BMI has found another target in Indiana. This time it’s the Thirty Six Saloon, a relaxed roadhouse alongside US-36 in Rockville, Indiana, home of the Parke County Covered Bridge Festival.
BMI allegedly reached out to the Defendants over thirty-five (35) times since April 2019 in an attempt to sell them the required public performance license to play music in the roadhouse. With no apparent satisfactory response, BMI now brings a lawsuit with 4 claims of copyright infringement based on the following playlist being performed at Thirty Six Saloon without a license on November 27, 2019 (the night before Thanksgiving):
Stay tuned for updates.
Broadcast Music, Inc. et al. v. Thirty-Six Saloon, LLC d/b/a Thirty Six Saloon Et al.
Case Number: 2:22-cv-00305-JRS-MJD File Date: July 27, 2022 Plaintiff: Broadcast Music, Inc.; Cotillion Music, Inc.; Terry Stafford Music Co.; House of Cash, Inc.; Sony/ATV Songs LLC d/b/a Sony/ATV Tree Publishing; Round Hill Music LP d/b/a Round Hill Works; Tokeco Tunes; EMI Blackwood Music Inc.; Warner-Tamerlane Publishing Corp.; Lucky Thumb Music; Noah’s Little Boat Music; Sea Gayle Music LLC d/b/a New Songs of Sea Gayle; Eldorotto Music Publishing; Big Gassed Hitties; Spirit Music Group Inc. d/b/a Spirit of Nashville One Plaintiff Counsel: April A. Wimberg of Dentons Bingham Greenebaum Defendant: Thirty-Six Saloon, LLC d/b/a Thirty Six Saloon; Mark Vanderheyden Cause: Copyright Infringement Court: Southern District of Indiana Judge: James R. Sweeney II Referred To: Mark J. Dinsmore
Summer is here! There’s a big new trademark/design patent lawsuit between shoe giants PUMA and Brooks and few older lawsuits have finally settled. Based on ambiguities in the sales information provided by Omi in a Hellcat in his Motion to Dismiss, he now faces additional jurisdictional discovery from his plaintiff.
Thomas v. ooShirts, Inc. et al. (SD, filed 9/24/2021) – The parties did not meet the Court’s July 1, 2022 deadline to file dismissal documents and have requested until July 28, 2022 to further negotiate settlement terms.
Edutainment Live, LLC v. Video Game Palooza et al. (SD, filed 10/11/2021) – The parties held a Settlement Conference with the Court on June 30, 2022, but concluded without settlement. No other updates.
Reid v. Stephenson (SD, filed 1/27/2022) – On July 5, the Court issued an Order to Show Cause and the Plaintiff filed its Response to Order to Show Cause on July 14, 2022.
NuStar Enterprises LLC v. Reloaded Merch LLC et al. (ND, filed 4/1/2022) – On June 16, 2022, the Plaintiff filed a Motion for Leave to Conduct Jurisdictional Discovery, which was granted on June 17, 2022. The Defendants must respond to the jurisdictional discovery requests by July 29, 2022. The Plaintiff’s Response to the Defendants’ Motion to Dismiss is due 21 days after receiving the jurisdictional discovery responses.
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
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?
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.
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.
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.
No new trademark or copyright lawsuits were filed in Indiana in the last 30 days. Several lawsuits were dismissed. All in all, a quiet month and we’ll look forward to more activity as we move into the summer.
Gabet et al. v. Amazon.com. Inc. et al. (ND, filed 1/20/2022) – The Plaintiff filed an Amended Complaint on April 25, 2022. Amazon filed a new Motion to Dismiss on April 29, 2022.
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