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Georgia IP Litigation: August 2013

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Wednesday, August 28, 2013, 10:54 AM

Verint Systems Files Patent Infringement Action Against Competitor Interactive Intelligence

On August 2, 2013, Verint Systems, Inc. ("VSI") of Melville, New York, and Verint Americas, Inc. ("VAI") of Alpharetta, Georgia (collectively "Verint"), filed a complaint in the Northern District of Georgia against Interactive Intelligence, Inc. ("Interactive") of Indianapolis, Indiana, alleging infringement of a host of patents generally directed to computer software for improved customer service and call-center operations.

According to the complaint, both Verint and Interactive are in the business of providing developing and selling computer software and hardware products and systems directed to the analysis, recording, monitoring, transmission, and security of electronic communications.  This technology is said to provide an end user with the ability to capture, analyze and act on large volumes of  voice, video, and unstructured text, which can enhance customer service operations in contact centers, branches, and back-office environments.  Verint claims that its products are used by over 10,000 organizations in over 150 countries, including over 80 percent of the Fortune 100.

Verint alleges that Interactive's products infringe a host of patents, as follows:
U.S. Patent No. 5,790,798, titled "Method and Apparatus for Simultaneously Monitoring Computer User Screen and Telephone Activity From a Remote Location"
U.S. Patent No. 7,203,285, titled "System and Method for Recording Voice and the Data Entered by a Call Center Agent and Retrieval of These Communication Streams for Analysis or Correction"
U.S. Patent No. 7,376,735, titled "Method, Apparatus, and System for Capturing Data Exchanged Between a Server and a User"
U.S. Patent No. 7,574,000, titled "System and Method for Analysing Communications Streams"
U.S. Patent No. 7,774,854, titled "Systems and Methods for Protecting Information"
U.S. Patent No. 7,852,994, titled "Systems and Methods for Recording Audio"
U.S. Patent No. 7,903,568, titled "Systems and Methods for Providing Recording as a Network Service"
U.S. Patent No. 8,204,056, titled "Systems and Methods for Endpoint Recording Using a Media Application Server"
U.S. Patent No. 8,285,833, titled "Packet Data Recording Method and System"
U.S. Patent No. RE41,534, titled "Utilizing Spare Processing Capacity to Analyze a Call Center Interaction"
U.S. Patent No. RE43,324, titled "VOIP Voice Interaction Monitor"
U.S. Patent No. 8,401,155, titled "Systems and Methods for Secure Recording in a Customer Center Environment"
U.S. Patent No. 8,359,434, titled "Distributive Network Control"
U.S. Patent No. 8,345,828, titled "System and Method for Pooled IP Recording"
U.S. Patent No. 8,275,944, titled "Distributive Network Control"
U.S. Patent No. 8,204,053, titled "Systems and Methods for Providing Network Services for Recording"
U.S. Patent No. RE43,386, titled "Communication Management System for Network-Based Telephones"
U.S. Patent No. 8,130,926, titled "Systems and Methods for Recording Data"
U.S. Patent No. 6,404,857, titled "Signal Monitoring Apparatus for Analyzing Communications"
U.S. Patent No. 6,510,220, titled "Method and Apparatus for Simultaneously Monitoring Computer User Screen and Telephone Activity From a Remote Location"

Verint accuses the following Interactive products of infringing one or more of the above patents: “Customer Interaction Center;” “Bay Bridge Decisions;” “Interaction Analyzer;” “Interaction Dialer;” "Interaction Director;” “Interaction Feedback;” “Interaction Mobilizer;” “Interaction Recorder;” “Interaction Optimizer;” “Interaction Tracker;” “Interaction Web Portal;” “Interaction Monitor;” “Interactive Voice Response;” “e-FAQ;” “CIC for Unified Communications;” “Interaction Conference;” “Interaction Process Automation;” “Content Management;” “Interaction SIP Station;” “Interaction Edge;” and “Interaction SIP Proxy.”  Verint does not specify in the complaint which claims or patents apply to each of the accused products.  Verint seeks an injunction, damages, and an award of costs and attorneys' fees under 35 U.S.C. 285.

The case is Verint Systems, Inc. et al. v. Interactive Intelligence, Inc., No. 1:13-cv-02565-SCJ, United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Judge Steve C. Jones.

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Thursday, August 22, 2013, 2:02 PM

Emerson Electric Brings Declaratory Judgment Action Against SIPCO

On July 31, 2013, Emerson Electric Co. ("Emerson") of St. Louis, Missouri, Fisher-Rosemount Systems, Inc. ("Fisher-Rosemount"), a wholly-owned subsidiary of Emerson based in Round Rock, Texas, and Rosemount, Inc. ("Rosemount"), a wholly-owned Emerson subsidiary based in Chanhassen, Minnesota (collectively, "Plaintiffs"), filed a complaint in the Northern District of Georgia against SIPCO LLC ("SIPCO") and IP Co., LLC d/b/a Intus IQ ("IPCO"), both of Atlanta, Georgia, seeking a declaratory judgment that certain claims of U.S. Patent Nos. 6,437,692 ("the '692 patent"), 6,914,893 ("the '893 patent"), 7,103,511 ("the '511 patent"), 7,697,492 ("the '492 patent"), 8,013,732 ("the '732 patent")(collectively, "the SIPCO patents"), 6,044,062 ("the '062 patent"), 6,249,516 ("the '516 patent"), and 8,000,314 ("the '314 patent")(collectively, "the IPCO Patents") are invalid and not infringed by the Plaintiffs.  All of the patents relate to wireless mesh technology.

As noted in the complaint, SIPCO and IPCO have a short but extensive history of filing patent infringement lawsuits over the subject patents, both in the Northern District of Georgia and in other districts.  The complaint lists 11 lawsuits filed by the SIPCO or IPCO against more than 50 defendants -- a diverse array of companies including Amazon, Siemens, Trane, Comcast, and ADT Security -- since 2005.  Plaintiffs allege that in 2007 Emerson received a letter from counsel for IPCO concerning (but not asserting) the '516 patent, the '062 patent, and the '511 patent.  Emerson responded by asking for clarification as to exactly which Emerson "mesh network system" products IPCO was referring to and asking which claims of each patent were relevant.  According to the complaint, Emerson never received a response.

In 2011, Emerson's subsidiary, Rosemount, received a letter from Siemens AG alleging that certain products accused of infringement by SIPCO were subject to indemnification from Rosemount.  SIPCO soon thereafter subpoenaed Rosemount seeking a wide spectrum of documents relating to the accused products.  Rosemount produced a number of confidential documents subject to the protective order in place in the litigation (SIPCO, LLC v. Control4 Corp. et al., No. 1:11-cv-00612-JEC).

Finally, in March 2013, Emerson received a letter from SIPCO demanding that Emerson license its "Wireless Mesh Patent Porfolio."  Emerson fired back several weeks later noting that SIPCO had failed to follow up on these matters for over six years and further insisted that none of Emerson's products infringed any patent in the portfolio.  After some back and forth, SIPCO and IPCO sent Emerson "Illustrative Claim Charts" asserting infringement of various claims of SIPCO's and IPCO's patents.  Specifically, SIPCO and IPCO asserted infringement of claim 18 of the ’692 patent; claim 1 of the ’893 patent; claim 1 of the ’511 patent; claim 14 of the ’492 patent; claim 13 of the ‘732 patent; claim 2 of the ‘062 patent; claim 1 of the ’516 patent; and claim 10 of the ‘314 patent.  The Plaintiffs seek declaratory judgment of invalidity and non-infringement of only those claims asserted in the SIPCO/IPCO claim charts.

During an August 16th telephone call, counsel for Emerson notified the Court that the Defendants had not been served and that the parties are in the midst of settlement discussions.

The case is Emerson Electric Co. et al. v. SIPCO LLC et al., No. 1:13-cv-02528-AT, United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Judge Amy Totenberg.

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Wednesday, August 14, 2013, 7:15 PM

More Recent Trademark Cases in the Georgia District Courts

Here is the second of two surveys of recent trademark cases filed in Georgia District Courts.
Tory Burch Sues Alleged Counterfeiter
On May 31, 2013, River Light V, L.P. and Tory Burch LLC (collectively “Tory Burch”), both based in New York, New York, filed suit against Golden Stella, Inc. (“Golden Stella”) and Jay Eun (“Eun”) (collectively “Golden Stella”), both based in Atlanta, Georgia, alleging trademark counterfeiting, trademark infringement, trademark dilution, copyright infringement, and unfair competition.
Tory Burch, known for high quality women’s clothing and accessories, is the exclusive owner of the trademark rights to the logo shown on the right and variations thereof. According to the complaint, the company maintains strict quality control standards for all of their products and spends substantial resources marketing their unique goods. Tory Burch alleges that Golden Stella manufactured handbags and jewelry with a copied Tory Burch Trademark and then sold these counterfeit goods to the public in stores and online.
Tory Burch alleges that Golden Stella’s reproductions are likely to cause confusion or mistake and could damage Tory Burch’s reputation for quality products. Tory Burch alleges that, due to their extensive sales and marketing nationally and abroad, its marks have received widespread recognition, to which Golden Stella is unfairly reaping the benefits. Tory Burch asks the Court to enjoin Golden Stella from using their Trademarks in any manner and award them the profits Golden Stella received by using the Tory Burch marks.
The case is River Light V, L.P. v. Golden Stella, Inc. et al., Case No. 1:13-cv-01839-TCB, United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Judge Timothy C. Batten.  
Gyro Kings Fight for the Throne
On June 15, 2013, Gyro Enterprises, LLC d/b/a Gyro King (“Gyro Enterprises”), based in Atlanta, Georgia, filed a trademark and service mark infringement action against Gyro King Limited, Nabil A. Saleh and Stylianos Michael Kyriacou (collectively “Gyro King”), based in Atlanta, Georgia. Both businesses specialize in providing Greek cuisine, such as gyros, chicken wraps and pitas, falafel wraps, and other Greek inspired dishes.
Gyro Enterprises obtained the registered trademark GYRO KING on May 21, 2013, a mark Gyro Enterprises claims that it or its predecessor has owned since 2008. Gyro Enterprises alleges that after opening its business, the now owner of Gyro King asked whether the Gyro Enterprises owners would help train him in preparing Greek cuisine, which it agreed to do. Since that time, Gyro King has opened four Greek restaurants in the greater Atlanta area. Gyro Enterprises believes that the unauthorized use of its name will likely cause confusion and deceive customers into thinking the Gyro King restaurants are associated with Gyro Enterprises restaurants.
Gyro Enterprises asserts that Gyro King’s use of their mark violates Sections 32 and 43 of the Lanham Act, by infringing on a federally registered mark and engaging in unfair competition, respectfully. It asks the Court to enter judgment that Gyro King has infringed its rights to the GYRO KING trademark and to enjoin Gyro King from further use of the mark.
The case is Gyro Enterprises LLC v. Gyro King Ltd. Case No. 1:13-cv-02011-JEC, United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Judge Julie E. Carnes.
American Deli Seeks TRO Against Alleged Infringer
On July 10, 2013, American Deli International, Inc. and American Deli Plus, Inc. (collectively “American Deli”), with a principle place of business in Riverdale, Georgia, filed suit against Jay & Young Group, LLC, (“JYG”) located in Stone Mountain, Georgia, two officers of JYG, three managers of the allegedly infringing restaurant and the original owner of the restaurant, claiming trademark infringement, unfair competition and false designation arising under sections 32 and 43 of the Lanham Act.
American Deli is a fast food type restaurant operated by licensed franchisees that serves chicken wings, chicken fingers, French fries, sandwiches, salads, etc. According to the complaint JYG is not an American Deli franchisee, however is operating as such, using American Deli proprietary marks. American Deli claims that JYG has acted with the intention of replicating the American Deli restaurants, causing customer confusion and dilution of the distinctive quality of their registered marks. In fact, a quick Google search of the Stone Mountain location offers the correct address, however with a link to the American Deli franchise website.
One day after filing the complaint, American Deli filed a motion for temporary restraining order, asking the Court to stop JYG from continuing to operate their business until the matter had been addressed.  A hearing on the TRO motion was scheduled for July 12, but the Plaintiff voluntarily cancelled the hearing.  JYG did not file a response to the TRO motion within the time prescribed by the Local Rules, so the motion has been submitted to Judge Jones for consideration.
The case is American Deli Int’l, Inc. v. Jay & Young Group, LCC, Case No. 1:13-cv-02302-SCJ, United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Judge Steve C. Jones.
Yanmar Targets Grey Market Tractors
On July 22, 2013, Yanmar America Corporation (“YAC”), based in Adairsville, Georgia, filed a complaint against Anthony Mills, individually, and d/b/a Mei Farm Equipment (“Defendant”), based in Elberton, Georgia, for trademark infringement under Sections 42 and 43(b) of the Lanham Act (Importation of Goods Bearing Infringing Marks), and Section 43(a) of the Lanham Act (False Designation of Origin).
YAC is a subsidiary of Yanmar Company Limited (“YCL”), a Japanese corporation that develops and distributes diesel engines. YCL manufactures tractors in Japan for several different markets including the U.S. The tractors produced for the U.S. market are materially different in design and standards than those produced for the Japanese market, therefore, the tractors made for the Japanese market are not intended for sale in the U.S. YAC claims that the Defendant unlawfully imported and distributed Japanese market tractors in the U.S. (“grey market” tractors), which causes consumer confusion as well as significant safety concerns. YAC asks that the Court enjoin the Defendant from continuing to infringe on their trademark as well as open them up to possible products liability exposure.  
In 2012, YAC and YCL were involved in litigation after a 1977 grey market tractor was sold to an individual in the U.S. by a company who had purchased the tractor from another company who imported these grey market tractors. Those tractors are not intended for US terrain, and unfortunately rolled over and killed the man operating it, leading to his wife filing suit. Ultimately the Supreme Court of Arkansas determined there was no personal jurisdiction over YCL. The Court also determined that YAC owed no duty to the deceased because YAC was not involved in importing the tractor into the U.S. or in the design and manufacture of the tractor.[1]
Due to cases like this, YAC emphasizes to the court the importance of not allowing importation of tractors intended for the Japanese market. Therefore, YAC asks the Court to enjoin the Defendant from importing the tractors and to order them to notify each of their previous purchasers of the material differences between the Japanese and US market tractors.
The case is Yanmar America Corp. v. Anthony Mills, Case No. 1:13-cv-00081-CAR, United States District Court for the Middle District of Georgia, Athens Division, and is assigned to Judge C. Ashley Royal.
The author would like to thank summer associate Emily Scheible for her substantial contribution to this post.

[1] Yanmar Co., Ltd. v. Slater, 2012 Ark. 36 (Ark. 2012).

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Monday, August 12, 2013, 3:31 PM

Recent Trademark Cases Filed in the Georgia District Courts

Here is the first of two surveys of recent trademark cases filed in the Georgia District Courts.
Franchise Operating Under New Name, but Using the Same Technique
On June 25, 2013, SmallBizPros, Inc. d/b/a Padgett Business Services (“Padgett”), with its principal place of business in Athens, Georgia, filed a complaint against Stephen G. Hunt (“Hunt”), of Marietta, Georgia, Right Path Tax and Accounting (“Right Path”), based in Dallas, Georgia, Ginger Sonnier and Leiah Harris, both of Dallas, Georgia, alleging Hunt violated his Franchise Agreement with Padgett by selling his franchise to his employees, Sonnier and Harris, who subsequently changed the name, but offered the same services trademarked by Padgett.
In May 1996, Padgett and Hunt entered into a written Franchise Agreement, which granted Hunt the right to operate a Padgett Business Services franchise in five Georgia counties. The Franchise Agreement gave Hunt access to Padgett’s trade secrets and manuals on how to operate a successful Padgett business. According to the complaint, around 2010, Hunt stopped making payments to Padgett and subsequently sold the franchise to his employees. Sonnier and Harris now operate Right Path in the same location where Padgett used to do business.” Padgett alleges that Right Path is representing to customers either that it is still affiliated with Padgett or, alternatively, that it is no longer affiliated. Padgett claims that either way Right Path is deceiving customers and engaging in unfair competition. Padgett further alleges trademark infringement, breach of contract, conversion and unjust enrichment.
On July 31, the Defendants filed a motion to dismiss or, alternatively, to transfer to a proper venue. They claim that venue is improper as none of the named Defendants reside in the Middle District of Georgia, nor did any of the events or omissions Plaintiff claims occurred take place in the Middle District.  Defendants claim that they all live in the Northern District and further that the five Georgia counties covered by Hunt’s contract are all in the Northern District.  Briefing on the motion is still ongoing.
The case is SmallBizPros, Inc. v. Stephen G. Hunt, Case No. 3:13-cv-00071-CDL, United States District Court for the Middle District of Georgia, Athens Division, and is assigned to Judge Clay D. Land. 
­­Mellow Mushroom Obtains TRO and Stipulated Preliminary Injunction
On June 21, 2013, Home-Grown Industries of Georgia, Inc. d/b/a Mellow Mushroom (“Mellow Mushroom”), based in Atlanta, Georgia, filed a complaint against Danesh 2 Enterprises, Inc.  (“Danesh Enterprises”), Ali Danesh, and Setareh Danesh (collectively “Danesh”) for trademark infringement, unfair competition and breach of contract, after Danesh continued to operate its franchise following a letter from Mellow Mushroom advising them that a Franchise Agreement between the parties had been terminated. In May 2012, Mellow Mushroom and Danesh entered into a Franchise Agreement in which Danesh was given the rights to use the Mellow Mushroom name and System to open a restaurant in San Antonio, Texas. According to the complaint, Danesh failed to keep the restaurant up to Mellow Mushroom’s standards. After notifying Danesh of their concerns several times and conducting follow up inspections, Mellow Mushroom terminated the Franchise Agreement.
Mellow Mushroom seeks a preliminary and permanent injunction enjoining Danesh from using their name or passing off their products as associated with Mellow Mushroom. Further, they have asked the Court for an order enjoining them from opening a competitive business within 10 miles of their current restaurant, for a period of two years.
On June 24, Mellow Mushroom filed a motion for a temporary restraining order to prohibit Danesh from operating the restaurant. It argued a TRO was necessary to prevent irreparable injury that could occur by the franchisee not maintaining the quality standards Mellow Mushroom seeks to maintain, thus damaging the goodwill they have established.  At a hearing on June 27, Judge Jones granted Mellow Mushroom's motion and entered the TRO.  Shortly thereafter, Danesh filed an agreed preliminary injunction order, which, once approved by the Court on July 8, continued the directives established in the TRO.  
The case is Home-Grown Industries of Georgia, Inc. v. Danesh 2 Enterprises, Inc., Case No. 1:13-cv-02087-SCJ, United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Judge Steve C. Jones.
AT&T Declaratory Judgment Suit
On June 6, 2013, AT&T Intellectual Property II, L.P. (“AT&T”), based in Atlanta, Georgia and Aio Wireless LLC (“Aio Wireless”), based in Alpharetta, Georgia, filed suit against aioTV Inc. (“AIO”), based in Centennial, Colorado, seeking a declaratory judgment that the trademarks and service marks “Aio”, “Aio Wireless”, “aio” (Stylized) and “aio Wireless” (Stylized) (collectively, the "Aio Marks") do not infringe on AIO’s claimed common law trademarks: “aio”, “aioTV”, “aio basic”, “aio cloud” and others (collectively, the "AIO Marks").

Aio Wireless is a wireless voice, text and data service provider, who also sells mobile devices through independent dealers as well as online. AIO, on the other hand, focuses on television content by bundling licensed and unlicensed content and then selling it to service providers, who then offer on-demand television streaming to subscribers. This declaratory judgment action arose after AIO threatened to file suit against AT&T and Aio Wireless for trademark infringement and unfair competition in violation of the Lanham Act, and demanded they cease and desist from using the Aio Marks. AT&T and Aio Wireless refused to stop using the Aio Marks as the marks had already been approved and registered at the USPTO.
AT&T and Aio Wireless assert that even if AIO did have rights to the AIO Marks, use of the the Aio Marks is not likely to cause confusion because (1) the AIO Marks are commercially weak; (2) the parties’ products and services are distinct; (3) the parties’ target customer base is entirely different; and (4) AT&T and Aio Wireless adopted the Aio Marks without knowledge of, or intent to associate with the AIO. 
Not long after AT&T and Aio Wireless filed this complaint, AIO filed suit in the District of Colorado alleging trademark infringement. AT&T and Aio Wireless responded by filing a Motion to Enjoin AIO from prosecuting this subsequently filed action and further filed a Motion to Stay in the District Court of Colorado pursuant to the “first-to-file rule.” AIO then filed a Motion to Dismiss or Transfer based on lack of personal jurisdiction and improper venue. The parties then filed a Joint Motion and Stipulation for Entry of Order Temporarily Staying Case filed in the District of Colorado, staying that action until the Judge Forrester of the Northern District of Georgia decides AIO’s pending motion to dismiss or transfer the case.  The Court recently granted AT&T and Aio Wireless leave to conduct some limited jurisdictional discovery relating to the motion to dismiss.     
The case is AT&T Intellectual Property II, L.P. v. aioTV Inc., Case No. 1:13-cv-01901-JOF, United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Judge J. Owen Forrester.
“Always Baked” and “Insomnia” in Battle of the Bakeries
On June 27, 2013, Triple Play Foundation, LLC (“Always Baked”), based in Sandy Springs, Georgia, filed a complaint in the Northern District of Georgia against Insomnia Cookies, Inc. (“Insomnia”), based in New York, New York, seeing a declaratory judgment that Always Baked does not infringe any valid trademark of Insomnia. 

Always Baked filed the complaint after Insomnia sent an cease and desist letter to Always Baked regarding their logo. Always Baked responded to the letter by way of the complaint. First, Always Baked argues that its logo in no way infringes Insomnia’s logo. Insomnia features a cookie in a half-moon configuration, with three stars, all surrounded by a circle; whereas Always Baked includes a caricature of a cookie with a pair of eyes, in which the cookie, in the form of a “G”, is depicted saying “Get Baked.” Second, Always Baked alleges that Insomnia's trademark “insomnia cookies” should not have been registered as it is merely descriptive of the goods, i.e. cookies delivered to insomniacs. Always Baked asks the Court for a declaratory judgment that they have not infringed on any trademark of Insomnia, and further that Insomnia’s trademark registration be cancelled.
The case is Triple Play Foundation, LLC v. Insomnia Cookies, Inc., Case No. 1:13-cv-02152-TWT, United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Judge Thomas W. Thrash, Jr.   
The author wishes to thank summer associate Emily Scheible for her substantial contribution to this post.

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Thursday, August 8, 2013, 11:40 AM

Recent Copyright Cases Filed in Georgia District Courts

Below is a survey of recent copyright cases filed in the Northern and Southern Districts of Georgia. 

Microsoft Windows 

On June 27, 2013, Microsoft Corporation (“Microsoft”), based in Washington, filed suit against VertexPC and its owner Peter Dapice (collectively “Defendants”), based in Buford, Georgia, alleging that the Defendants had recklessly or willfully engaged in copyright and trademark infringement, false designation of origin, false description and representation, and unfair competition when Defendants sold unauthorized copies of Microsoft software.

Microsoft alleged that the Defendants are in the business of advertising and distributing computers, and that in the course of their business, the Defendants advertised and sold computers that came installed with Microsoft software (i.e., Windows XP; Reg. No. TX 5-407-055), components, end user license agreements, and certificates of authenticity. Microsoft further alleged that Defendants had infringed upon a number of Microsoft’s registered trademarks, including the well-known Windows Flag (Reg. No. 2,744,843), in the process of advertising and selling computers.

Reg. No. 2,744,843
Microsoft requested, among other things, injunctive relief, an impounding of all counterfeit and infringing copies of Microsoft product, treble damages, an accounting, and an order imposing a constructive trust upon any illegal profits realized by the Defendants. On July 26, 2013, the judge issued a permanent injunction against the Defendants enjoining them from using Microsoft’s registered trademarks and copyrighted material in connection with the Defendants’ business. Finally, on August 6, 2013, after settling their dispute, the parties filed and entered a Stipulation of Dismissal which dismissed the action with prejudice. The court retained jurisdiction to enforce the Permanent Injunction and the Settlement Agreement.

The case, now closed, is Microsoft Corporation v. VertexPC, Inc. et al, Case No. 1:13-cv-02149-CAP, United States District Court for the Northern District of Georgia, Atlanta Division, assigned to Judge Charles A. Pannell, Jr.

Celebrity Photographs  

On June 19, 2013, BWP Media USA Inc. (“BWP”), based in Los Angeles, California, filed suit against Paste Media Group, LLC (“Paste”), based in DeKalb County, Georgia, alleging that Paste had knowingly infringed on a variety of BWP’s copyrighted photographs when Paste “copied, modified, and displayed” the photographs on Paste’s website, www.pastemagazine.com.

BWP provides “entertainment-related photojournalism goods and services,” and generates revenue by licensing its copyrighted photographs of celebrities to online and print publications. According to the complaint, Paste operates a website that provides, among other things, articles, photographs, and information about celebrities. Paste generates revenue through advertisements.

BWP alleged that Paste recklessly or willfully displayed at least one of BWP’s copyrighted photographs on its website without BWP’s authorization, that thousands of people viewed the image(s), and that Paste subsequently realized increased revenue or traffic from the display.

BWP requested that the court enter judgment against Paste under 17 U.S.C. § 501 et seq., and that the court award statutory damages against Paste in the amount of $150,000 per violation pursuant to 17 U.S.C. § 504(c), or in the alternative BWP’s actual damages and Paste’s “wrongful profits” in an amount to be proven at trial.

 The case is BWP Media USA Inc. v. Paste Media Group, LLC, Case No. 1:13-cv-02064-AT, United States District Court for the Northern District of Georgia, and is assigned to Judge Amy Totenberg.

 Agency and Distribution Agreements 

On June 5, 2013, Carreras & Lemoine, LLP (“Carreras”), a Georgia law firm with multilingual attorneys that offers legal services to French businesses and individuals, filed two suits against Alpi Transmission (“Alpi”), alleging that Alpi, a corporation organized and residing in France, infringed on its copyrights when it used and reproduced documents Carreras had produced for Alpi, for which Carreras was never compensated.

 In the first complaint, Carreras alleges that it produced a distribution agreement for Alpi, but that Alpi has yet to pay Carreras $1,032. Carreras is seeking not only the amount of the unpaid balance, but also $2,065 in exemplary damages under O.C.G.A § 51-10-6(2) and $50,000 in damages under 17 U.S.C. § 504(b) for copyright infringement.

In the second complaint, Carreras alleges that it produced an agency agreement for Alpi, but that Apli again neglected to pay Carreras $950. Carreras is again seeking not only the amount of the unpaid balance, but also $1,900 in exemplary damages under O.C.G.A. § 51-10-6(2) and $50,000 in damages under 17 U.S.C. § 504(b) for copyright infringement.The cases are Carreras & Lemoine, LLP v. Alpi Transmission, Case No. 1:13-cv-01878-SCJ, United States District Court for the Northern District of Georgia, assigned to Judge Steve C. Jones, and Carreras & Lemoine, LLP v. Polypap, Case No. 1:13-cv-01879-MHS, United States District Court for the Northern District of Georgia, assigned to Judge Marvin H. Shoob.

Production and Sale of Music 

On July 22, 2013, Charles Peterson (“Peterson”), d/b/a Desert Sounds Records, based in Augusta, Georgia, filed suit pro se against Eric Smith (“Smith”), d/b/a World Records Productions, based in Ridgeway, Virginia, alleging that Smith had knowingly infringed on Peterson’s copyrighted music when Smith compiled and sold a CD entitled “Southern Soul Classics Volume 1” (“Classics”) that contained unauthorized reproductions of Smith’s copyrighted music.

“Southern Soul Classics Volume 1”
Peterson, owner of the copyrighted works of artists such as Chuck Roberson and Ghetto Cowboy, entered into an agreement with Smith in November 2011 that granted Peterson the exclusive rights to music by Clay Hammond for $15,000. The contract also contained a clause conditioning money to Smith on Peterson’s collection of funds received from any major record company. Peterson alleged that Smith, unhappy with the deal, compiled “Classics”, a multi-artist CD containing copyrighted works by Peterson’s artists, and sold the album on websites such as Amazon and Mondo. Although not alleged in the complaint, “Classics” can also be found on Spotify, iTunes, and Rhapsody. Below is a sample of one of the allegedly-infringing works, “Leon Stole My Freak.”


After allegedly failing to adequately respond to a cease and desist letter sent on June 15, 2013, Peterson filed suit against Smith. Peterson, alleging loss of profits and reputation, requested $100,000 in compensatory and punitive damages, an accounting, and injunctive relief under 17 U.S.C. 501(a) and (b).

The case is Peterson v. Smith, Case No. 1:13-cv-00119-JRH-BKE, United States District Court for the Southern District of Georgia, Augusta Division, and is assigned to Judge J. Randal Hall.

Commercials and Short Films

On May 14, 2013, Aaron Gravit, the owner and operator of Product 13 (collectively “Product 13’), an LLC based in Savannah, Georgia, filed suit in the Superior Court of Chatham County (Savannah) against Titan Advertising Group (“Titan”), an LLC based in Tybee Island, Georgia, alleging fraud and breach of contract stemming from Gravit’s employment with Titan. On June 13, 2013, Titan filed a Notice of Removal, removing the action to the Southern District of Georgia, and answered Product 13’s complaint and asserted counterclaims alleging, among other things, that Product 13 had infringed on Titan’s copyrighted works without permission and that Product 13 was engaging in unfair competition by using Titan’s trademarks in violation of § 1125(a)(1)(A) of the Lanham Act.

Titan is in the business of creating and selling commercials and short films for advertising purposes and has produced works for Nike, Porsche, Mercedes, the X-Games, and various local news stations. The gravamen of Titan’s counterclaim is that Product 13, through Gravit, a former employee of Titan, willfully displayed, and continues to display, Titan’s allegedly copyrighted and trademarked works on Product 13’s website, http://product13.com/, without authorization or attribution to Titan. Product 13 is a direct competitor of Titan’s and is also in the advertising business. Below is an example of Titan’s allegedly copyrighted work:


In its counterclaim, Titan requested a permanent injunction, an accounting, damages for lost profits and unfair advantages gained in violation of the law, an order to deliver and destroy all infringing works, and a rescission of the contract at the center of Product 13’s initial complaint.  Titan also filed a motion to dismiss Product 13’s complaint on the same day.

On June 14, Product 13 filed a motion to dismiss Titan’s copyright and Lanham Act claims, arguing Titan had failed to register the alleged copyrighted works prior to filing suit. Product 13 also filed a motion to remand the case to the Superior Court of Chatham County. On June 20 and June 26, Titan and Product 13 filed motions to stay discovery, respectively, pending resolution of the motions to dismiss. On July 17, Magistrate Judge G.R. Smith granted the parties’ motions, and stayed discovery until the District Court Judge could rule on the pending motions to dismiss.

The case is Gravit v. Titan Advertising, LLC et al, Case No. 4:13-cv-00144-BAE-GRS, United States District Court for the Southern District of Georgia, Savannah Division, and is assigned to Judge B. Avant Edenfield.

The author would like to thank summer associate John Gerl for his substantial contribution to this post.

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