Category Archives: Indiana

Puma sues Brooks in Indiana for Trademark Infringement, Design Patent Infringement

11 Monday Jul 2022

Posted by in Indiana, Intellectual Property, Litigation, Patent, Southern District of Indiana, Trademark

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Shoe giants Puma and Brooks are involved in a lawsuit in Indiana over loosely-related trademark and patent design infringement claims.

PUMA began using the NITRO trademark in connection with running shoes in March 2021. Per the Complaint (below), PUMA’s line of NITRO running shoes were apparently a Top 15-selling running shoe brand in the U.S. in the year 2021.

In November 2021, PUMA noticed Brooks’ using the term “Nitro” in advertisements for a line of shoes with nitrogen-infused midsoles. In December 2021, PUMA’s counsel sent a letter describing their “exclusive rights” in the NITRO trademark. The subsequent 7 months apparently saw Brooks reject a settlement offer and offer no counterproposal, resulting in this lawsuit. Puma has a pending trademark application for NITRO filed in December 2021 that is still awaiting initial examination.

I question whether Brooks is really even using “Nitro” as a trademark. It seems they are just using a commonly-used shorthand for nitrogen, the common element infused in the shoe’s midsole. A possible resolution, should Brooks deem it necessary or the fight not worthwhile, would be to simply change their advertising from “Nitro” to “Nitrogen.”

The lawsuit is probably equally about PUMA’s claim for design patent infringement, a common dispute between shoe companies. Design patent claims highlight the constant “fine line” walked by consumer shoe designers to exploit a hot, current shoe trend but not copy a competitor’s design. The claims are loosely connected because the allegedly infringing shoes include nitrogen-infused midsoles, and thus are part of the Brooks “Nitro” advertising campaign. I’m not a shoe guy, so I don’t really know shoe terminology or what else is out in the market currently, but I can spot some obvious differences between PUMAS’s patent and the Brooks shoe.

Upon a quick review, the PUMA’s patent’s sole seems to be clearly 3 segments, while Brooks is 4 segments. The back of the heel is smooth on the patent while it is multi-ridged, both internally and externally, on the Brooks shoe. The back segment of the sole on the Brooks is much longer, has a protrusion with a rear wedge cut-out and also a circular impression on the side. The toe end is ridged on the Brooks shoe versus smooth on the design. These differences are just based on a quick initial review but I’m sure blog readers and Brooks’ counsel can find a few more. People familiar with current shoe trends might find even more.

Since 1851, the test for design patent infringement has been the “ordinary observer” test, which compares two designs from the viewpoint of an “ordinary observer,” not an expert in the trade, and requires that the resemblance be intended to deceive the observer and sufficient to induce him to purchase one supposing it to be the other. Recent jurisprudence in the Federal Circuit has seemingly evolved (or devolved, depending on your viewpoint) the test into what has been deemed an “extra-ordinary observer” test, in which the differences between the accused design and the patented design should be reviewed from the viewpoint of someone familiar with the prior art. As I mentioned above, I’m not familiar with the current women’s running shoe market so I could be a qualified “ordinary observer” but probably would not meet the higher standard. Which of the two standards should apply in the Southern District of Indiana in 2022 will likely be a primary focus of the lawsuit as it could be determinative.

If you’re wondering why this lawsuit was filed in Indiana, one explanation is that Brooks has a 400,000 square foot distribution center located in Whitestown, Indiana. PUMA didn’t specifically request seizure or destruction of Brooks’ existing inventory, but perhaps it is on their mind. Another consideration, as mentioned above, is finding a good venue to apply the lower “ordinary observer” standard.

Based on the size of the parties and the previously failed settlement negotiations, we can probably expect some fireworks in this lawsuit. Stay tuned for updates.

PUMA SE at al v. Brooks Sports, Inc.

Case Number: 1-22-cv-01362-RLY-MPB
File Date: July 8, 2022
Plaintiff: PUMA SE, PUMA North America Inc.
Plaintiff Counsel: Joel E. Tragesser, Michael T. Piery, James J. Aquilina of Quarles & Brady LLP
Defendant: Brooks Sports, Inc.
Cause: Trademark Infringement, Design Patent Infringement, Common Law Trademark Infringement, Common Law Unfair Competition
Court: Southern District of Indiana
Judge: Richard L. Young
Referred To: Matthew P. Brookman

Complaint:

Lawsuit filed in Indiana over “Genesis” trademark for Window Blinds

30 Thursday Jun 2022

Posted by in Indiana, Intellectual Property, Litigation, Northern District of Indiana, Trademark

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The Plaintiff in this trademark lawsuit is a West Lafayette, Indiana-based provider of high-quality window treatments and blinds. The Plaintiff owns a trademark registration for GENESIS in connection with “window blinds, window shades, and venetian blinds,” with a claimed date of first use of April 1, 1994.

The Defendants are Coulisse, a Dutch company (operating out of Miami, Florida) that has been selling window coverings since 1992. Coulisse has begun promoting a line of “Genesis” smart window coverings, consisting of “elegant screens with a focus on functionality.”

Stay tuned for the Defendants’ response, but the easiest solution seems to be a quick rename of their Genesis concept line, which is just one of several available lines. A few promotional documents will require some text change but that’s fairly easily accomplished.

Lafayette Venetian Blind, Inc. v. Coulisse Distribution LLC et al.

Case Number: 4:22-cv-00047
File Date: June 29, 2022
Plaintiff: Lafayette Venetian Blind, Inc. v. Coulisse Distribution LLC
Plaintiff Counsel: William P. Kealey, David M. Stupich of Stuart & Branigin LLP
Defendant: Coulisse Distribution LLC, Coulisse Holding USA Inc.
Cause: Declaratory Relief, Trademark Infringement, Unfair Competition, False Designation of Origin, Common Law Trademark Infringement
Court: Northern District of Indiana
Judge: Philip P. Simon
Referred To: Andrew P. Rodovich

Complaint:

Mid-June 2022 Indiana Intellectual Property Litigation Update

15 Wednesday Jun 2022

Posted by in Copyright, Indiana, Intellectual Property, Litigation, Northern District of Indiana, Southern District of Indiana, Trademark

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While all eyes were on the Depp/Heard defamation litigation last month, it was a quiet but interesting month in Indiana Intellectual Property litigation. Amazon and the Ligonier, Indiana-based perfumery have now fully briefed Amazon’s Motion to Dismiss. RE/MAX also seeks to dismiss its Defendants’ counterclaims. YouTuber Omi in a Hellcat is claiming lack of personal jurisdiction and improper venue, although he needed to quickly amend (i.e. increase) their Indiana sales statistics via Declaration after filing a Motion to Dismiss.

Which Indiana intellectual property lawsuits are you following most closely?

Noble Roman’s, Inc. v. Gateway Triangle Corp. et al. (SD, filed 2/5/2021) – No update this month.

Egglife Foods, Inc. v. Crepini, LLC (ND, filed 5/28/2021) – No update this month.

Sears Authorized Hometown Stores, LLC v. Lynn Retail, Inc. et al. (SD, filed 6/4/2021) – The parties’ discovery deadlines were extended to June 17, 2022.

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

AWGI, LLC et al. v. CLD Trucking Co. d/b/a Atlas Moving Systems AMS (SD, filed 7/22/2021) – On June 13, 2022, the Defendant was ordered to pay the Plaintiffs $10,020.50 in attorney’s fees and costs.

RE/MAX, LLC et al. v. Dulin et al. (SD, filed 8/24/2021) – On May 27, 2022, the Plaintiffs filed their Reply Brief in support of their Motion to Dismiss Defendants’ Counterclaims.

Forest River, Inc. v. inTech Trailers, Inc. (ND, filed 8/31/2021) – No update this month.

Thomas v. ooShirts, Inc. et al. (SD, filed 9/24/2021) – No update this month. The parties have until July 1, 2022 to file dismissal documents.

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

Innovative Sports Management Inc. v. La Jalisco LLP (SD, filed 12/15/2021) – No update this month.

Gabet et al. v. Amazon.com. Inc. et al. (ND, filed 1/20/2022) – The Plaintiffs filed their Response to the Defendants’ Motion to Dismiss on May 20, 2022. Amazon filed its Reply Brief on May 27, 2022. On June 8, 2022, the Plaintiffs filed a Response to the Motion to Transfer Case.

Reid v. Stephenson (SD, filed 1/27/2022) – No update this month.

Autoniq, LLC v. Laser Appraiser, LLC (SD, filed 2/21/2022) – The lawsuit was dismissed on May 26, 2022.

Microsoft Corporation v. Solution Hat, LLC d/b/a Think Global et al. (SD, filed 2/25/2022) – The parties held a telephonic status conferences on June 13, 2022. A status report regarding settlement must be filed by July 15, 2022.

The American Automobile Association, Inc. v. All American Auto Hail Dent Repair LLC d/b/a AAA Hail Repair et al. (SD, filed 3/23/2022) – No update this month.

NuStar Enterprises LLC v. Reloaded Merch LLC et al. (ND, filed 4/1/2022) – The Defendants filed a Motion to Dismiss for Lack of Personal Jurisdiction and Improper Venue. Shortly thereafter, a Declaration was filed by Defendants correcting the data in the Motion re: Indiana sales.

Mapes v. Top Tier Marketers LLC d/b/a Artfily et al. (SD, filed 4/4/2022) – On June 2, 2022, the Plaintiff’s Motion for Default Judgment was denied because the Plaintiff has not yet obtained a Clerk’s entry of default against Defendants.

Broadcast Music, Inc. et al. v. Warehouse L.L.C. d/b/a The Verve et al. (SD, filed 4/6/2022) – The lawsuit was dismissed with prejudice and without costs on June 2, 2022.

The Evolutionary Level Above Human, Inc. v. Havel et al (ND, filed 5/18/2022) – On June 14, 2022, Defendants Havel and Weaver each filed a Motion for Extension of Time to File Answer.

May 2022 Updates

April 2022 Updates

March 2022 Updates

February 2022 Updates

January 2022 Updates

December 2021 Updates

Indiana Lawsuit filed over Intellectual Property of Heaven’s Gate Mass Suicide Group

23 Monday May 2022

Posted by in Copyright, Indiana, Intellectual Property, Litigation, Northern District of Indiana, Trademark

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The Plaintiff in this lawsuit is The Evolutionary Level Above Human, Inc., a for-profit foundation claiming to own all physical property and intellectual property of the Heaven’s Gate religious group, which committed the largest mass suicide in U.S. history in 1997. Among the claimed intellectual property are copyrights in audio cassettes, audiovisual works, fabric designs, lithographic prints, and literary works, as well as various trademark registrations for HEAVEN’S GATE.

The Defendants, three individuals, are accused of publicly sharing copies of the audio tapes and video tapes on a free online file sharing and storage site called “4Shared.com.” Per the Complaint (below), Defendant Havel anticipated being sued for sharing the works, posting the following comment on his website:

“So just weeks ago, [a third party] who I had been in contact with on and off for years sent me the digitized audios, all in .mp3 format and I quickly sent them to [Defendant Bartel] and someone else who I know I can trust to be sure to upload them to the internet in mulitple [sic] places so that even if [the Foundation] somehow sue us it will be far too late to keep them from being available to those who want to listen to them.”

The Defendants subsequently provided live streamed discussions advising others how to obtain copies of the allegedly infringed works. Numerous works were live-streamed on YouTube. T-shirts bearing the Plaintiff’s registered trademarks has been advertised by the Defendants. The Complaint alleges further actions taken by the Defendants to prevent the Plaintiff from enforcing its copyrights.

Having anticipated a lawsuit, presumably the Defendants have some type of solid defense ready to go. I expect fair use arguments (criticism, commentary, news reporting, teaching), and probably some challenges to the foundation’s ownership of the claimed intellectual property. But t-shirt sales don’t usually go hand-in-hand with valid fair uses so we’ll just wait for the Defendants’ Answer for more clarification of their goals in sharing the works.

The Evolutionary Level Above Human, Inc. d/b/a/ The Telah Foundation v. Havel et al.

Case Number: 3:22-cv-00395-JD-MGG
File Date: May 18, 2022
Plaintiff: The Evolutionary Level Above Human, Inc. d/b/a The Telah Foundation
Plaintiff Counsel: Isaac S. Crum of Messner Reeves LLP
Defendant: Steven Robert Havel, Cathy JoAnn Weaver, Jason Bartel
Cause: Federal Copyright Infringement, Contributory Copyright Infringement, Conspiracy, Federal Trademark Infringement
Court: Northern District of Indiana
Judge: Jon E. DeGuilio
Referred To: Michael G. Gotsch, Sr.

Complaint:

Omi in a Hellcat Threatens $30 Million Counterclaim in YouTube Response to Trademark Infringement Lawsuit

25 Monday Apr 2022

Posted by in Indiana, Intellectual Property, Litigation, Trademark

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Ordinarily it’s not wise for a client to speak publicly about their ongoing legal proceedings. But when the client is a YouTube celebrity, I guess it’s expected that there will be some type of video response. Omi in a Hellcat, the defendant in a recently-filed Indiana trademark infringement lawsuit involving his Reloaded Merch brand, has posted an explosive video response on YouTube promising a full legal defense along with a $30 million counterclaim.

Presumably the Defendant has received counsel from attorneys, but you’d be hard pressed to figure out what he was told from his video comments. Starting off by accusing the Plaintiff of trying to steal his hard work, the Defendant then indicates that he intends to litigate and file a petition to cancel against the Plaintiff’s RELOADED trademark registration.

The Defendant claims to have evidence of garments created prior to the Plaintiff’s date of first use. If those garments were created under the Reloaded brand (he does not specify in the video) and sold in interstate commerce (again, not specified), that could be useful for proving priority. Actual court filings by the Defendant’s counsel may give us that information.

With no indication that the Defendant will relinquish his Reloaded Merch brand, I’d expect this litigation to be stayed pending the resolution of the TTAB cancellation proceeding, should that be filed today as mentioned in the video. We’ll post the relevant TTAB documents once filed. Stay tuned for updates.