Indiana Trademark Litigation Update – Chartreuse v. Chartreuse Fragrances

The Plaintiff in this Declaratory Judgment action is an Indianapolis-based LLC that has used the CHARTREUSE trademark in connection with “handmade soy candles” since January 2013.

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Defendant is a New Jersey-based LLC that owns a federal registration for CHARTREUSE in connection with “Candles,” with a date of first use in commerce in April 2002. Defendant sent a “cease and desist” letter to Plaintiff in January 2014 asserting their trademark rights. Plaintiff responded by filing a complaint for Declaratory Judgment of Non-Infringement, Unenforceability and Invalidity.

The Plaintiff asserts in their Complaint that Defendant has not used their trademark for over three (3) years, that the CHARTREUSE mark is descriptive and therefore not entitled to registration and that the claimed date of first use in the registration is inaccurate. If these things can be proved, Plaintiff may have a shot to invalidate the registration. However, in addition to counterclaims based on the federal registration, I’d expect Defendant’s Response to include a full slate of common law trademark infringement counterclaims based on their lengthy use of their trademark.

Maybe I’m in the wrong line of work. There must be good money in “handmade soy candles” if Plaintiff can afford to hire a big law firm to pursue federal litigation to protect a trademark in use for just over a year.

Chartreuse LLC v. Chartreuse Fragrances LLC

Court Case Number: 1:14-cv-00181-WTL-DKL
File Date: Friday, February 07, 2014
Plaintiff: Chartreuse LLC
Plaintiff Counsel: Louis T. Perry of Faegre Baker Daniels LLP
Defendant: Chartreuse Fragrances LLC
Cause: Unenforceability and Invalidity of Defendant’s Mark, Non-Infringement of Trademark
Court: Southern District of Indiana
Judge: Judge William T. Lawrence
Referred To: Magistrate Judge Denise K. LaRue

 

Indiana Trademark Litigation Update – James Dean v. Twitter

Screen Shot 2014-02-10 at 4.21.44 PMHere’s a potential Giant of a lawsuit.

Plaintiff, James Dean Inc., wants the @JamesDean Twitter handle. Somebody else has been using the Twitter handle since 2009 as a fan account for the Fairmount, Indiana-raised rebel movie icon. The @JamesDean account has more than 8,200 followers and has sent over 2,200 tweets. CMG Worldwide, the exclusive licensee of James Dean’s name and likeness, unable to convince Twitter to hand over the account, are now suing Twitter directly in federal court to force compliance. Twitter looks set to put up a full defense rather than subject themselves to an onslaught of username complaints.

Stay tuned for what will likely become a precedent-setting case for dead celebrity Twitter handles.

Court Case Number: 1:14-cv-00183-WTL-DML
File Date: Friday, February 07, 2014
Plaintiff: James Dean, Inc., John Doe, One, John Doe, Two, John Doe, Three, John Doe, Four
Plaintiff Counsel: Theodore J. Minch of Sovich Minch, LLP
Defendant: Twitter, Inc.
Cause: Trademark Infringement, False Endorsement, Indiana State Statutory Right of Publicity, Common Law Right of Publicity, Common Law Unfair Competition, Unjust Enrichment, Conversion, Deception, Indiana Crime Victims’ Act
Court: Southern District of Indiana
Judge: Judge William T. Lawrence
Referred To: Magistrate Judge Debra McVicker Lynch

Indiana Cybersquatting Litigation Update – BidPal v. Intermediaone et al

Plaintiff, BidPal, Inc., owns a federal trademark registration for BIDPAL. Defendant owns several BidPal-formative domain names, including Bidpal.com, Bidpal.org, Bidpal.info, Bidpal.biz, Bidpal.mobi, all of which are GoDaddy parked pages. Plaintiff made several attempts to contact Defendant but was unable to reach him.

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Plaintiff’s Complaint makes an interesting assertion that, since Defendant owns all of the domains listed above, Plaintiff was forced to adopt ” the far-inferior domain name www.bidpalnetwork.com.” In the age of search, where bidpalnetwork.com ranks 1st on the Google search results for “Bidpal” and none of Defendant’s domains rank at all, do you agree that there’s such a thing as a “far-inferior” domain name? Or just preferred and non-preferred domain names?

Plaintiff may be hoping for a Default Judgment if Defendant doesn’t decide to defend himself. This case may also help determine whether Indiana courts will rule that “parked” domains can constitute cybersquatting. Stay tuned for updates.

BidPal Inc. v. Intermediaone et al

Court Case Number: 1:14-cv-00168-RLY-MJD
File Date: Wednesday, February 05, 2014
Plaintiff: BidPal Inc.
Plaintiff Counsel: Paul B. Overhauser of Overhauser Law Offices LLC
Defendant: Intermediaone, Intermediaone-AGB, Peter Peterre, Bidpal.com, Bidpal.org, Bidpal.info, Bidpal.biz, Bidpal.mobi
Cause: Cybersquatting, Trademark Infringement
Court: Southern District of Indiana
Judge: Judge Richard L. Young
Referred To: Magistrate Judge Mark J. Dinsmore

Indiana Trademark Litigation Update – Al Reasonover v. Solarium

This is a trademark dispute over the mark “Tiki Tan” as used in connection with tanning salons. Both Plaintiff and Defendant are located in Indiana.

Al Reasonover v. Solarium LLC et al

Court Case Number: 3:14-cv-00235-PPS-CAN
File Date: Wednesday, February 05, 2014
Plaintiff: Al Reasonover
Plaintiff Counsel: Frank J. Agostino – Attorney at Law
Defendant: Solarium LLC, Solarium Bittersweet LLC
Cause: Trademark Infringement, Common Law Trademark Infringement, Injunctive Relief, Common Law Unfair Competition
Court: Northern District of Indiana
Judge: Chief Judge Philip P. Simon
Referred To: Magistrate Judge Christopher A. Nuechterlein

Indiana Trademark Litigation Update – Swag Merchandising v. T.V. Store Online

Plaintiff alleges that Defendant is manufacturing and selling unauthorized “Energy Dome Hats,” the headwear popularized by American New Wave band DEVO.

Plaintiff claims to be the exclusive licensing agent of DEVO’s intellectual property rights. The Complaint references a pair of federal trademark registrations for DEVO in connection with “entertainment services” and “sound and visual recordings.” The ultimate question for this case however, which is less clear in the Complaint, is whether DEVO owns the rights to manufacture and sell Energy Dome Hats, which are “red in color, circular, and including four tiers of the circular design, with each tier becoming larger in circumference from the top of the hat to the bottom of the hat.”

Swag Merchandising Inc. et al v. T.V. Store Online et al

Court Case Number: 1:14-cv-00127-TWP-DKL
File Date: Wednesday, January 29, 2014
Plaintiff: Swag Merchandising Inc., Devo Inc. Corporation California
Plaintiff Counsel: Theodore J. Minch of Sovich Minch LLP
Defendant: T.V. Store Online, Fred Hajjar
Cause: Violation of 1125(a), Trademark Infringement, Common Law Trademark Infringement, Counterfeiting, Dilution, Common Law Unfair Competition, Statutory Right of Publicity, California Right of Publicity Infringement, Common Law Right of Publicity, Deception, Indiana Crime Victims’ Act
Court: Southern District of Indiana
Judge: Judge Tanya Walton Pratt
Referred To: Magistrate Judge Denise K. LaRue

State Court Complaint:

Notice of Removal:

Indiana Trademark Litigation Update – Sprint Solutions et al v. Reginald Aldridge et al

Plaintiff Sprint accuses three defendants of profiting from the illegal acquisition and resale of new Sprint phones. The Complaint is lengthy, detailing both Sprint’s business model and the Defendants’ alleged “Bulk Handset Theft and Trafficking Scheme,” in addition to fourteen claims. Presumably, in addition to civil penalties, the actions alleged by the Plaintiffs could also result in criminal penalties for Defendants.

Sprint Solutions, Inc. et al v. Reginald Aldridge et al

Court Case Number: 1:14-cv-00128-TWP-DML
File Date: Wednesday, January 29, 2014
Plaintiff: Sprint Solutions, Inc., Sprint Communications Company LP, Boost Worldwide, Inc.
Plaintiff Counsel: Matthew B. Millis, John D. Waller of Wooden & McLaughlin LLP
Defendant: Reginald Aldridge, Arrice Aldridge, Damion Transou
Cause: Unfair Competition, Tortious Interference with Business Relationships and Prospective Advantage, Civil Conspiracy, Unjust Enrichment, Conspiracy to Induce Breach of Contract, Common Law Fraud, Fraudulent Misrepresentation, Trafficking in Computer Passwords, Unauthorized Access, Unauthorized Access with Intent to Defraud, Federal Trademark Infringement, Common Law Trademark Infringement, False Advertising, Contributory Trademark Infringement, Conversion
Court: Southern District of Indiana
Judge: Judge Tanya Walton Pratt
Referred To: Magistrate Judge Debra McVicker Lynch

Indiana Copyright Litigation Update – Countryman Nevada v. Does 1-16

They’re back! Just when you thought the BitTorrent download cases had stopped in Indiana, Nicoletti is back with a new lawsuit involving “Charlie Countryman,” a film starring Shia LaBeouf, Rupert Grint and Evan Rachel Wood. The film was released November 15, 2013 in the United States to largely negative reviews. Having failed at the box office, the producers have apparently turned to lawyers to recoup some of their costs from the 16 Hoosiers unlucky enough to have (allegedly) downloaded the film.

Countryman Nevada LLC v. Does 1-16

Court Case Number: 1:14-cv-00019-RLM-RBC
File Date: Friday, January 24, 2014
Plaintiff: Countryman Nevada LLC
Plaintiff Counsel: Paul J. Nicoletti of Nicoletti & Associates PLLC
Defendant: Does 1-16
Cause: Copyright Infringement
Court: Northern District of Indiana
Judge: Judge Robert L. Miller, Jr.
Referred To: Magistrate Judge Roger B. Cosbey

Indiana Copyright Litigation Update – Granite Ridge Builders v. Ed Hollis et al

Here is yet another case involving misappropriated architectural drawings. Home builders, you should know by now that architectural drawings are protected by copyright law. If there’s a floor plan you really like, just pay for it! The price is beans (approx. $700-1500) against the cost of building a home.

Architectural Drawings

Granite Ridge Builders Inc v. Ed Hollis et al

Court Case Number: 1:14-cv-00007-TLS-RBC
File Date: Monday, January 13, 2014
Plaintiff: Granite Ridge Builders Inc
Plaintiff Counsel: Thomas B. Trent, Susan E. Trent, Mark W. Baeverstad of Rothberg Logan & Warsco LLP
Defendant: Ed Hollis, Sharon A. Miller, Old Dutch Homes Corp., Edward L. Kouder
Cause: Copyright Infringement, Contributory Copyright Infringement
Court: Northern District of Indiana
Judge: Judge Theresa L Springmann
Referred To: Magistrate Judge Roger B Cosbey

Indiana Copyright Litigation Update – National Photo Group v. Federated Media et al

This litigation involves the unauthorized use of celebrity photographs on a Fort Wayne country radio station’s website.

K105 Pictures

The lawsuit should serve as a reminder/warning to everyone operating a commercial website to only use photographs that:

  1. You own; or
  2. You have permission to use; or
  3. Are in the public domain.

This means going back through old pages and posts and removing/replacing unauthorized images. Failure to do this can result in expensive copyright litigation. If you have any questions about the photographs on your site, err on the side of caution and remove them until you’re able to properly determine ownership.

National Photo Group LLC v. Federated Media Inc. et al

Court Case Number: 3:13-cv-01405-PPS-CAN
File Date: Thursday, December 26, 2013
Plaintiff: National Photo Group LLC
Plaintiff Counsel: Craig B. Sanders of Sanders Law PLLC
Defendant: Federated Media Inc., WQHK-FM
Cause: Direct Copyright Infringement, Contributory Copyright Infringement, Vicarious Copyright Infringement, Inducement of Copyright Infringement, Injunction, Attorney Fees and Costs
Court: Northern District of Indiana
Judge: Chief Judge Philip P. Simon
Referred To: Magistrate Judge Christopher A. Nuechterlein

Indiana Trademark Litigation Update – Cummins v. T’Shirt Factory

Here’s a lawsuit over counterfeit apparel being sold at kiosks around Indiana malls bearing the CUMMINS trademark. Cummins is an Indianapolis-based designer and manufacturer of power generation equipment, power systems, gasoline engines, custom power supplies. Check out some sample “counterfeits” below:

Counterfeiting

Cummins, Inc. v. T’Shirt Factory et al

Court Case Number: 1:13-cv-01972-WTL-DML
File Date: Friday, December 13, 2013
Plaintiff: Cummins, Inc.
Plaintiff Counsel: T. Joseph Wendt of Barnes & Thornburg LLP
Defendant: T’Shirt Factory, Freedom Custom Z, Shamir Harutyunyan, Does 1-10
Cause: Trademark Infringement, Trademark Dilution, Trademark Counterfeiting
Court: Southern District of Indiana
Judge: Judge William T. Lawrence
Referred To: Magistrate Judge Debra McVicker Lynch