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Georgia IP Litigation: September 2014

BLOGS: Georgia IP Litigation

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Tuesday, September 30, 2014, 1:30 PM

11th Circuit: Award of Fees Affirmed in "Objectively Unreasonable" Copyright Action Where Plaintiff No Longer Possessed a Copy of the Copyrighted Material

On September 24, 2014, in an unpublished opinion the 11th Circuit denied the appeal of InDyne, Inc. (“InDyne”), which asked the Court to vacate an award of attorneys’ fees to Defendants Abacus Technology Corporation, Jerry Reninger, and Matthew Boylan (collectively, "Abacus") in a copyright infringement action in Middle District of Florida.

According to the opinion, Abacus copied portions of InDyne's Program Information System (“PIMS”) software in setting up a website for NASA.  The District Court held that InDyne failed to present evidence sufficient for a reasonable jury to find that the copied portions of the software were “original and thus deserving copyright protection.”  This District Court finding was previously affirmed by the 11th Circuit in InDyne, Inc. v. Abacus Tech. Corp., 513 F. App’x 858 (11th Cir. 2013) (unpublished).
The case was back before the 11th Circuit after the District Court awarded attorneys' fees based on three findings: (1) InDyne was “objectively unreasonable” in filing a copyright infringement claim while no longer possessing “a copy of the copyrighted material;” (2) InDyne’s motivation for bringing suit was “questionable;” and (3) the purposes of the Copyright Act would be furthered by a deterrence of future litigants suing for infringement without being able to produce the software code.
The 11th Circuit noted that under 17 U.S.C. § 505 an award of attorneys' fees was in the court’s discretion.  In reviewing the decision for an abuse of discretion, the panel noted that encouraging objectively reasonable claims “the boundaries of copyright law are demarcated as clearly as possible.”[1]  Factors considered include frivolousness, motivation, objective unreasonableness, and considerations of compensation and deterrence.
The 11th Circuit declined InDyne's invitation to revisit the facts with allusions to “massive copyright infringement” and that Abacus “got away with it,” citing the law-of-the-case doctrine which “bars relitigation of issued decided by necessary implication, even if they are not addressed explicitly.” [2] 
The 11th Circuit also affirmed the objectively unreasonable standard as InDyne had neither a copy of the copyrighted version of PIMS “or even a clear software revision history.”  Without this evidence no reasonable jury could find in InDyne’s favor.  With “chameleon-like,” “constantly morphing” software, InDyne had no copyrighted material to point to for its claim.
The District Court’s comment on the questionable motivation did not constitute a finding of bad motivation, but it did constitute a finding that this factor did not weigh in InDyne's favor.
Although unpublished, this case serves to reinforce the principle that ill-advised copyright infringement claims face consequences, thus serving to imprint on the bar the importance of giving weight to the appropriate demarcation between a reasonable copyright claim and an expensive one.
The case is Indyne, Inc. v. Abacus Technology Corporation, Jerry Reninger, and Matthew Boylan, Case Number 14-11058, decided September 24, 2014, by the Eleventh Circuit, panelists Carnes, Tjoflat, and Rosenbaum.
[1] Citing MiTek Holdings , Inc. v. Arce Eng’g Co., Inc., 198 F.3d 840, 842-43 (11th Cir. 1999)
[2] Opinion at p. 4, n. 1.

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Monday, September 29, 2014, 10:41 AM

Gilligan’s Island Remake Awash with Copyright Controversy

Travis P. Dunson (“Dunson”) filed suit for copyright infringement, money damages, injunctive relief, attorneys’ fees, as well as damages for breach of implied contract, conversion, unjust enrichment, and quantum meruit against Time Warner Co., Warner Bros. Entertainment, Inc., Warner Bros. Pictures, Atlanta Entertainment, Inc., Doug Frank, Brad Copeland, and Lloyd J. Schwartz (“Defendants”).

Original Gilligan's Island (1964) Poster
(Source: www.imdb.com)
Dunson’s complaint alleges his creation in 1999 of an original adaptation screenplay of the 1960’s Gilligan’s Island television show, which he registered with the U.S. Copyright Office, effective March 18, 2004, Certificate No. Pau2-846-399 (“Dunson’s Screenplay”).  On that same date, according to the complaint, Dunson’s Screenplay was registered with the Writers Guild of America (Registration No. R15376).

According to the complaint, Dunson’s Screenplay was reviewed in 2008 by Defendant Doug Frank who “loved it.”  However, Dunson’s agents became unhappy with his direct contact with Frank and announced “the deal is off.”  In 2010, Dunson learned that the owners of the original Gilligan’s Island franchise were working on a remake of the television series.  By 2011, Dunson learned a synopsis of the proposed adaptation was disclosed on Defendant Warner Bros. website.

The complaint relates that Dunson determined from the synopsis that the remake was substantially similar, if not identical, to Dunson’s Screenplay.  In January 2013, Dunson confronted an attorney for Warner Bros. Pictures who ultimately conceded that a remake had been done.  Dunson’s suit seeks compensation for any use of the remake as a work infringing on Dunson’s Screenplay.

The case is Travis P. Dunson v. Time Warner Co., Warner Bros. Entertainment, Inc., Warner Bros. Pictures, Atlas Entertainment, Inc., Doug Frank, Brad Copeland, and Lloyd J. Schwartz, 1:14-CV-02743, in the United States District Court for the Northern District of Georgia, Atlanta Division, filed August 24, 2014, before Judge Timothy C. Batten, Sr.

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Friday, September 26, 2014, 2:11 PM

Specialty Surfaces Alleges Patent Infringement by Deluxe Athletics

On August 21, 2014, Pennsylvania-based Specialty Surfaces International, Inc. (“SSI”) filed a complaint against Georgia-based Deluxe Athletics, LLC (“Deluxe Athletics”) alleging infringement of U.S. Patent No. 5,976,645 (the “‘645 Patent”) for a “Vertically draining, rubber-filled synthetic turf and method of manufacture.”

Sample from Deluxe's website
According to the complaint, Deluxe Athletics responded to a request for proposal from the Paulding County Board of Commissioners to install turf at two local high school football fields.  Deluxe Athletics was awarded the project, which allegedly included specifications calling for supply and installation of a complete vertical draining, infill synthetic turf surfacing system consisting essentially of resilient particles with a woven/non-woven primary backing.

SSI alleges that the turf product Deluxe Athletics offered for sale to the Paulding County Board of Commissioners contains each limitation set forth in at least one claim of the ‘645 Patent.  The language of the ‘645 Patent’s claim 1 is specifically repeated in the complaint.  Claim 1 and Fig. 1 of the ‘645 Patent are reproduced below.

1. A synthetic turf comprising:
a sub-surface layer;
a porous aggregate layer over said sub-surface layer;
a pile fabric over said porous aggregate layer, said pile fabric comprising a plurality of pile elements tufted to a backing, said backing comprising a woven layer and a non-woven layer bound together; and
an infill for said pile fabric, said infill consisting essentially of resilient particles.

SSI seeks a judgement of willful infringement or bad faith, treble damages, and attorney's fees.

The case is Specialty Surfaces International, Inc. v.Deluxe Athletics, LLC, Case No. 1:14-cv-02717-TCB, filed August 21, 2014, in the United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Judge Timothy C. Batten Sr.

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EPIC Battle Launched Between Flooring Companies Over Trademark Infringement

On August 21, 2014, Shaw Industries Group, Inc. (“Shaw”), a Georgia corporation, and Columbia Insurance Company (“Columbia”), a Nebraska corporation, brought a trademark infringement action against Carlisle Wide Plank Floors Inc. (“Carlisle”), a Delaware corporation, in the Northern District of Georgia.  The complaint asserts claims for trademark infringement, unfair competition, deceptive trade practices, cybersquatting (for the domain www.epicwoodfloors.com), and trademark dilution.  The complaint discloses that Shaw and Columbia are commonly owned by Berkshire Hathaway, Inc., and have common interest in the issues presented.

Shaw, according to the complaint, is a worldwide leader in the carpet, rug, and flooring industry and has been using the mark EPIC under license from its sister company, Columbia, for “engineered wood flooring,” (Reg. No. 3,469,556) since 2006.  Carlisle stands accused of using a virtually identical or confusingly similar mark for an identical or virtually identical product.  The complaint alleges that Carlisle failed to desist in use of the mark after receiving demand letter dated June 18, 2014.
Shaw and Columbia attached an exhibit showing Carlisle’s use of EPIC on its website, a portion of which is reproduced below:

Shaw’s use of EPIC on its website is pictured below:

Shaw and Columbia seek a preliminary and permanent injunction, a finding of liability, damages, treble damages, interest, costs, and reasonable attorney fees.

The case is Shaw Industries Group, Inc., and Columbia Insurance Company v. Carlisle Wide Plank Floors Inc., No. 4:14-cv-00216-HLM, filed 08/21/14 in the U.S. District Court for the Northern District of Georgia, Rome Division, and assigned to U.S. District Judge Harold L. Murphy.

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Wednesday, September 24, 2014, 3:55 PM

Seasoning Maker Swamp Dust LLC Files Trademark Complaint Against Competitor Cajun Wholesale

On September 2, 2014, LaGrange, Georgia-based company Swamp Dust, LLC filed a complaint against Louisiana-based Cajun Wholesale Distributing, Inc. and its director Ritchie Allen Romero (collectively, the “Defendants”) alleging trademark infringement, false designation of origin and unfair competition arising under the Federal Trademark Act (“the Lanham Act”) and under state and common law.

According to the complaint, Ken and Sharon Teal, the owners of Swamp Dust, LLC, first conceived of the name for and first sold “Swamp Dust” seasoning as early as 1980.  Still according to the complaint, “Swamp Dust” seasoning has been continuously sold in Georgia and Florida since at least as early as 1996, and the internet domain “swampdust.com” has been owned and operated by Ken Teal and/or Swamp Dust, LLC since 2005.  A sample “Swamp Dust” brand seasoning product is depicted to the right.

On February 16, 2006, Sharon Teal filed an application to federally register “SWAMP DUST” for use in connection with “seasonings.”  This application matured into Registration No. 3,753,360.

According to the complaint, the Defendants are engaged in the manufacture, distribution and/or sale, both in Georgia and elsewhere, of various competing food products, including seasonings, that use the words “swamp dust” as part of the product labeling.  One such product bearing the “Swamp Dust” mark is depicted to the left.

The complaint alleges Defendants’ unauthorized use of “Swamp Dust” is likely to cause confusion, deception, and/or mistake by creating the false and misleading impression that Defendants’ goods are manufactured or distributed by Swamp Dust, or are associated or connected with Swamp Dust, or have the sponsorship, endorsement, or approval of Swamp Dust.

The complaint alleges bad faith, and an intentional and willful intent to mislead, deceive or confuse the public.  Swamp Dust, LLC seeks a permanent injunction, surrender of all products bearing the “Swamp Dust” mark, treble damages, punitive damages, attorney’s fees, and costs.

The case is Swamp Dust, LLC. v. Cajun Wholesale Distributing, Inc. et al, Case no. 3:14-cv-00140-TCB in the United States District Court for the Northern District of Georgia, Newnan Division, and is assigned to Judge Timothy C. Batten, Sr..

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Tuesday, September 23, 2014, 6:28 PM

Steeda Autosports Seeks to Put the Brakes on Alleged Patent Infringement

Steeda Autosports, Inc. ("Steeda"), a Valdosta, Georgia-based company specializing in the design and manufacture of after-market parts for Ford vehicles, particularly Ford Mustangs, filed suit on August 22, 2014, in the Middle District of Georgia against competitor Turn 5, Inc. d/b/a American Muscle ("American Muscle"), of Malvern, Pennsylvania, alleging that American Muscle infringes two utility patents and three design patents through its manufacture and sale of certain car parts.

According to Steeda's website, Steeda owns at least 16 patents (including design patents) and four trademarks relating to its after-market parts business.  Steeda has asserted five of those patents against American Muscle, accusing varying products of infringing, as follows:

Steeda seeks a judgment that American Muscle infringes each of the five patents, and requests damages, a permanent injunction, treble damages, attorneys' fees and costs.

The case is Steeda Autosports, Inc. v. Turn 5, Inc. d/b/a American Muscle, 7:14-cv-00131-HL, United States District Court for the Middle District of Georgia, Valdosta Division, and is assigned to Judge Hugh Lawson.

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Friday, September 12, 2014, 11:50 AM

Python Safety Files Trade Dress and Patent infringement Complaint Against Ty-Flot

On June 18, 2014, Python Safety, Inc. (“Python”), of Woodstock, GA filed a complaint against Ty-Flot, Inc. (“Ty-Flot”), of Manchester, NH, alleging federal trade dress infringement and unfair competition, infringement of US Patent No. 8,646,768, violation of Georgia Deceptive Trade Practices, Georgia statutory and common law unfair competition, and Georgia common law trade dress infringement and unjust enrichment.

Python Safety sells a variety of products relating to drop prevention solutions including items such as hard hat tethers, single tool holsters, safe buckets and dual tool holsters.  Examples of these products are depicted below.  According to the complaint, Python Safety has developed an inherently distinctive trade dress for its products which is essential to its business and to customers’ identification of Python Safety as the source of the products and includes a particular appearance and color contrast.

According to the complaint, Ty-Flot offers virtually indistinguishable products to each of the Python Safety products depicted above.  Examples of products offered by Ty-Flot are depicted below.

Python is also the owner by assignment of US Patent No. 8,646,768 (the 768 patent) which was filed on March 16, 2010, claimed priority to a provisional application filed on March 16, 2009, and issued on February 11, 2014.  The ‘768 Patent describes a novel quick spin holder for tools and accessories. Additionally, the ‘768 Patent describes methods for using the novel holder. Figure 1 of the ‘768 Patent is reproduced to the right.

According to the complaint, Ty-Flot sells tool holders which infringe one or more claims of the '768 patent under its Grip-Fit line. An example of a Grip-Fit holder (“Accused Product”) is shown to the left.  Still according to the complaint, Ty-Flot’s Grip-Fit line also comes in six sizes, two of which have the exact diameter and four of which have a diameter approximately within a tenth of an inch of Python Safety's products.  Accordingly, Python alleges that the case is an “exceptional case” pursuant to 35 U.S.C. § 285 because of excessive copying.

The complaint goes on to allege that Ty-Flots unauthorized use of the Python trade dress constitutes deceptive trade practices under the Georgia Deceptive Trade Practices Act, O.C.G.A. §10-1-370, has been with the intention of deceiving and misleading the public, and thereby attempting to encroach upon the business of Python Safety in violation of O.C.G.A § 23-2-55, has been for the calculated purpose of passing off Ty-Flotproducts as those of Python, constitutes copying and imitation of the Python trade dress, falsely designates the origin of Ty-Flotproducts, causes confusion, mistake and deception in the marketplace, and is likely to cause further confusion, mistake, or deception in the marketplace and therefore infringes Python’s common law rights in the Python trade dress in violation of the common law of the State of Georgia, and that the unauthorized use in connection with the advertising, promoting, and sale of Ty-Flots goods and services has unjustly enriched Ty-Flot.

Accordingly, Python seeks judgement that Ty-Flot has directly or indirectly infringed one or more claims of the ‘768 patent in violation of 35 U.S.C. § 271, an injunction restraining Ty-Flot from using the Python trade dress or doing any act that might cause confusion as to the source of products, including a compliance report and surrender or destruction of infringing materials, judgement and an order for accounting and payment of all damages for infringement of the ‘768 patent, to be trebled because of allegedly willfulness and deliberateness, ,judgement in the amount of Python’s damages for trade dress infringement, and judgement for enhanced damages, punitive damages, reasonable attorneys fees, and costs.

The case is Python Safety, Inc. v. Ty-Flot, Inc., Case No. 1:14-cv-01918-WSD, filed June 18, 2014, in the United States District Court for the Northern District of Georgia, Atlanta division, and is assigned to Judge William S. Duffey, Jr..

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