Indiana Intellectual Property Law News

March 31, 2016

Copyright Litigation: Authors and Authors Guild Ask to be Heard by Supreme Court in Copyright Infringement Lawsuit Against Google

Washington, D.C. – Following a ruling by the Second Circuit Court of Appeals in favor of Google, Inc., the 2005 class-action lawsuit The Authors Guild et al. v. Google, Inc. has headed to the U.S. Supreme Court.

Copyright litigators for Plaintiffs The Authors Guild et al. are asking the high court to hear the lawsuit, which alleges copyright infringement by the publication by Google of Google’s digital book library. Plaintiffs contend that Google, which seeks permission from the owners of the copyrighted works (typically libraries) but not from the authors of the works, has committed massive copyright infringement. Amicus curiae briefs have been filed with the Court by numerous parties. Among them are several notable authors including Malcolm Gladwell, Margaret Atwood, and Steven Sondheim.

Google has defended against the allegations by arguing, inter alia, that its use of the copyrighted material was permissible as a fair use.

Circuit Judge Denny Chin, sitting by designation, issued the opinion for the Southern District of New York. He agreed with Google that its use of the material was properly classified as a fair use, writing:

In my view, Google Books provides significant public benefits. It advances the progress of the arts and sciences, while maintaining respectful consideration for the rights of authors and other creative individuals, and without adversely impacting the rights of copyright holders. It has become an invaluable research tool that permits students, teachers, librarians, and others to more efficiently identify and locate books. It has given scholars the ability, for the first time, to conduct full-text searches of tens of millions of books. It preserves books, in particular out-of-print and old books that have been forgotten in the bowels of libraries, and it gives them new life. It facilitates access to books for print-disabled and remote or underserved populations. It generates new audiences and creates new sources of income for authors and publishers. Indeed, all society benefits.

The Second Circuit affirmed.

The questions presented by Plaintiffs to the Supreme Court are:

1. Whether, in order to be “transformative” under the fair-use exception to copyright, the use of the copyrighted work must produce “new expression, meaning, or message,” as this Court stated in Campbell and as the Third, Sixth, and Eleventh Circuits have held, or whether the verbatim copying of works for a different, non-expressive purpose can be a transformative fair use, as the Second, Fourth, and Ninth Circuits have held.
2. Whether the Second Circuit’s approach to fair use improperly makes “transformative purpose” the decisive factor, replacing the statutory four-factor test, as the Seventh Circuit has charged.
3. Whether the Second Circuit erred in concluding that a commercial business may evade liability for verbatim copying by arguing that the recipients of those copies will use them for lawful and beneficial purposes, a rationale that has been flatly rejected by the Sixth Circuit.

4. Whether a membership association of authors may assert copyright infringement claims on behalf of its members.

March 30, 2016

Indiana Copyright Law: Lawsuit by Frequent Copyright Litigant Dismissed for Lack of Jurisdiction

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Judge Jane Magnus-Stinson dismissed a lawsuit by Indiana copyright attorney and professional photographer Richard Bell against Defendant Find Tickets, LLC of Alpharetta, Georgia for lack of personal jurisdiction.

In June 2015, Bell sued Find Tickets in the Southern District of Indiana asserting copyright infringement. He stated that the Georgia-based company had published a copyrighted photo on its website, www.findticketsfast.com, without his permission. The photo in question was one that Bell had taken of the downtown Indianapolis skyline. It had been registered by the U.S. Copyright Office under Registration No. VA0001785115.

On behalf of Find Tickets, a copyright lawyer asked the court to dismiss the complaint for lack of jurisdiction, averring that Find Tickets “does not maintain any offices in Indiana, has no employees in Indiana, holds no assets in Indiana, pays no taxes to the state of Indiana, and has no bank or other financial institution accounts in Indiana.” It was further stated that the business was owned by two Georgia residents, neither of whom had ever set foot in Indiana.

The court turned to a constitutional analysis of the due process requirements for personal jurisdiction, as elucidated by the Seventh Circuit in Advanced Tactical Ordnance Sys., LLC v. Real Action Paintball, Inc., 751 F.3d 796, 800-01 (7th Cir. 2014). Citing that appellate case, the district court stated:

Due process is satisfied so long as the defendant had “certain minimum contacts” with the forum state such that the “maintenance of the suit does not offend ‘traditional notions of fair play and substantial justice.'” The relevant contacts are those that center on the relations among the defendant, the forum, and the litigation. However, “[f]or a State to exercise jurisdiction consistent with due process, the defendant’s suit-related conduct must create a substantial connection with the forum State.” Thus, the relation between the defendant and the forum “must arise out of contacts that the ‘defendant himself‘ creates with the forum . . . .” Moreover, although no special test exists for internet-based cases, the Court focuses on whether the defendant has purposely exploited the Indiana market beyond the availability of the website in the forum state. (Citations omitted).

The district court was unpersuaded by Bell’s arguments, opining that the Seventh Circuit precedent set forth in Advanced Tactical “established that a defendant who ‘maintains a website that is accessible to Indiana residents should not be haled into court simply because the defendant owns or operates a website that is accessible in the forum state, even if it is ‘interactive.'”

The court similarly held that, as with Advanced Tactical, Defendant’s sales to residents of the forum state were insufficient to establish personal jurisdiction as it had not been demonstrated that such sales were related to the lawsuit.

Finding no personal jurisdiction over Defendant, the court dismissed the lawsuit without prejudice.

Practice Tip: Overhauser Law Offices, publisher of this blog, represented Defendants Real Action Paintball, Inc. and its president in the appeal to the Seventh Circuit.

March 29, 2016

Indiana Trademark Litigation: Numerous Defendants Accused of Misusing Certification Marks

By Overhauser Law Offices, LLC

South Bend, Indiana – An Indiana trademark attorney for Plaintiffs National Association of Forensic Counselors, Inc. (“NAFC”) and American Academy of Certified Forensic Counselors, Inc. d/b/a American College of Certified Forensic Counselors (“ACCFC”), both of Fort Wayne, Indiana, commenced litigation in the Northern District of Indiana alleging trademark infringement.

Plaintiffs offer certifications, for example “Master Addictions Counselor,” to individuals working with criminal offenders in the fields of criminal justice, corrections, addictions and mental health. Defendants in this litigation include individuals as well as organizations offering such services. They are as follows:

NARCONON INTERNATIONAL of California; NARCONON OF GEORGIA, INC. of Georgia; FRIENDS OF NARCONON INTL. of California; PREMAZON, INC. of California; NARCONON SPRING HILL, INC., d/b/a SUNCOAST REHABILITATION CENTER of Florida; BEST DRUG REHABILITATION, INC. of Nevada; A LIFE WORTH LIVING, INC. d/b/a NARCONON COLORADO – A LIFE WORTH SAVING of Colorado; NARCONON FRESH START, INC. of California; NARCONON SOUTH TEXAS, INC. of Texas; NARCONON EASTERN UNITED STATES, INC. of Virginia; ASSOCIATION FOR BETTER LIVING AND EDUCATION INTERNATIONAL of California; RELIGIOUS TECHNOLOGY CENTER of California; NARCONON FREEDOM CENTER, INC. of Michigan; GOLDEN MILLENNIUM PRODUCTIONS of California; INTERNATIONAL ACADEMY OF SPECIALISTS of California; GREATCIRCLE STUDIOS of Florida; CHURCH OF SCIENTOLOGY INTERNATIONAL of California; ROYALMARK MANAGEMENT of California; ROBERT J. HERNANDEZ of California; ROBERT “BOBBY” WIGGINS of California; JONATHAN BEAZLEY of California; JOSEPH GUERNACCINI of California; PHILIP R. KELLY II of California; THOMAS GARCIA of Florida; CLARK CARR of California; MICHAEL DAPALMA of California; DAVID MISCAVIGE of California; NICHOLAS THIEL of Michigan; DAVID S. LEE of Indiana; RICHARD “MATTHEW” HAWK of Louisiana; MARY RIESER of Georgia; ANTHONY BYLSMA of California; KENNETH POMERANCE of Florida; JAMES “JIM” WOODWORTH of Louisiana; CARL SMITH of California; JONATHAN MROETTI of California; GLEN PETCAVAGE of Colorado; DAPHNA HERNANDEZ of California; LURIA K. DION a/k/a KATHY DION of California; and NARCONON OF NORTHERN CALIFORNIA d/b/a NARCONON VISTA BAY d/b/a NARCONON REDWOOD CLIFFS of California.

As part of its certification program, Plaintiffs utilize a federally registered trademark, which is included in Plaintiffs’ logo:

NAFC and ACCFC allege that Defendants have infringed its trademark, which has been registered by the U.S. Patent and Trademark Office as Federal Trademark Registration No. 3,585,933. Defendants are also accused of misusing Plaintiffs’ certifications and logos.

The following violations of law have been alleged by Plaintiffs:

• Federal Trademark Infringement
• Common Law Trademark Infringement
• Federal Infringement Pursuant to 15 U.S.C. §1125

• Civil Conspiracy

Plaintiffs seek various forms of redress including preliminary and permanent injunctive relief, damages, costs and attorney’s fees.

March 28, 2016

Indiana Trademark Litigation: Great American Bagel Sues Over Sign Modified to Read “Great American Eagle”

By Overhauser Law Offices, LLC

Evansville, Indiana – An Indiana trademark lawyer for Plaintiff The Great American Bagel Enterprises, Inc. (“GAB”) of Westmont, Illinois filed a trademark infringement complaint in the Southern District of Indiana against Defendants United HBA Corporation and Harbhajan Singh, d/b/a The Great American Eagle, both of Evansville, Indiana.

GAB owns, operates and franchises food-products stores known as The Great American Bagel. It owns a trademark for “The Great American Bagel,” Trademark Registration No. 2,015,665, which is comprised of the phrase “The Great American Bagel” with stars and bands. The mark has been registered by the U.S. Patent and Trademark Office.

Defendant United HBA operates a gas station and convenience store, which offers retail food products. Defendant Singh is listed as the President and sole principal of United HBA. GAB contends that United HBA is displaying a sign that had previously been used as signage for a The Great American Bagel store. GAB states that Defendants modified “Bagel” to read “Eagle” by removing the “B” and adding an “E” but that the sign is otherwise unaltered.

GAB alleges infringement of its trademark, stating that Defendants’ use of the modified sign has caused customers to confuse the food products offered by GAB with those offered by Defendants. In this federal lawsuit, filed by an Indiana trademark attorney, the following claims are made:

• Count I: Federal Trademark Infringement
• Count II: False Designation of Origin, False Advertising and Unfair Competition under the Lanham Act Section 43(A)
• Count III: Unfair Competition – Trade Name Infringement
• Count IV: Unfair Competition – Passing Off

• Count V: Unjust Enrichment

GAB seeks equitable relief, damages, including punitive damages; costs and attorney’s fees.

March 25, 2016

Fox News Asserts Broadcast TV Database Infringes Copyright; EFF and Others Claim Fair Use

By Overhauser Law Offices, LLC

San Francisco, California – A media monitoring service that creates a text-searchable database of television and radio content is defending its fair use rights before a federal appeals court. The Electronic Frontier Foundation (“EFF”), New York University’s Technology Law and Policy Clinic, and Public Knowledge urged the court Wednesday to protect this innovative technology–and others that have yet to be developed–from being shut down by copyright infringement claims.

“Search engines and book digitization have proven the enormous social benefits of indexing and archiving the media,” said EFF Staff Attorney Kit Walsh. “This case is the latest in a long line of copyright-based challenges to these important tools, and it should fail just as the others have.”

In this case, Fox News sued a company called TVEyes, claiming the company’s broadcast content database–used by journalists, scholars, and political campaigns to study and monitor the national media–infringed its copyright in its programming. The district court acknowledged that the service is generally a fair use of copyrighted material, but then, in a second ruling, held that some of the features of the TVEyes database could facilitate infringement, including the ability to share links or search by date and time. In a departure from established legal precedent, the court ruled that this was enough to defeat TVEyes’ fair use defense.

March 24, 2016

Indiana Trademark Litigation: Donut Sellers Square Off Over Use of Term “Square Donuts”

By Overhauser Law Offices, LLC

Hammond, Indiana – Trademark lawyers for Plaintiff Family Express Corporation of Valparaiso, Indiana filed a complaint for declaratory judgment of non-infringement and trademark cancellation in the Northern District of Indiana.

The Defendant in this litigation is Square Donuts Inc., which has stores in Terre Haute, Indianapolis, Bloomington and Richmond, Indiana. Defendant owns two registered federal trademarks: SQUARE DONUTS, Trademark Reg. No.4341135 for “café services,” and “SQUARE DONUTS” & Design, Trademark Reg. No. 4341136 for “retail bakery shops.” It also holds an Indiana State trademark for the mark “Square Donuts, Inc.” Both Plaintiff and Defendant sell donuts.

The dispute arose in 2006, when a trademark attorney for Defendant Square Donuts sent a letter to Plaintiff Family Express accusing it of “making square donuts and marketing the same under the name ‘Square Donuts,'” which it asserted was a violation of Defendant’s trademark rights. Legal counsel for Family Express responded that there was no trademark infringement, as “square donuts” was merely descriptive and, thus, could not be registered as a trademark without a showing of acquired distinctiveness. Family Express’ trademark lawyer also noted that the trademark in question was not registered with the U.S. Patent and Trademark Office but rather with the State of Indiana.

Ten years later, the dispute remains unresolved. Square Donuts, Inc. has acquired two federal trademarks and continues to express its concerns about Plaintiff’s use of “square donuts” in the marketing its donut products. Plaintiff proposed a co-existence agreement but the notion of such an agreement was rejected.

In January 2016, the U.S. Patent and Trademark Office refused to register Family Express’s “SQUARE DONUTS” mark, Application No. 86779997, in Class 030 for “donuts” and in Class 035 for “retail convenience stores” on the grounds of likely confusion with Defendant’s preexisting trademark registrations for “SQUARE DONUTS.”

In this litigation, Plaintiff Family Express seeks the following from the court:

• Count I: Declaration of Non-Infringement

• Count II: Cancellation

March 23, 2016

Copyright Litigation: Forensic Exam, Testimony Fail to Demonstrate Infringing Material on Defendant’s Computer

By Overhauser Law Offices, LLC

Chicago, Illinois – Magistrate Judge Geraldine Soat Brown of the Northern District of Illinois granted the motion for summary judgment of John Doe, the anonymous Defendant sued by pornographer Malibu Media LLC (“Malibu”) on allegations of copyright infringement.

Plaintiff alleged that, between May 2013 and July 2013, Defendant infringed Malibu’s copyright in 24 movies by downloading them from the internet using file-sharing software known as BitTorrent. Copyright attorneys for Malibu filed a copyright infringement lawsuit against Defendant, stating that Defendant had been identified by the internet protocol (“IP”) address that had been used to infringe. Defendant was permitted to litigate anonymously as “John Doe” (“Doe”).

Malibu submitted various pieces of evidence to support its contentions that Doe had infringed the copyrights on Malibu’s works, including a declaration by the founder of Malibu and declarations of various experts, such as forensic investigators. Doe denied Plaintiff’s claims and contested its method of proof.

The court evaluated Malibu’s evidence, noting that some of it was simply pro forma and included no relevant and particularized statements about the copyright infringement that Malibu alleged had been committed by Doe. The court stated that at least one pleading was described by Malibu as containing attached materials that had not, in fact, been attached. Other material was described by Malibu as having been sent to the court, while the court indicated that it had never been received.

The court also reproached Malibu’s attorneys for misrepresenting to the court the court’s earlier statements regarding the relevant evidentiary requirements to prove Doe’s liability. It further noted that Malibu had failed to adhere to required procedures, such as the serving of several disclosures under Rule 26(a)(2). Because those disclosures had not been made, and because the court held that the failure to disclose was evidence of at least willfulness, if not bad faith, two of Malibu’s declarations were stricken in their entirety as were portions of a third declaration. All of Malibu’s statements of fact that relied upon the stricken material were also excluded from evidence.

The court subsequently concluded that “Malibu has no evidence that any of its works were ever on Doe’s computer or storage device,” stating that Malibu’s contention that Doe had used visualization software to infringe Malibu’s works was merely speculation:

Malibu admits that there is no evidence of visualization software on Doe’s computer, and not even any evidence of the deletion of visualization software. Malibu says that is “beyond fishy,” and speculates that Doe must have deleted visualization software from his computer in some way that hides the fact that it was deleted, and then extends the speculation to suggest that Doe must have done that deletion to hide his infringement of Malibu’s works. That is not evidence that Doe copied or distributed Malibu’s works.

The court granted Defendant’s motion for summary judgment. Plaintiff’s motion for summary judgment, which asked the court to conclude that Doe had infringed its copyrighted works, was denied.

Practice Tip #1: Malibu has filed a multitude of virtually identical lawsuits around the country. According to a recent case in New York, “Malibu is a prolific litigant: between January and May 2014, for example, Malibu was responsible for 38% of copyright lawsuits filed in the United States.” Malibu Media, LLC v. Doe, No 15 Civ. 4369 (AKH), 2015 WL 4092417, at *3 (S.D.N.Y. July 6, 2015).

Practice Tip #2: We have blogged about Malibu Media’s litigation exploits before. Some recent posts include:

• Magistrate Rejects Malibu Media’s Request for Fees and Sanctions
• Malibu Media Sues Nine Additional “John Does” Asserting Copyright Infringement
• Fourteen New Lawsuits Asserting Copyright Infringement Filed by Malibu Media
• Malibu Media Alleges Infringement of Thirty Copyrighted Works

• Another John Doe Sued by Malibu Media on Allegations of Copyright Infringement

March 21, 2016

Indiana Trademark and Copyright Litigation: Sweetwater Contends Hello Music Copied its Website, Infringed its Intellectual Property

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – Indiana intellectual property lawyers for Plaintiff Sweetwater Sound, Inc. (“Sweetwater”) of Fort Wayne, Indiana filed an intellectual property lawsuit in the Northern District of Indiana.

Plaintiff alleges that Defendant Hello Music, LLC of Austin, Texas infringed its trademarks, which have registered by the U.S. Patent and Trademark Office as Trademark Nos. 3,652,255 and 3,652,249. In addition, Sweetwater Sound contends that Hello Music infringed its copyright, issued by the U.S. Copyright Office as TX 8-064-067, which protects the contents of its website. Other counts of alleged wrongdoing, including claims under Indiana law, have been asserted.

Hello Music is accused of duplicating copyrighted content from Sweetwater’s website and using that protected content on its own website. Sweetwater contends that part of the content purportedly copied includes the Sweetwater trademark. Sweetwater also asserts that these acts by Hello Music constitute a willful and deliberate attempt to trade on Sweetwater’s goodwill.

In the complaint, filed in federal court Friday, the following claims are made:

• Count I: Copyright Infringement
• Count II: Trademark Infringement (False Designation of Origin)
• Count III: Trademark Dilution

• Count IV: Unfair Competition

Sweetwater asks the court to grant equitable relief, including the destruction of infringing materials. It also seeks actual and treble damages, disgorgement of all profits that resulted from infringing acts, litigation costs and attorneys’ fees.

March 18, 2016

Indiana Trademark Litigation: Indiana-Based “Oak Motors” Sues California-Based “Oak Motors” for Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Plaintiff Oak Motors, Inc. of Anderson, Indiana (“Oak Indiana”) filed a trademark infringement complaint in the Southern District of Indiana alleging that Oak Motors, Inc. of San Mateo, California (“Oak California”) is infringing U.S. Trademark Registration No. 4,487,991, which was issued by the U.S. Patent and Trademark Office.

Plaintiff Oak Indiana, a used-car dealership, has three locations in Indianapolis as well as a location in Anderson, Indiana and another in Muncie, Indiana. It focuses on offering cars to “customers with credit challenges.” It has commenced trademark litigation against a California-based used-car dealership that offers primarily luxury-brand vehicles.

Plaintiff contends that, by using “Oak Motors” to promote its business, Oak California intended to cause, and has caused, initial interest confusion and actual confusion among consumers and potential consumers. Oak Indiana asserts that Oak California’s actions are an intentional attempt to trade off the goodwill of Oak Indiana.

In addition to Oak California’s use of “Oak Motors” as a business name, Oak Indiana also complains of Defendant’s use of three websites, http://oakmotorsusa.com/, http://oakmotorsinc.com/ and http://www.oakmotorsca.com/default.aspx, claiming that the use of those websites is calculated to create consumer confusion regarding whether the two companies are related.

In this federal lawsuit, filed by Indiana trademark lawyers for Oak Indiana, the following claims are asserted:

• Count I: False Designation of Origin and False Description – 15 U.S.C. §1125(a)
• Count II: Common Law Trademark Infringement
• Count III: Unfair Competition
• Count IV: Cybersquatting – 15 U.S.C. §1125(d)

• Count V: Declaratory Judgment

Oak Indiana seeks equitable relief, including the transfer of domain names referencing the “Oak Motors” trademark; Oak California’s profits from the sale of all infringing goods; damages, including actual damages, punitive damages, statutory damages and treble damages; costs of litigation and attorneys’ fees.

March 17, 2016

Indiana Patent Litigation: Lilly Sues Alleging Infringement of Patented Osteoporosis Drug

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana patent lawyer for Plaintiff Eli Lilly and Company of Indianapolis, Indiana (“Lilly”) filed a patent infringement lawsuit in the Southern District of Indiana. The allegations of infringement have been directed at Defendants Teva Pharmaceuticals USA, Inc. of North Wales, Pennsylvania and its parent company Teva Pharmaceutical Industries Ltd. of Israel.

This lawsuit was instituted in response to Abbreviated New Drug Application (“ANDA”) No. 208569, which was filed with the U.S. Food and Drug Administration by Teva USA. The ANDA seeks approval to market a generic version of Forteo®, a prescription drug offered by Lilly to treat osteoporosis.

At issue in this litigation are Lilly’s U.S. Patent Nos. 6,770,623; 7,144,861; 7,550,434; 6,977,077; 7,163,684; and 7,351,414. All have been issued by the U.S. Patent and Trademark Office. Lilly contends that the filing of the ANDA constitutes direct infringement, inducement to infringe and contributory infringement of these patents under U.S. patent law.

Lilly seeks equitable relief, costs and attorney’s fees.