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Georgia IP Litigation: March 2013

BLOGS: Georgia IP Litigation

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Friday, March 29, 2013, 10:00 AM

Whitestone Marketing accuses ProGraphics of a not-so-smart move of infringing Smart Campaign® mark

Whitestone Marketing Group, LLC ("Whitestone"), sued ProGraphics Communications, LLC ("ProGraphics"), for federal and common law trademark infringement, false designation of origin and misrepresentation in commerce, false advertising, unfair competition, dilution, and misappropriation.
Whitestone creates marketing campaigns for independent retail outlets based on commonality of products from a single supplier.  The marketing program is an automated, multi-channel, direct approach without requiring input from local store owners.  Whitestone named its marketing program “Smart Campaign,” which is registered at U.S. Trademark Reg. No. 3,701,066 and provides three discrete levels of service – Silver, Gold, and Platinum.
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Monday, March 25, 2013, 4:18 PM

LEGO Builds TM and Breach-of-Contract Case on Allegations that Ex-Licensee Sold LEGO-Themed USB Drives after Sell-Off Period Ended

Danish companies LEGO Juris A/S and LEGO Systems A/S (collectively “LEGO”) have sued a Georgia-based company that they allege is an ex-licensee that continued to sell LEGO-themed products after the expiration of a sell-off period specified in a licensing agreement.

On March 20, 2013, LEGO filed a complaint in the Northern District of Georgia against Atlanta-based Digital Blue, Inc. (“Digital Blue”) for trademark infringement, dilution, unfair competition, deceptive trade practices, and breach of contract.
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Judge Pannell Declines to Reconsider Order Denying "Re-transfer" of Patent Infringement Action

File an appropriate motion.  Follow accepted procedures.  Address the relevant factors.  Present clear, concise argument.  Avoid legalese and long block quotations.

These are the directives of a recent order from Judge Pannell denying reconsideration of an order in which the Court declined to "re-transfer" a patent infringement case to the Central District of California.  As reported in our March 5, 2013 post, patentee plaintiff International Growers Supply, Inc. ("IGS") had filed a motion to re-open its infringement action, which had been transferred from the Central District of California to the Northern District of Georgia based on the "first-t0-file" rule, following the issuance of an Ex Parte Reexamination Certificate for one of its asserted patents.  The motion to re-open included a "request" that the Court "re-transfer" the infringement action back to California because the Court had dismissed the "first-filed" declaratory judgment action for lack of personal jurisdiction.  Judge Pannell denied the informal request because it was not presented as a separate motion and did not address the factors relevant to a transfer determination under § 1404(a).

At the time, we opined that IGS would be expected to file a proper motion to transfer the case to the Central District of California, giving due treatment to each of the relevant factors.  Instead, IGS opted to move the Court to reconsider its denial to "re-transfer" the case.  In denying the motion to reconsider the order, Judge Pannell stated: "Although the original reason for the case's transfer to this district has been undercut by the dismissal of the first-filed declaratory judgment action, the case is now before this court.  The court will not exercise its discretion to transfer under § 1404(a) unless the plaintiff makes the proper showing."  That proper showing would include evidence that the California court would have personal jurisdiction over all non-consenting defendants, and that the balance of convenience factors favor a transfer.  Once again, IGS may be expected to file a motion to transfer, especially now that the Court has invited such a motion.

International Growers Supply, Inc. v. Atlantis Hydroponics, Inc., et al., 1:12-cv-2728-CAP, Dkt. No. 64 (N.D. Ga. Mar. 12, 2013) (Pannell, J.).

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Friday, March 22, 2013, 4:40 PM

By the Numbers: 7-Eleven Files 2 Trademark Lawsuits in Middle District of Georgia against 9 Total Defendants Regarding 6 Accused Sites

Seven may not be a such lucky number, after all, for convenience store operators that have been using the name “7-SEVEN” for their stores in Macon, Georgia.
On March 11, 2013, 7-Eleven, Inc. (“7-Eleven”) filed two complaints in the Macon Division of the U.S. District Court for the Middle District of Georgia against various defendants for trademark infringement and dilution, unfair competition, and related state law claims.

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New York-based Design House Files Copyright and Trademark Lawsuit over MADISON Carpet Style

Armed with purported copies of invoices showing a defendant purchasing a genuine carpet product at an earlier time, and selling an accused infringing product at a later time, with the later invoice bearing the name of the genuine design, a New York-based design house has brought copyright and trademark infringement litigation against a Georgia company.

On March 8, 2013, Stacy Garcia, Inc. (“SGI”) filed its complaint in the Northern District of Georgia against The Bennett Wardlaw Company (“Bennett Wardlaw”), two individuals believed to be principals at Bennett Wardlaw, and a company owning a Comfort Suites hotel in Louisiana where the infringing carpet is alleged to have been installed.
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Wednesday, March 20, 2013, 5:57 PM

Preliminarily-Enjoined Parties in TM Case Appeal to Eleventh Circuit, which then Denies their Motion to Stay Injunction

Florida- and Utah-based providers of home alarm technology services are now complying with an order to cease uses of their acronym trademark following recent rulings against them rendered by the U.S. District Court for the Southern District of Florida and the U.S. Court of Appeals for the Eleventh Circuit.  That district court preliminarily enjoined those providers from using the acronym APT in connection with their business, and denied their motion to stay the injunction.  The enjoined providers appealed the preliminary injunction order to the Eleventh Circuit, and filed an emergency motion for a stay of the injunction, but the Eleventh Circuit likewise denied that motion.

On March 11, 2013, the Eleventh Circuit docketed an appeal filed on March 5, 2013 by Alarm Protection Technology Florida, LLC, Jacob Dahl, Adam Schanz, and Alarm Protection Technology, LLC (collectively “Appellants”).  They appealed from a February 27, 2013 order from the Southern District of Florida, granting the above-described preliminary injunction in favor of plaintiff ADT LLC (“ADT”).  In that order, the district court found, among other things, that ADT established “as a matter of law” that there was a likelihood of confusion between ADT and APT as used in connection with home alarm system products.
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Monday, March 18, 2013, 4:16 PM

East Coast Spotlight on Design Patents: Spanx v. Yummie Tummie

Certainly the recent design patent litigation between Apple and Samsung in the Northern District of California garnered significant media attention.  Design patents now reside in the media spotlight once again, but this time through East Coast litigants.  The president of a New York-based maker of women’s control tops that is a named owner of several design patents openly declared that she hopes her Georgia-based competitor “is ready for war because [she] will not lie down.”  The accused infringer actually started the litigation following its receipt of a cease-and-desist letter from the New York company’s legal counsel.

On March 5, 2013, Spanx, Inc. (“Spanx”) filed a declaratory judgment complaint in the Northern District of Georgia against Times Three Clothier, LLC d/b/a Yummie Tummie (“Yummie Tummie”), requesting the court to declare that three Spanx products do not infringe seven design patents claimed to be owned by Yummie Tummie.  The lawsuit has already generated a considerable amount of media coverage, including sources cited below and NBC’s Today Show.
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Friday, March 15, 2013, 6:09 PM

Chief Judge of Northern District of Georgia Grants Motion to Stay Pending Reexamination

On March 12, 2013, Chief U.S. District Judge Julie E. Carnes, of the U.S. District Court for the Northern District of Georgia, entered an order granting a motion to stay patent litigation brought against Defendant Diversitech Corporation (“Diversitech”) pending the conclusion of reexamination proceedings in the USPTO.
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Thursday, March 14, 2013, 12:00 AM

Real Housewives of the Northern District: Reality TV Stars Now Legal Adversaries in Copyright Battle

Those who watch “Housewives”-themed television shows are doubtless familiar with the oft-repeated scenes of reality-TV stars engaging in verbal warfare with one another.  The newest battle between reality stars from Real Housewives of Atlanta, however, occurs off-camera, extending beyond mere verbal warfare and into the legal realm.  The opening salvo in this new battle, fired in the U.S. District Court for the Northern District of Georgia, Atlanta Division, identifies the song “Tardy for the Party” as the subject of the dispute.

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Friday, March 8, 2013, 2:56 PM

Titanic Lawsuit Launched to Sink Competing Enterprise

On February 26, 2013, RMS Titanic, Inc. and Premier Exhibitions, Inc. (collectively “RMST”) initiated suit in the Northern District of Georgia, Atlanta Division, against Thomas Zaller, Imagine Exhibitions, Inc., and Imagine Exhibitions PTE, Ltd. (collectively “Zaller”), for conversion, contractual breach, unjust enrichment, fraud and fraudulent inducement, trade dress (Lanham Act), and misappropriation of trade secrets.

Last year marked the 100th anniversary of the sinking of the Titanic.  The wreckage was discovered in 1985 by RMST and over the course of eight research and recovery expeditions conducted by RMST as salvor-in-possession, an extensive exhibition of artifacts, simulated rooms, hallways, and even the ocean floor and “compelling human stories” were written, edited, assembled and packaged by RMST as “Titanic … The Artifact Exhibition” (the “RMST Titanic Exhibition”).
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Thursday, March 7, 2013, 4:52 PM

Franchisee Sued by Mrs. Winners Restaurant Franchise on Several Trademark Counts

A Mrs. Winners® franchisee said to be operating in Henry County, Georgia faces multiple trademark counts arising from alleged refusal to sign a new proposed licensing agreement.

On March 1, 2013, Mrs. Winners Brand Management LLC (“Winners Brand”) filed a complaint in the Gainesville Division of the U.S. District Court for the Northern District of Georgia against Shelton, Incorporated (“Shelton”), based in Mineral Bluff, Georgia.  The complaint asserts counts for federal trademark infringement, trade dress infringement, federal unfair competition (Lanham Act § 43(a)), dilution, and trademark counterfeiting.
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Wednesday, March 6, 2013, 6:04 PM

Trademark Defendant who Lost on Summary Judgment Files Appeal with Eleventh Circuit, but Special Master May Still Assess Monetary Recovery

A defendant whom the U.S. District Court for the Northern District of Florida adjudicated a trademark infringer on summary judgment, and liable for attorneys’ fees as well as profits, filed an appeal from that court’s judgment on February 11, 2013.  However, an order of appointment of a Special Master dated February 20, 2013 suggests that work toward quantifying damages and attorneys’ fees recoverable may proceed even while that appeal is pending.
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Omega Patents Wraps up One Case and Launches Another

Enfora's accused MT 3000 product
On the first day of February, Omega Patents LLC ("Omega"), the patent-holding arm of prolific inventor Kenneth Flick's Omega Research, a company specializing in vehicle security and convenience products, filed a stipulated dismissal in its Northern District of Georgia suit against General Motors (see October 18, 2012 post for more on this case).  On the last day of February, Omega launched a new patent infringement suit in the Northern District of Georgia, this time against Enfora, Inc. ("Enfora"), a Texas-based corporation.  Omega alleges that Enfora's MT 3000 and MT 3050 mobile tracking device products infringe U.S. Patent No. 6,346,876, U.S. Patent No. 7,671,727, U.S. Patent No. 8,032,278, and U.S. Patent No. 8,362,886.
According to the complaint, Kenneth Flick is an innovator in the vehicle electronics industry, and has invented improvements for the industry including those covering vehicle tracking and data bus products.  These vehicle tracking and data bus devices allow for a range of functions and benefits, including simpler and more reliable installation and function of vehicle security systems, remote tracking of vehicles using GPS, and remote speed detection, among other things.  Omega alleges that it gave Enfora written notice of "certain of the Patents-in-Suit" in December 2012, and that Enfora should have known about the patents even before that time, as the patent numbers were allegedly marked on products of Omega's licensees since 2008.  Omega's simple, one-count complaint asks the Court to enter a permanent injunction, to award damages under 35 U.S.C. § 284, and to award attorneys' fees and costs under 35 U.S.C. § 285.
The case is Omega Patents, LLC v. Enfora, Inc., No. 1:13-cv-646-TWT, United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Judge Thomas W. Thrash, Jr.

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Tuesday, March 5, 2013, 5:26 PM

Northern District of Georgia Denies Motion to Strike Affirmative Defenses and Grants Motion to Stay Pending Reexamination

On February 27, 2013, the U.S. District Court for the Northern District of Georgia, Atlanta Division entered an order in a patent case: (1) denying the plaintiff’s motion to strike the defendant’s affirmative defenses; and (2) granting the defendants’ motion to stay the litigation pending reexamination of the patents-in-suit.
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Dismissal of "First-Filed" Action does not Compel Re-transfer of Second Action to Original Forum

As initially reported in our August 13, 2012 post, a patent infringement action filed by International Growers Supply, Inc. ("IGS") was transferred from the Central District of California to the Northern District of Georgia based on the "first-to-file" rule because the defendants had previously filed a declaratory judgment action against IGS.  IGS successfully moved to dismiss the declaratory judgment action for lack of personal jurisdiction, as reported in our January 18, 2013 post.  Judge Pannell also stayed the infringement action pending ex parte reexamination of one of the patents-in-suit by the USPTO.  In that January post, we noted that IGS would be expected to move to transfer the infringement action back to the Central District of California once the case was reopened.  Indeed, following the February 22, 2013 issuance of an Ex Parte Reexamination Certificate, on February 24, 2013, IGS filed a motion to reopen the infringement action and to "re-transfer" the action back to the original venue.

Just two days after IGS filed its motion, Judge Pannell issued a brief order reopening the case but denying IGS's motion to transfer because it had not addressed any of the traditional factors courts consider in determining whether to transfer a case.  Specifically, Judge Pannell pointed out that IGS failed to address the threshold question of whether the California court would have personal jurisdiction over the defendants in the action.[1]  In fact, the California court, in its order to transfer the case to Georgia based on the "first-to-file" rule, had expressed "doubts over its ability to exercise personal jurisdiction over at least some of the Defendants."  In its motion, IGS's sole argument was that the only reason for transferring the case to Georgia had been removed and thus a "re-transfer" was appropriate.  Judge Pannell held that, without addressing the relevant factors, IGS could not meet its burden to show that the California court was more convenient.

Again, IGS may be expected to file a renewed motion to transfer the case to the Central District of California, taking Judge Pannell's advice to give due treatment to each of the relevant factors.  The Court ordered the parties to file a revised joint preliminary report and discovery plan within twenty days of the order.

International Growers Supply, Inc. v. Atlantis Hydroponics, Inc., et al., 1:12-cv-2728-CAP, Dkt. No. 57 (N.D. Ga. Feb. 26, 2013) (Pannell, J.).
[1] 28 U.S.C. 1404(a) provides: "For the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought or to any district or division to which all parties have consented."

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Monday, March 4, 2013, 3:30 PM

Southeast Clinical Nutrition Centers, Inc. Sues Mayo Foundation over Diet-Related Service Marks

On February 27, 2013, Tucker, Georgia-based Southeast Clinical Nutrition Centers, Inc. (“Southeast”) filed a complaint in the U.S. District Court for the Northern District of Georgia, Atlanta Division, against the Mayo Foundation for Education and Research (“Mayo Foundation”), alleging that the Mayo Foundation infringed Southeast’s service marks related to dieting.

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In Like a Lion: Another Counterfeiting Ring Busted in Atlanta

An Atlanta Journal-Constitution (ajc.com) article reports that on Friday, March 1, authorities seized "about $5 million worth of counterfeit merchandise" at the West End Flea Market, located in Atlanta at 844 Ralph David Abernathy Boulevard.  According to that article, the counterfeited name brands included Nike, Ralph Lauren, Gucci, and Louis Vuitton, and CDs and DVDs were also seized.  Atlanta police identified and arrested six shop owners, the ajc.com reports.

A WSB-TV website post states that the volume of counterfeit merchandise seized was "enough to fill up a U-Haul[®]."

According to a post by myfoxatlanta.com: "Undercover cops posed as buyers to get a sense of what kind of merchandise was available.  After several transactions, police went back into the shops on Ralph David Abernathy and focused on the six shop owners and the fake goods they were allegedly passing off as authentic."   The arrested shop owners face felony charges, indicates that post.

This bust coincidentally arrives on the heels of a February 25 decision by the U.S. Court of Appeals for the Eleventh Circuit, which affirmed the conviction and 51-month federal imprisonment sentence imposed in 2011 on an Atlanta-area individual convicted of criminal copyright infringement and trafficking in counterfeit labels.  For details on that decision, see our prior post.

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Friday, March 1, 2013, 2:26 PM

Eleventh Circuit Finds Exclusion Insufficient for Insurance Companies to Avoid “Advertising Injury” Coverage for Copyright Infringement

Introduction and “Exclusion 13”

Although federal appellate courts issue “unpublished” opinions relegated to the status of merely persuasive precedent and not binding precedent,[1] occasionally even an “unpublished” opinion may strike upon an issue of first impression or otherwise set forth judicial reasoning that still makes it noteworthy.  On February 7, 2013, the Eleventh Circuit issued such an opinion in an IP claim insurance coverage case.  

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Not Coming to a Theater near You

This action for declaratory judgment centered on a planned movie, The Snow White Ladies of the Third Week (“Ladies”). Based on a decision issued on January 30, 2013, from the U.S. District Court for the Northern District of Georgia,[1] it appears unlikely that Ladies will be coming to any screen any time soon. The court resolved a motion for summary judgment directed to conflicting claims of copyright ownership in the Ladies screenplay and in so doing prevented plaintiffs from proceeding with production of Ladies without defendants’ consent.
Defendants, joint authors of the unpublished source novel, had entered in October 2009 into a brief agreement with plaintiffs, an actor and a cinematographer/production designer, respectively, for the creation of a screenplay based on defendants’ book. Whether the parties contracted for more was at issue.
The issues arising in Durkin v. Platz should be familiar to every copyright practitioner who has ever attempted to resolve an authors’ dispute, complicated here by a puzzling mathematical computation: a script possibly by four from a book possibly by two. Still, while there is hardly anything unfamiliar here, the court’s conclusion with respect to the rights of authors in what may have been intended as a joint work delivers a surprise ending to the Ladies saga.
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