Indiana Intellectual Property Law News

October 28, 2011

Southern District Court Grants Partial Summary Judgment for Eli Lilly and Company in Dispute With Parkinson’s Disease Drug Licensee Over Products Liability Lawsuit

Indianapolis. IN – Judge Tanya Walton Pratt of the Southern District of Indiana has granted a Partial Summary Judgment for Eli Lilly and Company of Indianapolis, Indiana in a dispute with licensee Valeant Pharmaceuticals International of Irvine, California involving the costs associated with product liability lawsuits over Lilly’s Parkinson’s disease drug.

Lilly began selling a product called Permax, which is used to treat Parkinson’s disease, in 1989. In March 2002, Lilly entered an exclusive licensing agreement with Amarin Corporation allowing Amarin to market, use and sell Permax in the United States, including the licensed use of Permax trademarks. The parties’ license agreement prohibited either party from assigning rights or obligations under the contract to any third party absent written consent of the other party. In 2004, Valeant purchased the assets of Amarin, including the rights under the Permax license. Lilly provided written consent to this assignment in a letter agreement that also addressed costs and indemnification relating to defending a pending products liability lawsuit involving Permax. The present lawsuit was filed when a dispute arose between Lilly and Valeant over the costs and indemnification relating to the products liability lawsuit. After settlement of one of the products liability cases, Valeant refused to indemnify Lilly. Lilly sought a declaratory judgment requiring Valeant to pay certain litigation and settlement costs relating to the products liability suit.

In the court’s decision, Judge Pratt found that the parties’ contract was clear and unambiguous in providing a schedule for sharing costs associated with the product liability suit. Thus Valeant must pay Lilly pursuant the schedule in the contract.

Practice Tip: This case illustrates that license agreements, which grant the licensee limited rights to use the intellectual property, owned by the licensor, can come with additional responsibilities and obligations. It is important to have an intellectual property attorney draft and review license agreements to ensure that the parties understand what is included.
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October 27, 2011

Minka Lighting Sues Fanim Industries, Fanimaton, Inc, and Lowe’s for Patent Infringement of Ceiling Fans

By Overhauser Law Offices, LLC

Indianapolis, IN – Patent lawyers for Minka Lighting, Inc. of Corona, California filed a patent suit in the Southern District of Indianaalleging Fanim Industries, Inc. of Zionsville, Indiana, Fanimation, Inc. of Indianapolis, Indiana and Lowes Companies, Inc. of Mooresville, North Carolina infringed Patent no. 7,481,626 Ceiling fan with integrated fan blades and Housing, Patent no. D535,387 Ceiling fan blade assembly, and Patent no. D535,388 Ceiling fan blade which have been issued by the US Patent Office.

Minka manufactures, markets and sells home products including ceiling fans, and Fanim is a competitor in the ceiling fan industry. Lowe’s distributes and markets ceiling fans and is also a competitor of Minka. The complaint alleges that Fanim and Lowe’s sell a line of ceiling fans called the “Goldey” that infringes the ‘626, ‘387 and ‘388 patents. The complaint makes three claims of patent infringement and seeks damages, an injunction, attorney fees and costs.

Practice Tip: According to PACER, Minka sued Fanimation in the Southern District of Indiana in 2009 also alleging that Fanimation infringed the ‘626 patent. In the 2009 case, the parties agreed to dismiss the case with prejudice. The stipulation of dismissal referenced that Minka was in the process of applying for re-issue of the ‘626 patent.
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October 26, 2011

Copyright Infringement Suit Filed Over Course Materials for “Recovering Money From Taxing Authorities”

By Overhauser Law Offices, LLC

Hammond, IN – Copyright attorneys for Abandoned Property, LLC have filed a copyright infringement suit against Netcentric Publishing. LTD. and Stacie Kellams and others. The lawsuit alleges that Abandoned Property developed a course called “We’re hooked on overages” that teaches people how to recover amounts owed to them by various taxing authorities. Allegedly, the Defendants “purchased a copy of Plaintiff’s phenomenal course in January, 2010, but did so under what appears to be an alias, “Luke Matthews.””The complaint then alleges that the Defendants began selling a competing Course that was “identical” to the Plaintiff’s Course for $997.00 each.

The suit alleges various causes of action including Copyright Infringement, Misappropriation of Trade Secrets, Breach of Contract, Fraudulent Inducement, Declaratory Judgment and “Vicarious Liability.”

This may be a retaliatory suit. On July 18, 2011, Netcentric Publishing’s lawyer filed a suit against Abandoned Property and Joe Kaiser in Austin, Texas asserting claims for business disparagement, defamation, fraud, and tortious interference with existing and prospective business relationships. That case is in the Western District of Texas, Cause No. 1:11-cv-602.

Practice Tip: Plaintiffs complaint appears to suffer from several defects. It does not explicitly allege that the Plaintiff owns a Copyright Registration for its work, which is a prerequisite to filing a copyright infringement suit pursuant to 17 U.S.C. § 412. Also, it will be interesting to see how the Plaintiff can contend that its Course is a “trade secret,” in view of the fact that they make their Course available for purchase over the Internet. It is also not evident how the Plaintiff expects to assert personal jurisdiction over the defendants, who are in Texas.

October 25, 2011

American Petroleum Institute Sues Tailor Made Oil Co., LLC for Trademark Infringement of Engine Oil Quality Certification Mark

By Overhauser Law Offices, LLC

Indianapolis, IN – Trademark lawyers for American Petroleum Institute (“API”) of Washington, D.C. filed a trademark infringement suit in alleging Tailor Made Oil Co., LLC of Cambridge City, Indiana, TMO Oil, LLC of Fishers, Indiana, Circle Town Oil of Fishers, Indiana, William R. Selkirk and Rebecca Selkirk of Cambridge City, Indiana, Lincoln R. Schneider of Fishers, Indiana and Jafarikal Corporation of Rosedale, New York infringed trademark registration no. 1,864,428 for the AMERICAN PETROLEUM INSTITUTE CERTIFIED STARBURST registered with the US Trademark Office.

The trademark at issue is a starburst mark used by API to designate that products have met certain quality standards, which are monitored and enforced continuously. The complaint alleges that the individual defendants own and operate the corporate defendants as an interrelated business that offers low quality engine oil for sale. In March 2010, Tailor Made obtained certification for its engine oil, and a one year license to use the starburst mark on its products. In order to renew the one year license, Tailor Made was required to report its sales and to pay a renewal fee to API. Tailor Made failed to comply with these requirements and has continued to sell products bearing the trademarked starburst without authorization.

The complaint also states that API obtained a sample of the engine oil in April 2011 and found that the oil did not meet API’s quality standards. API claims that Tailor Made and Circle Town maintain websites that falsely advertise that their engine oil meets the API quality standards. Jafarikal is a distributor of Tailor Made Oil products and also advertises that Tailor Made’s products meet or exceed API’s standards. API has made claims of trademark counterfeiting under the Lanham Act, trademark infringement, false advertising, unfair competition, trademark dilution, breach of contract, common law trademark infringement and unfair competition, fraud and forgery. API is seeking an injunction, statutory damages of $1,000,000 per type of good sold, seizure and destruction of any infringing products, actual and treble damages, attorney fees and costs.

Practice Tip: Here, API has cited 15 U.S.C. § 1117(c)(2) for its request of statutory damages for each class of goods sold with a counterfeit mark. This section of the Lanham Act caps damages at $2,000,000 for willfully selling, offering, or distributing a type of good with a counterfeit mark.
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October 24, 2011

Saeilo Sues Jacobson Hat Co. in Hamilton County for Trademark Infringement of Toy Tommy Guns: Case Removed to Federal Court

By Overhauser Law Offices, LLC

Indianapolis, IN – A trademark infringement case that was originally filed in Hamilton County Superior Court has been removed to the Southern District of Indiana. On September 14, 2011 trademark lawyers for Saeilo Enterprises, Inc. Pearl River, New York filed a trademark infringement suit in Hamilton County alleging Jacobson Hat Company, Inc. of Scranton, Pennsylvania infringed trademark registration no.2,885,628 for the words TOMMY GUN registered with the US Trademark Office and 20090707-13956, 20090707-13957 and 20090707-13958 for TOMMY GUN design registered trademarks in the State of Indiana State. Trademark attorneys for Jacobson filed notice of removal to have the case heard by the federal Southern District of Indiana, rather than the Hamilton County court, based upon the fact that Saeilo makes federal law trademark infringement claims.

The complaint alleges that Jacobson has distributed, advertised or sold toy guns bearing the Tommy Gun trademarks without Saeilo’s authorization. The complaint does not reveal any details of the allegedly infringing sales, advertising or distribution. However, a print-out of Jacobson’s website, dated October 2009 was attached to the complaint. The complaint makes claims of trademark infringement, trademark dilution, false designation of origin, false advertising, trade dress infringement, common law trademark infringement, unfair competition, counterfeiting, and Indiana state law trademark infringement.

Practice Tip: This is the third trademark infringement case in the past several months that Saeilo filed in Hamilton County court, only to be removed to federal court. In all three cases, Continental Enterprises, which is an Indianapolis corporation that claims to “non-traditional strategies to combat infringers domestically and around the globe and provide effective solutions for seemingly intractable IP problems,” has represented Saeilo. Indiana Intellectual Property Law and News has blogged about the two other cases: one was against BuzzBee Toys and the other was against Scottwerx. According to PACER, trademark attorneys have reached a settlement in the Buzz Bee case. The terms of the settlement are undisclosed. The Scottwerx case is still pending.
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October 20, 2011

Federal Circuit Court Grants Injunction in Patent Infringement Suit Over Windshield Wiper Blade Technology

By Overhauser Law Offices, LLC

Washington, D.C. — The Honorable Circuit Judges Kathleen O’Malley, Jimmie V. Reyna and William C. Bryson of the U.S. Court of Appeals for the Federal Circuit have issued a permanent injunction in a patent infringement lawsuit, overruling the denial of the injunction by the District Court of Delaware. Patent lawyers for Robert Bosch LLC of Farmington Hills, Michigan, who had filed a patent infringement lawsuit in the District Court of Delaware alleging that Pylon Manufacturing Corporation of Deerfield Beach, Florida, infringed patent no. 6,292,974 Glass wiper blade for motor vehicles, patent no. 6,675,434 Wiper blade for the glass surfaces of motor vehicles with an elongated, spring-elastic support element, and patent no. 6,978,512 Wiper blade for cleaning vehicle windows, which have been issued by the US Patent Office.

The technology at issue is a beam-type automobile windshield wiper blade that perform better than traditional windshield wipers. Pylon is a competitor windshield wiper blade manufacturer. Patent attorneys for Bosch filed this patent infringement lawsuit in 2008 in the District Court of Delaware. On March 31, 2010, the district court granted Pylon’s motion for summary judgment of noninfringement of the ‘512 patent, but denied summary judgment of noninfringement of the two other patents. The remaining issues were tried by jury, which found that claim 13 of the ‘974 and ‘434 patents had been infringed. Bosch then filed a motion for a permanent injunction. The district court denied the permanent injunction, and this ruling is the subject of the Federal Circuit court opinion today.

The Federal Circuit reversed the district court and issued the injunction. The court found that the district court made legal errors in applying the standard for a permanent injunction. The district court also erred in concluding that Bosch had not demonstrated an irreparable harm. Bosch introduced evidence of loss of market share and access to potential customers. The Federal Circuit found that this evidence did demonstrate an irreparable injury. Judge William C. Bryson dissented in part, stating he would have remanded the case to the district court to appropriately apply the correct standard.

Practice Tip: In this case, the Federal Circuit affirmed the standard for granting a permanent injunction in a patent infringement case. The patentee must make a four-part showing:

(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hard-ships between the plaintiff and the defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a per-manent injunction.

eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006). Prior to the eBay case, an injunction normally would issue when there a finding that a patent is valid and has been infringed. However, the Federal Circuit Court’s opinion today seems to bolster the availability of injunctions when patent infringement has been found.

October 19, 2011

Century 21 Sues Realty One Limited for Trademark Infringement of Century 21 Trademark and Service Mark

By Overhauser Law Offices, LLC

Terre Haute, IN – Trademark lawyers for Century 21 Real Estate LLC of Parsippany, New Jersey filed a trademark infringement suit in the Southern District of Indiana alleging Realty One Limited of Sullivan, Indiana and Steven Ault of Indiana infringed Century 21’s trademarks and service marks. Century 21 has numerous trademarks and services marks registered with the US Trademark Office

According to the complaint, Mr. Ault is the proprietor of Realty One, which is alleged to be doing business as Century Twenty-one Realty One in Sullivan, Indiana. The complaint states that beginning in 1984, Realty One began operating a Century 21 franchise in Sullivan, Indiana. The franchise agreement allowed Realty One to use the Century 21 trademarks and services marks and required Realty One to pay Century 21 a royalty and advertising fees as a percentage of the franchise’s gross sales. The agreement also allowed Century 21 to audit the records of Realty One. Mr. Ault personally guaranteed the franchise agreement. Century 21 terminated the franchise agreement effective July 2011, alleging that Realty One had breached the agreement by failing to pay amounts due to Century 21, failing to report and pay on closed transactions and failing to pay early termination fees. Pursuant the agreement, Realty One was to cease using Century 21 trademarks and services marks, however, it is alleged that Realty One continued to use them both in Sullivan, Indiana and in online marketing. It is also alleged that Realty One has created a new logo that is confusingly similar to Century 21’s trademark. Trademark attorneys for Century 21 have made claims of trademark infringement, false designation of origin/false advertising, trademark dilution, common law unfair competition, breach of contract, audit demand, and unjust enrichment. Century 21 seeks an injunction, damages, an accounting, attorney fees and costs.

Practice Tip: Normally a franchisee must immediately stop using and return all items with trade or services marks if the franchise agreement is terminated. Here, the franchise agreement appears to have lots of “teeth” to be used against a non-complying franchisee. The contract appears to allow Century 21 to collect liquidated damages as well as costs and attorney fees with an 18% interest rate on delinquent payments. The contract also required Mr. Ault to personally guarantee these obligations and to be personally liable for costs and attorney fees. Century 21 has been aggressive in defending its trademark rights. Trademark attorneys for Century 21 filed a similar suit earlier this year in the Northern District of Indiana.
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October 18, 2011

Federal Circuit Advisory Council Unveils a New Model Order for E-Discovery in Patent Cases

By Overhauser Law Offices, LLC

Washington, D.C. – The Federal Circuit Advisory Counsel has unveiled a new model order for e-discovery in patent infringement cases. The model order is intended to assist litigants in patent cases in dealing with electronically stored information. The Counsel notes that e-discovery is often overbroad and expensive. The Counsel noted that the advancing technology and increased reliance upon it makes e-discovery often necessary. Text of the model order is below.

Practice Tip: The Seventh Circuit Court of Appeals, which has appellate jurisdiction over the Southern District of Indiana and the Northern District of Indiana, has already an
“E-discovery” Pilot Program, which has the goal of “the early resolution of disputes regarding the discovery of electronically stored information (“ESI”) without Court intervention.”
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October 17, 2011

Purdue Ordered to Disclose IP Address of Alleged Downloader Of Copyrighted Adult Video

By Overhauser Law Offices, LLC

Lafayette, IN – Magistrate Judge Andrew Rodovich of the Northern District of Indiana has denied a Motion to Quash Subpoena served on Purdue University of Lafayette, Indiana by Third Degree Films, Inc. of California as part of a copyright infringement lawsuit in the Northern District of California. In its suit in the Northern District of California, copyright attorneys for Third Degree alleged that 2,010 John Does infringement an adult video called “Illegal Ass 2” without its consent in violation of its copyright. Third Degree did not know the identities of the persons who allegedly illegally downloaded the copyrighted work, but did have the internet protocol (I.P.) address. Third Degree has served subpoenas on internet services providers attempting to uncover the identities of the subscribers with the specified I.P. addresses. One of these John Does, John Doe 26, was a nineteen-year-old student at Purdue University. John Doe 26 filed a motion to quash the subpoena served on Purdue in the Northern District of Indiana.

John Doe 26 argued that the subpoena should be quashed because it seeks privileged information and also is unduly burdensome. The court disagreed. Citing similar cases, the Court found that John Doe 26 does not have standing to challenge the subpoena as unduly burdensome because John Doe 26 is not required to do anything to comply. Rather, it is the internet service provider upon whom a burden is imposed.

John Doe 26 repeatedly argued that there was a high risk that he did not illegally download the video at issue here. He argued he had this I.P. address at his dorm room at Purdue, and that there was a high risk that his roommate or another resident of the dormitory downloaded the infringing video. He also argued there was a high risk the information obtained through the subpoena would damage John Doe 26’s reputation. The court noted other courts have found that these arguments did not create a privilege justifying quashing the subpoena. The decision and issues here are similar to recent activity in the First Time Video case in the Southern District of Indiana.

Practice Tip: John Doe 26 states he filed this motion to quash in the Northern District of Indiana because the California District Court does not have jurisdiction over John Doe 26. John Doe 26 states California does not have jurisdiction because he has not been served with a complaint or summons and lacks personal jurisdiction. The court did not address jurisdiction in this order.
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October 14, 2011

French Lick Resort and Casino Sued by Colorado Artist for Copyright Infringement in Commissioned Artwork

By Overhauser Law Offices, LLC

Indianapolis, IN – French Lick Resorts and Casino Group has been sued in the Southern District of Indiana by Pamela Mougin for Copyright Infringement, violation of the Visual Artist Rights Act (17 USC § 106A), Breach of Contract and Unjust Enrichment. The West Baden Hotel is a historic hotel in Southern Indiana that was extremely popular in the early 1,900’s. However, it fell in to disrepair. In the 2,000’s it was restored in connection and converted into a hotel / casino in an effort to revitalize the economically depressed region.

Copyright attorneys for Ms. Mougin allege that in 2006, she was commissioned by a Colorado Interior Design firm, Worth Group, to create “an archival hand-painted canvas series of angels with topography of story for the resorts West Baden Hotel, featuring angels from an existing work in the dome of the resorts hotel.”

Later, in November, 2007, Mougin claims she entered into an agreement with the hotel whereby, in exchange for $2,800 she granted permission on a “one time print agreement only” to make “large prints to be displayed at the resort West Baden Hotel.” Allegedly, in the agreement, the hotel acknowledged Mougin’s Copyrights in the Works.

Copyright lawyers for Mougin further claim that on October 13, 2008, she discovered that additional “3D relief productions of the Works were present in the upper lobby mezzanine of the hotel” and at least 48 outdoor banners hanging on light posts. She alleges she notified the French Lick Resort of Copyright Infringement that same day.

The lawsuit was filed October 11, 2011, apparently two days before the 3 year Copyright statute of limitations would have run on the copyright claim.

Practice Tip: This lawsuit raises several interesting issues, among them, the scope of Copyright in Ms. Mougin’s work, since the complaint alleges that she made her angels from copies of what was preexisting at the hotel. The complaint also raises issues of the interplay between Copyright Infringement and Breach of Contract, as Mougin admits that the hotel had rights in the Copyrighted Works, although Mougin claims the scope of that license has been exceeded. Also, it appears that Ms. Mougin’s claim for Unjust Enrichment is preempted by the Copyright Act, as its only factual basis appears to be acts that would constitute copyright Infringement. It is unclear why Worth Group is named a Defendant; as no specific actions of it are implicated.
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