How should I protect my intellectual property?
Different types of intellectual property are protected by different means.
In the United States, patents may be available to any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Patent protection must be sought by application with the U.S. Patent and Trademark Office (“USPTO”). There are three types of patents:
Evansville and Hammond, Indiana – An intellectual property attorney for Joe Hand Promotions, Inc. of Feasterville, Pennsylvania filed two Indiana lawsuits, one in the Northern District of Indiana against Robert J. Matijevich and UDL, LLC, both d/b/a L F Nortons, of Lake Station, Indiana and the other in the Southern District of Indiana against John Backes and Backes Frontier, LLC, both d/b/a New Frontier Restaurant and Bar, of Evansville, Indiana. Both lawsuits allege that defendants illegally intercepted a satellite signal and broadcast protected content.
Joe Hand Promotions, a commercial distributor of sporting events, asserts that it was granted exclusive domestic rights to the commercial distribution of the Ultimate Fighting Championship 158: Georges St. Pierre v. Nick Diaz (“program”), which was broadcast on March 16, 2013.
Two recent complaints were filed by the intellectual property lawyer for Joe Hand Promotions in federal courts in Indiana. In each complaint, both the business entity that owns the accused establishment and an individual charged with responsibility for that establishment’s operations have been named as defendants.
The allegations against the defendants include such wrongful acts as interception, reception, publication, divulgence, display, exhibition, and “tortuous” [sic] conversion of the program. Joe Hand Promotions asserts that the acts were “willful, malicious, egregious, and intentionally designed to harm Plaintiff Joe Hand Promotions.” As a result of these alleged acts, defendants have been have been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553. Each complaint also lists a count of conversion.
Joe Hand Promotions seeks statutory damages of $100,000 to $110,000 for each willful violation of 47 U.S.C. § 605; $10,000 for each violation of 47 U.S.C. § 553; $50,000 for each willful violation of 47 U.S.C. § 553; compensatory and punitive damages on the claim of conversion; costs, including costs incurred for the service of process and the investigation of potential wrongdoing; and attorney’s fees.
Indianapolis, Indiana – Judge Sarah Evans Barker of the Southern District of Indiana dismissed the patent infringement claims asserted in the amended complaint of pro se Plaintiff Dennis Lee Maxberry against ITT Technical Institute (“ITT”). Also included in Maxberry’s amended complaint were claims for copyright infringement, deprivation of disabled veterans’ benefits, sabotage of Maxberry’s bachelor’s degree, stalking, sabotage of Maxberry’s employment opportunities, RICO liability against ITT and the State of Wisconsin, malicious prosecution of intellectual property actions against Maxberry, violations of various executive orders relating to Maxberry’s service in the military, violations of the Higher Education Act, and violations of a number of Maxberry’s constitutional rights.
The parties in this patent infringement litigation are Defendant ITT, an Indiana-based for-profit higher education company, and Maxberry of West Allis, Wisconsin, who had previously been enrolled in an M.B.A. graduate course at ITT. In April 2014, Maxberry, acting as his own patent attorney, sued Defendant ITT alleging multiple harms, which the court summarized as follows:
It appears that Plaintiff accuses Defendant of stealing his federal student loan money, failing to award him grades for the classes that he completed, and applying money from his educational loans towards tuition payments even after he withdrew from school. Plaintiff also accuses Defendant of “being unconscious to the plaintiff by arbitrating the contract,” searching his person or property “without a warrant and without probable cause,” using excessive force upon him, failing to provide him with “needed medical care,” “false credit testimony, mayhem on property, defamation, false imcriminalization [sic], malicious prosecution, conspiracy, and/or any other claim that may be supported by the allegations of this complaint.” Plaintiff’s Complaint makes reference to 28 U.S.C. § 1983, 1985, and 1986, “Title IX, and Section 504 of the 1973 Rehabilitation Act,” the “False claim act,” and avers that “[t]he criminal proceeding by the defendants … [is] still pending,” but that Plaintiff “was innocent.”
The court dismissed Maxberry’s initial complaint on two grounds. First, Judge Barker noted that the Plaintiff was asking the Southern District of Indiana, a federal court, to review the rulings of a Wisconsin state court. Such a review, which would in effect place the Indiana federal court in the position of acting as a Wisconsin appellate court, was impermissible under the Rooker-Feldman doctrine. The court further found that the assertions in the complaint were “cast in such an incoherent and confusing manner that they must be dismissed under [Federal Rule of Civil Procedure 8(a)] based on Plaintiff’s failure to give Defendant (as well as the Court) fair notice of what they actually are.”
The court allowed Maxberry to file an amended complaint, which ITT moved to dismiss. In this complaint, Maxberry again made multiple claims, including five claims involving patent 8,632,592, for an “expandable vertebral body replacement device and method.” Maxberry asserted that this patent encompassed a cure for cancer, an automotive window-locking device, as well as a type of computer display equipment.
The court dismissed these “facially implausible” patent infringement claims with prejudice. Judge Barker noted that, not only was it wildly improbable that a single patent covered all of the asserted functions, but the records of the U.S. Patent and Trademark Office showed that the patent-in-suit was not registered to Maxberry.
The court also dismissed Maxberry’s other claims but granted him leave to reformulate those claims in a more understandable form and resubmit them.
The U.S. Patent Office issued the following 123 patent registrations to persons and businesses in Indiana in February 2015, based on applications filed by Indiana patent attorneys:
| PAT. NO. | Title | |
| D722,803 | Chair | |
| 8965805 | Method and system for delivering and accessing files | |
| 8965636 | Systems and methods for detecting jack contact with ground | |
| 8965613 | System, method, and apparatus for controlling power output distribution in a hybrid power train | |
| 8964952 | System and method for self-configuring sip-capable device | |
| 8963721 | Hand hygiene compliance device | |
| 8963195 | Flexible lighting device including a heat-spreading layer | |
| 8963079 | Systems and methods for transfer of ions for analysis | |
| 8963071 | Detection of buried explosives | |
| 8962954 | Inbred sunflower (Helianthus annuus) line designated CN5110R | |
| 8962729 | Soy methyl ester polystyrene blends for use in concrete |
The U.S. Trademark Office issued the following 142 trademark registrations to persons and businesses in Indiana in February 2015 based on applications filed by Indiana trademark attorneys:
| Serial Number | Reg. Number | Word Mark | Click to View | |||
| 86376930 | 4692572 | SERVICETOWN | View | |||
| 86341641 | 4692351 | RAE SECURITY | View | |||
| 86341637 | 4692350 | RAE SECURITY | View | |||
| 86339607 | 4692203 | THE AURORA | View | |||
| 86338386 | 4692095 | H | View | |||
| 86338000 | 4692065 | VIRTUAL LANDFILL | View | |||
| 86335763 | 4691944 | EMPOWERING BEAN COUNTERS TO BECOME BETTER ENTREPRENEURS | View | |||
| 86335762 | 4691943 | RWC360 | View |
Indianapolis, Indiana – An Indiana patent attorney for Sherrill, Inc. of Greensboro, North Carolina (“Sherrill”) filed a patent infringement complaint in the Southern District of Indiana alleging that TreeStuff, Inc. of Indianapolis, Indiana infringed Patent No. 5,887,577 entitled “Apparatus for Propelling a Projectile,” which has been registered by the U.S. Patent Office.
Plaintiff Sherrill asserts ownership by assignment to United States Patent No. 5,887,577 (“the ‘577 Patent”), which was issued to William T. Sherrill in 1999. It claims that TreeStuff manufactures, uses, offers for sale, and/or sells a product that infringes upon that patent, namely TreeStuff’s Stein Tekichu Throw Weight Launcher.
In November 2014, Sherrill sent a cease-and-desist letter to TreeStuff. In that letter, it identified the ‘577 Patent, stated that the Stein Tekichu Throw Weight Launcher infringed upon certain claims of the ‘577 Patent and demanded that TreeStuff cease all infringing activities.
Sherrill claims that TreeStuff did not respond to this letter but instead continued to use, offer to sell, and/or sell the accused product. Sherrill contends that, by engaging in these activities, TreeStuff has directly infringed, and will continue to directly infringe, at least claim 8 of the ‘577 Patent under 35 U.S.C. § 271(a) literally and/or under the doctrine of equivalents. Sherrill also suggests in its complaint that it is “reasonable to infer” that TreeStuff also intended to induce infringement. TreeStuff has also been accused of contributory infringement. Sherrill asserts that TreeStuff’s infringement has been and continues to be willful and deliberate.
In its complaint, filed by an Indiana patent attorney, Sherrill asks that the court:
• Declare that the ‘577 Patent was duly and legally issued, is valid and is enforceable;
• Enter judgment that defendant TreeStuff has infringed at least claim 8 of the ‘577 Patent;
• Enter judgment that defendant TreeStuff has induced infringement of at least claim 8 of the ‘577 Patent;
• Enter judgment that defendant TreeStuff has contributed to infringement of at least claim 8 of the ‘577 Patent;
• Enter a preliminary and permanent injunction enjoining defendant TreeStuff and its agents from any further sales or use of their infringing products and any other infringement of claims of the ‘577 Patent, whether direct or indirect, pursuant to 35 U.S.C. § 283;
• Award damages to compensate Sherrill for defendant TreeStuff’s infringement of the claims of the ‘577 Patent pursuant to 35 U.S.C. § 284;
• Award enhanced damages pursuant to 35 U.S.C. § 284;
• Award pre-judgment and post-judgment interest and costs to plaintiff Sherrill in accordance with 35 U.S.C. § 284; and
• Deem the case to be “exceptional” within the meaning of 35 U.S.C. § 285, entitling plaintiff Sherrill to an award of its reasonable attorney fees, expenses and costs in this action.
Washington, D.C. – The United States Court of Appeals for the Federal Circuit affirmed a royalty award in Gaylord v. United States for copyright infringement committed by the United States Postal Service.
Frank Gaylord, a World War II veteran and renowned sculptor, created The Column, consisting of nineteen stainless steel statues depicting a squad of soldiers on patrol. This work, completed and dedicated in 1995, formed a central part of the Korean War Veterans Memorial located on the National Mall in Washington, D.C. For his efforts in creating the work, Gaylord was paid $775,000.
Shortly after the completion of the work, an amateur photographer named John Alli visited the Memorial during a heavy snowstorm and photographed The Column. In 2002, the United States Postal Service decided to issue a stamp to commemorate the upcoming fiftieth anniversary of the Korean War armistice. It settled on Alli’s photo of The Column for the stamp face and paid Alli a one-time fee for the right to use his photo. The Postal Service made no payment to Gaylord.
Gaylord sued for copyright infringement. The United States Court of Federal Claims acted as the trial court in the litigation. Twice prior to the instant appeal, an appeal was made to the Federal Circuit, first in 2010 and again in 2012. In Gaylord I, the Federal Circuit held that the government was liable to Gaylord for copyright infringement. Upon remand, the Court of Federal Claims awarded Gaylord a total of $5,000 to compensate for the infringement of his copyright. This award was vacated by the Federal Circuit in Gaylord II and the lawsuit remanded with instructions to “determine the fair market value of a license for Mr. Gaylord’s work based on a hypothetical negotiation with the government.”
Upon remand, the trial court split the calculations of damages for the infringement into three categories: (1) stamps used to send mail; (2) commercial merchandise featuring an image of the stamp; and (3) unused stamps purchased by collectors. The parties agreed that no damages would be paid for stamps used to send mail and that a royalty of 10% of revenues would be appropriate for commercial merchandise featuring the copyrighted work.
The only disputed issue was the appropriate measure of copyright infringement damages for the stamps purchased by collectors. The lower court determined that the Postal Service received $5.4 million in revenue, which was deemed “almost pure profit,” from these sales. It then found that an appropriate copyright royalty would be 10%, or $540,000.
At issue in this latest appeal, Gaylord III, is whether this royalty was appropriate. The Federal Circuit applied the “hypothetical negotiation” analysis in reviewing the Court of Federal Claims’ award to Gaylord, stating that “actual damages for copyright infringement may be based on a reasonable royalty representing the fair market value of a license covering the defendant’s use.” Determining that “fair market value,” in turn could be done employing a valuation tool used in the context of patent infringement litigation: a hypothetical negotiation that would determine “the reasonable license fee on which a willing buyer and a willing seller would have agreed for the use taken by the infringer.”
The Federal Circuit held that the lower court neither committed clear error nor abused its discretion in arriving at a 10% royalty rate affirmed the award of $540,000.
Portland, Oregon – Copyright attorneys for Jacobus Rentmeester of Westhampton Beach, New York sued for copyright infringement in the District Court of Oregon, Portland Division alleging that Nike, Inc. of Beaverton, Oregon infringed Rentmeester’s copyrighted photo of Michael Jordan. This photo, Registration Number VA0001937374, has been registered with the U.S. Copyright Office.
Rentmeester, a New York photographer, commenced this litigation against Nike for Nike’s use of the iconic “Jumpman” photo in promoting its Jordan brand. In the lawsuit, Plaintiff Rentmeester contends that Nike directly, contributorily, and vicariously infringed his copyrighted image of Michael Jordan.
Rentmeester claims that he created the “Jordan Photo” for inclusion in a 1984 Olympic edition of Life Magazine, as part of a photo essay that he produced for the magazine. Among the athletes featured in Rentmeester’s photo essay, in addition to Jordan, were Carl Lewis and Greg Louganis.
At issue in this litigation is Rentmeester’s Jordan Photo. Rentmeester contends that he “conceived the central creative elements of the photograph.” These elements included portraying Jordan alone against the sky, “soar[ing] elegantly” and in a modified version of a grand jeté, a ballet jump during in which the person performs the splits in midair. According to the complaint, this type of jump was not typical for Jordan.
Rentmeester states that, after his photo was published, he agreed to accept a fee of $150 from Nike for temporary use of the photo for a “slide presentation only, no layouts or any other duplication.”
Nike later paid Rentmeester $15,000 for a limited license to use a modified work, although Plaintiff states that this agreement was reached only after Nike had already begun infringing use of the work and Rentmeester had complained to Nike of copyright infringement. Rentmeester contends that this license was limited to two years of use, on posters and billboards only, and for use within North America only. Rentmeester alleges that Nike exceeded the terms of that limited license by using the modified image other than on posters or billboards as well as outside North America. He also asserts that Nike’s use of the Jordan Photo constitutes willful copyright infringement as of the expiration of the license in 1987.
In the complaint, filed by copyright lawyers for Plaintiff, the following counts are enumerated:
• First Cause of Action: Copyright Infringement
• Second Cause of Action: Vicarious Copyright Infringement
• Third Cause of Action: Contributory Copyright Infringement
• Fourth Cause of Action: Violations of the Digital Millennium Copyright Act
Rentmeester, via his copyright attorneys, asks the court for a judgment of infringement; for an injunction; for impoundment of all infringing works; for actual and statutory damages, including profits attributable to infringement of Rentmeester’s copyright; for punitive damages; for a finding that neither Nike nor any independent infringers can assert copyright protection in any of the infringing works; and for costs and attorneys’ fees.
Indianapolis, Indiana – The Center for Intellectual Property Law and Innovation of the
Indiana University Robert H. McKinney School of Law will be hosting its Annual BioPharma/Tech Law Symposium on Thursday, March 12, 2015. CLE credit of 7.0 hours is pending approval.
Time: 8:00 a.m. – 5:30 p.m.
Washington, D.C. – The United States Supreme Court held that in those cases in which summary disposition by the court is inappropriate, and where a jury has been empaneled, trademark tacking for purpose of determining priority is a question of fact for the jury to decide.
Hana Financial, Inc. and Hana Bank both provide financial services to individuals in the United States. Hana Bank was established in 1971 under the name Korea Investment Financial Corporation. It adopted the name “Hana Bank” for use in Korea in 1991. It began advertising in the United States as “Hana Overseas Korean Club” in 1994. This name was changed to “Hana World Center” in 2000. In 2002, it began banking under the name “Hana Bank” in the United States.
Hana Financial began using its name in 1995 in the United States. In 2007, it sued Hana Bank for trademark infringement. Hana Bank defended against this claim by invoking the tacking doctrine, under which a trademark user may make limited modifications to its trademark while retaining the priority provided by the initial trademark. The jury held for Hana Bank. On appeal, the Court of Appeals for the Ninth Circuit affirmed, concluding that tacking was a “highly fact-sensitive inquiry” that was properly the province of the jury.
Hana Financial appealed the issue of trademark tacking to the U.S. Supreme Court. In its opinion, the Court noted that lower courts have held that two marks may be tacked when they are considered to be “legal equivalents,” i.e., they “create the same, continuing commercial impression.” That “commercial impression,” in turn, “must be viewed through the eyes of a consumer.” Such an evaluation – designed to capture the impression which a trademark makes upon an ordinary consumer – “falls comfortably within the ken of a jury.”
The Court unanimously affirmed the Ninth Circuit, holding that “when a jury is to be empaneled and when the facts warrant neither summary judgment nor judgment as a matter of law, tacking is a question for the jury.”
