News & Updates

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.

Are you a bird lover? This one is for you!

On Tuesday, Carmel-based Mr. Canary Co. released a revolutionary product on the Home Shopping Network (HSN). Mr. Canary has been selling their bird feeders through major retailers since 1995.

Mr. Canary touts the invention as merely TV dinners for birds, which is a maintenance-free avenue to enjoy backyard birds. Basically, premium bird seed is sealed in single-use and eco-friendly trays, which slide into a permanent bird feeder. Bonus being: users don’t have to worry about hauling bird seed bags to the backyard and the cleanup is simple. The system ranges from $34.99 to $39.99.

Sisters Jan Long and Chris Mowery bought the Mr. Canary brand in 1995. By 2013, Mr. Canary products were being sold in Kmart, WalMart and Kroger stores across the nation. Ace Hardware signed on in 2014, as well.

Chuck Schmal of Woodard, Emhardt, Moriarty, Mc Nett & Henry LLP, along with Long worked together to secure a patent on the Bird Buffet System (US 9,686,968).

For more information, please refer to: https://www.ibj.com/articles/68556-carmel-based-mr-canary-to-debut-on-home-shopping-network?utm_source=ibj-daily&utm_medium=newsletter&utm_campaign=2018-04-26

It may sound exhausting. Your client is focused on starting a new business and of course, they have plenty on their plate. Purchasing equipment and inventory, leasing premises (if not operating from home), arranging sales and/or other business development opportunities, as well as getting the word out on the new business will take every bit of a 24-hour day.

However, the fruits of labor will pay off. Indiana offers an easy online filing system as well as access to many other resources. Organizing a business structure may just be the easiest step.

Your client needs strategies and concepts regarding the intellectual property assets encompassed in the new business even before the articles of incorporation are filed. Many pieces may already have been created and others will be developed as the business grows. Remember, as with any other task, an ounce of prevention in the form of planning for intellectual property is worth at least a pound of cure, especially when the client is engaged with the day-to-day efforts of running the business.

Trademarks and Trade Names

Clients may not understand that adopting a company or corporation name (even one not used as a brand) can result in unfair competition claims under the federal Lanham Act (e.g. 35 U.S.C.§ 1125) or state law.

I’ve seen clients that have incorrectly assumed that registration of their company name is without consequence. I’ve also experienced that similar misconceptions arise with domain names. Most states, Indiana included, do not have a process to evaluate the likelihood of consumer confusion among corporate names. If Indiana does not find a match with an existing corporate name, it will usually go ahead and register the name. The same goes with domain names. If a registrar does not find a match with an existing domain name, the registration will proceed. Only later may the client discover that there is a non-identical, yet potentially confusing domain name, corporate name or trademark that has already been registered by another entity.

Indiana has a searchable database of registered business names: https://bsd.sos.in.gov/publicbusinesssearch. Once your client has decided upon a company name, guide them to take the simple step of searching the Indiana database to review any similar names and the business they conduct. Note that this review is not comprehensive. However, it can be utilized to locate and avoid specific pitfalls. Your client can also arrange for more in-depth searches. Again, before the corporate articles are filed, a basic, quick search is highly recommended.

Trade Secrets

If the client has no employees, trade secret issues may be minimal. The new businessperson always needs to be aware of what business information is valuable and safeguard that information. The easiest step is to keep such information locked away when not in use, whether digitally (separate server or drive) or physically.

When employees, investors, or corporate officers come into the picture, the small-business person needs to consider who needs access to valuable information and how to compartmentalize it. A good practice is to get written agreements from employees and others involved with the business that include clauses requiring them to use such information for the business, and not for themselves. Also, keep a log of people admitted to nonpublic areas of the business’ premises, and have them sign a short agreement not to divulge what they observe or learn.

Patents

Not all new businesses will include an inventive product, method, or device as part of its plan. However, a new businessperson needs to know that the clock starts ticking on applying for a patent in the United States when an invention is “ready for patenting” and non-confidentially disclosed or otherwise made public. Once that happens, the client has one year from such publication to file a U.S. application. Accordingly, as a new business is formed, Quick decisions concerning a patent search or application and secrecy agreements (preferably written) with investors, employees or others may be needed.

Copyrights

Copyright automatically exists in an “original work of authorship” as soon as it is “fixed in a tangible medium of expression.” A copyright is initially owned by the author unless (1) assigned by the author, or (2) a “work made for hire,” i.e. made by an employee in the scope of employment.

When others are the authors, the new businessperson must be aware that he or she may not own, and may even have limited rights to, materials created for the business. Web designers, for example, may retain ownership of copyright, and while the new business may use material created by the web designer, the businessperson may have limited ability to alter or add to the material. The new business needs to be aware of, or negotiate away, any such limitations.

The number of people who assume that material on the internet or posted on social media is free for anyone’s use is remarkable. Informational sites frequently allow a license to use material for noncommercial or educational purposes. However, know that the new businessperson (your client) needs to investigate and observe such licenses, where they exist. Fair uses are permitted by statute (17 USC 107), but are generally not associated with commercial use of copyrighted material. It is vital for a new businessperson to remember that photographs, text or other online material are rarely free for the taking.

Winding it Down

As with life in general, whether a business is large or small, it does not last forever. Intangible property should be treated with as much care as tangible property. Hoosiers may remember when the Roselyn Bakery chain ceased operation, but the trademarks and associated goodwill were valuable assets that continued in use.

Intellectual property can pass by assignment or by operation of law. In a bankruptcy, patents, copyrights, trademarks (with associated goodwill) and trade secrets may be sold or assigned for the benefit of creditors. In the winding up of a corporation or limited liability company, intellectual property must be considered in the disposition of all property. While it may seem that there need be little or no concern for intellectual property in a soon-to-be defunct small business, potentially valuable rights are at least in ownership limbo and may be lost if provision for them is not made in the winding down.

In a noncorporate business, where any intellectual property owned by the “business” is in fact owned by the individual proprietor, winding down the business may have little effect on the property of the business — it remains owned by the proprietor. However, in such cases any intellectual property — which can include copyright in personal and business papers — transfers on the death of the owner occur according to a residuary clause in his or her will, or according to the applicable law of interstate succession.

To view the article in The Indiana Lawyer click here.

Michael Duff is a world class craftsman behind some of the world’s greatest violinists and stringed musicians. Duff was recently awarded a U.S. Patent for innovating a new bow, including a novel frog part of the bow.

Stringed musical instruments such as the violin, viola, cello and stringed bass use bows to create classic and timeless music. Duff is the proprietor of Berg Bows® International in Bloomington, Indiana in 1985. https://www.bergbows.com/ As a former faculty member of Indiana University’s Department of Microbiology, he utilizes his scientifically trained mind and prides himself in being involved in the handcrafting of each and every bow.

Michael enlisted the assistance of Dan Lueders of Woodard Emhardt Moriarty McNett & Henry. In November 2017, Berg Bows International received a patent (U.S. 9,830,892 B1) for all violin, viola and cello bows with Berg “Sound Stick” Technology. His inventive bow was featured in Strings magazine.

For more information, please refer to http://stringsmagazine.com/bow-maker-michael-duffs-new-line-includes-hybrid-materials/

Four partners from Woodard, Emhardt, Moriarty, McNett & Henry LLP have been named to the 2018 Indiana Super Lawyers and Rising Stars lists.

The following attorneys were included on the Super Lawyers list:
• Thomas Q. Henry – Intellectual Property
• Spiro Bereveskos – Intellectual Property Litigation
• Daniel J. Lueders – Intellectual Property Litigation

The following attorney was named to the Rising Stars list:
• William A. McKenna – Intellectual Property Litigation

Super Lawyers is an annual rating service of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement. The patented selection process includes independent research, statewide nominations and peer evaluations. Only the top 5 percent of Indiana’s attorneys are selected among the state’s most elite. All honorees are listed on the Super Lawyers website at www.superlawyers.com.

The “Rising Stars” designation honors leading attorneys who are 40 years or younger or have been practicing for 10 years or less.