Indiana Intellectual Property Law News

October 21, 2013

Dissimilarity Between Trademarked Goods and Allegedly Infringing Goods is Not Dispositive

Indianapolis, Indiana — In June 2013, Australian Gold, LLC of Indianapolis, Indiana sued Devoted Creations, LLC of Oldsmar, Florida in the Southern District of Indiana alleging trademark infringement of the mark LIVE LAUGH TAN, Trademark Registration No. 4,154,194, which has been registered with the U.S. Trademark Office. Devoted Creations moved to dismiss the lawsuit for failure to state a claim.

Australian Gold has been in the business of selling indoor-tanning preparations for over 20 years. Devoted Creations also sells indoor-tanning preparations. Australian Gold contended in its complaint that, since at least October 2010, it has used the registered mark “LIVE LAUGH TAN” as a trade name and trademark in conjunction with sales of its Australian Gold line of indoor-tanning products.

Devoted Creations, which competes directly with Australian Gold for customers, uses the name “LIVE LOVE TAN” to advertise its indoor-tanning preparations. Australian Gold alleges that Devoted Creations’ use of a similar trademark to sell products similar to those which it sells infringes on its intellectual property rights in the “LIVE LAUGH TAN” trademark. It further asserted that Devoted Creations was aware of the goodwill and reputation associated with Australian Gold’s trademark, and that Devoted Creations intentionally copied that trademark. Australian Gold sued for trademark infringement and unfair competition.

In this opinion, Judge Jane Magnus-Stinson addressed the request of Defendant Devoted Creations to invoke Federal Rule of Civil Procedure 12(b)(6) and dismiss the case against it on the basis that Australian Gold had stated no plausible claim. Devoted Creations asserted that the claims against it failed because Devoted Creations’ use of a mark on one product – indoor tanning preparations – could not as a matter of law infringe on Australian Gold’s use of its own mark in conjunction with an entirely different product – tote bags, the class of products for which the trademark is registered.

Judge Magnus-Stinson pointed out that Devoted Creations made two errors. Devoted Creations’ first error was one of fact. Devoted Creations asserted that Australian Gold did not use the trademark in conjunction with the sale of tanning products but, rather, that the mark was used only for tote bags. The court did not accept this version of the facts. Instead, the court referred to the standard of review for a motion to dismiss under 12(b)(6), which asks whether the complaint “contain[s] sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face.” As Australian Gold had explicitly alleged in its complaint that its use of the trademark was “in conjunction with the marketing and sale of its AUSTRALIAN GOLD® line of indoor tanning preparations,” the court was not persuaded that a motion to dismiss was appropriate.

The second error was one of law. Even if it were true that the purported infringement occurred only on a different type of goods, that dissimilarity is not dispositive, as the analysis of likelihood of confusion requires the application of a seven-factor test.

Finally, the court reminded Devoted Creations and its counsel of the ethical duties imposed by “both Federal Rule of Civil Procedure 11(b)(2) (stating that a motion presented to the Court functions as a certification by the presenting attorney that ‘the claims, defenses, and other legal contentions are warranted by existing law’) and 28 U.S.C § 1927 (providing for sanctions for unreasonably protracting litigation) when filing a motion with the Court.”

Practice Tip: The precedent in the Seventh Circuit is that similarity between a plaintiff’s goods and a defendant’s allegedly infringing goods is only one of seven factors considered in evaluating whether there is a likelihood of confusion. Dissimilarity alone is not dispositive. Even when products are “quite different,” an evaluation of the other factors is required. The factors are:

1. the similarity between the marks in appearance and suggestion;
2. the similarity of the products;
3. the area and manner of concurrent use;
4. the degree of care likely to be exercised by consumers;
5. the strength of the plaintiff’s mark;
6. any actual confusion; and
7. the intent of the defendant to “palm off” his product as that of another.

October 18, 2013

Aiuppy Sues Jeepers Dollhouse Miniatures for Infringing Copyrighted Photos

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Laurance B. Aiuppy of Park County, Montana (“Aiuppy”) has sued Ufnowski Enterprises, LLC of Morgantown, Indiana (“Ufnowski”) d/b/a “Jeepers Dollhouse Miniatures” in the Southern District of Indiana alleging infringement of a copyrighted photograph or photographs which have been registered by the U.S. Copyright Office.

Plaintiff Aiuppy (also referred to in the complaint as “Plaintiff Auippy”) provides entertainment-related photojournalism goods and services featuring celebrities, which it licenses to online and print publications.

Defendant Ufnowski, which offers miniatures, dollhouses, and related accessories, is asserted to own and operate the website http://www.jeepersminiatures.com and to have copied, modified and displayed Aiuppy’s photograph or photographs on the Jeepers Dollhouse Miniatures website without Aiuppy’s permission. It is further contended that this conduct was knowing and in violation of U.S. copyright laws. The complaint also asserts that Ufnowski received a financial benefit directly attributable to the alleged infringement(s), and claims that as a result of the display of the photographs, the website had increased traffic and, in turn, realized an increase in their advertising revenues and/or merchandise sales.

The complaint, filed by the intellectual property counsel for Aiuppy, states the following claims:

· First Count: Direct Copyright Infringement, 17 U.S.C. § 501 et seq.

· Second Count: Contributory Copyright Infringement

· Third Count: Vicarious Copyright Infringement

· Fourth Count: Inducement of Copyright Infringement

· Fifth Count: Injunction Pursuant to 17 U.S.C. § 502

· Sixth Count: Attorney Fees and Costs Pursuant to 17 U.S.C. § 505

Aiuppy asks for a judgment that Ufnowski has infringed directly, contributorily and/or vicariously; for a judgment that Ufnowski has induced others to violate Aiuppy’s copyrighted photographs(s); for statutory damages against Ufnowski of $150,000 per infringement, or actual damages and Ufnowski’s profits; for a permanent injunction pursuant to 17 U.S.C. § 502; and for attorneys’ fees and costs.

Practice Tip: As part of its complaint, Aiuppy has asserted that Ufnowski had “red flag” knowledge under 17 U.S.C. §512(c)(1)(A)(i) (sic) of the alleged infringements and yet failed to remove the allegedly infringing photographs. The “red flag” provision, codified as 17 U.S.C. §512(c)(1)(A)(ii), is part of the Digital Millennium Copyright Act (“DMCA”).

Title II of the DMCA, separately titled the “Online Copyright Infringement Liability Limitation Act” (“OCILLA”), was designed to clarify the liability faced by service providers who transmit potentially infringing material over their networks.

But rather than embarking upon a wholesale clarification of various copyright doctrines, Congress elected to leave current law in its evolving state and, instead, to create a series of “safe harbors” for certain common activities of service providers. To that end, under 17 U.S.C. § 512(a)-(d), OCILLA established a series of four “safe harbors” that allow qualifying service providers to limit their liability for claims of copyright infringement based on (a) transitory digital network communications, (b) system caching, (c) information residing on systems or networks at [the] direction of users, and (d) information location tools.

To qualify for protection under any of the safe harbors, a party must meet a set of threshold criteria. First, the party must in fact be a “service provider,” defined, in pertinent part, as “a provider of online services or network access, or the operator of facilities therefor.” 17 U.S.C. § 512(k)(1)(B). A party that qualifies as a service provider must also satisfy certain “conditions of eligibility,” including the adoption and reasonable implementation of a “repeat infringer” policy that “provides for the termination in appropriate circumstances of subscribers and account holders of the service provider’s system or network.” Id. § 512(i)(1)(A). In addition, a qualifying service provider must accommodate “standard technical measures” that are “used by copyright owners to identify or protect copyrighted works.” Id. § 512(i)(1)(B), (i)(2).

Beyond the threshold criteria, a service provider must satisfy the requirements of a particular safe harbor. In this case, the safe harbor presumably at issue is § 512(c), which covers infringement claims that arise “by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider.” The § 512(c) safe harbor will apply only if the service provider:

(A) (i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing;

(ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or

(iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;

(B) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and

(C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.

It is in § 512(c)(1)(A)(ii) that the so-called “red flag” knowledge exception to the safe harbor provision for service providers is found.

As the safe harbor acts as an affirmative defense, and the “red flag” knowledge, in turn, is available to defeat that defense, it is interesting that this seems to have been included in the complaint as part of the prima facie case against Ufnowski. Moreover, it will be interesting to see what use Plaintiff’s copyright attorney makes of this assertion, given that Ufnowski appears from the complaint to be a merchant of dollhouse miniatures, not an Internet service provider.

October 17, 2013

Another Fourteen Anonymous Defendants Accused of Infringing Robert Redford Movie

By Overhauser Law Offices, LLC

Indianapolis, Indiana — Copyright lawyer Paul Nicoletti has sued fourteen additional Doe Defendants, all allegedly located in Indiana, in the Southern District of Indiana on behalf of TCYK, LLC of Los Angeles, California (“TCYK”) alleging infringement of the copyrighted movie “The Company You Keep,” which has been registered by the U.S. Copyright Office. The movie stars Robert Redford, Susan Sarandon, Shia LaBeouf, Anna Kendrick, Julie Christie and Nick Nolte. It was directed by Robert Redford.

TCYK alleges that the infringing transfer and copying of this movie, which was released on DVD on August 13, 2013, was accomplished by Defendants using BitTorrent, a peer-to-peer file-sharing protocol. Specifically, the Doe Defendants are accused of deliberately participating in a peer-to-peer “swarm,” and illegally reproducing and/or distributing portions of the movie in digital form with other Defendants. TCYK indicates in its complaint that it used geolocation technology to determine that the Doe Defendants were located in Indiana.

The complaint lists a single count: copyright infringement. The intellectual property attorney for Plaintiff TCYK asks the court for permanent injunctions prohibiting infringement of Plaintiff’s movie by all Doe Defendants; the destruction of all copies of infringing works in any Defendant’s control; judgment that Defendants have willfully infringed Plaintiff’s copyrighted work; judgment that Defendants have otherwise injured the business reputation and business of Plaintiffs; for actual damages or statutory damages; and for attorneys’ fees and litigation expenses.

Practice Tip:

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. The determination of the exact amount is left to the discretion of the court.

If a defendant fails to appear, the court will take as true all of the plaintiff’s well-pled allegations. That typically leads to a default judgment against the defendant. There is a significant disparity in the dollar amounts awarded in default judgments against defendants in copyright infringement cases involving BitTorrent. In two separate cases, Judge William T. Lawrence recently ordered two defendants who failed to appear to pay $20,000 in statutory damages for 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. Judge Sarah Evans Barker has issued several default judgments for $36,000 plus attorneys’ fees against BitTorrent defendants who failed to appear.

October 16, 2013

Assessing Factors That Affect Patent Infringement Litigation Could Help Improve Patent Quality

By Overhauser Law Offices, LLC

Washington, D.C. — The Government Accountability Office (“GAO”) finds the number of patent infringement suits and defendants has risen substantially in recent years. Some potential causes of this increase include vague, overbroad patents, the potential for large monetary awards from the courts and the increased perception of intellectual property as a valuable asset.

Changes in the Intellectual Property Landscape

From 2000 to 2010, the number of patent infringement lawsuits in the federal courts fluctuated slightly, and from 2010 to 2011, the number of such lawsuits increased by about a third. Some stakeholders GAO interviewed said that the increase in 2011 was most likely influenced by the anticipation of changes in the 2011 Leahy-Smith America Invents Act (“AIA”), which made several significant changes to the U.S. patent system, including limiting the number of defendants in a lawsuit, causing some plaintiffs that would have previously filed a single lawsuit with multiple defendants to break the lawsuit into multiple lawsuits. In addition, GAO’s detailed analysis of a representative sample of 500 lawsuits from 2007 to 2011 shows that the number of overall defendants in patent infringement lawsuits increased by about 129 percent over this period. These data also show that companies that make products brought most of the lawsuits and that nonpracticing entities (“NPE”) brought about a fifth of all lawsuits. GAO’s analysis of these data also found that lawsuits involving software-related patents accounted for about 89 percent of the increase in defendants over this period.

October 14, 2013

J & J Sports Sues Las Margaritas Restaurant and Owner Scheker for Unauthorized Interception and Broadcast of “Star Power” Fight

By Overhauser Law Offices, LLC

Indianapolis, Indiana – J & J Sports Productions, Inc. of Campbell, California (“J & J Sports”) sued in the Southern District of Indiana alleging that Luis A. Scheker (“Scheker”) and Margaritas US31 Mexican Restaurant, Inc. of Indianapolis, Indiana (“Las Margaritas”) intercepted and broadcast “Star Power”: Floyd Mayweather, Jr. v. Victor Ortiz without authorization.

J & J Sports states that it is the exclusive domestic commercial distributor of Star Power: Floyd Mayweather, Jr. v. Victor Ortiz (the “program”). It has sued Las Margaritas, as well as Scheker 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 on September 17, 2011 without a commercial license. 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 which 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, Margaritas US31 Mexican Restaurant, Inc., which apparently owns the restaurant, Plaintiff has also sued Mr. Scheker as an individual, alleging that he had the right and ability to supervise the activities of Las Margaritas. J & J Sports asserts that those activities included the unlawful interception of Plaintiff’s program.

J & J Sports also contends that Mr. Scheker specifically directed the employees of Las Margaritas to unlawfully intercept and broadcast Plaintiff’s program at Las Margaritas or, if he did not, that the actions of the employees of Las Margaritas are directly imputable to Mr. Scheker by virtue of his purported responsibility for the activities of Las Margaritas. Mr. Scheker has also been named individually as a result of J & J Sports’ contention that he is a managing member of Margaritas US31 Mexican Restaurant, Inc. Further, J & J asserts, Mr. Scheker, as an individual specifically identified on the liquor license for Las Margaritas, had an obvious and direct financial interest in the activities of Las Margaritas.

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

•Count I: Violation of Title 47 U.S.C. Section 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. Section 605(e)(3)(B)(iii).

•Count II: Violation of Title 47 U.S.C. Section 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. Section 553 (c)(2)(C); and (d) and in the discretion of the court, reasonable attorneys’ fees, pursuant to Title 47 U.S.C. Section 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 the Plaintiff.

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 Defendants’ 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 Defendants – a circumstance presumably known to few other than the Defendants themselves – it has suffered severe economic distress and great financial loss.

October 11, 2013

Copyright Infringement Using BitTorrent Asserted, Judgment of $38,645 Granted Against Defendant Who Failed to Appear

By Overhauser Law Offices, LLC

Indianapolis, Indiana — Judge Sarah Evans Barker of the Southern District of Indiana has entered a default judgment for copyright infringement in favor of Malibu Media, LLC of Los Angeles, California. The copyrighted works at issue had been registered by the U.S. Copyright Office.

In June 2012, copyright attorney Paul Nicoletti filed another copyright infringement lawsuit in the Southern District of Indiana on behalf of serial plaintiff Malibu Media. The lawsuit listed multiple defendants, including William Meeks Sr. of Decatur, Indiana. In its complaint, Malibu Media alleged that Meeks had infringed 16 copyrighted works. Specifically, Malibu Media contended that Meeks and others directly and contributorily infringed its copyrighted works when they downloaded and disseminated all or a portion of the works using BitTorrent, a peer-to-peer file-sharing protocol. The initial complaint was served upon 23 defendants. Discussed in this opinion are the allegations, findings and judgments against Meeks only.

Judge Barker held that, as a result of his failure to defend against Malibu Media’s assertions, Meeks was deemed to have admitted to willful copyright infringement. Judge Barker also held that, without an injunction, Meeks’ use of the BitTorrent protocol would continue to cause Malibu Media irreparable injury, stating that there existed a “threat of continued violations” of Malibu Media’s exclusive rights to reproduce, distribute, perform and display the 16 copyrighted works.

The court entered a permanent injunction against Meeks after finding that such an injunction promoted creativity and individual effort and was therefore in the public interest. Meeks was also ordered to pay to Malibu Media $36,000.00 in statutory damages, as authorized under 17 U.S.C. § 504(c)(1), and $2,645.00 for attorneys’ fees and costs, as authorized under 17 U.S.C. § 505, for a total of $38,645.00. He was further ordered to pay post-judgment interest accruing under 28 U.S.C. § 1961 as of the date of the default judgment until the date of its satisfaction. Finally, Meeks was ordered to destroy all copies of Malibu Media’s works that he had downloaded onto any computer hard drive without proper authorization, including all copies that he had in his possession, custody or control.

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. The determination of the exact amount is left to the discretion of the court.

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 recently ordered two defendants who failed to appear to pay $20,000 in statutory damages for 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. Judge Barker has issued several prior default judgments in this case, each for $36,000 plus attorneys’ fees.

Practice Tip #2:

Deciding to simply ignore a complaint, as William Meeks Sr. apparently did, can be a costly error. Failing to present the defendant’s version of the facts and arguments results in the court considering only the plaintiff’s side of the story. Here, because the defendant chose to leave the complaint unanswered, the well-pled allegations of the plaintiff relating to liability were taken as true.

After the entry of default judgment, the court then conducted an inquiry to ascertain the amount of damages with “reasonable certainty.” Again, in such circumstances, it serves a defendant well to plead his case — to present the court with reasons that the plaintiff should not get 100% of what he requests.

Overhauser Law Offices, the publisher of this website, has represented several hundred persons and businesses regarding copyright infringement and similar matters.

October 10, 2013

Sam’s Club Sued by Escalade Sports for Infringing Patented Table Tennis Ball Storage Apron

By Overhauser Law Offices, LLC

Evansville, Indiana – Indian Industries, Inc. d/b/a Escalade Sports of Evansville, Indiana (“Escalade Sports”) has sued Sam’s East, Inc. d/b/a Sam’s Club of Bentonville, Arkansas (“Sam’s Club”) in the Southern District of Indiana alleging infringement of its patented TABLE TENNIS BALL STORAGE APRON, Patent No. 8,414,431 (the “‘431 patent”), which has been issued by the U.S. Patent Office.

Escalade Sports began in 1927 as Indian Archery And Toy Co. It is a global company which offers goods related to basketball, table tennis, archery and other sports. Escalade Sports and its predecessors have been in the business of selling table-tennis tables and accessories since 1973.

Sam’s Club, a chain of membership-only retail clubs, was founded in 1983. A subsidiary of Wal-Mart Stores, Inc., it was named after Walmart founder Sam Walton. Sam’s Club has more than 47 million members and operates approximately 600 retail warehouse clubs in the United States, along with locations in Brazil, China and Mexico. Sam’s Club operates 16 warehouse clubs in Indiana.

On April 9, 2013, the ‘431 patent was issued for an invention titled “Table Tennis Ball Storage Apron.” Prior to its issuance, the ‘431 patent was purportedly assigned to Escalade Sports. At issue in this suit is a feature of a table-tennis table which Escalade Sports claims is protected under the ‘431 patent.

Escalade Sports markets its table-tennis tables and accessories under a number of marks, including the Stiga® mark, which is used under a license from Stiga Sports AB. In the fall of 2013, Escalade Sports launched a new line of Stiga® table-tennis tables which included ball storage racks mounted along the width of the ends of the table, adjacent the player. These tables include the Stiga® Master Series ST3100 and ST4100 tables and the Stiga® STS185, STS285, STS385, STS420 and STS520 tables (the “Stiga® Storage Rack Tables”). According to the complaint, the ‘431 patent covers Escalade Sports’ Stiga® Storage Rack Tables.

Escalade Sports asserts that, sometime in 2013, Sam’s Club began selling and offering to sell the “ESPN 2 Piece Table Tennis” product. It asserts that this product infringes claims 1 through 15 of the ‘431 patent.

Patent attorneys for Escalade Sports filed this patent infringement lawsuit asserting a single claim: the infringement of the ‘431 patent. Escalade Sports contends that this infringement includes, in part, the sale and offer for sale of the ESPN 2 Piece Table Tennis product.

Escalade Sports asserts that it has been damaged by Sam’s Club’s alleged infringement and that it will suffer irreparable injury unless Sam’s Club is permanently enjoined by the court. Escalade Sports seeks: a judgment of infringement of the ‘431 patent by Sam’s Club; injunctive relief restraining Sam’s Club and its agents from further acts of infringement; an order that any devices subject to control by Sam’s Club which infringe upon any claim of the ‘431 patent be delivered up and destroyed; an award to Escalade Sports of damages, costs, attorney’s fees and/or expenses associated with this action; an award of Sam’s Club’s wrongful profits associated with any infringement of Escalade Sports’ intellectual property rights; to have any award of damages be increased to the maximum amount permitted under 35 U.S.C. §284; and an order declaring that this is an exceptional case under 35 U.S.C. § 285, upon a finding that Sam’s Club knowingly and willfully infringed.

Practice Tip:

The “willfulness” of the alleged infringement is an important issue in patent litigation because willful infringement may result in a tripling of the damages awarded to the patent holder. Willfulness consists of two elements: (1) an objective element that is often, but not always, a question of law, and (2) a subjective element that is inherently a question of fact, to be decided by the jury.

Under the first prong, if an “accused infringer’s position is susceptible to a reasonable conclusion of no infringement,” the infringer’s conduct cannot be objectively unreasonable. Conversely, an action is objectively unreasonable if the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.

When considering the second prong – the element of subjective willfulness – fact-finders should consider: (1) whether the infringer copied the patentee’s commercial products; (2) whether the infringer presented evidence that it obtained legal opinions of patent counsel to justify its infringing actions; (3) whether the infringer attempted to avoid infringement by designing around the patents; and (4) whether the infringer acted in accordance with the standards of commerce.

October 9, 2013

USPTO to Hold Seminar on Using the Madrid Protocol

By Overhauser Law Offices, LLC

Alexandria, Virginia – On Wednesday, October 23, 2013, the U.S. Patent Office (“USPTO”) will hold a one-day seminar on using the Madrid Protocol for filing an international application and maintaining an international registration.

The target audience is practitioners who are already familiar with and have used the Madrid Protocol. The purpose of the seminar is to provide practical information on common issues that arise during the processing of the application, as well as maintaining and managing the resulting international registration. Seminar highlights include: resources of the World Intellectual Property Organization; issues to consider when preparing to file and actually filing an international application; the USPTO review process for certification of the international application; International Bureau review of the international application; and issues related to changing and renewing the international registration. A detailed agenda will be provided at a later date.

The event will be held in the Global Intellectual Property Academy at the USPTO campus in Alexandria, Virginia from 9 a.m. to 5 p.m. (with a lunch break). To attend in person, please send your name to TMFeedback@uspto.gov no later than close of business Friday, October 18, with the subject line “Madrid Protocol advanced training.” The seminar will also be webcast. Webcast instructions and an agenda will be posted on the USPTO website in advance of the event. There is no need to register if you only plan to view the webcast. If possible, the USPTO will attempt to make a version available for viewing at a later time.

October 7, 2013

CleanTech’s Multidistrict Litigation Adds Southwest Iowa Renewable Energy as a Defendant

By Overhauser Law Offices, LLC

Indianapolis, Indiana — Patent attorneys for GS CleanTech Corporation of Alpharetta, Georgia have filed a patent infringement lawsuit in the Southern District of Iowa alleging that Southwest Iowa Renewable Energy, LLC of Council Bluffs, Iowa infringed Patent Nos. 7,601,858, METHOD OF PROCESSING ETHANOL BYPRODUCTS AND RELATED SUBSYSTEMS; 8,008,516, METHOD OF PROCESSING ETHANOL BYPRODUCTS AND RELATED SUBSYSTEMS; 8,008,517, METHOD OF RECOVERING OIL FROM THIN STILLAGE and 8,283,484, METHOD OF PROCESSING ETHANOL BYPRODUCTS AND RELATED SUBSYSTEMS, which have been issued by the U.S. Patent Office. The case was transferred to the Southern District of Indiana as part of Multidistrict Litigation No. 2181.

This Multidistrict Litigation (“MDL”) began with an assertion of patent infringement by CleanTech of Patent No. 7,601,858 (the “‘858 patent”), which was issued on October 13, 2009. CleanTech sued numerous Defendants alleging infringement of that patent shortly after its issuance. The Defendants accused of patent infringement in prior litigation include: Big River Resources Galva, LLC; Big River Resources West Burlington, LLC; Cardinal Ethanol, LLC; ICM, Inc.; LincolnLand Agri-Energy, LLC; David J. Vander Griend; Iroquois Bio-Energy Co., LLC; Al-Corn Clean Fuel; Blue Flint Ethanol, LLC; ACE Ethanol, LLC; Lincolnway Energy, LLC; United Wisconsin Grain Producers, LLC; Bushmills Ethanol, Inc.; Chippewa Valley Ethanol Co.; Heartland Corn Products and Adkins Energy, LLC.

Since September 29, 2011, when the court overseeing the MDL issued its order on claim construction with respect to the disputed claims of the ‘858 patent, patentee CleanTech has further asserted infringement by some of the allegedly infringing Defendants of three additional patents in the ‘858 patent family: U.S. Patent Nos. 8,008,516 (the “‘516 patent”), 8,008,517 (the “‘517 patent”) and 8,283,484 (the “‘484 patent”) (the ‘858, ‘516, ‘517 and ‘484 patents are, collectively, the “‘858 patent family”).

The patents in the ‘858 family share an identical specification and have substantially similar claim terms. CleanTech claims that the method claimed increases the efficiency and economy of recovering corn oil. Southwest Iowa Renewable Energy is charged with infringing the ‘858 patent, along with the related ‘516, ‘517, and ‘484 patents (collectively “the patents-in-suit”).

CleanTech’s patented methods recover corn oil by evaporating, concentrating and mechanically separating thin stillage (“stillage”), a byproduct of ethanol produced from corn, into two components: corn oil and a post-recovery syrup (“syrup”) with most of its corn oil removed.

In one embodiment, the patented method comprises initially processing the whole stillage by mechanically separating (such as by using a centrifugal decanter) the whole stillage into distillers wet grains and thin stillage, and then introducing the thin stillage into an evaporator to form a concentrated syrup byproduct. Prior to recombining the then-concentrated syrup with the distillers wet grains, the syrup is introduced into a second mechanical separator, such as a second centrifuge, which is different from the centrifuge that mechanically separated the whole stillage into distillers wet grains and thin stillage. This second centrifuge separates corn oil from the syrup thereby allowing for the recovery of usable corn oil. The syrup that exits the centrifuge is then recombined with the distillers wet grain and dried in a dryer. The corn oil that is extracted from the syrup can be used for various purposes such as feedstock for producing biodiesel.

Prior lawsuits included GreenShift Corp. as a Plaintiff. In this current lawsuit, initiated in Southern District of Iowa, GreenShift’s subsidiary GS CleanTech Corp. is the sole Plaintiff. Patent attorneys for CleanTech assert the following in the complaint:

· Count I: Infringement of U.S. Patent No. 7,601,858

· Count II: Infringement of U.S. Patent No. 8,008,516

· Count III: Infringement of U.S. Patent No. 8,008,517

· Count IV: Infringement of U.S. Patent No. 8,283,484

CleanTech asks the court for a permanent injunction prohibiting further infringement of the patents-in-suit; an award of damages adequate to compensate CleanTech for the infringement that has occurred, but in no event less than a reasonable royalty for the use made of the inventions of the patents-in-suit as provided in 35 U.S.C. § 284, together with prejudgment interest from the date the infringement began; and an award to CleanTech of all remedies available under 35 U.S.C. §§ 284, 285 and 154(d).

Practice Tip: The United States Judicial Panel on Multidistrict Litigation, (http://www.jpml.uscourts.gov/) also known as the “MDL Panel” or, simply the “Panel,” consists of seven sitting federal judges, who are appointed to serve on the Panel by the Chief Justice of the United States. The job of the Panel is to (1) determine whether civil actions pending in different federal districts involve one or more common questions of fact such that the actions should be transferred to one federal district for coordinated or consolidated pretrial proceedings; and (2) select the judge or judges and court assigned to conduct such proceedings.

October 4, 2013

Malibu Media Files Seven New Copyright Infringement Lawsuits Against John Doe Defendants

By Overhauser Law Offices, LLC

Indianapolis, Indiana — An intellectual property attorney has filed seven new copyright suits in the Southern District of Indiana on behalf of Malibu Media, LLC of Los Angeles, California alleging that seven John Doe defendants infringed Malibu Media’s copyrighted works.

Copyright lawyer Paul Nicoletti is again in federal court on behalf of Malibu Media asserting infringement of the company’s intellectual property. In this current round, Malibu Media’s latest incursion into the federal court system, seven new and nearly identical lawsuits have been filed against anonymous John Doe defendants, each claiming copyright infringement. 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.

Malibu Media seeks a permanent injunction barring the Defendants from engaging in infringing activities; an order by the court to remove infringing materials from all computers of each Defendant; an award of statutory damages of $150,000 per infringed work and reasonable attorneys’ fees and costs.

Practice Tip: 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 recently ordered two 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.