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Firm Team Crowned IBF Trivia Night Champions

April 29, 2019

Congratulations to the team from Woodard, Emhardt, Henry, Reeves & Wagner who were crowned the Indianapolis Bar Foundation (IBF) Trivia Night Champions and took home the coveted IBF Trivia Trophy! The money raised at this annual IBF Trivia Night event supports the Foundation’s crucial role in helping to solve the legal-related problems in the Indianapolis community.

The victors, Christopher Brown, Chuck Schmal, Josh Astin, Andrew Nevill, Blake Hartz, Mark Burroughs, and Bob Jalaie, are pictured here with Trivia emcee, Adam Christensen (bottom row, center).


Bill McKenna quoted in The Information, “Amazon Tests Program to Combat Patent Infringement”

April 25, 2019

Bill McKenna quoted in The Information, “Amazon Tests Program to Combat Patent Infringement.”

Amazon is testing a new program that allows merchants on its marketplace who are victimized by cheap, patent-violating knockoffs to get them removed in a few months for just a few thousand dollars or less—much faster and cheaper than a typical legal process.

“When you’re looking at counterfeits, it’s easy to tell that a Louis Vuitton purse is covered by a Louis Vuitton trademark,” said William McKenna, an intellectual property lawyer at the firm Woodard, Emhardt, Henry, Reeves & Wagner in Indianapolis. “When you’re talking about patent infringement, it’s not so simple.”

Mr. McKenna said Amazon’s new utility patent program means sellers with the patents don’t have to file lawsuits against many individual companies or wait as long as a year for an order to handle them all together, which he described as subjecting sellers to “death by a thousand cuts.”

Click here to read the full article.


Charlie Meyer quoted in The Indiana Lawyer, “Say what?: Trademark case tests ‘scandalous,’ ‘immoral’ standards”

April 25, 2019

Charlie Meyer was quoted in The Indiana Lawyer article, “Say What?: Trademark Case Tests ‘Scandalous,’ ‘Immoral’ Standards.”

What’s more, the scandalous and immoral clause seemingly gives the government permission to treat some businesses differently than others based on the trademark they choose to use, said Charlie Meyer, a partner at Indianapolis IP firm Woodard, Emhardt, Henry, Reeves & Wagner, LLP. But such unequal treatment would seem to be unconstitutional, Meyer said.

“Is it the government’s job to treat people differently on this basis?” Meyer said, pointing to a question he thinks is an important issue for the justices to resolve. Further, if Tam stands for the proposition that the government cannot determine what is “disparaging,” then Meyer questioned why the government would still be allowed to decide what is scandalous or immoral.

Click here to read the full article.


Using a Webpage as a Specimen for Products Associated with a Trademark

April 18, 2019

When registering a trademark, the Patent and Trademark Office requires the submission of a specimen to show that a trademark is being used in interstate commerce.  It is often tempting to simply submit a screenshot of a webpage showing the trademark and the products associated with that trademark as a specimen.  However, as shown in a recent Federal Circuit decision made precedential, care must be taken when using a webpage as a specimen for goods associated with a trademark to ensure that the webpage is likely to be acceptable.

In the case, In re Siny Corp., 2019 U.S. App. LEXIS 10499 (Fed. Cir. Apr. 10, 2019), the Applicant filed an application for the mark CASALANA for a knit fabric used to make outerwear, gloves, and apparel.  The specimen submitted for this trademark was a screenshot of a webpage that included the trademark along with a picture and a description of the fabric, as well as a phone number and an email address to contact for sales information.  The Federal Circuit affirmed the Examining Attorney and the TTAB’s decision to refuse registration, stating that the webpage was just advertising material and failed to show use of the mark in commerce for the listed products.  It is important to note that this decision specifically pertains to a specimen for goods and that webpages are more readily accepted as specimens for services.

A trademark is used in commerce when it is placed directly on goods or placed on the containers, displays, tags or labels associated with the goods.  A trademark included on a webpage may qualify as a “display” associated with goods shown on the webpage.  However, a webpage simply advertising the goods used in connection with the trademark is not sufficient to qualify as a display, and is therefore not an acceptable specimen.  In order to be an acceptable specimen, the webpage must act as a point of sale location for the products.

As shown by the decision in Siny, showing only a phone number or an email address as contact information for ordering products associated with the trademark may not be enough to make the webpage a point of sale location.  Instead, a webpage submitted as a specimen should either make the goods available for purchase directly through the webpage or display additional information other than just contact information that would be considered essential to a purchasing decision.  Examples of this additional information include prices or a range of prices for the goods, sizing information, the quantity of the goods that may be ordered, how to pay for the product, and how the product will be shipped.

This decision by the Federal Circuit doesn’t mean that webpages cannot be used as a specimen for a trademark application covering goods.  Instead, an Applicant should make sure that when using a webpage as a specimen for a trademark application, the webpage includes as much information as possible about the nature of the goods and includes specific information on how to purchase the goods associated with the trademark.  Following these guidelines should lead to an acceptable specimen.


Daniel J. Lueders Named America’s Top 100 High Stakes Litigators® for Indiana

April 9, 2019

 The law firm is pleased to announce that partner, Daniel J. Lueders, has been named to America’s Top 100 High Stakes Litigators® for Indiana in 2019. Membership to this group of 100 attorneys is awarded to less than 0.5 percent of litigators in the United States.

Membership among America’s Top 100 High Stakes Litigators® is meant to identify and highlight the accomplishments of the nation’s most esteemed and skilled litigators in high stakes legal matters. Dan was selected as an honoree for the second year in a row based on his role as lead counsel in legal matters with at least $2,000,000 in alleged damages at stake or with the fate of a business worth at least $2,000,000 at stake (i.e. bet-the-company litigation valued in excess of $2,000,000). Further assessment for this distinction included a review of Dan’s professional experience, legal achievements, significant case results, peer reputation, and community impact. As a final measurement for selection, Dan’s work was evaluated and ranked based on the America’s Top 100 program’s proprietary analysis.

Dan has served as lead trial counsel for both plaintiffs and defendants in both bench trials as well as jury trials. To protect their interests in multi-million dollar cases, clients rely on Dan to build and manage their litigation teams. He has served as lead counsel for appeals of intellectual property cases and/or given oral argument before the Indiana Supreme Court, the United States Court of Appeals for the Federal, Seventh and Ninth Circuits. Dan has also served as an expert witness in patent and trade secret lawsuits.

ABOUT AMERICA’S TOP 100 HIGH STAKES LITIGATORS

It is the mission of America’s Top 100 LLC to recognize annually and on a lifetime basis the most qualified and accomplished professionals in various fields of practice, including attorneys, doctors, dentists, realtors, accountants, engineers, and architects (among other professionals). Membership in each specific category is by invitation-only after a multi-phase selection process including third-party research and statistical analysis of a candidate’s professional experience, achievements, significant results, community impact, peer reputation, consumer satisfaction, and other proprietary factors specific to each profession. Membership is limited to the Top 100 professionals from each state* in each category of practice who best exhibit excellence and the highest ethical standards in their respective professions. With these high standards, less than 1% of professionals in the United States will be selected for membership as one of America’s Top 100™ in their profession. For more Information visit: www.top100highstakeslitigators.com

*Southern California, Northern California, Southern Texas, Northern Texas, Southern Florida, Northern Florida, New York City, Upstate New York, and Washington D.C. are all separated into individual regions due to the significantly greater number of attorneys in each of those regions.

 


Steve Zlatos Serves as Guest Lecturer at Brest State University

April 8, 2019

On behalf of The Center for International Legal Studies, Steve Zlatos spent two weeks at Brest State University in Brest, Belarus as a guest lecturer on the American Legal System and Intellectual Property Law.

The Center for International Legal Studies – CILS/the Center – is a law research, training, and teaching institute, established and operating as a non-profit, public interest society under Austrian law. Its essential purpose is to promote and disseminate knowledge among members of the international legal community with 5,000 lawyers worldwide having been recognized for their contributions to CILS projects.

Through its Senior Lawyer Visiting Professors Program, the Center places experienced practitioners in visiting professorships at institutions in Eastern Europe, Russia and former Soviet republics, China, India, and Myanmar. Almost 400 senior lawyers have taken up almost 900 appointments since the program began in 2006.


Steve Zlatos Elected to the National Czech & Slovak Museum & Library Board of Trustees

March 12, 2019

The Firm is pleased to announce that Members of the National Czech & Slovak Museum & Library (NCSML) elected Steve Zlatos to a three-year term as a new member of its Board of Trustees. The election took place March 5 at the NCSML’s annual meeting of the membership.

The National Czech & Slovak Museum & Library in Cedar Rapids, Iowa, is a museum that celebrates life:  Czech life, Slovak life and American life. The Museum seeks to inspire people from every background to connect to Czech and Slovak history and culture. Through extraordinary exhibitions and experiences, the Museum tells stories of freedom and identity, family and community, human rights and dignity connecting yesterday with today and tomorrow. The Museum honors those who immigrated to America and worked hard, contributing their skills and vision to the formation of our nation.

Steve represents inventors in patent litigation in federal courts throughout the United States. In 2003, Steve was appointed Honorary Consul for the Slovak Republic. His consulate area includes the states of Indiana, Kentucky, and Tennessee. He has traveled extensively throughout Central Europe, speaks Slovak, and is active in assisting Indiana companies in developing business ties there.

 


U.S. Supreme Court Decision and the Importance of Registering Copyright Works Early

March 4, 2019

On March 4, 2019, the U.S. Supreme Court issued a decision regarding the requirement for copyright registration prior to filing a lawsuit for copyright infringement. In the unanimous opinion authored by Justice Ginsburg, the Court settled a split in Circuit Court decisions regarding whether the “registration . . . has been made” requirement under 17 U.S.C. §411(a) is satisfied merely by the filing for copyright registration or is only satisfied by the Copyright Office’s act of granting registration. The Court, settling on the latter, held registration occurs—and a copyright claimant may commence an infringement suit—when the Copyright Office registers a copyright. And, upon registration of the copyright, the copyright owner may recover for infringement that occurred both before and after registration.

While there are some exceptions to this rule (e.g., a copyright owner who is preparing to distribute a work of a type vulnerable to predistribution infringement—e.g., a move or musical composition—may apply to the Copyright Office for preregistration. §408(f)(2)), it is now perhaps more important than ever to register your copyright works early. Early registration provides not only evidence as of your date of possession of the work but also can expedite the filing of an enforcement lawsuit against alleged infringers.

https://d.casetext.com/api/print/document/fourth-estate-pub-benefit-corp-v-wall-streetcom-5?includeHighlights=false&concat=Fourth%20Estate%20Pub.%20Benefit%20Corp.%20v.%20Wall-Street.com.pdf


Attorneys enjoyed an evening shooting at Shoot Point Blank in Carmel

February 21, 2019

Woodard Emhardt attorneys enjoyed an evening shooting at the Shoot Point Blank gun range in Carmel, Indiana.  After a safety training, our attorneys shot a range of rifles and handguns–some manufactured by clients of the firm.


Amazon Debuts New Pilot Program to Combat Utility Patent Infringement

February 12, 2019

It has become more and more routine in the past few years for a client to call Woodard, Emhardt, Henry, Reeves & Wagner, LLP regarding an infringing item being sold on Amazon.  Often the seller is new and/or located overseas.  Sending a letter to Amazon would typically trigger a standard response in which the seller’s identifying information is provided and you were asked to work it out with them.  Filing a lawsuit is extremely expensive, particularly when the seller doesn’t reside in the United States.  Moreover, filing a new lawsuit with each new Amazon listing could be cost prohibitive.  As such, there really wasn’t any quick and efficient way for deal with this type of infringement.

In the past, the most effective solution was to seek and obtain an exclusion order from the International Trade Commission, which Amazon and other online marketplaces would recognize and promptly remove infringing listings.  However, Amazon has recently launched a pilot program which is intended to resolve this situation, while giving both patent owners and sellers a fair opportunity to be heard.

The program is currently by invitation only, but we have successfully utilized it to remove dozens of infringing listings on behalf of a number of our clients.  The program allows the owner of a utility patent to submit a takedown notification against a product listed on Amazon.com.  The takedown notification is limited to a single claim of a utility patent.  Upon receiving the complaint, Amazon notifies the seller, who has twenty-one days to contest the infringement allegation.  In order to contest, the seller must agree to a quasi-arbitration which focuses solely on the question of infringement.  In addition, the seller must submit $4,000 to a patent practitioner selected by Amazon as the neutral evaluator.  If the seller does not contest the claim of infringement, the listing is promptly removed.

Assuming the seller does contest, the patent owner must also submit $4,000 with the neutral evaluator.  The neutral evaluator then receives compact briefing over a roughly two-month period and issues a decision soon thereafter.  Amazon will either maintain or remove the listing based on the neutral evaluator’s decision.  Moreover, in the event the neutral evaluator finds infringement, that decision will control all future complaints of physically identical products.  The “winner” of the evaluation receives their $4,000 back, with the losers’ $4,000 being retained by the neutral evaluator as his/her fee.

In essence, Amazon has created a path for utility patent holders to have infringing listings removed relatively quickly without Amazon itself being forced to make the often difficult judgment calls that patent infringement sometimes requires.  The program is well suited for many of the infringing issues we deal with.  However, its simplicity will likely cause some problems when patent owners, whose infringement claims involve more complex questions, seek to enter the program.

If you have infringing items listed on Amazon and would like to learn how Woodard Emhardt can assist you in promptly and efficiently removing those items, please feel free to contact Bill McKenna.

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