Category Archives: Trade Secret

Mid-April Indiana IP Litigation Update

15 Thursday Apr 2021

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

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Just a few updates of note since mid-March in Indiana trademark and copyright lawsuits. Next month should see more filings in the current lawsuits as defendants start to make appearances.

Midcontinent Independent System Operator, Inc. v. Sullivan (SD, 1/18/2021) – The parties have settled and a Consent Judgment was entered on April 7, 2021. The Defendant has agreed to stop using the Plaintiff’s trademarks, with each party to bear its own costs and attorneys’ fees.

Schnebelt v. Anglotopia, LLC (ND, filed 1/18/2021) – No update since the Notice on Settlement on March 10, 2021.

Noble Romans, Inc. v. Gateway Triangle Corp. et al. (SD, filed 2/5/2021) – The Plaintiff filed an Amended Complaint on April 2, 2021.

The Amended Complaint has dropped the claims of Conversion and Theft, retaining just the claims of Breach of Franchise Agreement and Trademark Infringement. As a result, the Defendants’ Motion to Dismiss filed on March 8 was denied without prejudice as moot.

Heartland Consumer Products LLC v. Speedway, LLC (SD, filed 2/5/2021) – No update yet.

Indianapolis Bouldering, LLC v. BP Holdings Co. LLC et al. (SD, filed 2/11/2021) – No update yet.

Watch Communications v. Jarman et al. (SD, filed 3/8/2021) – The Defendants’ counsel filed an appearance on April 6, 2021 and filed a 14-day Notice of Initial Extension of Time. As such, the new response deadline is April 21, 2021.

La Michoacana Meat Market TM Holdings, LLC v. Lopez et al. (SD, filed 3/9/2021) – No update yet.

La Michoacana Meat Market TM Holdings, LLC v. Galan et al. (ND, filed 3/9/2021) – No update yet.

Vroom, Inc. v. Midwest Motors LLC et al. (SD, filed 3/24/2021) – No update yet.

Delta Faucet Company v. Iakovlev et al. (SD, filed 3/25/2021) – On March 30, 2021, Delta Faucet Company filed an Amended Complaint.

ABI Attachments, Inc. v. Kiser Arena Specialists, Inc. et al. (SD, filed 4/12/2021) – No update yet.

Equestrian Arena Equipment Manufacturer Sues Competitor for Breach of Contract, Misappropriation of Trade Secrets

13 Tuesday Apr 2021

Posted by in Business Law, Indiana, Intellectual Property, Litigation, Patent, Southern District of Indiana, Trade Secret, Trademark

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Here’s an interesting lawsuit, which seems like it wants to be a patent lawsuit but instead is masquerading as a breach of contract or trade secret lawsuit.

In September 2016, the parties allegedly into a “Product Lines Purchase Agreement,” by which the Plaintiff purchased “all specifications, shop drawings, blueprints, records and intellectual property rights” relating to the Kiser DragMaster and Kiser Edge, equipment used for grooming and maintaining equestrian arenas.

Despite selling the intellectual property for those products to Plaintiff as a part of the deal, the Defendants are now accused of selling knockoff products, although under different product names. It seems that what Plaintiff really wants to do is prevent the sale of competing products, but they don’t have any patents to truly protect their product designs. As such, the Plaintiff’s lawyers had to get creative and try to bring breach of contract, trademark, and trade secret claims.

Apparently, representatives of the Defendants have referred to the Defendants’ products as a “redesign” of Plaintiff’s DragMaster. Even if true, the Defendants could claim a nominative fair use defense, as such references seem to actually be referring to old DragMaster products. The law around comparative advertising is pretty well-settled in favor of consumer knowledge, absent evidence of false endorsement. Competitors comparing a new product to an older competing product via name is typically allowed.

By way of example, the Complaint (below) contains the following diagram comparing the Defendants’ “Kiser 1000” to the Plaintiff’s “ABI DragMaster”:

Similarly, the “Kiser 200” is compared to the “ABI Edge”:

These are the types of comparison drawings you’d typically see in a patent lawsuit. All of the features being compared are utilitarian product features. The product names (i.e. trademarks) aren’t compared because they aren’t similar at all…Kiser 1000 vs. ABI DragMaster.

Proving a breach of contract or misappropriation of trade secrets will necessarily depend on proving that the Defendants’ products are actually infringing on the intellectual property owned by Plaintiff. Without any prior patent protection, that could be difficult to do in this context.

Stay tuned to see how the Defendants respond, perhaps with a Motion to Dismiss for some of the claims.

ABI Attachments, Inc. v. Kiser Arena Specialists, Inc. et al.

Court Case Number: 1:21-cv-00890-SEB-DLP
File Date: Monday, April 12, 2021
Plaintiff: ABI Attachments, Inc.
Plaintiff Counsel: James M. Lewis, Michael J. Hays of Tuesley Hall Konopa LLP
Defendant: Kiser Arena Specialists, Inc., Robert D. Kiser, James Kiser
Cause: Breach of Contract, Misappropriation of Trade Secrets, Lanham Act Violations, False Designation, False Advertising, Common Law Unfair Competition, Common Law Trademark Misappropriation, Unjust Enrichment
Court: Southern District of Indiana
Judge: Sarah Evans Barker
Referred To: Doris L. Pryor

Complaint:

Rural Internet Provider sues Ex-Employee for False Designation of Origin, Trade Secret Violations, Breach of Contract

09 Tuesday Mar 2021

Posted by in Indiana, Intellectual Property, Litigation, Southern District of Indiana, Trade Secret

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This lawsuit involves a rural broadband internet provider and an ex-employee who allegedly misappropriated proprietary information to set up a competing company.

The primary Defendant, Jarman, is alleged to have undertaken several actions contrary to the interest of his employer, as well as making false representations of an ongoing affiliation with the Plaintiff, Watch Communications of Rushville, Indiana, while conducting business on behalf of his new company. While much of the Complaint (below) implicates employment law issues, readers of the Indiana Intellectual Property Blog will be particularly interested in the “false designation of origin” claim based on an unregistered trademark, in addition to the trade secret claims. The Defendants are alleged to have misappropriated Plaintiff’s financial records, business, marketing, and strategic plans, customer lists, and personnel and payroll records regarding current and former employees, vendors, and suppliers.

As a reminder, a Complaint represents just one party’s side of the story, and the Defendants’ Answer may present the same scenarios in a much different light. Often the truth lies somewhere in the middle. Stay tuned for updates, particularly on the intellectual property-related claims.

Watch Communications v. Jarman et al.

Court Case Number: 1:21-cv-00550-RLY-MJD
File Date: Monday, March 8, 2021
Plaintiff: W.A.T.C.H. TV Company d/b/a Watch Communications
Plaintiff Counsel: Rachel J. Guin, Andrew P. Simmons of Rothberg Logan & Warsco LLP
Defendant: Greg Jarman, Roger Criblez, Tom Kolb, B.Todd Mosby, GRiT Technologies, LLC
Cause: False Designation of Origin, Unfair Competition, Breach of Contract (Confidentiality), Breach of Contract (Competing During Employment), Breach of Contract (Fiduciary Duty of Loyalty), Indiana Uniform Trade Secrets Act, Violation of the Defend Trade Secrets Act of 2016, Civil Conspiracy, Common Law Unfair Competition
Court: Southern District of Indiana
Judge: Richard L. Young
Referred To: Mark J. Dinsmore

Complaint:

New Indianapolis Bouldering Facility sues Accusers for Declaratory Judgment of Non-Infringement

12 Friday Feb 2021

Posted by in Copyright, Indiana, Intellectual Property, Litigation, Southern District of Indiana, Trade Dress, Trade Secret

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The Plaintiff in this action for declaratory judgment of non-infringement is a yet-to-open rock climbing gym in Indianapolis, Indiana. More specifically, the planned gym will provide a venue for “bouldering,” a type of rock climbing low enough to the ground to be done without safety ropes.

The Defendants operate similar “bouldering” facilities in Washington (State), Texas, and Minneapolis. As admitted in the Complaint (see Complaint, Section 10, below), “For a brief period of time in late 2020, one of Plaintiff’s members used content from one of Defendant’s websites as placeholder text during the website design process. This text was removed after two weeks of being publically available, and has been replaced by Plaintiff’s current website: https://www.northmassboulder.com/.”

The Defendants contacted the Plaintiff via counsel in December 2020, at which time the “infringing” content was removed from Plaintiff’s website. Nonetheless, dialogue between the parties’ counsel was apparently unproductive and it became clear that Defendants were going to sue Plaintiff. As such, the Indianapolis-based Plaintiff seized the initiative and filed a declaratory judgment action to prove their lack of infringement.

Declaratory judgment actions are always interesting as they flip the usual filing paradigm (i.e. the infringed filing against the infringer). There is an admitted temporary use by Plaintiff of some of the Defendant’s online content but other issues like trade dress and trade secrets are raised in the Complaint and will be interesting to follow to resolution. Stay tuned for updates.

Indianapolis Bouldering, LLC v. BP Holdings Company, LLC et al.

Court Case Number: 1:21-cv-00344-JMS-JMD
File Date: February 11, 2021 
Plaintiff: Indianapolis Bouldering, LLC
Plaintiff Counsel: Jonathan G. Polak, Steven T. Henke of TAFT STETTINIUS & HOLLISTER LLP
Defendant: BP Holdings Company, LLC, Seattle Bouldering Project, LLC, Minneapolis Bouldering Project, LLC, and Austin Bouldering Project, LLC
Cause: Invalidity or Unenforceability of Intellectual Property Rights, Non-Infringement of Intellectual Property Rights, Non-Violation of Alleged Trade Secrets
Court: Southern District of Indiana
Judge: Jane Magnus-Stinson
Referred To: Mark J. Dinsmore

Complaint:

Indiana Trade Secret Litigation Update – Precision Drone v. Channel Masters

24 Tuesday Mar 2015

Posted by in Indiana, Intellectual Property, Litigation, Southern District of Indiana, Trade Secret

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Precision Drone, LLC designs and makes drones and software for use by farmers to monitor crops. According to the Complaint (see below), in September 2014, Precision made a deal with Channel Masters, LLC for Channel to purchase and resell the PaceSetter™ Drone in exchange for a commission on each drone and related parts sold. Precision gave Channel a demonstration drone and training manual and trained Channel’s agents on the use of the PaceSetter drone. As part of the Service Agreement, Channel agreed to not disclose confidential information and signed a non-compete. According to Precision’s complaint, Channel began working for AgriImage, a direct competitor in the agricultural drone market, and began promoting AgriImage drones instead of Precision drones.

At the Nebraska Power Farming Show in December 2014, Precision saw Channel’s agent, Tom Owen, using Precision images, training manual, and sales pitch to resell AgriImage drones. A picture of Mr. Owen using an image and “working the AgriImage booth” is Exhibit C in the court documents embedded below. Then, the very next day after the Nebraska farm show, Channel sent Precision a letter attempting to terminate the Service Agreement without cause. Precision has responded by filing a lawsuit for Breach of Contract and Misappropriation of Trade Secrets.

Precision Drone LLC v. Channel Masters LLC

Court Case Number: 1:15-cv-00476-LJM-TAB
File Date: Monday, March 23, 2015
Plaintiff: Precision Drone LLC
Plaintiff Counsel: John Stephen Terry, Russell B. Cate, and William Edwin Wendling, Jr., of Campbell Kyle Proffitt, LLP
Defendant: Channel Masters LLC
Cause: Breach of Contract, Misappropriation of Trade Secrets
Court: Southern District of Indiana
Judge: Judge Larry J. McKinney
Referred To: Magistrate Judge Tim A. Baker