each willful violation in an amount to $50,000.00 pursuant to Title 47 U.S.C. § 553(c)(3)(B); (c) the recovery of full costs pursuant to Title 47 U.S.C. § 553 (c)(2)(C); and (d) and in the discretion of the court, reasonable attorneys’ fees, pursuant to Title 47 U.S.C. § 553 (c)(2)(C).
• Count III: Conversion. For this count, the court is requested to order both compensatory and punitive damages from Defendants as the result of the Defendants’ allegedly egregious conduct, theft, and conversion of the program and deliberate injury to J & J Sports.

Practice Tip #1: While on the surface this appears to be a copyright case, an allegation of interception under 47 U.S.C. § 605 is a different cause of action from copyright infringement. However, a suit alleging interception does not preclude an additional lawsuit alleging different causes of action. For example, the copyright holder can also sue for copyright infringement, which could increase damages by as much as $150,000.

Practice Tip #2: As part of its complaint, J & J Sports claims that the Kikalos’ actions have subjected them to “severe economic distress and great financial loss.” It will be interesting to see what evidence it offers as proof that, as a result of allegedly not receiving its full commercial fee for the programming purportedly displayed by the Kikalos – a circumstance, if true, presumably known to few other than the Kikalos herself – it has suffered severe economic distress and great financial loss.

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Indianapolis, Indiana – Nine copyright infringement lawsuits have been filed in the Southern District of Indiana on behalf of Malibu Media, LLC of Los Angeles, California. The lawsuits assert that nine separate unidentified defendants, each identified with only “John Doe” and an internet protocol address, infringed Malibu Media’s copyrighted works.

Frequent copyright litigator Paul Nicoletti has filed another set of copyright infringement complaints in Indiana federal court. The complaints, filed on behalf of adult-content purveyor Malibu Media, assert infringement of the company’s intellectual property. In this latest round, Malibu Media submitted nine new and nearly identical lawsuits for adjudication in the Southern District of Indiana against nine anonymous John Doe defendants. The defendants allegedly used the BitTorrent file-sharing protocol to illegally download, copy and distribute elements of various works of Malibu Media’s copyrighted material. As with all of Malibu Media’s complaints, the copyrights-in-suit cover pornographic videos.

Malibu Media seeks a permanent injunction barring the defendants from engaging in infringing activities; an order by the court that infringing materials be removed from all computers of each defendant; a separate award of statutory damages for each work found to have been infringed and reasonable attorneys’ fees and costs.

Practice Tip: 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 involving BitTorrent. 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.

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Fort Wayne, Indiana – An intellectual property attorney for J & J Sports Productions, Inc. of manny-pacquiao-timothy-bradley.jpgCampbell, California has sued in the Northern District of Indiana alleging that Wesley Yeakle individually and d/b/a Yeakle’s Sports Bar and Grill; and Yeakle’s Sports Bar and Grill, Inc. d/b/a Yeakles Sports Bar and Grill, both of Marion, Indiana, illegally intercepted and televised Manny Pacquiao v. Timothy Bradley WBO Welterweight Championship Fight Program (the “Program”), which was telecast nationwide on Saturday, June 9, 2012.

J & J Sports states that it is the exclusive domestic commercial distributor of the Program. It has sued Yeakle’s Sports Bar and Grill, Inc., as well as Wesley Yeakle as an individual, under the Communications Act of 1934 and The Cable & Television Consumer Protection and Competition Act of 1992.

Specifically, Defendants have been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553 by displaying the Program without a commercial license on the day of its broadcast. Regarding the claim under 47 U.S.C. § 605, the complaint alleges that with “full knowledge that the Program was not to be intercepted, received, published, divulged, displayed, and/or exhibited by commercial entities unauthorized to do so, each and every one of the above named Defendants . . . did unlawfully intercept, receive, publish, divulge, display, and/or exhibit the Program” for the purpose of commercial advantage and/or private financial gain.

A count of conversion is also included in the complaint. It asserts that Defendants’ acts were “willful, malicious, egregious, and intentionally designed to harm Plaintiff J & J Sports” and that, as a result of being deprived of their commercial license fee, J & J Sports suffered “severe economic distress and great financial loss.”

In addition to naming the separate legal entity, Yeakle’s Sports Bar and Grill, Inc., which apparently owns the restaurant, Plaintiff has also sued Yeakle alleging that he had the right and ability to supervise the activities of the establishment. J & J Sports asserts that the activities that he supervised included the unlawful interception of Plaintiff’s program. J & J Sports contends that Yeakle specifically directed the employees of Yeakle’s Sports Bar and Grill to unlawfully intercept and broadcast Plaintiff’s program at Yeakle’s Sports Bar and Grill or, if he did not, that the actions of the employees of Yeakle’s Sports Bar and Grill are directly imputable to Yeakle by virtue of his purported responsibility for the activities of the restaurant.

Yeakle has also been named individually as a result of J & J Sports’ contention that he is a managing member of Yeakle’s Sports Bar and Grill, Inc. J & J Sports further asserts that Yeakle, as an individual specifically identified on the liquor license for Yeakle’s Sports Bar and Grill, had an obvious and direct financial interest in the activities of Yeakle’s Sports Bar and Grill.

In the complaint, the intellectual property lawyer for J & J Sports listed the following counts and requests for redress:

• Count I: Violation of Title 47 U.S.C. § 605. For this count, J & J Sports requests (a) statutory damages for each willful violation in an amount to $100,000.00 pursuant to Title 47 U.S.C. 605(e)(3)(C)(ii), and (b) the recovery of full costs, including reasonable attorneys’ fees, pursuant to Title 47 U.S.C. § 605(e)(3)(B)(iii).
• Count II: Violation of Title 47 U.S.C. § 553. For this count, J & J Sports asks the court for (a) statutory damages for each violation in an amount to $10,000.00 pursuant to Title 47 U.S.C. § 553(c)(3)(A)(ii); (b) statutory damages for each willful violation in an amount to $50,000.00 pursuant to Title 47 U.S.C. § 553(c)(3)(B); (c) the recovery of full costs pursuant to Title 47 U.S.C. § 553 (c)(2)(C); and (d) and in the discretion of the court, reasonable attorneys’ fees, pursuant to Title 47 U.S.C. § 553 (c)(2)(C).
• Count III: Conversion. For this count, the court is requested to order both compensatory and punitive damages from Defendants as the result of the Defendants’ allegedly egregious conduct, theft, and conversion of the program and deliberate injury to J & J Sports.

Practice Tip #1: A recent complaint filed by a different intellectual property attorney for J & J Sports deviated from the standard format of J & J Sports’ complaints. The standard format, as is demonstrated in this complaint, includes a count of conversion. It also asserts Counts I and II as additive. However, the other complaint omitted the count of conversion and listed Counts I and II in the alternative. It will be interesting to see whether the differences between these pleadings results in different rulings by the Northern District of Indiana.

Practice Tip #2: J & J Sports has sued two entities: a legal entity which appears to be incorporated and an individual who is apparently an owner of that company. While corporations are intended to limit the liability of the principals, they are not always successful in doing so. Where a principal is personally involved in certain types of illegal activity, legal mechanisms (such as a corporation or a limited liability company) that are designed to shield that individual from liability may fail to do so.

Practice Tip #3:  J & J Sports is a frequent litigant.  While the fight programs at issue in its intellectual property lawsuits vary, with few exceptions, the complaints are otherwise almost identical.  As is sometimes also the case with others utilizing this template approach to drafting multiple similar complaints, this standardized method of litigation resulted in several errors in this complaint drafted for J & J Sports.  For example, the date of the program over which this federal lawsuit was initiated is listed incorrectly at least four times (listed variously as “Saturday [sic], June 6, 2012,” “June 6, 2012″ and May 7, 2011.”)

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The U.S. Trademark Office issued the following 173 trademark registrations to persons and businesses in Indiana in May 2014 based on applications filed by Indiana trademark attorneys:

Reg. Number Word Mark Click to View
4540937 BESTSEOS Live
4537793 USA FUNDS LIFE SKILLS Live
4537740 POWERED BY POO Live
4537739 POWERED BY POO FAIR OAKS FARMS Live
4537720 RBX Live
4537611 UNDER THE SEA-SONINGS Live
4537582 ASSESS.IMPROVE.OPERATE. Live
4537574 SEE LIFE DIFFERENTLY Live
4537449 LIFE SKILLS Live
4537406 PUTTING HISTORY TO WORK IN THE WORLD Live
4537206 SMART SEGMENTS Live

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The U.S. Patent Office issued the following 159 patent registrations to persons and businesses in Indiana in May 2014, based on applications filed by Indiana patent attorneys:

PAT. NO. Title
D705,913 Toilet tank lid 
D705,785 Adjustable stand for portable electronic device 
8739137 Automatic derivative method for a computer programming language 
8738957 Apparatus and method for processing a wirelessly received information encoded in form of embedded data and clock 
8738408 Methods for grid-based rating insurance products using a programmed computer system 
8738407 Computer readable medium containing a set of computer readable instructions for grid-based insurance rating 
8738248 System for controlling vehicle overspeeding via control of one or more exhaust brake devices 
8737564 Low-background scattering x-ray diffractometer devices, systems, and methods 
8736456 Gas sensing method and instrument therefor 
8735689 Hybrid corn variety 980008 

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Indianapolis, Indiana – Indiana trademark attorneys for Harmony School Corporation harmony_logo_effects.png(“Harmony”) of Bloomington, Indiana, filed a trademark infringement lawsuit in the Southern District of Indiana alleging, inter alia, that School Reform Initiative, Inc. (“SRI”) of Lakewood, Colorado infringed its service mark “Critical Friends Group,” Trademark Registration No. 2,925,985, which has been registered with the United States Trademark Office.

Established in 1974, Harmony is an Indiana non-profit corporation that seeks “to prepare young people to live in and contribute to a heterogeneous democratic country.” Among its programs is its National School Reform Faculty (“NSRF”), a program designed to develop skills in teachers that will then enable children to learn more effectively. Harmony claims ownership of a service mark in “Critical Friends Group,” as used in connection with providing training in the field of improving teaching skills. “Critical Friends Group” is also referred to as CFG. In addition to the rights conferred by federal registration, Harmony asserts common law trademark rights in the marks through actual use in interstate commerce beginning no later than 2000 and continuing since.

Defendant SRI is also a non-profit organization. It is dedicated to creating transformational learning communities committed to educational equity and excellence. Harmony asserts that SRI is a direct competitor in the business of professional development within the field of education. SRI is accused of having infringed marks belonging to Harmony.

Gene Thompson-Grove is asserted to have worked for Harmony from 2000 to 2009. During that time, Harmony claims that Thompson-Grove was actively involved in Harmony’s use and federal registration of the Critical Friends Group mark. Harmony also contends that, immediately after discontinuing her work for Harmony, Thompson-Grove began working with SRI. Harmony indicates that, around this time, the alleged infringement of the Critical Friends Group and CFG marks began.

In March 2014, Harmony demanded that SRI cease and desist using the Critical Friends Group mark. It claims that infringement continued.

In this Indiana trademark lawsuit, Harmony accuses SRI of having willful intent to deceive the public as to the ownership of the mark, the source of the services, or both. It states that it has incurred substantial damages and irreparable injury as a result of SRI’s alleged infringement. In its complaint, filed by Indiana trademark lawyers, Harmony asserts the following causes of action:

• Federal Trademark Infringement in Violation of § 32 of the Lanham Act
• Unfair Competition in Violation of § 43(a) of the Lanham Act
• Common Law Trademark Infringement
• Common Law Unfair Competition

Harmony asks the court for injunctive relief, including the destruction of materials determined to be infringing and removal of infringing marks from digital media; damages, including treble damages to reflect the deliberateness and willfulness of SRI’s actions; costs and attorneys’ fees.

Practice Tip: There used to be an unspoken rule that organizations operated with the primary objective of public service ought to go out of their way to “get along” with similar organizations. That notion seems to be dissipating. Instead, trademark infringement litigation and other legal disputes between non-profit organizations, once relatively rare, have increased in recent years. Among the organizations issuing cease-and-desist letters and/or initiating intellectual property litigation are some of the largest non-profit organizations in the United States: Susan G. Komen, the Lance Armstrong Foundation and Wounded Warrior Project.

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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

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