News & Updates

 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.

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.

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.

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.

The Firm is proud to recognize our attorneys who have been selected for inclusion in the 2019 Indiana Super Lawyers® and Rising Stars lists.

The Woodard Emhardt attorneys have consistently been listed as Super Lawyers® in these primary practice areas:

• Spiro Bereveskos – Intellectual Property Litigation, Intellectual Property
  • Selected to Super Lawyers® 2006 – 2019
• Thomas Q. Henry – Intellectual Property, Intellectual Property Litigation
  • Selected to Super Lawyers® 2004 – 2019
• Daniel J. Lueders – Intellectual Property Litigation, Intellectual Property
  • Selected to Super Lawyers® 2004 – 2019

In addition, William A. McKenna has been named to the Rising Stars list in the areas of Intellectual Property Litigation and Intellectual Property since 2012.

The Super Lawyers® list recognizes outstanding attorneys who are selected using a patented, multi-phase process that considers factors such as peer recognition, professional achievement and high ethical standards. No more than 5% of the attorneys in Indiana receive this honor each year.

Attorneys named to the Rising Stars list are selected using the same process, with the exception that only those who are 40 years old or younger or who have been in practice for 10 years or less are eligible. No more than 2.5% of the attorneys in the state are named to the Rising Stars list.

We are all aware that sometimes things just don’t fall neatly into categories. Is it “nature” or “nurture”? Is my legal issue more in tort or in property, common law, statutory or Constitutional areas?

We all know that intellectual property law is commonly divided into several easily definable “buckets.” Patents concern inventions, whether machines, compositions of matter, methods or designs. Copyrights protect original works fixed in a tangible medium of expression. Trademarks are words, logos or other “devices” that serve to identify the source of a product or service. Each of these property concepts have particular rules governing what subject matter they apply to, when they come into existence, and what activities by others with respect to them are actionable.

I was reminded recently of a client who came to see me with drawings of a chair he had designed, and he wanted to protect it. Since he was an architect, he immediately thought of copyright — he considered the chair to be essentially an article of sculpture, with his particular design of the arms, legs and back the expression that was fixed in the tangible wood of the chair. As we looked at the design and mulled over the possible ways others might find value in it, it became clear that the chair might fit into multiple IP buckets — or perhaps none at all.

The copyright law broadly defines the subject matter it protects, as noted above: any original expression (e.g. art, words, music) that is fixed (e.g. in canvas, on a page, in a disc or other recording medium). But it also carves out a large exception for features of a “useful article,” such as a chair. Those features may have copyright protection if they “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. §101 (quoted in Star Athletica, LLC v. Varsity Brands, Inc., 137 S.Ct. 1002, 1005 (2017)). Separate identification means that one “need only … spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities.” Id. at 1010. Independent existence requires a determination that the particular feature can “exist apart from the utilitarian aspects of the article.” Id. In context, the question is whether the feature could be removed from the first medium and applied to another medium, without replicating the first medium itself. Id. at 1012.

In the case of the chair, it may be easy to see a particular decorative groove pattern, a clawed foot or a stained or painted decoration as a part of the chair. Separate identification of these features, as sculpture, graphics or pictures apart from the chair, is straightforward. But in the case of the groove pattern or the clawed foot, the much harder question is whether duplicating that pattern requires the utilitarian element of the chair — the foot, arm or back rest — in order to exist. In my experience, the Copyright Office generally takes a narrow view of the independent existence question, requiring not only a specific identification of the features the claimant considers worthy of protection, but a full explanation of how those features can exist without the underlying article.

Turning to the Lanham Act, the design of a product can itself qualify for trademark protection (commonly referred to as protectable “trade dress”) so long as it has “a distinctiveness which serves to identify the product with its manufacturer or source.” Traffix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 28 (2001). That distinctiveness must be proven by the claimant through evidence such as long and exclusive use, advertising that directs consumers to the product design, and surveys of consumers tending to demonstrate that they recognize the design as coming from a single source. Even if that burden is met, however, “trade dress protection may not be claimed for product features that are functional … [and we have] noted that product design almost invariably serves purposes other than source identification.” Id. at 29 (internal quotation marks and citations omitted). Lanham Act protection for a chair design or some of its features is thus possible, but requires substantial time, commitment and expense. The characteristic shape of the Coca-Cola bottle is protected, and has been registered with the U.S. Patent and Trademark Office, but only with proof acquired over time of the distinctiveness and non-functionality of the design.

Of course, for many, patents are the first protection that comes to mind for a product. A utility patent can protect the structure of the device or methods of making or using it. However, just because the client has not found the product on the shelf or online, does not mean that a patent is available. The product (or particular features of it) are compared to prior knowledge in that field of endeavor to see if the “new” product represents a true invention, a move forward in the relevant technology. For a chair, one might imagine the extreme range and depth of available information, over hundreds of years, pertinent to chairs and other furniture. Early in my career, a client proposed a therapeutic candle impregnated with her selection of substances, which would be released as the candle burned. No such item was available, as far as we could find — but there was a wealth of relevant, and patentability-destroying, information in 19th-century patents and products.

Design patents can provide an answer to a new product that is not a sufficient technological advance for a utility patent, does not have the distinctiveness of protectable trade dress, and does not meet the copyright law’s independent existence test. Only the ornamentation or artistic design of the product is assessed for patentability, and only that ornamentation is protected. Thus, competitors may offer a product that looks sufficiently different but performs the same task. Nevertheless, assuming the design is inventive, a client can obtain a patent and market its product as “patented” over the 14-year life of the design patent. Further, the design patent may provide the opportunity for the client to begin asserting the design in marketing and developing evidence of the distinctiveness that might be used later to obtain trademark rights or a registration of the product design.

The exemplary chair could have aspects that fit into any of the intellectual property categories. It could also be protectable by none of them, and only strong competitive effort will make and keep it successful in the marketplace. Exploring all avenues gives the client the best opportunity for protection suitable to his or her needs and goals.

Woodard Emhardt attorneys enjoy canoeing with family on Sugar Creek in Montgomery County. Weather cooperated by providing enough water in advance to move the canoes along the creek. Perfect conditions for the day were dry and a bit overcast and a great time was had by all. A picnic lunch rounded out the excursion.

Beginning in November 2018, Woodard, Emhardt, Moriarty, McNett & Henry (WEMMH) client FlightAware, along with Aireon, will utilize their revolutionary GlobalBeacon product to test real-time tracking of global aircraft. Airlines and aircraft operators will be expected to track their fleet globally at a frequency of one position every 15 minutes during normal operations. By 2021, they will be required to automatically receive positions once every minute for aircraft in distress.

GlobalBeacon provides the most simple and cost-effective solution for the International Civil Aviation Organization (ICAO) Global Aeronautical Distress Safety System (GADSS). By combining FlightAware’s data processing platform and web-interface with Aireon’s space-based ADS-B network, GlobalBeacon transcends borders and Flight Information Regions (FIRS) and provides 100% global coverage, including over deserts, polar airspace and oceanic regions. Therefore, airlines and aircraft operators are able to exceed GADSS standards and recommended practices for flight tracking.

Aircraft equipped with ADS-B Out transponders are tracked automatically with their position broadcast in real-time. Since ADS-B Out 1090MHz is mandated throughout the world, most aircraft do not require additional equipment to take advantage of GlobalBeacon.

FlightAware is the world’s largest flight tracking data company and provides over 10,000 aircraft operators and service companies, as well as over 12,000,000 passengers with global flight tracking solutions. FlightAware leverages data from air traffic control systems in over 55 countries, from its network of ADS-B ground stations in over 175 countries, from Aireon space-based global ADS-B, and using global datalink (satellite/VHF) via every major provider, including ARINC, SITA, Satcom Direct, Garmin, Honeywell GDC, and UVdatalink.

The FlightAware HyperFeed™ engine’s seamless integration of thousands of real-time, worldwide data sources combined with its powerful, intuitive, responsive and reliable web-based interfaces and data feeds yield the most capable and useful flight tracking application and service. FlightAware is the first company to offer free flight tracking services for both private and commercial air traffic and quickly rose to become the most popular flight tracking service.

WEMMH patent attorneys John McNett (a licensed pilot) and Bill McKenna worked with three tech-savvy pilots, led by Daniel Baker to obtain 12 U.S. patents, addressing numerous features of their rapidly growing business when FlightAware was created in 2005. WEMMH has also secured trademark registrations in over 50 jurisdictions throughout the world to protect the FlightAware brand. See their website at www.flightaware.com or download their app on your smartphone.

Partners Dan Lueders and Chuck Schmal were officially announced as members of the Global IP Star rankings in the May edition of Managing Intellectual Property IP Stars 2018/19. IP Stars is the leading specialist guide to IP firms and practitioners worldwide. Managing IP has been researching and ranking firms since 1996. This research has expanded over the years, with more than 80 jurisdictions now covered, making it the most comprehensive and authoritative analysis of the industry. The guide is viewed each month by over 25,900 users from 142 jurisdictions online, and the print versions are sent to over 10,000 IP Practitioners globally each year.

Congratulations, Dan and Chuck!

During a recent trip to Slovakia, organized in part by Woodard Emhardt Of-Counsel Steve Zlatos, Governor Eric Holcomb signed a memorandum of understanding with the minister of economy from Slovakia. The trip was arranged with the aim to build on established relationships between Indiana and Slovakia.

The focus of the gathering was to identify and enhance collaborative efforts toward two-way investment, trade and workforce development. Opportunities exist in the areas of advanced manufacturing, defense, automotive, energy, agriculture technology, information technology, cybersecurity as well as educational areas. Slovakia has been cooperating with the Indiana National Guard since 1994 and there has been a mutual interest in deepening cooperation beyond the sphere of defense. Indiana University and Purdue University currently have connections to academic institutions in Slovakia.

In addition to Governor Holcomb and Mr. Zlatos, the group from Indiana included U.S. Ambassador to Slovakia Adam Sterling, Indiana House Speaker Brian Bosma and wife Cheryl, First Lady Janet Holcomb, Senate President Pro Tem David Long and wife Melissa, and General Courtney Carr, head of the Indiana National Guard. The team met in Bratislava with President of Slovakia, Andrej Kiska, and the Prime Minister, Peter Pellegrini.

A large community of Slovaks lives in Indiana, while Indianapolis is home to the Slovak honorary consulate headed by Steve Zlatos.