Mid-October 2021 Indiana Intellectual Property Litigation Update

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Fall is here! Only two (one trademark, one copyright) lawsuits were filed in Indiana in the last month, but there’s been plenty of action in the existing cases. Dave Chappelle’s “failed comedian” plaintiff has returned with Proof of Service and a Motion for Default Judgment. One plaintiff has filed a Motion for Contempt against a non-responsive defendant after continued infringement following a Default Judgment. Another trademark plaintiff faces a Motion to Dismiss their federal claims based on a lack of interstate commerce. Interesting stuff ahead, so read on and stay tuned for next month’s updates.

Noble Romans, Inc. v. Gateway Triangle Corp. et al. (SD, filed 2/5/2021) – The Defendants have been granted until November 11, 2021 to file their response to the Plaintiff’s Motion for Summary Judgment.

Watch Communications v. Jarman et al. (SD, filed 3/8/2021) – The lawsuit was dismissed with prejudice on October 12, 2021.

Delta Faucet Company v. Iakovlev et al. (SD, filed 3/25/2021) – No update this month.

ABI Attachments, Inc. v. Kiser Arena Specialists, Inc. et al. (SD, filed 4/12/2021) – This lawsuit was dismissed with prejudice on October 6, 2021 via a joint motion.

Triple LLL Truck Repair, Inc. v. Triple LLL, Inc. et al. (ND, filed 4/26/2021) – No update this month.

Energy Beverages LLC v. Full Throttle Automotive LLC (SD, filed 5/19/2021) – A Stipulation of Dismissal was filed on September 8, 2021 and simply awaits formal dismissal by the Court. 

Egglife Foods, Inc. v. Crepini, LLC (ND, filed 5/28/2021) – The Defendant’s Answer was filed on October 12, 2021.

Gatewood v. Webber Chappelle (ND, filed 6/4/2021) – This case looked set for a dismissal based on failure to serve process but the Plaintiff filed a Proof of Service on September 28, 2021 and filed a Motion for Default Judgment on October 5, 2021. We now at least have a better idea what the “joke” was that Dave Chappelle allegedly “stole”…it’s at minute mark 21:23 until 22:15 in Chappelle’s “Heart of Texas” comedy special. The original Complaint said the stolen joke was “exactly one minute” so there is some discrepancy between the Plaintiff’s documents.

Sears Authorized Hometown Stores, LLC v. Lynn Retails, Inc. et al. (SD, filed 6/4/2021) – No update this month.

Noble Roman’s, Inc. v. AMI Stores Management, Inc. et al. (SD, filed 6/6/2021) – No update this month.

Valqari LLC v. Dronedek Corporation et al. (SD, filed 6/16/2021) – The parties have reported settlement. The Court has worded the Plaintiff to file dismissal documents by October 29, 2021.

Fitzgerald et al. v. Murray et al. (SD, filed 6/18/2021) – The Plaintiffs filed a Motion to Compel Discovery Responses on September 17, 2021 and the Defendant Murray filed a Motion to Strike the following day. A default judgment was entered against the Defendant Beacon Books on October 1, 2021 for failure to respond. A Reply for the Motion to Compel was filed by Plaintiff on October 4, 2021 and the Defendants filed their Answer to Interrogatories on October 4, 2021.

Phoenix Intangibles Holding Company et al. v. Virk Brothers, LLC et al. (ND, filed 7/9/2021) – No update this month.

Poulsen Roser A/S v. Gardens Alive, Inc. et al. (SD, filed 7/14/2021) – The parties have a telephone status conference set for November 15, 2021.

Haehl v. Dr. Brite, LLC (SD, filed 7/21/2021) – The Defendant filed an Answer on September 28, 2021. Defense counsel is John R. Terpstra and Anna Mandula of Lewis Brisbois Bisgaard & Smith LLP.

AWGI, LLC et al. v. CLD Trucking Co. d/b/a Atlas Moving Systems AMS (SD, filed 7/22/2021) – The Defendant failed to appear for a telephonic default judgment hearing on September 28, 2021 and judgment was entered for the Plaintiff. The default judgment apparently did not deter the Defendant from continuing its infringing activities, and a Motion for Contempt was filed by the Plaintiff on October 13, 2021.

Berman v. Auralex Acoustics, Inc. (SD, filed 7/22/2021) – Despite a purported settlement, dismissal documents were not filed by the Court’s deadline of October 8, 2021.

RE/MAX, LLC et al. v. Dulin et al. (SD, filed 8/24/2021) – An Amended Complaint was filed on September 16, 2021. No other updates.

Bubbles Ice Cream Parlor & Pie Shoppe, Inc. v. Scoops & Sweet Bubbles, LLC (ND, filed 8/25/2021) – The Defendant filed a Motion to Dismiss for failure to state a claim (based on lack of interstate commerce) and lack of supplemental jurisdiction.

Forest River, Inc. v. inTech Trailers, Inc. (ND, filed 8/31/2021) – An Answer was filed on September 21, 2021 and the following Amended Answer was filed on October 12, 2021. A Pretrial Conference is scheduled for November 3, 2021 before the Court. (Could this signal an end to almost two years of telephonic court conferences?)

Thomas v. ooShirts, Inc. et al. (SD, filed 9/24/2021) – No update yet.

Edutainment Live, LLC v. Video Game Palooza et al. (SD, filed 10/11/2021) – No update yet.

September 2021 Updates

August 2021 Updates

July 2021 Updates

June 2021 Updates

May 2021 Updates

April 2021 Updates

Trademark Infringement Lawsuit filed over Branded IT Training Videos

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This is one of those trademark lawsuits that really isn’t about the trademarks. The subject matter is IT training videos, which you’d more typically find as the subject of a copyright lawsuit. As you’ll see, savvy branding of those videos has allowed the Plaintiff to bring this as a trademark lawsuit, with all the accompanying trademark remedies and none of the formal requirements of a copyright lawsuit.

The Plaintiff, ITPro.TV, makes IT training videos. Importantly, the training videos display the Plaintiff’s logo in the bottom left of the screen.

The Defendants, Hope Training Academy and their individual owners, operate a computer-based training academy in Carmel, Indiana that offers various computer certifications to underemployed adults. Allegedly, the Defendants have been showing Plaintiff’s branded training videos without authorization and, to add injury to insult, they also insert their own “Hope Training Academy” logo on the bottom right of the video.

The parties were engaged in seemingly fruitful settlement negotiations as late as August 2021, with the Defendants offering to make a nominal payment of $29.99 per infringing end user, an unacceptably low fee by the Plaintiff’s calculations. The Defendants also represented that they are no longer using the Plaintiff’s videos but those assertions have not been independently verified by the Plaintiff. Presumably the Plaintiff’s patience with the negotiations simply ran out and they now seek the wisdom (and coercive power) of the Court.

Stay tuned for updates.

Edutainment Live, LLC v. Video Game Palooza et al

Case Number: 1:21-cv-02611-JMS-DML
File Date: Monday, October 11, 2021
Plaintiff: Edutainment Live, LLC d/b/a ITPRo. TV
Plaintiff Counsel: Donald E. Lake III of Lewis Brisbois Bisgaard & Smith LLP
Defendant: Video Game Palooza d/b/a Hope Training Academy, Richard Barretto, Cara Barretto
Cause: Federal Trademark Infringement, Federal Unfair Competition, Common Law Unfair Competition
Court: Southern District of Indiana
Judge: Jane Magnus-Stinson
Referred To: Debra McVicker Lynch

Complaint:

Painter sues T-Shirt Printing Website for Unauthorized Use of Presidential Painting

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This copyright lawsuit involves a painter attempting to stop an online merchandise platform from using his artwork on customizable products. The Defendant t-shirt website, like thousands of other sites, sells blank apparel that can be customized with a user-uploaded image or text.

Per the Complaint (below), the John Doe defendants (1-11) have, via separate registered accounts, been uploading a digital copy of one of Plaintiff’s paintings since 2018 and using the online platform to create unauthorized products which they presumably then sell elsewhere. Plaintiff’s counsel first contacted the Defendant website in April 2020 about the unauthorized use of Plaintiff’s artwork, seemingly with no acceptable resolution or cessation.

In lawsuits such as this with numerous John Doe defendants, the first and most difficult hurdle for the Plaintiff will be to discover the identity of the John Does. The similarity in the John Doe’s account names on the t-shirt platform seem to indicate that it’s just one source (an individual or small group) that is repeatedly ordering new product. I wouldn’t expect any response to be filed by the John Doe Defendants, who will likely disappear altogether, and probably a long road of discovery for the Plaintiff perhaps eventually leading to a default judgment against the determined “guilty” party.

The vicarious infringement and contributory infringement claims against the online t-shirt website will be interesting to follow. Presumably, having been put on notice of the unauthorized use in April 2020, the t-shirt website might be expected to take more action to prevent future infringements of the same image. But how closely do they (or should they be expected to) patrol user-submitted images for infringement? It seems like the t-shirt printing and shipping process would be almost completely automated following the user submission, with no copyright verification step in between.

Stay tuned for updates.

Thomas v. ooShirts, Inc. et al.

Case Number: 1:21-cv-02519-TWP-MJD
File Date: Friday, September 24, 2021
Plaintiff: Andrew “Andy” Thomas
Plaintiff Counsel: Sean J. Quinn of SouthBank Legal: LaDue | Curran | Kuehn, Oliver Maguire of Evans & Dixon, LLC
Defendant: ooShirts, Inc., John Does 1-11
Cause: Direct Copyright Infringement, Vicarious Infringement, Contributory Infringement
Court: Southern District of Indiana
Judge: Tanya Walton Pratt
Referred To: Mark J. Dinsmore

Complaint:

Mid-September 2021 Indiana Intellectual Property Litigation Update

It was a month of resolution for many of the Indiana Intellectual Property lawsuits that we’ve been tracking. There were just a few substantive filings and many continuations. Three new lawsuits were filed which all seem like they could turn into something interesting. Check out the monthly updates on prior filings below and stay tuned over the course of the next month for new cases.

Noble Romans, Inc. v. Gateway Triangle Corp. et al. (SD, filed 2/5/2021) – The parties held a telephonic settlement conference with no agreement or resolution. The Third Party Defendants have filed a Motion for Summary Judgment on the Abuse of Process claim.

Watch Communications v. Jarman et al. (SD, filed 3/8/2021) – The motion to intervene filed by National Farmers Union Property & Casualty Company was denied. An extension until September 22, 2021 has been granted to respond to the Counter Defendants’ Motion to Dismiss.

Vroom, Inc. v. Midwest Motors LLC et al. (SD, filed 3/24/2021) – The lawsuit was dismissed without prejudice on August 31, 2021.

Delta Faucet Company v. Iakovlev et al. (SD, filed 3/25/2021) – On August 20, 2021, a Motion for Default Judgment was filed against the non-responsive Defendant Iakovlev.

ABI Attachments, Inc. v. Kiser Arena Specialists, Inc. et al. (SD, filed 4/12/2021) – The stay in the lawsuit has been continued until September 17, 2021, with a telephonic status conference scheduled on September 16, 2021.

Triple LLL Truck Repair, Inc. v. Triple LLL, Inc. et al. (ND, filed 4/26/2021) – Nothing to report.

Energy Beverages LLC v. Full Throttle Automotive LLC (SD, filed 5/19/2021) – A Stipulation of Dismissal was filed on September 8, 2021 and simply awaits formal dismissal by the Court.

Monster Energy Company v. R&R Medical, LLC d/b/a Bear KompleX (ND, filed 5/26/2021) – The lawsuit was dismissed with prejudice on August 31, 2021.

Egglife Foods, Inc. v. Crepini, LLC (ND, filed 5/28/2021) – The Defendant’s response deadline has been extended to October 12, 2021.

Gatewood v. Webber Chappelle (ND, filed 6/4/2021) – On September 13, 2021, the Court provided notice that the action may be dismissed for failure to serve process.

Sears Authorized Hometown Stores, LLC v. Lynn Retails, Inc. et al. (SD, filed 6/4/2021) – The parties have begun filing witness and exhibit lists. A telephonic status conference is scheduled for October 29, 2021.

Noble Roman’s, Inc. v. AMI Stores Management, Inc. et al. (SD, filed 6/6/2021) – A settlement conference is scheduled on November 10, 2021. Noble Roman’s has filed an Amended Answer to Counterclaim and Third-Party Complaint.

Valqari LLC v. Dronedek Corporation et al. (SD, filed 6/16/2021) – The Defendant’s response deadline has been extended to October 7, 2021. An initial pretrial conference is now set for October 15, 2021. 

Fitzgerald et al. v. Murray et al. (SD, filed 6/18/2021) – On September 14, 2021, Magistrate Judge filed a Report and Recommendation that default judgment should be entered against Defendant Beacon Books for failure to respond to the Complaint.

Phoenix Intangibles Holding Company et al. v. Virk Brothers, LLC et al. (ND, filed 7/9/2021) – The Defendants filed an Answer on September 2, 2021.

Poulsen Roser A/S v. Gardens Alive, Inc. et al. (SD, filed 7/14/2021) – An initial pretrial conference is schedule for September 9, 2021. 

Haehl v. Dr. Brite, LLC (SD, filed 7/21/2021) – A telephonic Initial Pretrial Conference is schedule for October 13, 2021. The Defendant’s response deadline has been extended via a Motion for Extension of Time.

AWGI, LLC et al. v. CLD Trucking Co. d/b/a Atlas Moving Systems AMS (SD, filed 7/22/2021) – An Affidavit of Service was filed on August 4, 2021. No activity yet by Defendant. 

Berman v. Auralex Acoustics, Inc. (SD, filed 7/22/2021) – A Notice of Settlement was filed on September 8, 2021. The parties have been instructed to file a Stipulation of Dismissal by October 8, 2021.

RE/MAX, LLC et al. v. Dulin et al. (SD, filed 8/24/2021) – The Defendants’ counsel have filed appearances on September 3, 2021. No other updates.

Bubbles Ice Cream Parlor & Pie Shoppe, Inc. v. Scoops & Sweet Bubbles, LLC (ND, filed 8/25/2021) – Defendant’s counsel Paul Overhauser filed a Motion for Extension of Time to File Response on September 8, 2021.

Forest River, Inc. v. inTech Trailers, Inc. (ND, filed 8/31/2021) – The Summons was returned executed on September 7, 2021. No other updates.

August 2021 Updates

July 2021 Updates

June 2021 Updates

May 2021 Updates

April 2021 Updates

RV Manufacturer Sues Competitor For Use of Confusingly Similar Trademarks (Della Terra vs. Terra)

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Both parties in this trademark infringement lawsuit are recreational vehicle (“RV”) manufacturers from Indiana. Did you know that Elkhart, Indiana is the RV Capital of the World?

The Plaintiff is Forest River, Inc. of Elkhart, Indiana. They began using the unregistered DELTA TERRA trademark in connection with recreational vehicles in March 2018. Their “mountain” logo was adopted shortly after in April 2018.

The Defendant is inTech Trailers, another RV manufacturer from the Elkhart region. They allegedly introduced a new line of RVs called “Terra” in November 2020, along with its own mountain design.

The Plaintiff first notified Defendant of its allegedly infringing activities in December 2020 but there has been no cessation of activity. The Complaint (below) asserts that some of Defendant’s leadership has past ties to Plaintiff, so there may be more to this story than meets the eye. However, even judged at face value, the marks do seem similar. Any distinctions in the mountain designs would certainly be blurred and possibly indistinguishable as these RVs roll by you on the highway. Even if understood to be different product lines, a consumer might reasonably think that both “Delta Terra” and “Terra” RVs emanate from the same manufacturer.

The Defendant has been aware of the Plaintiff’s objections since December 2020, so they should be ready to defend their trademarks and will be expected to file an Answer soon. Stay tuned for updates.

Forest River, Inc. v. inTech Trailers, Inc.

Case Number: 3:21-cv-00645-DRL-MGG
File Date: Tuesday, August 31, 2021
Plaintiff: Forest River, Inc.
Plaintiff Counsel: Philip R. Bautista, JoZeff W. Gebolys, Tracy N. Betz, Stephanie A. Kortokrax of Taft Stettinius & Hollister LLP
Defendant: inTech Trailers, Inc.
Cause: Federal Trademark Infringement, State Trademark Infringement, Common Law Unfair Competition
Court: Northern District of Indiana
Judge: Damon R. Leichty
Referred To: Michael G. Gotsch, Sr

Complaint: