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Indianapolis, Ind. — Trademark lawyers for American Professional Nursing Resources, LLC (“APNR”) and Doyle Silvers (“Silvers”) of La Fontaine, Ind. sued Medical Staffing Worldwide, LLC (“MSW”) of Marion, Ind. et al. for use of APNR’s trademark and trade secrets; for breachMedicalStaffingWorldwideLogo.JPG of contract and fiduciary duty; for tortious interference with contracts and for violation of § 43(a) of the Lanham Act. 

In March 2004, Silvers formed APNR, a global recruitment company that assists domestic employers in recruiting foreign medical professionals by providing domestic screening, training tools and foreign processing facilities.  APNR and Silvers recruited Larry Myers (“Myers”), Tom Reto (“Reto”), Jon Marler (“Marler”), Dan Hasslinger (“Hasslinger”) and James Greg Bowers (“Bowers”) to develop APNR into a fully operational business.  Benny Spensieri (“Spensieri”), who signed a Non-Disclosure Agreement (“NDA”), was also recruited.  Myers, Reto, Marler, Hasslinger, Bowers and Spensieri agreed to maintain the secrecy of APNR’s confidential, proprietary and trade-secret information.

Silvers provided Myers, Reto, Marler, Hasslinger, Bowers and Spensieri with confidential, proprietary and trade-secret information of APNR including its business plan, business model, financial information, and methods and techniques for global recruitment, immigration, screening and training of foreign medical professionals.

In the summer of 2012, Myers, Reto, Marler, Hasslinger, and Bowers reserved the business name “Medical Staffing Worldwide, LLC.”  Using that name, they formed a company that allegedly had the same business plan, business model and financial projections as APNR and that used identical methods and techniques for global recruitment, immigration, screening, and training of foreign medical professionals as APNR.  MSW also began using APNR’s trademark, “The Future of Medical Staffing,” which APNR had used since 2005.

APNR and Silvers filed suit alleging breach of contract, breach of fiduciary duty, misappropriation of trade secrets, tortious interference with contracts and violation of § 43(a) of the Lanham Act.  They ask for actual, consequential and punitive damages; attorneys’ fees; costs; and pre-judgment and post-judgment interest.

Practice Tip: Indiana considers non-compete agreements to be in restraint of trade and, thus, construes them narrowly.  In other states, there has also been a growing trend, fueled in no small part by states’ difficulties in paying increasing unemployment benefits, to limit via legislation the enforceability of non-compete agreements.  Among the states that have considered such limitations are Maryland, New Jersey, Minnesota, Massachusetts and Virginia. 

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Effective May 1, 2013, the civil case filing fee for the United States District Court for the Southern District of Indiana, will increase from $350 to $400, as approved by the Judicial Conference in its March 2013 session. This fee includes cases related patent, trademark, copyright or other intellectual property litigation.  The fee increase does not apply to miscellaneous case filings, for which the fee remains $46.

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Indianapolis, Ind. – The Indiana Court of Appeals has affirmed the judgment of the Hamilton Circuit Court granting a preliminary injunction in favor of Classic Restaurant Services of Westfield, Ind. against former employee Christopher Snyder for tortious interference with business relationships.

Classic Restaurant Services, LLC (“Classic”) provides heating, air conditioning, refrigeration, and cooking equipment sales and service predominantly to restaurants throughout central Indiana. Christopher Snyder began working as a service technician for Classic in 2009.  Snyder did not have a non-compete agreement with Classic and was expressly permitted to do residential jobs on the side while using his company vehicle. During his more than three years of employment, Snyder serviced all of Classic’s customers.

In the summer of 2011, Snyder began organizing his own competing business and planning to take customers from Classic.  By July 2011, Snyder had succeeded in taking the business of two Subway restaurants from Classic.  He serviced these restaurants after hours on his own behalf.  Classic did not know that it had lost these customers to Snyder.

In the fall of 2011, Snyder unsuccessfully attempted to solicit Ruby Tuesday restaurants to transfer their business to him.  Although he was still employed by Classic, Snyder had prepared to compete by purchasing and outfitting a van, obtaining business cards and insurance, and printing marketing flyers. He distributed his flyers to several restaurants in central Indiana and, in February 2012, organized his new company, A Plus Air LLC.

Snyder resigned from Classic in April 2012 but retained a binder that contained contact information of all Classic’s vendors and customers. This list was marked confidential and Classic employees had been directed on numerous occasions to keep its contents confidential. Snyder continued to use the list for his new business.  He also obtained additional Classic documents from Doris Warswick, Classic’s office manager, who knew of Snyder’s intention start a competing business.

Classic sued, asking that Snyder be enjoined from “continuing to interfere with the relationships that Classic had with customers while he was employed” but agreed that Snyder should be otherwise free to compete in the local restaurant HVAC business.  The Hamilton Circuit Court found that “while he was Classic’s employee and agent, Mr. Snyder engaged repeatedly in self-dealing and other acts of disloyalty to his employer and principal, thereby breaching his fiduciary duties to Classic.”  It concluded that Classic had a reasonable likelihood of success on the merits on its claims for 1) tortious interference with Classic’s business relationships and 2) misappropriation of trade secrets and granted the injunction.

Snyder appealed.  He did not dispute that he had actively violated his fiduciary duties to Classic during the last year of his employment but argued instead that this prior misconduct should not affect his ability to compete with Classic following the termination of his employment.

In a unanimous memorandum opinion, the appellate court upheld the injunction on the grounds of a likelihood of success on Classic’s tortious interference claim.  It further held that Snyder’s claim that a preliminary injunction was improper because he no longer owed a fiduciary duty to Classic was entirely unsupported and without merit.  The appellate court did not reach Snyder’s arguments against Classic’s trade-secret claim, as Classic’s tortious interference claim was sufficient to support the trial court’s grant of a preliminary injunction.

Practice Tip: As the appellate court stated: “An employee owes his employer a fiduciary duty of loyalty. To that end, an employee who plans to leave his current job and go into competition with his current employer must walk a fine line. Prior to his termination, an employee must refrain from actively and directly competing with his employer for customers and employees and must continue to exert his best efforts on behalf of his employer….”  Further, although the employee’s fiduciary relationship with his employer ends upon the termination of his employment, he is not then “free to enjoy the fruits of his breach of fiduciary duties.”
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The US Patent Office issued the following 137 patent registrations to persons and businesses in Indiana in March, 2013, based on applications filed by Indiana Patent Attorneys:

PAT. NO.

    Title

1

D678,988

Faucet spout

2

D678,987

Faucet spout

3

D678,986

Faucet spout

4

D678,985

Faucet spout

5

D678,935

5-in-1 payment module

6

D678,843

Electrical connector housing

7

8,407,759

Device, method, and system for secure mobile data storage

8

8,407,067

Method and apparatus for manufacturing an implant

9

8,406,867

Balloon sizing of valve annulus for percutaneous valves

10

8,406,567

Reconstruction of shapes of near symmetric and asymmetric objects

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The US Trademark Office issued the following  157 trademark registrations to persons and businesses in Indiana in March, 2013, based on applications filed by Indiana Trademark Attorneys:

Reg. Number Mark Click to View
1 4304989 FUZZY’S ULTRA PREMIUM VODKA View
2 4309129 MEDICAL PROTECTIVE A BERKSHIRE HATHAWAY COMPANY STRENGTH. DEFENSE. SOLUTIONS. SINCE 1899. View
3 4309120 KLBJ View
4 4309119 KLBJ View
5 4309067 107.1 LA Z View
6 4309066 101X View
7 4309064 WIBC View
8 4308844 BIG SKY View
9 4308754 MW View
10 4308566 COATCHEX View

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Indianapolis, Ind. – The Indiana Court of Appeals granted Indiana’s petition for rehearing and reaffirmed its January ruling in favor of defendant Michael Curtis that a conviction for fraud in the form of copyright infringement was, by itself, an insufficient predicate for forfeiture.

Curtis was charged with four counts of Class D felony fraud for selling pirated movies out of his truck.  He pleaded guilty to one count of fraud, which was entered as a misdemeanor, and the remaining charges were dropped.  The state also filed a complaint for forfeiture of Curtis’s truck under Indiana Code § 34-24-1-1(a)(1)(B) (2009), which allows the seizure of vehicles “if they are used . . . to transport . . . stolen [IC §35-43-4-2] or converted property.”  The trial court granted the forfeiture.

The Indiana Court of Appeals reversed the decision, holding that fraud in the form of copyright infringement was neither garden-variety theft nor conversion and, thus, was not within the scope of the forfeiture statute.  We blogged about that decision here.

The state asked for and was granted a rehearing.  It argued that Yao v. State, 975 N.E.2d 1273 (Ind. 2012), required a different outcome.  The appellate court disagreed, stating that, while Yao “might support the proposition that pirated movies constitute stolen property,” it failed to answer the question of forfeiture.  On that issue, the court looked to Katner v. State, 655 N.E.2d 345 (Ind. 1995).

In Katner, the Indiana Supreme Court reversed the forfeiture of a vehicle predicated on an empty container in the possession of the driver that was found to have cocaine residue.  There, the trial court had ordered the defendant’s vehicle forfeited under a statute allowing forfeiture where a vehicle was used to transport a “controlled substance for the purpose of. . . [p]ossession of cocaine.”  The Court held that the state had not met its burden under the forfeiture provision to show a nexus between the property to be forfeited and the underlying offense.

The appellate court in this case held that such a nexus analysis was also appropriate for the forfeiture provision which applies to stolen or converted property.  As the state had apparently had not shown a nexus between the use of the truck and the sales of the pirated movies, the court affirmed its earlier decision.

Practice Tip: It looks like Curtis can keep his truck.  However, in the January decision, the appellate court suggested that legislation would likely be required to allow forfeiture in cases involving copyright infringement.  In contrast, this current decision seems to hold that, should the required nexus between property and copyright infringement be proven at trial, a forfeiture statute could be used to seize property involved in that infringement.
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Hammond, Ind. – Robert Payne (“Payne”) d/b/a Paynes Products, Paynes Forks and Payne Tools of LaPorte, Ind. sued Northern Tool & Equipment Company, Inc. and Northern Tool & Equipment Catalog Company, Inc. (collectively, “Northern Tool”) of Burnsville, Minn. for alleged violations of Payne’s intellectual property rights, false advertising and breach of contract.

PaynesForksLogo.JPGPayne alleges a prior business relationship with Northern Tool in which Northern Tool sold Payne’s products in Northern Tool’s stores, via its catalogs and via the Internet pursuant to various agreements between the parties.  Around October 2012, Northern Tool apparently informed Payne that it was terminating the agreements.  Payne alleges that, despite this, Northern Tool continues to advertise Payne’s products and has been fulfilling orders with products made by Northern Tool.

The plaintiff complains of trademark infringement, palming off, false advertising and false designation of origin under Section 43 of the Lanham Act as a result of Northern Tool allegedly continuing to advertise and sell imitation Paynes products.  

NorthernToolLogo.JPGPayne further complains of “Unfair Competition by Infringement of Common-Law Rights,” listing as his authority Indiana Code §§24-2-1-13 and 24-2-1-14.  Payne has also asserted a claim for breach of contract against Northern Tool for failure to disgorge “excessive funds” to Payne.

Finally, the complaint lists as separate counts one of the remedies sought – an injunction – and a count demanding a jury trial.  We have blogged in the past about this method of pleading here.

Practice Tip: The occasional typographic error is no stranger to many types of documents, even legal documents.  However, there comes a point where such errors erode credibility and hinder readability.  This complaint had obvious errors on every page and probably in more paragraphs than not.  Such drafting does not endear the lawyer to the judge – or the client – and should be avoided.
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Evansville, Ind. – John Bauer of Vanderburgh County, Ind. filed a patent infringement suit alleging that Wildgame Innovations, LLC of Broussard, La. infringed Patent No. 7,241,195 WildGameInnovationsLogo.JPG(the “‘195 Patent”) which has been issued by the U.S. Patent Office.

Bauer is listed as the owner of the ‘195 Patent entitled “Game Call Striker.”  Patent attorneys for Bauer filed suit in the Southern District of Indiana alleging that Wildgame has been, and still is, infringing the ‘195 Patent by making, using, selling, offering for sale, and/or importing “knock-off” game calls and inducing others to do likewise.  One example of a knock-off, contends Bauer, is Wildgame’s “Run-n-Gun” game call.

Bauer alleges that Wildgame’s infringement has been, and continues to be, intentional, willful, deliberate and with conscious disregard for his intellectual property rights.  He seeks a declaration that the ‘195 Patent has been infringed; an accounting of all of Wildgame’s gains, profits, and advantages realized from its alleged infringement of the ‘195 Patent; lost profits and a reasonable royalty for the allegedly infringing activity; an injunction against further infringement; costs; attorneys’ fees and pre-judgment interest.  Bauer also asks the court for a determination that Wildgame infringed in a willful, intentional, and deliberate manner and for treble damages pursuant to that finding.

 Practice Tip: According to a recent survey conducted by the American Intellectual Property Law Association, even a “small” patent-infringement lawsuit (one with less than $1 million at risk) has a median litigation cost of $650,000 – and that is separate from any damages that might have to be paid at the conclusion of the litigation.  If you are unsure whether a product you are launching might infringe on another’s patent, consider having your patent attorney conduct a “freedom-to-operate” (FTO) search beforehand.

 

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Indianapolis, Ind. – Patent attorneys for Novelty, Inc. of Greenfield, Ind. NoveltyIncLogo.JPGfiled a declaratory judgment suit against Margaret Rothschild of Sherman Oaks, Calif. seeking a judgment that Novelty’s “Mohawk Monkey” does not infringe Rothschild’s Design Patent No. D501,897 (the “‘897 Patent”) which has been issued by the U.S. Patent Office.

Novelty specializes in the distribution and sale of toys and novelty items.  One of its products is a plush toy sold under the name “Mohawk Monkey.”  Rothschild, via a patent attorney, contacted Novelty in March 2013 and asserted that the Mohawk Monkey infringed her patent.  She insisted that Novelty cease all sales of its Mohawk Monkey and demanded payment for damages caused by the alleged infringement.  Rothschild indicated that a refusal to comply would be met with vigorous litigation.

In its declaratory judgment action, filed in the Southern District of Indiana, Novelty asserts that its Mohawk Monkey is significantly different from the design claimed in Rothschild’s ‘897 Patent and that an ordinary observer would not be deceived.  Novelty asks for a declaration that its Mohawk Monkey does not infringe the ‘897 Patent, a declaration that the Patent is unenforceable and/or invalid, a finding that the case is exceptional and, pursuant to that finding, an award to Novelty of its reasonable attorneys’ fees.

Practice Tip: Design-patent litigation seems to be increasingly “fashionable.”  The expected players, such as technology innovators, are seeking protection for their goods under design-patent protection as they traditionally have.  (See, e.g., Apple Inc. v. Samsung Electronics Co., Ltd.)  However, other less-traditional users of design patents are also beginning to see the value of a design patent in protecting their intellectual property.  For example, the fashion industry has historically found little use for design patents, as the time needed to obtain such a patent usually exceeds the relatively short lifespan of various fashions, which typically change season to season.  However, that is changing.  (See, for example, the dispute between Spanx and Yummie Tummie.)  In addition, as a result of the recent America Invents Act, individuals with grievances are no longer limited to filing suit; they can now also ask the Patent Office whether patents in dispute are valid.  The central provisions of the Act went into effect on March 16, 2013.

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Indianapolis, IN – Trademark lawyers for Royal Purple, LLC of Indianapolis, Indiana sued Liqui Moly GmbH of Ulm, Germany in the Southern District of Indiana alleging trademark infringement for selling purple automotive lubricants.

Thumbnail image for Thumbnail image for Royal Purple Logo.JPGAt the center of this litigation is the right to use the color purple.  Royal Purple claims it has sold lubricants for more than 20 years and has trademarked the color purple.  It owns several federal trademark registrations for the color purple as applied to lubricating oils for automotive, industrial and household uses.  Among the trademarks are U.S. Registration Nos. 2,691,774; 2,953,996 and 3,819,988 which cover the following:

 

Thumbnail image for Thumbnail image for Oil Bottle-2691774.JPG

PurpleCylinder3819988.JPGSquare2953996.JPG

It also owns multiple trademarks incorporating the word “purple” as applied to various goods.  These trademarks are registered with the US Trademark Office.  Purple was chosen for its association with royalty.  (Historically, purple dye was so expensive to produce that it was used only by royalty.)  Royal Purple’s purple-identified lubricant products are sold in over 20,000 retailers in the United States and Royal Purple claims a strong secondary meaning and substantial goodwill in its trademark as a result of this use.

Liqui Moly GmbH Logo.JPGLiqui Moly sells Liqui Moly and Lubra Moly brand motor oil, both of which have packaging that is supposedly purple prior to sale.  Royal Purple alleges that Liqui Moly’s use of the color purple in conjunction with the sale of motor oil is likely confuse consumers.   According to Liqui Moly’s website, its products are sold in a variety of different containers:

 

Moly2.JPGRoyal Purple also alleges that Liqui Moly’s use is a purposeful attempt to trade upon Royal Purple’s trademark and that Liqui Moly’s use will dilute the “distinctive quality” Royal Purple’s trademarks.  Finally, it alleges that Liqui Moly’s use removes from Royal Purple its ability to control the quality of products and services provided under Royal Purple’s trademark, by placing them partially under the control of Liqui Moly, an unrelated third party.

The federal claims include trademark infringement, unfair competition and dilution under the Lanham Act; Royal Purple has also alleged dilution, trademark infringement, unfair competition and unjust enrichment under Indiana common law.  Royal Purple seeks a preliminary and permanent injunction, the destruction of all allegedly infringing inventory, treble damages, costs and attorneys’ fees.

Practice Tip: Color can serve as a useful identifier of the source of goods to consumers.  The courts, however, have had to draw some narrow lines to balance the various interests.  On the one hand, companies often invest significant amounts of money in promoting their brands and color is frequently a component of that promotion.  On the other hand, there are a limited number of colors – and an even more limited number of colors that are pleasing and appropriate for any given type of product – and courts are wary of providing a monopoly on any given color to any one company.  After all, if such a monopoly is first provided to one company, all too soon the entire spectrum may be spoken for.
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Contact Information
Indiana Intellectual Property: IP Litigation, Patents, Trademarks, Copyrights
  • Seventh Circuit
  • Northern District of Indiana
  • Southern District of Indiana
Paul B. Overhauser
Overhauser Law Offices, LLC
Greenfield
18 E Main St #202
Greenfield, IN 46140
Phone: 317.467.9100
Fax: 866.283.8549
Indianapolis
101 W Ohio St #2000
Indianapolis, IN 46204
Phone: 317.891.1500
Fax: 866.283.8549

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