BLOGS: Georgia IP Litigation

Powered by Blogger
Add to Technorati Favorites

Tuesday, October 6, 2015, 4:40 PM

Hi-Tech Accuses Dynamic of Trademark Infringement and False Claims of Steroid Powered Products

On September 28, 2015, Hi-Tech Pharmaceuticals, Inc. (“Hi-Tech”), a Georgia corporation, brought a trademark infringement action against Dynamic Sports Nutrition, LLC d/b/a Anabolic Research (“Dynamic”), and Brian Clapp (“Clapp”) (collectively Dynamic and Clapp are referred to as “Defendants”).  The complaint asserts claims for trademark infringement, false designation of origin and unfair competition (state and federal), false advertising, deceptive trade practices, and Georgia RICO violations. 

Hi-Tech, according to the complaint, “is a producer of high quality dietary supplements, including numerous products designed for muscle and body building, such as testosterone boosters, muscle-gainers, muscle preservation products, and legal hormone boosters.”  The complaint relates to DIANABOL® - “a muscle preservation dietary supplement for consumers seeking to gain muscle.”  Hi-Tech owns the registration to this mark (U.S. Reg. No. 3,378,354).

Dynamic has sought a trademark for D-Anabol 25 (U.S.Serial No. 85/280,036), which was denied by the USPTO based on the DIANABOL® mark.  The below image pictures the products of the two companies side by side.
The Hi-Tech Complaint paints a comprehensive picture quoting the USPTO's Office Action denying registration in paragraphs 23 and 24:
Online literature and/or advertisements for applicant’s product [DSN’s D-ANABOL] demonstrate that applicant’s and registrant’s [Hi-Tech’s] goods are:  (1) marketed through the same channels; (2) directed to the same potential customers; and (3) even promoted as comparable competing products wherein they provide, in part, ‘If you are looking to buy Dinabol … online, our D-anabol 25 is exactly what you need. . . . The dominate feature of the applicant’s mark is nearly identical in appearance to registrant’s mark.  The letter I is merely replaced with a hyphen.
Hi-Tech cites a number of different websites used by Defendants to promote the product, including,, and  Communications between representatives of Hi-Tech and Clapp are referenced that illustrate, according to the complaint, a pattern of deception regarding Clapp’s relationship with Dynamic and his interest protecting intellectual property rights.  After Hi-Tech learned of Clapp’s relationship, the complaint asserts that Clapp asserted that D-ANABOL 25 had an earlier first use date and that Dynamic continued to use that mark even after the claimed misperception of first use date was straightened out.

In paragraphs 56 through 123, the complaint set forth detailed allegations of specific false advertising claims alleged to have been made by Dynamic, including the mischaracterization of ingredients used in Dynamic products and the effect of the disclosed ingredients.  It remains to be seen whether the opening foray in this litigation will be vigorously opposed or the suit will be quickly settled, as often occurs with trademark lawsuits.

The case is Hi-Tech Pharmaceuticals, Inc. v. Dynamic Sports LLC, et al., No. 1:15-cv-03393-MHC, filed 09/28/15 in the U.S. District Court for the Northern District of Georgia, Atlanta Division, and assigned to U.S. District Judge Mark H. Cohen.

Labels: , , , , ,

Thursday, September 24, 2015, 1:54 PM

NexusCard Seeks Wonderland in Georgia After Alice Motion in Texas

NexusCard, Inc. (“NexusCard”), a California corporation with its principal place of business in Lake Forest, California, filed a patent infringement action on August 18, 2015, against grocery chain Winn-Dixie Stores, Inc. (“Winn-Dixie”), a Florida corporation, with a principal place of business in Jacksonville, Florida, relating to 5,924,080 (the ‘080 Patent) directed to a computerized discount redemption system, which published on July 13, 1999.  Figure 1 from the ‘080 Patent is reproduced below:

NexusCard asserts that the Winn-Dixie Rewards Program incorporates all the elements of several claims of the ‘080 Patent.  As can be seen from Figure 1 above, the ‘080 Patent details the steps routinely employed in seemingly all retail point-of-sale rewards programs.  In addition, other claims of the '080 patent cover related activities such as advertising the program and analyzing the data.

The prayer for relief does not seek lost profits, a recovery for willful infringement, or a finding that the case is exceptional.  Instead, NexusCard merely seeks a reasonable royalty plus prejudgment and post-judgment interest plus “such other and further relief as the Court may deem just and proper."

In June, NexusCard filed similar suits against other grocery and pharmacy chains, including Kroger, Walgreens, and CVS, in the Eastern District of Texas.  Several of those cases have already been settled and dismissed, but Kroger opted to file a motion to dismiss on the basis that the '080 patent is directed to unpatentable subject matter and therefore is invalid under 35 U.S.C. § 101 in view of the Supreme Court's guidance in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014) and decisions of other courts following Alice.  A defendant in a separate case filed a similar motion to dismiss, and also asserted that NexusCard failed to state a plausible claim for direct or indirect infringement.  NexusCard filed the current suit against Winn-Dixie while those motions to dismiss were pending, showing no hesitation to move forward despite any concerns raised as to the '080 patent's validity in the Texas suits.

The case is NexusCard, Inc. v. Winn-Dixie Stores, Inc., No. 4:15-cv-138, filed in the U.S. District Court for the Middle District of Georgia, Columbus Division, on August 18, 2015, and assigned to U.S. District Judge Clay D. Land

Labels: , , ,

Wednesday, August 12, 2015, 11:47 AM

Atlanta Rapper Rich Homie Quan Seeks Cancellation or Transfer of Trademarks and Over $2,000,000 in Damages

Think It's A Game Entertainment, LLC ("TIG"), an Atlanta-based production company, Fly Merchandise Enterprises, LLC ("Fly"), and Girvan Henry ("Henry"), have left Atlanta rapper Rich Homie Quan feeling "some type of way."

Dequantes Lamar, better known by his stage name "Rich Homie Quan" ("Quan"), filed suit in the Northern District of Georgia against TIG, Fly, and Henry, alleging he incurred over $2,000,000 in damages based on a number of causes of action, including breach of contract, trademark infringement, and unfair competition.

Quan has achieved notoriety in recent years for his recording singles, "Type of Way" (certified Gold by the RIAA according to the complaint) and "Flex," among others.  The complaint alleges that Quan and TIG signed a "memorandum purporting to be a recording agreement," which called for Quan to receive a $19,200 advance and 50% of all profits from sales of Quan's records.  Quan alleges that the advance and the 50% split have not been paid.  According to the complaint, Quan "did not have the benefit of legal representation at the time he entered into the TIG Memorandum, nor was he advised to seek counsel."  Further, the complaint states that without Quan's consent Defendants entered into separate agreements with other record labels, including Def Jam.  Under those separate agreements, the Defendants were paid several hundred thousand dollars as an advance and further royalties from sales of Quan's music, which the complaint alleges were never passed on to Quan.

According to the complaint, Henry and Fly also filed and obtained trademark registrations for "RICH HOMIE QUAN" and a corresponding logo, shown below, which issued as U.S. Reg. No. 4,483,756 and U.S. Reg. No. 4,746,133, respectively.  Quan alleges that these applications were filed without his consent or knowledge, and that he is not listed as a "creator, author, or owner" of the marks, despite his use of the "Rich Homie Quan" stage name in connection with his career in entertainment.  The complaint seeks a finding that the Defendants committed fraud on the PTO, and asks the Court to cancel the registrations or, in the alternative, to transfer ownership of the marks to him.  The complaint alleges that Defendants' conduct also amounts to unfair competition under the Lanham Act, and seeks redress for damages incurred in connection with Defendants' use of the marks.

"Rich Homie Quan Logo" - U.S. Reg. No. 4,746,133

The complaint also seeks to have the "memorandum" declared unenforceable for lacking "material terms" and that the agreement be rescinded, or in the alternative, for breach of contract.  The complaint further contains counts for breach of fiduciary duty, unjust enrichment, conversion, and violation of the Georgia Deceptive Trade Practices Act (O.C.G.A. 10-1-370).  Quan seeks equitable title to assets purchased with "funds due Artist" relating to the agreement, recovery of damages, and attorneys' fees and costs.

The case is Lamar v. Think It's A Game Entertainment, LLC et al., Case No. 1:15-cv-2775-TCB, filed August 5, 2015 in the Northern District of Georgia, Atlanta Division, and is assigned to Judge Timothy Batten.

Labels: , , , ,

Tuesday, August 11, 2015, 10:23 AM

Court Recognizes Alice Decision Potentially Impacts Case by Allowing Late Motion for Judgment on Pleadings

Mobile Telecommunications Technologies, LLC (“Mobile”)[background on company], initiated a patent infringement case against United Parcel Service, Inc. (“UPS”), in 2012 on U.S. Patent No. 5,786,748 on a method and apparatus for giving notification of express mail delivery.

UPS filed a Motion for Summary Judgment [Dkt. 95], which was submitted to a Special Master for consideration.  The Special Master issued a Report and Recommendation (“R&R”) [Dkt. 139] on July 8, 2015, recommending that the motion be granted in part and denied in part.  Both parties filed objections to the R&R [Dkts. 142 and 143].  In addition to its objection, UPS filed a motion for judgment on the pleadings [Dkt. 145] arguing that the asserted patent should be found invalid under 35 U.S.C. 101 in light of the Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, et al., 134 S.Ct. 2347, 2350 (2014).  In Alice, the Supreme Court emphasized that “a patent-ineligible concept” or “abstract idea” is not made patentable by “generic computer implementation” described as a method claim. Id.

Judge Totenberg agreed with UPS that the resolution of this motion could obviate the need for deciding the summary judgment motion, and she therefore decided to allow the motion despite its lateness in the procedural timeline.  She ruled that it presented a threshold question of validity, which, “in the interest of judicial economy and efficiency,” was not appropriately deferred to trial.

The Court removed the pending summary judgment motion from the docket by denying it without prejudice, but committed to reviving the motion herself if UPS’s motion for judgment on the pleadings is denied.  This action achieved the removal of a decision on the summary judgment motion from the Court’s time tracking requirements, while avoiding adding a burden on either party to resurrect the summary judgment motion.

The case is Mobile Telecommunications Technologies, LLC v. United Parcel Service, Inc., Docket No. 148, decided August 4, 2015, in 1:12-cv-032223-AT, in the United States District Court for the Northern District of Georgia, Atlanta Division, assigned to Judge Amy Totenberg.

Labels: , , , , , ,

Tuesday, August 4, 2015, 10:36 AM

Judge Ross Examines Morass of Pleadings and Refines Dispute to Supported Claims of Patent, Copyright, and Trade Dress Infringement

In an earlier post today we reported on the Third Amended Complaint filed by Lisa Duer (“Duer”), a resident of Woodstock, Georgia, alleging patent infringement, trademark infringement, copyright infringement, and trade dress infringement action against Bensussen Deutsch & Associates, Inc. (“BDA”), a Washington corporation, and Eli Lilly and Company (“Lilly”), an Indiana corporation (collectively the “Defendants”).  This post addresses Judge Eleanor L. Ross’s Order of July 8, 2015, which gave rise to that filing.

On July 8, Judge Ross ruled on three motions, one filed by Defendants and two by Plaintiffs.  The Court granted in part and denied in part the motion to dismiss of the Defendants and the motion to allow a Second Amended Complaint by Duer and denied Duer’s motion to file the Third Amended Complaint “as currently submitted.”  However, the Court allowed a more limited Third Amended Complaint – “limited to the inclusion of Plaintiff’s additional trademark infringement claim.”
Read more »

Labels: , , , , , , , , , ,

Individual Inventor Alleges Eli Lilly and BDA Overdosed on Patented Dosage Adherence Tool

In the latest chapter of a year-long battle between an individual inventor and two companies, Lisa Duer (“Duer”), a resident of Woodstock, Georgia, filed her Third Amended Complaint alleging patent infringement, trademark infringement, copyright infringement, and trade dress infringement action on July 24, 2015 against Bensussen Deutsch & Associates, Inc. (“BDA”), a Washington corporation, and Eli Lilly and Company (“Lilly”), an Indiana corporation.  The amendment was filed pursuant to an Order entered by Judge Eleanor L. Ross on July 8, 2015, which is discussed in a parallel post.

The amended complaint paints a picture of systematic corporate abuse of a small business owner by BDA and Lilly in which they recognized the value of Duer’s established product, negotiated to license the product, and then, when Duer found some terms unacceptable, discontinued negotiations and began using the product anyway.  According to the complaint, the repeated demands that improper and infringing activity cease were uniformly ignored.
Duer’s Take-n-Slide™ product is a “dosage adherence tool” to remind prescription users on a daily basis as to their last prior dosage intake.  The product, simple and effective in its functionality, is pictured below:
Duer obtained U.S. Patent No. 7,614,358, issued on November 10, 2009, relating to the dosage adherence tool and also copyrighted the instructions included with the product (Reg. Nos. VA0001911109, VA0001431705).  The complaint further alleges that the product “consists of an inherently distinctive combination of design, shape and color scheme.”  Before a dose is taken for a day the color green appears to the right of the slider.  After taking a dose the user moves the slider for that day and the color red appears on the left.
Discussions between Duer, on the one hand, and Lilly and BDA on the other occurred in 2010 and 2011 through Duer’s distributor, Richard Cosgrove of Anatomed, Inc.  Lilly wanted Duer to license the product to BDA, as BDA was already a Lilly approved supplier.  According to the complaint, when Duer informed BDA that a proposed two-year non-solicitation provision was objectionable, BDA abruptly ended discussions and later stated Lilly had decided not to move forward with the product.  Two years later in 2013, Duer learned that Lilly was using the product.  The complaint alleges that even the insert sheet was substantially copied and inserted with the product.  Finally, BDA and Lilly are accused of using the Take-n-Slide™ trademark or confusingly similar marks.
The suit seeks an injunction, damages, enhanced damages, attorney’s fees, costs, and other “relief as the Court may deem just and equitable.”
The case, originally filed in May 2014, is Lisa Duer v. Bensussen Deutsch & Associates, Inc., and Eli Lilly and Company, No. 1:14-cv-01589-ELR, and the Third Amended Complaint was filed in the U.S. District Court for the Northern District of Georgia, Atlanta Division, on July 24, 2015.  The case is assigned to U.S. District Judge Eleanor L. Ross.

Labels: , , , , ,

Monday, August 3, 2015, 10:53 AM

Southern Mills Files Patent Suit Against Int’l Textiles over its Glide™ Product

Southern Mills, Inc. (“Southern Mills”), a Georgia corporation doing business as TenCate Protective Fabrics, filed a patent infringement action on July 15, 2015 against International Textiles Group, Inc. f/k/a Safety Components International, Inc. (“Int’l Textiles”), a Delaware corporation, relating to U.S. Patent No. 8,898,821 (the ‘821 Patent) directed to a flame resistant directionally-dependent fabric.

Southern Mills accuses an Int’l Textiles product marketed under the Glide™ trade name of infringing the ‘821 Patent.  The complaint explains that the face of the Glide™ product is made of a flame resistant fabric, with the fibers of the fabric comprising, on the one hand, para-aramid[i] Kevlar® filament fibers (the “Kevlar® Fiber”), and, on the other hand, meta-aramid[ii] Nomex® fibers and flame resistant viscose/rayon FR® staple fibers spun together (40% of the total Glide™ product) (the “Blend Flame Resistant Fiber”).

The complaint alleges that warp and fill weaving techniques are used to present the Kevlar® Fiber toward the wearer and the Blend Flame Resistant Fiber away from the wearer (toward any external source of heat or flame) infringing claims of the ‘821 Patent.  An image depicting the Glide™ product was included in the complaint and is reproduced below:
The complaint alleges repeated communications with Int’l Textiles before and after the ‘821 Patent issued.
In addition to direct infringement, the complaint alleges indirect infringement by inducement, alleging that Int'l Textiles touts the infringing uses and provides instructions on how to use the product in an infringing manner.  Further, Southern Mills claims that Int'l Textiles contributes to direct infringement by end users and garment manufacturers, pointing specifically to marketing materials. 
The complaint alleges that Int’l Textiles' actions are willful and seeks a finding of infringement, an injunction, damages, including enhanced damages under 35 U.S.C. § 284, attorney’s fees and expenses under 35 U.S.C. § 285, and prejudgment interest and costs.

The case is Southern Mills, Inc. v. International Textiles Group, Inc. (f/k/a) Safety Components International, Inc., LLC, No. 1:15-cv-02588-WSD, filed in the U.S. District Court for the Northern District of Georgia, Atlanta Division, on July 15, 2015, and assigned to U.S. District Judge William S. Duffey, Jr.

[i] Para-aramids are high density fibers in demand for tensile strength and grip. 
[ii] Meta-aramids are high density fibers though with less tensile strength and grip than para-aramids.

Labels: , , , ,

back to top