Indiana Intellectual Property Law News

October 9, 2013

USPTO to Hold Seminar on Using the Madrid Protocol

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.

October 3, 2013

152 Trademark Registrations Issued to Indiana Companies in September, 2013

By Overhauser Law Offices, LLC

The US Trademark Office issued the following 152 trademark registrations to persons and businesses in Indiana in September, 2013, based on applications filed by Indiana Trademark Attorneys:

Reg. Number	Word Mark	Check Status
4404546	FLEX RUN	VIEW
4406575	VIEW HEALTHY. VIEW HAPPY. VIEW WHOLLY. VIEW!	VIEW
4408869	STEAK FRANKS	VIEW
4408860	SUPER POWER SUPPLY	VIEW
4407023	RECONNECT	VIEW
4407022	VISION CLEAR	VIEW
4406838		VIEW
4406808	SB	VIEW
4406805	SUM NUG	VIEW
4406636	INGO	VIEW
4406570	ANGEROLE	VIEW
4406550	CERATOUGH	VIEW
4408820	SLEEP SITTING UP	VIEW
4406126	SCOOP DIGGITY DOG	VIEW
4408618	AK	VIEW
4406080	SPRINT	VIEW

October 2, 2013

Patent Office Issues 132 Patents To Indiana Citizens in September, 2013

By Overhauser Law Offices, LLC

The US Patent Office issued the following 132 patent registrations to persons and businesses in Indiana in September, 2013, based on applications filed by Indiana Patent Attorneys:

Patent No.		Title
D690,474		Door frame with a split door for an animal enclosure
D690,442		Wall panel
D690,296		Tablet computer
8,542,363		Self-aligning light source and detector assembly for absorbance measurement
8,541,669		Inbred corn line MXD03
8,541,658		Canola cultivar CL121460H
8,541,657		Canola cultivar CL117235H
8,541,656		Canola cultivar DN051465
8,541,372		Isolated extracellular matrix material including subserous fascia
8,541,369		Fibroblast growth factor 21 variants having improved pharmacological potency and/or improved pharmaceutical stability
8,541,344		Compositions with cyclopropenes and metal-complexing agents
8,541,183		Methods of identification, assessment, prevention and therapy of lung diseases and kits thereof
8,540,935		System and method for coding information on a biosensor test strip
8,540,760		Tubular devices having reversible components for deployment of endoluminal occluders and related methods and systems

September 30, 2013

Government Shutdown May Soon Affect USPTO and Federal Courts

By Overhauser Law Offices, LLC

Washington, D.C. — The U.S. Patent Office (“USPTO”) and federal courts may be affected by a government shutdown, which will begin tomorrow if Congress does not enact a continuing resolution to fund government operations today.

The federal court system will not be affected immediately. During the first 10 business days of a lapse in appropriations, the judiciary will use available fee and no-year balances to pay judges and court employees, and to maintain court operations. Courts will continue to operate, but court personnel have been instructed to conserve funding as much as possible by delaying or deferring expenses that are not critical to the performance of their constitutional responsibilities.

After the 10-day period, if there is still no appropriation, the judiciary will operate under the terms of the Anti-Deficiency Act, which allows “essential work” to continue during a lapse in appropriations. Among the definitions of “essential work” are powers exercised under the Constitution, which include activities to support the exercise of Article III judicial powers, specifically the resolution of cases.

September 27, 2013

USPTO Seeks Comments on Post-Registration Trademark Amendments

By Overhauser Law Offices, LLC

Washington, D.C. — The U.S. Patent and Trademark Office (“USPTO”) is seeking public comment on amendments to trademark registrations with respect to identification of goods and services which may be necessary due to changes in technology. The USPTO cited changes in the manner or medium by which products or services are offered for sale and provided to customers as a result of evolving technology. Comments are due no later than Nov. 1, 2013, and should be emailed to TMFeedback@uspto.gov, with the subject line “Technology Evolution.”

Under §7(e) of the Trademark Act, a registration based on an application under §1 or §44 of the Trademark Act may be amended for good cause upon application of the owner and payment of the prescribed fee, provided the amendment does not materially alter the character of the mark. 15 U.S.C. §1058(e). With respect to the identification of goods/services, an identification may be amended to restrict the identification or change it in ways that would not require republication of the mark. See 37 C.F.R. §2.173(e). However, no goods/services may be added to a registration by amendment. Moreover, under current USPTO practice, changed circumstances, such as new technology, will not render acceptable an amendment that is not otherwise permissible. TMEP §1609.03.

Recently, the USPTO has received a number of requests for amendment under §7, as well as inquiries from registration owners, seeking to amend identifications of goods/services due to changes in the manner or medium by which products and services are offered for sale and provided to consumers, particularly because of evolving technology. In some cases, these requests have also sought a corresponding change in classification.

September 26, 2013

Verint Sues Interactive Intelligence for Infringing Twenty Different Patents

By Overhauser Law Offices, LLC

Atlanta, Georgia — Verint Systems Inc. (“VSI”) of Melville, New York and its wholly owned subsidiary Verint Americas Inc. (“VAI”) of Alpharetta, Georgia (collectively, “Verint”) have sued Interactive Intelligence, Inc. of Indianapolis, Indiana in the Northern District of Georgia for infringement of twenty separate patents; these patents have been registered with the U.S. Patent Office.

Verint is engaged in the business of inventing, developing, manufacturing, selling, installing, and/or distributing computer software and hardware products and systems. The products and systems are directed to, inter alia, the analysis, recording, monitoring, transmission, and/or security of electronic communications, such as telephonic, facsimile, and e-mail communications to and from contact centers and call centers which handle incoming and/or outgoing contacts with actual and prospective customers and clients. Verint’s technology can provide an end user with the ability to capture, analyze and act on large volumes of complex information sources, such as voice, video, and unstructured text, which can enhance the ability of organizations of all sizes to make better decisions based on such information. Verint’s main location for research and development relating to recording technology is located at VAI’s facility in Georgia.

Verint’s products and systems are used by more than 10,000 organizations in over 150 countries, including over 80 percent of the Fortune 100. For example, Verint’s workforce-optimization and voice-of-the-customer solutions are designed to help organizations enhance customer-service operations in contact centers, branches, and back-office environments. This can increase customer satisfaction, reduce operating costs, uncover revenue opportunities and improve profitability. Verint uses its core competencies to develop highly scalable solutions with advanced, integrated analytics for both unstructured and structured information. Verint asserts that it has expended substantial resources inventing and developing this technology. Verint has licensed one or more of its patents to others in the industry through its Open Innovation Network (“OIN”) licensing program.

Defendant Interactive, a competitor of Verint, is in a similar business. It manufactures, uses, sells, offers to sell, installs, distributes, exports, and/or imports computer software and hardware products and systems directed to and for use in connection with methods involving the analysis, recording, monitoring, transmission and security of electronic communications, such as telephonic communications to and from contact centers and call centers.

Verint contends that it is the sole owner of all rights to the patents at issue in this suit: U.S. Patent No. 5,790,798 (“the ‘798 patent”); U.S. Patent No. 7,203,285 (“the ‘285 patent”); U.S. Patent No. 7,376,735 (“the ‘735 patent”); U.S. Patent No. 7,574,000 (“the ‘000 patent”); U.S. Patent No. 7,774,854 (“the ‘854 patent”); U.S. Patent No. 7,852,994 (“the ‘994 patent”); U.S. Patent No. 7,903,568 (“the ‘568 patent”); U.S. Patent No. 8,204,056 (“the ‘056 patent”); U.S. Patent No. 8,285,833 (“the ‘833 patent”); U.S. Patent No. RE41,534 (“the ‘534 patent”); U.S. Patent No. RE43,324 (“the ‘324 patent”); U.S. Patent No. 8,401,155 (“the ‘155 patent”); U.S. Patent No. 8,359,434 (“the ‘434 patent”); U.S. Patent No. 8,345,828 (“the ‘828 patent”); U.S. Patent No. 8,275,944 (“the ‘944 patent”); U.S. Patent No. 8,204,053 (“the ‘053 patent”); U.S. Patent No. RE43,386 (“the ‘386 patent”); U.S. Patent No. 8,130,926 (“the ‘926 patent”); U.S. Patent No. 6,404,857 (“the ‘857 patent”) and U.S. Patent No. 6,510,220 (“the ‘220 patent”) (collectively, “the Patents-in-Suit”).

Verint believes that Interactive is, in various ways, infringing upon the Patents-In-Suit. In a letter to Interactive dated September 13, 2010, VSI invited Defendant to participate in its OIN. The OIN is a licensing program under which VSI offers to grant a worldwide license to its portfolio of patents directed, in part, to the analysis, recording, monitoring, transmission, and/or security of electronic communications. In its September 2010 letter, VSI provided Interactive with claim charts showing how Interactive’s activities fell within the claim scope of various patents within the OIN. Over the course of several months, several more letters were sent by VSI to Interactive, inviting it to participate in the OIN. No agreement was reached. The current lawsuit was subsequently filed by Verint.

Defendant Interactive is accused of infringing the Patents-in-Suit in violation of 35 U.S.C. § 271, including as follows:

(a) by making, using, offering to sell, and/or selling in the United States or importing into the United States computer software and/or hardware and/or systems, and/or by engaging in or practicing in the United States methods or processes covered by the Patents-in-Suit, including such methods or processes which utilize one or more of the Accused Products [those products of Interactive which are claimed to infringe on Verint’s patents]; and/or

(b) by offering to sell or selling within the United States or importing into the United States a component of a product or system within one or more of the patents of the Patents-in-Suit, or a material or apparatus for use in practicing a method or process within one or more of the patents of the Patents-in-Suit, constituting a material part of one or more of the patents of the Patents-In-Suit, knowing the same to be especially made or especially adapted for use in an infringement of one or more of the patents of the Patents-in-Suit, and not a staple article or commodity of commerce suitable for substantial non-infringing use; and/or

(c) by supplying or causing to be supplied in or from the United States all or a substantial portion of components to form a product or system within one or more of the patents in the Patents-in-Suit, including by supplying or causing to be supplied in or from the United States the Accused Products, in such a manner as to actively induce the combination of such components outside of the United States in a manner that would infringe one or more of the patents of the Patents-in-Suit if such combination occurred within the United States; and/or

(d) by supplying or causing to be supplied in or from the United States a component of a product or system within one or more of the patents of the Patents-in-Suit that is especially made or especially adapted for use according to one or more of the patents of the Patents-in-Suit and is not a staple article or commodity of commerce suitable for substantial non-infringing use, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe one or more of the patents of the Patents-in-Suit if such combination occurred within the United States, including by supplying or causing to be supplied in or from the United States one or more of the Accused Products; and/or

(e) actively inducing one or more of the activities identified in subparagraphs (a) through (d).

Interactive is accused of infringing, contributing to the infringement of, and actively inducing infringement of the Patents-in-Suit. The complaint lists twenty counts of patent infringement:

Count I: Infringement of the ‘798 patent
Count II: Infringement of the ‘285 patent
Count III: Infringement of the ‘735 patent
Count IV: Infringement of the ‘000 patent
Count V: Infringement of the ‘854 patent)
Count VI: Infringement of the ‘994 patent
Count VII: Infringement of the ‘568 patent
Count VIII: Infringement of the ‘056 patent
Count IX: Infringement of the ‘833 patent
Count X: Infringement of the ‘534 patent
Count XI: Infringement of the ‘324 patent
Count XII: Infringement of the ‘155 patent
Count XIII: Infringement of the ‘434 patent
Count XIV: Infringement of the ‘828 patent
Count XV: Infringement of the ‘944 patent
Count XVI: Infringement of the ‘053 patent
Count XVII: Infringement of the ‘386 patent
Count XVIII: Infringement of the ‘926 patent
Count XIX: Infringement of the ‘857 patent
Count XX: Infringement of the ‘220 patent

In the complaint, patent attorneys for Verint assert that Interactive had actual knowledge and/or notice from a time prior to the filing of the present complaint of at least the following: the ‘798 patent; the ‘285 patent; the ‘735 patent; the ‘000 patent; the ‘854 patent; the ‘994 patent and the ‘534 patent. It is also alleged that Interactive’s acts of infringement have been carried out deliberately and willfully, without the consent of Verint, at least with respect to the ‘798 patent; ‘285 patent; the ‘735 patent; the ‘000 patent; the ‘854 patent; the ‘994 patent and the ‘534 patent, entitling Verint to treble damages under 35 U.S.C. § 284. Verint further contends that this is an exceptional case entitling Verint to an award of attorneys’ fees under 35 U.S.C. § 285.

Plaintiff Verint asks for a judgment that Defendant Interactive has been and is infringing, is contributing to the infringement of, and is actively inducing infringement of the Patents-in-Suit; preliminary and permanent injunctive relief against such infringement under 35 U.S.C. § 283; damages, including treble damages, by reasons of Defendant’s acts of purportedly deliberate and willful infringement; attorneys’ fees; and costs, including expert witness fees.

Practice Tip: Verint is no stranger to the value of intellectual property. It utilizes more than 1,000 employees and contractors in research and development throughout the world, and has obtained or filed more than 570 patents and applications worldwide. In its last fiscal last year, Verint obtained issuance or allowance of 60 patents and applications in the United States.

Verint is also no stranger to intellectual property lawsuits. In 2008, a Georgia jury found that NICE Systems Ltd. had infringed Verint’s U.S. Patent No. 6,404,857 and awarded Verint $3.3 million in damages. A week later, in a separate lawsuit, Verint was found not to have infringed NICE’s U.S. Patent No. 6,871,229. There have been at least three other patent infringement lawsuits between Verint and NICE. There were rumors in January that NICE was negotiating to acquire Verint Systems, Inc.

September 25, 2013

Alcon Sues Wockhardt for Patent Infringement of Pataday™

By Overhauser Law Offices, LLC

Indianapolis, Indiana — Alcon Research, Ltd. of Fort Worth, Texas, and Alcon Pharmaceuticals Ltd. of Fribourg, Switzerland (collectively, “Alcon”) have filed a patent infringement lawsuit in the Southern District of Indiana alleging that Wockhardt Limited of Mumbai, Maharashta, India; Wockhardt Bio AG of Zug, Switzerland; Wockhardt Bio Ltd. of Zug, Switzerland; and Wockhardt USA, LLC of Parsippany, New Jersey (collectively, “Wockhardt”) infringed Patent Nos. 6,995,186 (the “‘186 patent”) and 7,402,609 (the “‘609 patent”), both for Olopatadine Formulations For Topical Administration, which have been issued by the U.S. Patent Office.

According to the complaint, the Wockhardt entities are engaged in the generic-pharmaceutical business. Alcon asserts that one or more of the entities manufacture, import, market, offer to sell and/or sell generic drugs throughout the United States.

Wockhardt filed an Abbreviated New Drug Application (“ANDA”) with the U.S. Food and Drug Administration (“FDA”) seeking approval to manufacture and sell a generic version of Pataday™ ophthalmic solution, a drug product containing olopatadine hydrochloride. The two patents-in-suit, which Alcon claims to own, are asserted to cover Pataday™. Alcon contends that Wockhardt’s submission of this ANDA to obtain approval to engage in the commercial manufacture, use, offer for sale, sale and/or importation of Wockhardt’s ANDA product before the expiration of the patents-in-suit is an act of infringement under 35 U.S.C. § 271(e)(2)(A).

Plaintiff Alcon states that it believes that the Wockhardt entities are part of a vertically integrated and unified organization and that they will act in concert to introduce the generic version of Pataday™ to the United States market prior to the expiration of Alcon’s patents.

In the complaint, intellectual property attorneys for Alcon list the following claims:

· Count I: Infringement of the ‘186 Patent

· Count II: Infringement of the ‘609 Patent

· Count III: Declaratory Judgment of Infringement of the ‘186 Patent

· Count IV: Declaratory Judgment of Infringement of the ‘609 Patent

Alcon asks for a judgment that the ‘186 and ‘609 patents are valid and enforceable and have been infringed; a judgment providing that the effective date of any FDA approval of commercial manufacture, use or sale of Wockhardt’s ANDA product be not earlier than the latest of the expiration date of the patents-in-suit, inclusive of any extension(s) and additional periods of exclusivity; preliminary and permanent injunctions protecting products covered by the ‘186 patent prior to its expiration; preliminary and permanent injunctions protecting products covered by the ‘609 patent prior to its expiration; a judgment declaring that the commercial manufacture, use, sale, offer for sale or importation of Wockhardt’s ANDA product, or any other drug product covered by the ‘186 patent, will infringe, induce the infringement of, and contribute to the infringement by others of, that patent; a judgment declaring that the commercial manufacture, use, sale, offer for sale or importation of Wockhardt’s ANDA product, or any other drug product covered by the ‘609 patent, will infringe, induce the infringement of, and contribute to the infringement by others of, that patent; a declaration that this is an exceptional case and an award of attorneys’ fees; and costs and expenses.

Practice Tip: The FDA’s ANDA process for generic drugs has been abbreviated such that, in general, the generic drug seeking approval does not require pre-clinical (animal and in vitro) testing. Instead, the process focuses on establishing that the product is bioequivalent to the “innovator” drug that has already undergone the full approval process. The statute that created the abbreviated process, however, had also created some interesting issues with respect to the period of exclusivity. For an interesting look at some of these issues, see here.

September 23, 2013

J & J Sports Sues Los Chilaquiles Restaurant and Owner Carranza 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 Loyda A. Carranza and Carranza, Inc. of Indianapolis, Indiana (collectively, “Carranza”), both doing business as Los Chilaquiles Restaurant, 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 Carranza, Inc. and Loyda A. Carranza 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, Carranza, Inc., which apparently owns the restaurant, Plaintiff has also sued Defendant Loyda Carranza as an individual, alleging that she had the right and ability to supervise the activities of Los Chilaquiles. J & J Sports asserts that those activities included the unlawful interception of Plaintiff’s program. J & J Sports also contends that Ms. Carranza specifically directed the employees of Los Chilaquiles to unlawfully intercept and broadcast Plaintiff’s program at Los Chilaquiles or, if she did not, that the actions of the employees of Los Chilaquiles are directly imputable to Ms. Carranza by virtue of her purported responsibility for the activities of Los Chilaquiles. Ms. Carranza has also been named individually as a result of J & J Sports’ contention that she is a managing member of Carranza, Inc. and, further, as an individual specifically identified on the liquor license for Los Chilaquiles, had an obvious and direct financial interest in the activities of Los Chilaquiles.

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: The interception claim has a two-year statute of limitations, which explains why this complaint was filed on September 13, 2013, almost exactly two years after the broadcast of the program. J & J Sports initiated 708 lawsuits in 2011 alone. It appears that many of them were also filed near the eve of the two-year anniversary of the broadcast of the program at issue in each individual lawsuit.

Practice Tip #2: 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.