Indiana Intellectual Property Law News

November 7, 2013

WindStream Sues Rambo and Keebler for Trademark Infringement

New Albany, Indiana – WindStream Technologies, Inc. of North Vernon, Indiana filed a trademark infringement lawsuit in the Southern District of Indiana alleging that Rambo LLC, Rambo Montrow Corporation (collectively, “Rambo”) and Rick Keebler, all of Madison, Indiana, as well as ten unidentified John Does residing in Indiana, infringed its trademarked TurboMill, Trademark Registration No. 3,986,494, which has been registered by the United States Patent and Trademark Office.

WindStream manufactures wind turbines for municipal, residential and commercial use. Those turbines are shipped worldwide from its Indiana manufacturing facility. It contracted with Rambo and Keebler, who is asserted to be a principal of the Rambo entities, to provide component parts and to act as an authorized dealer of TurboMill turbines in certain territories.

WindStream has multiple contractual disputes with Defendants and Defendants’ predecessors in interest and asserts that component parts in which WindStream has an interest are being held “hostage” in an attempt to renegotiate the terms of one of the contracts. Further, WindStream contends that the failure of Defendants to deliver the parts has damaged its business. WindStream also charges Defendants with unfair competition, claiming that they are selling WindStream products, including WindStream’s TurboMill, as their own. Finally, it asserts that, among the prospective customers that Keebler and Rambo are targeting are individuals and entities that had previously been identified by WindStream as potential customers.

In its complaint, filed by the trademark attorney for WindStream, the following counts are alleged:

• Federal Unfair Competition and Passing Off (15 U.S.C. § 1125(a))
• Trademark Infringement (15 U.S.C. § 1114)
• Breach of Contract (Dealer Agreement)
• Breach of Contract (Purchase Orders)
• Interference with Contract and Prospective Economic Advantage

WindStream asks the court for an injunction prohibiting trademark infringement and similar conduct; damages, including treble damages; punitive damages for Defendants’ willful and malicious acts; and attorney’s fees and costs of the lawsuit.

Practice Tip: The complaint asserts that the trademark for TurboMill was registered on June 28, 2001 and that the mark has been used in commerce since at least 2009. In contrast, the registration is listed by the U.S. Patent and Trademark Office as having occurred on June 28, 2011 with the mark shown as having first been used in commerce in 2011, the same year in which WindStream began manufacturing its wind turbines. While the former inconsistency, which adds exactly ten years to the apparent life of the trademark, can be assumed to be a typographical error, the origin of the latter inconsistency, which adds another two years to the period during which the TurboMill mark is claimed to have been used in commerce, in unclear.

November 6, 2013

Silver Streak Industries Sues Squire Boone Caverns for Copyright Infringement

By Overhauser Law Offices, LLC

New Albany, Indiana – Silver Streak Industries, LLC of Tempe, Arizona (“Silver Streak”) has filed a copyright infringement lawsuit in the Southern District of Indiana alleging that Squire Boone Caverns, Inc. of Floyd County, Indiana (“Squire Boone”) infringed the copyrighted work Ore Car display and game card which has been registered by the U.S. Copyright Office.

Silver Streak’s Ore Car display and game card (the “Work”), a whimsical representation of a mining ore car used to display polished stones and an accompanying brochure that lists the type of stones displayed, was copyrighted in 1995. Retail consumers may select stones for purchase. They are able to keep track of each type of stone collected with the brochure. Silver Streak generates revenue through the sales of copies of the Work to third parties retail establishments, such as travel centers, and through re-supply of the polished stones displayed with the Work.

Silver Streak alleges that, within the nine-month period prior to the filing of this action for copyright infringement, Squire Boone deliberately and willfully infringed Silver Streak’s copyright in the Work by producing an “Ore Car and Tumbled Stone” product, which it claims infringes the copyrighted Ore Car display.

Intellectual property attorneys for Silver Streak contend that Squire Boone offered its purportedly infringing product to one of Silver Streak’s existing customers at a retail-merchandise trade show in early 2013 at a deeply discounted price. It also asserts that Squire Boone has made at least one sale of the Ore Car to Six Flags, a potential customer of Silver Streak.

In its complaint, Silver Streak lists two causes of action:

• Count I: Copyright Infringement
• Count II: Tortious Interference with Contract

Silver Streak asks the court to impound and destroy all copies of the allegedly infringing work;
enjoin Squire Boone from further infringement; enjoin Squire Boone from unlawfully interfering with existing or prospective contracts between Silver Streak and its customers; order an accounting of profits and other damages that resulted from copyright infringement or interference with contract and prospective advantage; award to Silver Streak actual damages and profits under 17 U.S.C. § 504(a)(1) and § 504(b), or in the alternative, statutory damages for copyright infringement pursuant to 17 U.S.C. § 504 (a)(2) and § 504(c); award punitive damages; and award to Silver Streak its costs and expenses, including reasonable attorney’s fees.

Practice Tip: The Copyright Act empowers a plaintiff to elect to receive an award of statutory damages between $750 and $30,000 per infringement in lieu of an award representing the plaintiff’s actual damages and/or the defendant’s profits. In a case where the copyright owner proves that infringement was committed willfully (as was asserted here), the court may increase the award of statutory damages to as much as $150,000 per infringed work. A finding of willful infringement will also support an award of attorney’s fees.

November 4, 2013

119 Trademark Registrations Issued to Indiana Companies in October, 2013

By Overhauser Law Offices, LLC

The US Trademark Office issued the following 119 trademark registrations to persons and businesses in Indiana in October, 2013, based on applications filed by Indiana Trademark Attorneys:

Reg.No.	Word Mark	View
4424025	REAL HEALTH HERO · IDENTIFY · PREVENT · MAINTAIN · TRI STATE COMMUNITY CLINICS LLC REAL HEALTH, REAL RETURN	VIEW
4426773	ANNIE’S	VIEW
4425697	INDIANA’S EMERGENCY FOOD RESOURCE NETWORK	VIEW
4425606	THE ENGLISHED ADVOCATE	VIEW
4425178	FIRE DAWGS JUNK REMOVAL	VIEW
4425111	INDOOR SNOWBALL FIGHT	VIEW
4425099	PICKLEBALL ROCKS	VIEW
4425042	CROWN SPORTING GOODS	VIEW
4425022	BELTPALACE.COM	VIEW
4425021	BELTPALACE.COM	VIEW
4424996	STRIDES FOR FAMILIES	VIEW
4424890	ROCK STEADY BOXING	VIEW
4424856	PLOYNK	VIEW
4424796	XCEL CLEAN	VIEW
4426759	AIROGEAR	VIEW
4426756	ACTIFY	VIEW
4424406	SNAPRITE	VIEW
4424296		VIEW
4426517	CINEDRIVE	VIEW
4424037	FAIRFIELD	VIEW
4424027	B105.7	VIEW

November 1, 2013

Patent Office Issues 198 Patents To Indiana Citizens in October, 2013

By Overhauser Law Offices, LLC

The US Patent Office issued the following 198 patent registrations to persons and businesses in Indiana in October, 2013, based on applications filed by Indiana Patent Attorneys:

Pat. No.	Title
D692,377		Mosfet rectifier bridge power pack
D692,286		Canning jar tool
8,571,771		Transmission turbine acceleration control for managing vehicle acceleration
8,571,637		Patella tracking method and apparatus for use in surgical navigation
8,570,519		Method and device for analyzing a body fluid
8,569,515		Directed synthesis of oligophosphoramidate stereoisomers
8,569,286		Notch pathway signaling inhibitor compound
8,569,233		Modified animal erythropoietin polypeptides and their uses
8,569,073		Test element having combined control and calibration zone
8,568,993		Detection of glycopeptides and glycoproteins for medical diagnostics
8,568,802		Process for producing enriched fractions of tetrahydroxycurcumin and tetrahydrotetrahydroxy-curcumin from the extracts of Curcuma longa
8,568,730		Compositions for use in the treatment of chronic obstructive pulmonary diseases and asthma
8,568,696		Grinding method for the manipulation or preservation of calcium phosphate hybrid properties

October 31, 2013

Joe Hand Promotions Sues Fishbowl Pub and its Owners for Unlawful Interception and Broadcast of UFC Fight

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Joe Hand Promotions, Inc. of Feasterville, Pennsylvania has sued in the Southern District of Indiana alleging that Timothy H. Fishburn of Marion County, Indiana; David M. Rickelman of Morgan County, Indiana and MWCC, Inc. d/b/a Fishbowl Pub At Midwest Sports Complex of Indianapolis, Indiana unlawfully intercepted and broadcast the Ultimate Fighting Championship “Aldo v. Hominick” Program.

Joe Hand Promotions was granted rights to distribute via closed-circuit television and encrypted satellite signal the Ultimate Fighting Championship (“UFC”) “Aldo vs. Hominick” fight (“the Program”), which was telecast nationwide on April 30, 2011.

In the complaint against Fishburn, Rickelman and Fishbowl Pub, intellectual property counsel for Joe Hand Promotions has alleged such wrongful acts as interception, reception, publication, divulgence, display, exhibition, and “tortuous” [sic] conversion of the Program.

In addition to naming the separate legal entity, MWCC, Inc., which apparently owns Fishbowl Pub, Plaintiff has also sued Fishburn and Rickelman as individuals, claiming that they own MWCC and that they had the right and ability to supervise the activities of Fishbowl Pub. Plaintiff asserts that those activities included the unlawful interception of its Program. It further claims that Fishbowl Pub and its owners received financial benefit from the unlawful display of the Program.

Defendants have been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553. The complaint also lists a count of conversion. Joe Hand Productions seeks statutory damages of $110,000 for each willful violation of 47 U.S.C. § 605; $60,000 for each willful violation of 47 U.S.C. § 553; compensatory damages on the claim of conversion; and costs and attorney’s fees. These claims have been made both against Fishbowl Pub and as personal liability claims against the owners.

Practice Tip #1: Among its assertions of wrongdoing, Joe Hand Productions has alleged interception of the Program under 47 U.S.C. § 605, which is a different cause of action from copyright infringement.

Practice Tip #2: When Congress passed the Cable Communication Act, a statute of limitations was not included. Some federal courts have determined that a two-year statute of limitation is appropriate while other federal courts have used a three-year statute of limitations. The alleged wrongdoing here occurred on April 30, 2011. If the court interprets the interception claim to have a two-year statute of limitations, this may pose a problem for the Plaintiff, as the complaint was filed on October 15, 2013.

Practice Tip #3: It is unclear precisely what unlawful act is being alleged in this complaint. In the paragraph 12, it is asserted that Defendants wrongfully intercepted and broadcast the UFC “Aldo vs. Hominick” fight. However, in paragraph 32, the Plaintiff requests a finding of unauthorized exhibition of the “St-Pierre v. Sheilds Broadcast,” which is presumably a different program.

Overhauser Law Offices, the publisher of this website, has represented several hundred persons and businesses accused of infringing satellite signals.

October 30, 2013

Second-Filed Litigation Stayed Pending Venue Ruling in First-Filed Litigation

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Nexans, Inc. of New Holland, Pennsylvania sued Belden, Inc. of Richmond, Indiana in the District of Delaware. At issue were allegations of infringement of Patent Nos. 6,074,503, Making enhanced data cable with cross-twist cabled core profile; 7,135,641, Data cable with cross-twist cabled core profile; 7,977,575, High performance data cable; 5,796,046, Communication cable having a striated cable jacket; and 7,663,061, High performance data cable, which have been issued by the U.S. Patent Office. Two days after Nexans’ complaint was filed, Belden sued Nexans regarding the same patent infringement claims in the Southern District of Indiana. The Indiana court has stayed the litigation filed by Belden pending a ruling by the Delaware court.

On November 19, 2012, Nexans filed a complaint for declaratory action in the District of
Delaware against Belden seeking a declaration of non-infringement and invalidity of U.S. Patent Nos. 6,074,503 (the “‘503 Patent”), 7,135,641 (the “‘641 Patent”), and 7,977,575 (the “‘575 Patent”), as well as a judgment that Belden has infringed U.S. Patent No. 5,796,046 (the “‘046 Patent”).

On November 21, 2012, Belden sued Nexans in Indiana, alleging infringement of the ‘503, ‘575, and ‘064 Patents. It also alleged infringement of U.S. Patent No. 7,663,061 (the “‘061 Patent”). On December 3, 2012, Nexans filed an amended complaint in the Delaware action, seeking an additional declaratory judgment of non-infringement and invalidity of Belden’s ‘061 Patent.

In this opinion, Magistrate Judge Mark J. Dinsmore ruled on Nexans’ motion to stay the patent infringement lawsuit filed by Belden in Indiana. Nexans argued that a stay should be issued until the Delaware Court, as the first-filed court, had decided the issue of venue.

Judge Dinsmore first discussed the analysis appropriate to a determination of whether to stay litigation. Specifically, the following factors must be considered in deciding whether to stay an action: (i) whether a stay will unduly prejudice or tactically disadvantage the non-moving party, (ii) whether a stay will simplify the issues in question and streamline the trial, and (iii) whether a stay will reduce the burden of litigation on the parties and on the court.

In the case of duplicative patent actions, the general rule is that the first-filed action is preferred, even if it is declaratory, unless consideration of judicial and litigant economy, and the just and effective disposition of disputes, requires otherwise. Belden argued that two circumstances warranted departing from the general first-filed rule: 1) the convenience factors under 28 U.S.C. § 1404, which it argued would favor proceeding in Indiana, and 2) that Nexans’ suit in Delaware constituted forum shopping, which would allow the Indiana court to bypass the first-filed rule.

The court was not persuaded by this reasoning. Instead, it noted that, while the Seventh Circuit has approved of second-filed courts doing this analysis, and proceeding when it is in the interests of justice to do so, the Federal Circuit’s rulings control this issue in patent infringement cases. In turn, the Federal Circuit has expressly declined to apply the departure test to patent infringement cases, and has held that it prefers the first-filed rule.

The court next addressed the issue of whether the second-filed court may decide the applicability of the first-filed rule. It observed that the Federal Circuit has not yet expressly addressed whether the second-filed court may decide the applicability of the first-filed rule. While commenting that district courts have come to differing conclusions on the issue, the court was most convinced by the reasoning in those cases that have reserved the application of the first-filed rule for the first-filed court.

In concluding, the court found that it “would be at odds with the promotion of judicial and litigant economy for the court to proceed with the analysis of the exceptions to the first-filed rule.” It held that the “first-to-file rule has generally been interpreted to dictate not only which forum is appropriate, but also which forum should decide which forum is appropriate” and stayed the Indiana litigation, pending a ruling on venue from the Delaware court.

Practice Tip: The present action was stayed pending the Delaware court’s resolution of the pending motions to enjoin and dismiss. The parties in this case have been instructed to notify the Indiana court of the Delaware district court’s rulings on these motions as soon as they are issued.

October 28, 2013

USPTO 2014-2018 Strategic Plan Available for Public Comment

By Overhauser Law Offices, LLC

Washington, D.C. – The U.S. Patent and Trademark Office (“USPTO”) draft plan sets priorities to strengthen the USPTO, drive innovation, and support economic growth.

The USPTO recently announced that its draft Strategic Plan for fiscal years (“FY”) 2014-2018 has been posted for public review and comment on the USPTO website at www.uspto.gov/about/stratplan/index.jsp. The draft plan sets out the USPTO’s mission-focused strategic goals: to optimize patent quality and timeliness; to optimize trademark quality and timeliness; and to provide global and domestic leadership to improve intellectual property (“IP”) policy, protection, and enforcement worldwide.

To achieve these goals, the plan identifies the USPTO’s priorities, notably:

October 25, 2013

Patrick Collins Twice Requests to Dismiss Lund; Lund Dismissed; Court Denies Patrick Collins’ Request to Reinstate

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Magistrate Judge Mark J. Dinsmore of the Southern District of Indiana has recommended that Plaintiff Patrick Collins, Inc.’s request to void the judgment entered as a result of Plaintiff’s two earlier requests for voluntary dismissal of Defendant Derrick Lund be denied.

[Full Disclosure – Overhauser Law Offices, the publisher of Indiana Intellectual Property Law News, represented the successful defendant in this case.]

Attorney Paul Nicoletti, copyright counsel for Plaintiff Patrick Collins, filed a complaint in June 2012 against thirteen “John Doe” Defendants identified only by their Internet Protocol addresses. Patrick Collins claimed that the Defendants had infringed upon its copyrighted films by downloading them using BitTorrent, a peer-to-peer file-sharing service. Defendant Derrick Lund was identified following a subpoena to his internet service provider.

Initially, Lund filed neither an answer nor any other pleading. Consequently, a default judgment was granted against him. What followed was a series of requests to the court by counsel for Patrick Collins that was characterized by the court as a “complicated procedural history.” On the day following the default judgment against Lund, Nicoletti filed a notice of voluntary dismissal against Lund, seeking to dismiss him with prejudice. On that same day, Nicoletti also filed an unopposed motion making the same request: to vacate the default judgment against Lund and to dismiss him with prejudice. Judge Pratt granted Patrick Collins’ motion the next day.

One day following Judge Pratt’s order, Patrick Collins filed a motion to withdraw the voluntary dismissal. The court granted this motion and reinstated Lund as an active Defendant. Lund filed a motion for reconsideration on Lund’s reinstatement. The court granted Lund’s motion and vacated its reinstatement order, finding that Lund had not been properly served.

In this current opinion, the court again considered Patrick Collins’ motion to withdraw its voluntary dismissal, asking “whether Plaintiff can just ‘withdraw’ this notice of dismissal.” The court answered, “[s]imply, the answer is no, as the dismissal [constituted] a final judgment.” Once the Plaintiff filed a notice of dismissal, “the case is closed and the plaintiff may not unilaterally withdraw or amend the notice.”

In its latest request to the court, Patrick Collins had neither cited Rule 60(b) of the Federal Rules of Civil Procedure nor given reasons under this Rule that the judgment should be subject to vacatur. Instead, Plaintiff had simply argued that “the parties had not reached a settlement agreement and therefore the dismissal with prejudice was unintentional.”

Nonetheless, the court sua sponte considered whether the final judgment should be set aside under Rule 60(b). Again, the court was not inclined to grant the Plaintiff’s plea to void an order that the Plaintiff itself had requested. While Rule 60(b) permits the Plaintiff to ask the court to vacate a dismissal, relief from a final judgment is an extraordinary measure and may only be granted in the exceptional circumstances.

Rule 60(b) permits a court to relive a party from a final judgment, order or proceeding for the following reasons:

1) mistake, inadvertence, surprise, or excusable neglect;
2) newly discovered evidence;
3) fraud, misrepresentation, or misconduct by an opposing party;
4) the judgment is void;
5) the judgment has been satisfied, released or discharged; it is based on an earlier judgment that has been reversed or vacated; or applying it prospectively is no longer equitable; or
6) any other reason that justifies relief.

The court noted that “Plaintiff twice filed requests with the Court – each filing being hours apart – to not only dismiss the action against Lund, but to dismiss it with prejudice. These filings show an unequivocal intent to dismiss Lund with prejudice.” Magistrate Judge Dinsmore concluded that Patrick Collins had not demonstrated “how its argument amounts to mistake, inadvertence, surprise, or excusable neglect” and recommended that Judge Pratt deny Plaintiff’s motion to withdraw voluntary dismissal.

Practice Tip #1: This case highlights the distinction between a dismissal “with prejudice” and “without prejudice.” The opinion focuses on whether Plaintiff Patrick Collins, Inc. could obtain “relief” from its own dismissal. Why would a litigant need “relief” from a court order granting its own motion? Because the dismissal was “with prejudice,” meaning that Patrick Collins was not allowed to simply file a second suit asserting the same claim. Because the dismissal was “with prejudice,” the defendant may be a considered a “prevailing party,” even though a judgment was never entered in either party’s favor. Nonetheless, because the Copyright Act allows a “prevailing party” to recover its attorney’s fees, the defendant can recover them.

Practice Tip #2: Patrick Collins, Inc. is represented by Paul Nicoletti, one of the country’s most notorious “copyright troll” attorneys. In addition to filing suits on behalf of Patrick Collins, Inc., he has also sued hundreds of defendants on behalf of copyright trolls Malibu Media, LLC and TCYK, LLC. (Search for these company names on this site to find articles about those other suits, or visit www.fightcopyrighttrolls.comor www.dietrolldie.com.)

October 24, 2013

BMI Asserts Copyright Infringement Against Blu

By Overhauser Law Offices, LLC

Indianapolis, Indiana — Broadcast Music, Inc. of New York, New York (“BMI”) has filed a copyright infringement lawsuit in the Southern District of Indiana alleging that SC Entertainment, LLC d/b/a Blu and Shawn Cannon (“Cannon”), both of Indianapolis, Indiana, infringed the copyrighted works LAST NIGHT A D.J. SAVED MY LIFE, SHOW ME LOVE, and I’LL BE AROUND which have been registered by the U.S. Copyright Office. Five other Plaintiffs,Comart Music, EMI Virgin Songs, Inc. dba EMI Longitude Music, EMI Blackwood Music, Inc, Song A Tron Music, and Warner-Tamerlane Publishing Corporation, are also listed in the complaint.

Broadcast Music, Inc. (“BMI”) is a “performing rights society” under 17 U.S.C. § 101 that operates on a non-profit-making basis and licenses the right to publicly perform copyrighted musical works on behalf of the copyright owners of these works. The other Plaintiffs in this action are the copyright owners of the three compositions at issue in this lawsuit.
SC Entertainment is an Indiana limited liability company that operates Blu, an establishment which is asserted to publicly perform musical compositions and/or cause musical compositions to be publicly performed.

BMI asserts that Cannon is a member of SC Entertainment and that he has primary responsibility for the operation and management of the company and of Blu. Cannon also allegedly has the right and ability to supervise the activities of SC Entertainment and a direct financial interest in the company and in Blu.

BMI and the other Plaintiffs, via copyright counsel, have asserted willful copyright infringement of the three copyrights-in-suit in their complaint. They further claim that the Defendants’ entire course of conduct, including the ongoing unauthorized public performances of the copyrighted works, has caused and is continuing to cause the Plaintiffs great and incalculable damage.

Practice Tip:

The Copyright Act empowers a plaintiff to elect to receive an award of statutory damages between $750 and $30,000 per infringement in lieu of an award representing the plaintiffs’ actual damages and/or the defendants’ profits. In a case where the copyright owner proves that infringement was committed willfully, the court may increase the award of statutory damages to as much as $150,000 per infringed work. A finding of willful infringement will also support an award of attorney’s fees.

Furthermore, not only is the performer liable for infringement, but so is anyone who sponsors the performance. A corporate officer will be found jointly and severally liable with his corporation for copyright infringement if he (1) had the right and ability to supervise the infringing activity, and (2) has a direct financial interest in such activities.

October 23, 2013

After Final Consideration Pilot 2.0 Extended

By Overhauser Law Offices, LLC

Washington, D.C. — Using information gathered from the After Final Consideration Pilot (“AFCP”), as well as input from stakeholders and examiners obtained through the Request for Continued Examination (“RCE”) outreach initiative, the U.S. Patent and Trademark Office (“USPTO”) launched the After Final Consideration Pilot 2.0 (“AFCP 2.0”) on May 19, 2013. Designed to be more efficient and effective than the AFCP, AFCP 2.0 is part of the USPTO’s ongoing efforts towards compact prosecution and increased collaboration between examiners and stakeholders.

“Compact prosecution remains one of our top goals,” said Teresa Stanek Rea, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO. “As with the original AFCP pilot, the new AFCP 2.0 pilot allows additional flexibility for applicants and examiners to work together and provides even greater opportunity for communication after final than the original pilot.”

Like AFCP, AFCP 2.0 authorizes additional time for examiners to search and/or consider responses after final rejection. Under AFCP 2.0, examiners will also use the additional time to schedule and conduct an interview to discuss the results of their search and/or consideration with you, if your response does not place the application in condition for allowance. In this way, you will benefit from the additional search and consideration afforded by the pilot, even when the results do not lead to allowance.