Indiana Intellectual Property Law News

November 21, 2018

Indiana Supreme Court issues Opinion in Daniels vs. FanDuel, Inc. Right of Publicity Case

In the Opinion written by Justice David, the Indiana Supreme Court concluded Indiana’s right of publicity statute contains an exception for material of newsworthy value that includes online fantasy sports operators’ use of college players’ likenesses for contests.

The matter of Akeem Daniels, Cameron Stingily, and Nicholas Stoner vs. DraftKings, Inc. and FanDuel, Inc. was initiated as a class action complaint in Marion County alleging that the Defendants were promoting and operating their online fantasy sports contests using the Plaintiff’s names and likenesses without their consent and thus violated their right of publicity under Indiana law. The Defendants removed the case to the U.S. District Court for the Southern District of Indiana and moved to dismiss. The District Court dismissed the case and the Plaintiffs appealed to the United States Court of Appeals for the Seventh Circuit, which certified a question of Indiana law to the Indiana Supreme Court.

The certified question from the Seventh Circuit Court of Appeals asked, “[w]hether online fantasy-sports operators that condition entry on payment, and distribute cash prizes, need the consent of players whose names, pictures, and statistics are used in the contests, in advertising the contests, or both.” All the Plaintiffs were collegiate student-athletes at different times from 2014-2016. Their statistics, names, and images were used by Defendants in their fantasy sports competitions to allow consumers to build their ideal fantasy team within a capped salary based on artificial prices for each player. The player’s performance translated to a point value determined by Defendants and consumers accumulated these points to become eligible to win cash prizes.

November 14, 2018

Indiana Cable/Satellite TV Litigation: Joe Hand Promotions Prevails in Suit for Unlawful Interception and Broadcast

By Overhauser Law Offices, LLC

Indianapolis, Indiana – In April of 2018, Attorneys for Plaintiff, Joe Hand Promotions, Inc., of Feasterville, Pennsylvania, filed suit in the Southern District of Indiana alleging that Defendants, The Anchor Lounge, LLC, d/b/a The Anchor Lounge, of Muncie, Indiana, and Randy Phillips, an individual residing in Delaware County, Indiana, infringed its rights in the “Ultimate Fighting Championship® 207: Nunes v. Rousey” (the “Program”). Plaintiff sought statutory damages, attorney’s fees, interest, and cost of suit. On October 25, 2018, the court entered default judgment in the Plaintiff’s favor.

Joe Hand is in the business of licensing and distributing pay-per-view sporting events to commercial locations. In their Memorandum of Points and Authorities in Support of their default motion, they claim that Defendants realized a profit of $1,155.00 by not paying the approximate licensing fee they would have paid if they had contracted with Joe Hand. Plaintiffs have filed multiple lawsuits in Indiana and across the nation against commercial establishments that have not contracted with them to exhibit pay-per-view programs, such as the Program in this case, seeking damages under 47 U.S.C. §§ 553 and 605.

While Plaintiff has received default judgments in two separate cases in Indiana this week, the Southern and Northern District Courts awarded the damages in two different manners. For instance, the Southern District in this case awarded Joe Hand the full requested amount of $41,570.00. The Judge in the Northern District, however, parsed out the specific amounts due under the statutes and reduced the award amount requested by more than half. This shows that judges are able to use their discretion in awarding damages and do not have to award the full amount requested just because the defendant did not appear, but they may if they believe the amount requested is sufficient.

November 12, 2018

Indiana Trademark Litigation: Indiana University Sues Mid-America Publishing for Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, The Trustees of Indiana University of Bloomington, Indiana, filed suit in the Southern District of Indiana alleging that Defendants, Mid-America Publishing, Inc., of Spencer, Indiana and Terry R. Self of Spencer, Indiana, infringed its rights in United States Trademark Registration Numbers 1,713,815, 4,912,172, 1,705,521, 2,868,784, 1,728,274, and 4,925,141 (collectively the “IU Marks”). The IU Marks were all instituted at different times, the earliest of which were used as early as 1975, and have been continuously used to date. Indiana University advertises and promotes the IU Marks and has spent a substantial amount of money to make the IU Marks inherently distinctive and easily recognizable. Plaintiff is seeking injunctive relief, judgment including statutory damages, and attorneys’ fees.

As of the date of filing, Mid-America Publishing, Inc. (“Mid-America”) was and had been administratively dissolved since July 15, 2010, according to the Indiana Secretary of State. Mr. Self is the sole officer and owner of Mid-America and as such directs all acts of Mid-America including producing, promoting, and selling posters, calendars, cards, and other printed materials. Previously, Mid-America began selling a poster of the Indiana University (“IU”) Men’s Basketball team with a listing of the games for their upcoming season. These posters included one or more trademarks owned by IU. Mid-America would customize these posters for local companies for them to pass out to as free promotional items.

Up until April 2012, there was an informal understanding between IU and Mid-America regarding the posters and the use of their trademarks. The parties’ informal understanding was formalized in April of 2012 when they entered into a multi-year Marketing and Sponsorship Agreement. The use of the trademarks was non-exclusive and limited, and Mid-America agreed not to use any student-athlete’s name or likeness without advance written approval from IU’s Compliance Officer. Mid-America produced and sold the posters in accordance with this Agreement up until May 2, 2016 when IU informed Mid-America that it would not continue licensing to Mid-America. The term of the Agreement was extended by one year in which Mid-America was allowed to produce the poster for the 2016-2017 season, after it received approval for the artwork from IU.

While IU photographs its student-athletes for promoting its athletic programs and events, it has a policy to prohibit any profits being made from the use of a student-athlete’s name, image, or likeness by IU or any third party. IU filed an expedited application with the United States Copyright Office to register their 2017-2018 IU Student-Athlete Photographs on October 3, 2018. The application has been registered as VA0002121460, but a Certificate of Registration had not been received by the Plaintiff as of the filing of the Complaint.

On October 9, 2017, Mr. Self on behalf of Mid-America, submitted an Application for License Agreement to IU to use the IU Marks in producing the 2017-2018 Mid-America IU Basketball Poster. The Application did not request to use any student-athlete names or likenesses, and the Trademark License Agreement provided by IU for consideration did not contain any license for the same. Mid-America executed the Trademark License Agreement on October 28, 2017. IU did not execute the agreement as it learned that Mid-America was already selling unapproved 2017-2018 IU Basketball Posters including the IU Marks, IU Student-Athlete Photographs, and the names of the student-athletes. After numerous attempts to contact Mid-America to resolve the situation, IU contacted the printers that Mid-America fraudulently induced to print the unapproved posters. The printers ceased printing the posters, agreed to destroy any they had remaining in their possession, and gave a quantity for how many they had already printed and delivered to Mid-America.

Despite all of the communication that was ignored by Mid-America for the 2017-2018 IU Basketball Poster production, Mid-America began producing and offering for sale its 2018-2019 version on August 29, 2018. Further, they are producing a Hoops Hysteria Handbook, which includes the schedule of each Division 1 college in Indiana, including IU’s. The Handbook does contain IU Student-Athlete Photographs and is offered for “free” with each Mid-America IU Basketball Poster, but advertises may pay for their advertisement to be printed on the back for $0.20 per booklet. As such, IU is claiming, trademark infringement and counterfeiting, false and deceptive labeling, unfair competition, and copyright infringement.

November 7, 2018

Patent Office Issues 208 Patents To Indiana Citizens in October 2018

By Overhauser Law Offices, LLC

The U.S. Patent Office issued the following 208 patent registrations to persons and businesses in Indiana in October 2018, based on applications filed by Indiana patent attorneys:

Overhauser Law Offices, the publisher of this site, assists with US and foreign patent searches, patent applications and assists with enforcing patents via infringement litigation and licensing.

	Patent No.	Title
1	D0832139	Truck dump body
2	D0832035	Cup bottom
3	10116655	Hybrid data managed lock system
4	10116386	Methods for determining receiver coupling efficiency, link margin, and link topology in active optical cables
5	10115291	Location-based incontinence detection

November 5, 2018

215 Trademark Registrations Issued to Indiana Companies in October 2018

By Overhauser Law Offices, LLC

Overhauser Law Offices the publisher of this site, assists with US and foreign trademark searches, trademark applications and assists with enforcing trademarks via infringement litigation and licensing.

Registration No.	Word Mark	Click To View
5595803	PHA DIRECT	TSDR
5595602	MAKE IT RING	TSDR
5595492	IVYCOVE	TSDR
5597611	TRAINMATE	TSDR
5595083	GROTE GUARDIAN	TSDR
5594998		TSDR
5594558	B	TSDR

October 31, 2018

Indiana Cable/Satellite TV Litigation: Default Judgment Entered Against Matey’s Restaurant & Bar of Michigan City, Indiana

By Overhauser Law Offices, LLC

South Bend, Indiana – In April 2018, Attorneys for Plaintiff, Joe Hand Promotions, Inc. (“Joe Hand”), of Feasterville, Pennsylvania, filed suit in the Northern District of Indiana alleging that Defendants, MBK Holdings, Inc. d/b/a Matey’s Restaurant & Bar, of Michigan City, Indiana, Bryan Konieczny, and Mark Kehoskie, both individuals residing in Indiana, infringed its rights in the “UFC 202: Diaz v. McGregor 2”, “UFC 203: Miocic v. Overeem”, “UFC 205: Alvarez v. McGregor”, “UFC 207: Nunes v. Rousey”, “UFC 208: Holm v. de Randamie”, and UFC 210: Cormier v. Johnson 2” (the “Programs”). Plaintiff sought statutory damages, attorney’s fees, interest, and costs. Default Judgment in favor of Joe Hand Promotions, Inc. was entered as of October 19, 2018.

Joe Hand specializes in exclusively distributing and licensing premier, pay-per-view sporting events, including the Programs, to commercial locations. Plaintiff worked with multiple locations in Indiana to license and distribute the Programs so the commercial establishments could show them to their patrons. Defendants did not contract with the Plaintiff to show the Programs, even though they could have and could have paid the accompanying licensing fee of approximately $1,680.00 for such. Joe Hand asserts that Defendants willfully intercepted the interstate communication of the Programs and unlawfully exhibited them to their patrons within their commercial establishment.

Plaintiff sought judgment against Defendants for wrongful actions violating 47 U.S.C. § 605, or alternatively, 47 U.S.C. § 553. They asked for the maximum statutory damages of $110,000.00 under 47 U.S.C. § 605, or alternatively, the maximum statutory damages of $60,000.00 under 47 U.S.C. § 553, plus attorney’s fees, interest, and costs. While the Judge did enter a default judgment against the Defendants, he did not enter the entire amount of statutory damages requested. Instead, he broke down the total damages of $42,002.00 as follows:

$10,080.00 in statutory damages under 47 U.S.C. § 605(e)(3)(C)(i)(II);
$30,240.00 in additional damages under 47 U.S.C. § 605(e)(3)(C)(ii);
$562.00 in attorney’s fees;
$400.00 in costs; and
66% post-judgment interest.

Many times in litigation, judges award the entire amount sought in the event of a default judgment, but the Judge in this case took the time to parse out damages under the statutes.

October 25, 2018

Indiana-Based Heartland Consumer Products LLC Settles Trademark Lawsuit Against IHOP and Applebee’s Restaurants

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Heartland Consumer Products LLC and TC Heartland LLC (collectively “Heartland”), of Carmel, Indiana, filed suit in the Southern District of Indiana in April of 2017 alleging that Defendants, DineEquity, Inc., Applebee’s Franchisor LLC, Applebee’s Restaurants LLC, Applebee’s Services, Inc., International House of Pancakes, LLC, IHOP Franchisor LLC, IHOP Franchising LLC, and IHOP Franchise Company, LLC all of Glendale, California; infringed its rights in some or all of United States Trademark Registration Nos.: 1544079, 3346910; 4172135, 4165028, 4301712, 4172136, 4165029,4122311, 4187229, 4202774, 4230392, 4238101, 4106164, 4664653, and 4744600 (SPLENDA IP”). In addition, at the time they filed their Complaint, HEARTLAND was the owner of the following applications for United States Trademark Registration Serial Nos. 86865337, 87012521, and 87010504, two of which are still “LIVE” trademarks. The suit settled in October 2018.

SPLENDA® is a low-calorie sweetener using sucralose that is a compound made from sugar. With the FDA approving sucralose for use in food products and food preparations in 1998, SPLENDA® was at the forefront of the market coming out in 1999 and launching in retail stores across the United States in September 2000. SPLENDA® is well-known and famous for their yellow-colored packaging which has been used continuously since the brand began using that color.

Plaintiffs claimed that the Defendants misappropriated the SPLENDA IP to deceive consumers and were actually providing consumers with a lower-quality product from China. For instance, some people working at IHOP and Applebee’s restaurants would orally affirm to customers that the yellow packets provided did in fact contain SPLENDA ® even though they did not. Plaintiffs alleged in their Complaint trademark infringement, false designation of origin, unfair competition, and trademark dilution. They were seeking preliminary and permanent injunctive relief, corrective advertising damages, Defendant’s profits, and costs among other damages. The Parties have settled outside of court as of October 2018.

October 22, 2018

Summary Judgment Entered for Defendant in Richard Bell’s Indianapolis Skyline Photo Copyright Infringement Suit

By Overhauser Law Offices, LLC

Richard N. Bell of McCordsville, Indiana filed a copyright infringement suit in the Southern District of Indiana alleging that David N. Powell, the executive director of the Indiana Prosecuting Attorneys Council (“IPAC”) infringed the “Indianapolis Nighttime Photo” of Richard Bell by using the photograph in a Spring Conference Brochure for the Midwest Regional Network for Intervention with Sex Offenders (“MRNISO”). Last week the Southern District of Indiana District Judge Tanya Walton Pratt denied Bell’s Motion for Summary Judgment and granted Powell’s and MRNISO’s Cross-Motions for Summary Judgment in the case.
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October 17, 2018

Southern District of Indiana Appoints New Judge

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Former federal prosecutor and current partner at Faegre Baker Daniels LLC, J.P. Hanlon, has been confirmed by the U.S. Senate as a new federal judge in the Southern District of Indiana. Hanlon has experience in investigation and enforcement proceedings conducted by the U.S. Department of Justice and other government agencies, as well as representing clients in high-stakes civil litigation.

After graduating magna cum laude from Valparaiso University School of Law in 1996, Hanlon went on to clerk for the Honorable Robert L. Miller Jr. in the U.S. District Court for the Northern District of Indiana. Hanlon is a member of the Criminal Justice Act Panels for both the Seventh Circuit Court of Appeals and the U.S. District Court for the Southern District of Indiana. He also supports the local Indiana University Robert H. McKinney School of Law by participating on the Wrongful Conviction Clinic Advisory Committee. Hanlon will be a great asset to the Southern District as they have been trying to recover from a heavy workload after a longtime judge took senior status in 2014.

October 15, 2018

Indiana Patent Litigation: Eli Lilly and Company Seeking Declaratory Judgment in Patent Ownership Case

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Eli Lilly and Company of Indianapolis, Indiana, filed suit in the Southern District of Indiana for a declaratory judgment against Defendant, Adocia S.A. of Lyon, France, who is claiming inventorship and ownership rights in Lilly’s United States Patent No. 9,901,623 B2 (“the ‘623 Patent”) for “Rapid-Acting Insulin Compositions”, and United States Patent No. 9,993,555 B2 (“the ‘555 Patent”) for “Rapid-Acting Insulin Compositions”. Plaintiff is seeking declaratory judgment, attorneys’ fees and costs, and further relief the Court determines to be just and proper.

Lilly began its research that led to the ‘623 and ‘555 Patents at least as early as 2011. Right around that same time, Lilly and Adocia began negotiating an agreement to develop an ultra-rapid insulin “URI” formulation using Adocia’s BioChaperone® technology. Adocia and Lilly entered into a collaborative research and license agreement on December 13, 2011. The two companies signed a confidentiality agreement on November 21, 2012. By July 2013, the original agreement was terminated.

The Parties entered into a second confidentiality agreement on December 16, 2013 and a second collaborative research and license agreement on December 18, 2014 using different BioChaperone® molecules than the first agreement. The second research collaborative continued until January 2017. While Lilly was a part of the research collaborative, they were also running a separate internal program to develop a URI with specific concentrations of citrate for a more rapid time action profile and specific excipients to maintain the stability for the composition. Unlike this research, the collaborative research focused only on URI products containing BioChaperone® molecules. The separate internal research led to the ‘623 Patent issuing on February 27, 2018 and the ‘555 Patent issuing on June 12, 2018.