Jonathan LA Phillips named as an Emerging Lawyer

Shay Phillips, Ltd. is happy to announce the Law Bulletin Publishing Company, through its Leading Lawyers division, has named Jonathan LA Phillips as an Emerging Lawyer. Leading Lawyers named Mr. Phillips as an emerging lawyer in the areas of:

  • Intellectual Property Law;
  • Public Utilities Law: Gas/Water/Electric;
  • Energy Law; and
  • Commercial litigation.

The Emerging Lawyer distinction is earned by fewer than two percent of Illinois lawyers and is limited to those who are not yet forty or have practiced ten or fewer years. The designation is based upon the recommendation of an advisory board as informed by the recommendations of other attorneys. To learn more about Leading Lawyers, you may visit www.leadinglawyers.com.  Just as important as the recommendation, Shay Phillips, Ltd., and Jonathan LA Phillips, are pleased that other attorneys in the state recognized Mr. Phillips in these areas.

Illinois Power Agency Renewable Portfolio Standard Workshops

The Illinois Power Agency (“IPA”) has announced workshops on the implementation of the revised Illinois Renewable Portfolio Standard (“RPS”) contained in the recently enacted Future Energy Jobs Act, Public Act 99-0906.  Interested stakeholders will be able to provide the IPA feedback at the workshops and in response to questions posed by the IPA after the workshops.  Altogether, four days of workshops have been scheduled.  Interested parties are encourage to attend, but due to space limitation the IPA asks that only one representative from interested parties attend in person.  Phone participation will be available at each workshop.  The days of the workshops and discussion topics on each day are set forth below.  More detailed agendas will be released prior to the workshops at dates to be determined.

Initial Forward Procurements

May 10, Chicago (Start time to be determined)

This workshop will focus on the goal of procuring 1,000,000 annual Renewable Energy Credits (“REC”) each from new utility-scale wind and utility-scale/brownfield solar (pursuant to new Section 1-75(c)(1)(G)) of the Illinois Power Agency Act).  The workshop will provide an overview of the proposed structure and terms of the procurements, select contract provisions, and the timeline for conducting the procurements.  The workshop will provide an opportunity for stakeholder input prior to the release of draft contracts, which is anticipated to be in June.

Long-Term Renewable Resources Procurement Plan

May 17, Chicago

Morning: Overview of the Plan

This workshop will provide an overview of the new provisions of the Illinois RPS, and how the IPA will address meeting the RPS goals through the Long-Term Renewable Resources Procurement Plan.  The workshop will cover the development process for the Plan and opportunities for future stakeholder input as that process moves forward.

Afternoon: Adjustable Block Programs

This workshop will focus on the adjustable block programs for new photovoltaic distributed generation systems.  This will include potential approaches for determining block prices, categories, and sizes; application procedures; program terms and conditions; and other issues to be determined.

Solar workshops

May 18, Chicago

Morning: Community Solar

This workshop will focus on community solar projects.  The agenda will include potential approaches for application procedures; program terms and conditions; consumer protections; and other issues to be determined.

Afternoon: Illinois Solar for All Programs

This workshop will focus on potential approaches for how the IPA will implement revisions to Section 1-56 of the Illinois Power Agency Act, creating the Illinois Solar for All program, which provides incentives for low-income consumers and communities through four programs: (1) Low-income Distributed Generation Incentive; (2) Low-income Community Solar Project Initiative; (3) Initiatives for Non-profits and Public Facilities; and (4) Low-Income Community Solar Pilot Projects.  The workshop will also address potential approaches for defining the term “environmental justice community,” best practices for determination of low-income eligibility, opportunities for grassroots education on the Illinois Solar for All programs, and coordination with job training programs.

Programs for Rural Communities                    

May 24, Springfield (Start time to be determined)

This workshop will focus on implementation of the adjustable block program, community solar, and the Illinois Solar for All programs in exurban and rural areas of Illinois, specifically how to address the different housing stock and program opportunities and interest in these areas, and other issues to be determined.

Shay Phillips Ltd. is well suited to assist stakeholders navigate the IPA workshops and ensuing proceedings at the Illinois Commerce Commission (“ICC”).  Shareholders William Shay and Jonathan Phillips have practiced before the ICC for years.  Associate John Albers served as an Administrative Law Judge at the ICC for more than 17 years prior to joining Shay Phillips, Ltd.  Mr. Albers’ ICC experience includes presiding over IPA procurement plan dockets (including the 2014 supplemental solar REC procurement) and a variety of other energy related matters. 

2016 Trademark Trial and Appeal Board Statistics

Many individuals and businesses from across the United States approach our office after filing an application for trademark registration themselves or after attorneys who do not focus on intellectual property issues have filed an application. (Of course, we encourage potential clients to see if our flat-rate trademark application services are a fit for them. Even if you use other attorneys for your other legal work, we are happy to take care of your intellectual property matters) When we hear from potential clients after they have filed an application, its typically because the USPTO issued an office action. 

An office action is an official "no" to the application for registration. However, sometimes it is a "no, but if you do this easy thing, the application will pass." Sometimes it is a "no, you shall not pass." For those latter office actions, the client has to gear up for a fight. I've placed a trademark application flowchart at the end of this article so that you can tell where office actions fall in the process.What follows is not legal advice, but general information. Of course, every potential client has different sets of facts that lead to different results.

Section 2(d) and Section 2(e) refusals

Two of the most common reasons for the latter sort of office action are likelihood of confusion with an already registered mark or mere descriptiveness. A section 2(d) refusal for likelihood of confusion means that the USPTO's examining attorney believes that the mark you are applying for is too similar to an already registered mark. Perhaps a common law or knockout search would have caught the mark, perhaps it would not. Either way, you will need to argue with the examining attorney to show that your registration would not be likely to cause confusion. 

A section 2(e) refusal for mere descriptiveness means the USPTO's examining attorney believes that the mark you are applying for merely describes the goods or services you are selling. That is, if you sell green shirts and you call your company GREEN SHIRTS, then you will likely get a Section 2(e) refusal. Here, the typical argument will to show your mark has acquired distinctiveness or that it is actually a suggestive mark, not a descriptive mark.

Should I fight a USPTO Office Action?

The question I always get from our clients is, "Should I fight it, or am I throwing good money after bad." Obviously, there are a myriad of factors that go into such an analysis. How invested in the brand are you? Do your facts tend to suggest a higher likelihood of success in overcoming the office action at the examining attorney level and the TTAB level? Is it a matter of principle for you?

I believe that for most companies with at least a moderate desire to secure a registration, attempting to convince the examining attorney to change her mind is worth the investment. Typically the fees are moderate and there is little other risk in failure. However, many examiners prove difficult to convince. If she is unmoved, the examining attorney issues a final office action refusing the application. After that, you can either seek reconsideration or appeal to the Trademark Trial and Appeal Board.

Should you take the fight to the TTAB?

TTAB proceedings will use the record developed at the Examining Attorney level. So, if you are missing key evidence,  you can use a reconsideration to bolster the record in your favor. However, proceed with caution. You are also giving the Examining Attorney the opportunity to bolster her arguments and reject your application again. But, with bolstered arguments, you might have a harder time at the TTAB level. For this reason, 

Again, a myriad of factors impact whether to appeal to the TTAB. However, I must report that there are some unfortunate statistics. In 2016, the TTAB affirmed 

The Trademark Trial and Appeal Board affirmed well over 90 percent of Section 2(d) confusingly similar refusals in 2016. It affirmed around 90% of Section 2(e) descriptiveness refusals as well. Both are on the high end of recent years. However, this is certainly something to take into account when considering whether to appeal to the TTAB.

trademark-flowchart-shay-philllips

Enbridge considering new pipeline in Boone, DeKalb, LaSalle & Livingston counties

As early as February of 2014, Enbridge Energy, Limited Partnership began surveying land for the possible expansion of its pipeline system in Wisconsin and Illinois.  Enbridge now operates Line 61, which runs from Superior, Wisconsin to Flanagan, Illinois.  The survey work is being done as Enbridge contemplates constructing a new pipeline parallel to Line 61.  Impacted Illinois counties include Boone, DeKalb, LaSalle, and Livingston Counties.  In order to construct a new pipeline, it is likely that Enbridge will need new or expanded easements from impacted landowners.  Before construction can begin, however, Enbridge will need approval from the Illinois Commerce Commission.

Several aspects of any such pipeline construction project impact a landowner’s rights.  The initial survey work, route selection, finding of public need by the ICC, and easement negotiation all represent areas where landowners must be aware of their rights and the risk of loss.  For instance, when a pipeline company asks for permission to conduct a preliminary survey, it is advisable to insist on a written agreement and financial compensation before consenting.  While a company may characterize its survey work as non-invasive, past landowners have experienced damage to fences, rutted lanes, holes left from soil borings, and escaped livestock as a result of survey work.  A written agreement prepared by those with experience in handling such matters can protect a landowner’s interests.  Another example where knowledgeable assistance can make a difference pertains to the ICC.  As an administrative agency subject to specific laws and its own unique rules, having the help of someone experienced with ICC proceedings will make navigating the regulatory process easier.  Easement negotiation is also critical in that it includes more than just money.  A variety of other factors should be considered in easement negotiations to successfully protect a landowner’s interests.

In all of these areas, Shay Phillips Ltd. can assist landowners protect their interests.  Over the years, William Shay and Jonathan Phillips have represented numerous landowners in negotiations with utilities as well as in ICC proceedings.  Mr. Shay and Mr. Phillips’ representation of landowners, and groups of landowners, includes numerous ICC pipeline and electric transmission line dockets.  For example, Shay Phillips Ltd. represented a group of landowners in ICC Docket 14-0754, in which Dakota Access, LLC sought approval for the construction of, and route for, a new petroleum pipeline.  In addition, among the attorneys at Shay Phillips Ltd. is former ICC judge John Albers.  Mr. Albers has presided over dockets relating to pipelines, electric transmission lines, natural gas transmission lines, and water distribution lines.  His experience can provide valuable insight into the ICC decision making process.  Regardless of the type of utility facility, Shay Phillips Ltd. has the experience to help landowners protect their interests.

Cypress Creek Renewables Solar PV Continues Farm Land Lease Activity

Cypress Creek Renewables, LLC has continued to solicit leases from Illinois landowners in many areas of Illinois. CCR’s approach is to have the landowner sign a lease and easement agreement that contains a relatively inexpensive “option” through specifying a 6 month diligence period, with a nominal payment to the landowner. This allows CCR both to try to obtain other properties and to conduct engineering and other analyses to determine whether it wishes to proceed to the next step. The agreement then gives CCR a 2nd option through another 18 month diligence period, with a larger though still relatively modest payment to the landowner. These two “option” periods afford CCR opportunities to terminate and walk away from the agreement. The form of agreement also provides other opt-out provisions that soften CCR’s commitment to pay the landowner all the rent and other compensation expected through the term of the lease. The form agreement contains many other provisions that are slanted heavily in CCR’s favor. To date, it appears CCR is resisting any meaningful revisions that the landowner and landowner’s attorney may propose. It should be remembered that CCR does not have eminent domain authority in the State of Illinois and therefore cannot force any landowner to sign any type of agreement. Landowners are advised to obtain advice and negotiating assistance from an attorney experienced in leases and easements with utility and energy project developers.

Shay Phillips Ltd. is experienced in negotiating leases and easements on the behalf of landowners for wind energy projects, gas and oil pipelines, and electric transmission lines, which provides us valuable experience in providing quality legal representation to landowners who may wish to negotiate land lease terms, both financial and non-financial, with developers like Cypress Creek Renewables.

 

Recent copyright defense success against PTG Nevada, LLC

A substantial portion of Shay Phillips, Ltd.'s practice focuses on intellectual property law. Within that area of law, Jonathan LA Phillips has developed a BitTorrent copyright litigation defense practice. The firm's zealous advocacy in BitTorrent litigation has produced successes in the past, including a Summary Judgment against Malibu Media, the most prolific copyright suit filer in recent history.

A recent Colorado PTG Nevada case was no different. Our Answer, coupled with counterclaims and affirmative defenses challenging the crux of the case and pointed discovery gleaned from handling many of these cases seemingly prompted a dismissal, with prejudice. That is PTG Nevada walked away from its suit.

PTG Nevada LLC dismisses case against our client

District of Colorado case number 16-cv-455 progressed like many other multi-Doe BitTorrent copyright cases. PTG Nevada sued a slew of John Does, asked for early discovery to correlate their IP Addresses to subscribers, got the discovery, and eventually the internet service provider told it who recieved the bills for internet service associated with those IP Addresses. However, as most people familiar with BitTorrent litigation know, judges have recognized that a subscriber assigned an IP Address may not be the infringer.

From there, if the typical model of BitTorrent copyright suits was followed, PTG Nevada must have reached out to settle with many of the Does without actually naming them in the lawsuit. As some judges have recognized, because they simply want to put the matter behind them, some people settle whether or not they infringed. Whether to settle and for what amount is always a question that a BitTorrent defendant must ask herself. It is a fact and situation specific inquiry that we help legions of people through at Shay Phillips. 

Our efforts and PTG Nevada's dismissal

Our client, given the nature of this post, obviously did not settle. Instead, we filed an Answer to the Complaint, denying the allegations. However, we also filed counterclaims and affirmative defenses challenging whether the alleged facts were sufficient to claim copyright infringement. We also served discovery aimed at uncovering what evidence PTG Nevada actually possessed. 

After doing so, PTG Nevada sought to dismiss the case against our client, with prejudice. It simply walked away from the suit - and we walked away from our counterclaims. While only PTG Nevada knows why it chose to walk away from our client, we believe that our zealous advocacy, informed by hundreds, if not thousands, of hours litigating (and settling) BitTorrent cases, resulted in this favorable outcome for our client.

What evidence shows copyright infringment in BitTorrent cases?

Over time, it evidence has been mounting that  BitTorrent Plaintiffs might possess very little evidence of copyright infringement. The law requires Plaintiffs to prove unauthorized copying of constituent elements of a copyrighted work. Does evidence purporting to show a transfer of a few BitTorrent pieces without other evidence prove that? To the author's knowledge, that question has not been answered. The question was posed in Northern District of Illinois case number 13-6312. But there, we (along with co-counsel Erin K. Russell) successfully argued that Malibu Media, LLC failed to provide sufficient foundation and witnesses to allow the Court to even consider the PCAP evidence it claimed showed infringement

For more information on BitTorrent lawsuits, please feel free to review the site, to contact us for a free consultation if you need help with a BitTorrent case, or to read Mr. Phillips article published by the Illinois State Bar Association regarding BitTorrent cases.

Intellectual property docket at Supreme Court (2016)

Many outlets are reporting on the Supreme Court's intellectual property docket this year. There are four intellectual property cases on the docket - with more pending decisions on their writs of certiorari. Yet, it seems that the world has forgotten 2014. In 2014 the Supreme Court had six patent cases on its docket and two copyright cases on its docket. We discuss two of this years' cases below.

Intellectual property law is primarily the law surrounding patents, copyrights, and trademarks. It may also be construed as covering other issues like rights to publicity as the lines between legal theories blur with the increasing utilization of the internet.

Samsung v. Apple

Of course, the most famous case that is up for a decision. Why does the public cares? Its big name tech companies that people see every day. Why intellectual property lawyers care? Where does copyrightable artistic expression end and functionality begin?

There are different types of intellectual property to solve certain problems or incentivize certain actions. Copyrights are meant to spur artistic creativity. They are not meant to provide an incentive for useful inventions. That is the domain of patent law. Or, as we have argued in Phoenix Entertainment Partners cases, it is important to keep trademark law (source identifier for goods and services) separate from copyright law. The Samsung v. Apple case will, hopefully, clear up the separation between design patents and utility patents. One position, that of the amicus curiae brief of 37 intellectual property professors, is that the Court should reject an ordinary observer test for infringement and resurrect the forgotten functionality doctrine. 

Many design patents cover designs that include clearly functional features, and many cover designs whose ornamentality in any ordinary sense of the term is questionable at best. See Mark A. Lemley & Mark P. McKenna, Scope, __ Wm. & Mary L. Rev. __ (forthcoming 2016), available at http://ssrn.com/abstract=2660951. But under current Federal Circuit law, the jury is no longer required to exclude those functional elements from consideration when it decides infringement. Under the Federal Circuit’s unguided ordinary observer test, it is all too possible that a design patent owner will be able to prevent competitors from copying utilitarian features that are unprotectable under utility patent law.

Lee v. Tam

Should the United States Patent and Trademark Office bar disparaging trademarks? Perhaps the most famous, and thus most controversial, could be the Washington Redskins brand. But, what if an Asian American band called itself The Slants? More importantly, should the USPTO be filling in the role of a moral decision-maker, or is that a violation of the First Amendment?

The legal question? Does the disparagement provision of the Lanham Act an unconstitutional restriction of free speech  as protected by the First Amendment. That provision, 15 U.S.C. 1052(a), dictates that no trademark application will be rejected unless, among other items listed it "consists of . . . matter which may disparage . . . persons, living, or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute."

Tam concerns an Oregon band. Its trademark application for registration was denied as disparaging to asians. The proposed mark? The Slants. Dissimilarly, the Redskins already had a trademark registration. But in 2014, the USPTO revoked it after a cancellation proceeding brought by Native American rights activists. It is likely that the Redskins will try to have their voice heard as well.

Can U.S. Trademark Law Extend Into Canada? Apparently so.

The Ninth Circuit Court of Appeals certainly thinks so. It ruled that the Lanham Act, providing most of the trademark law in the United States, can reach into Vancouver, British Columbia.

Pirate Joe's in Vancouver

According to the documents filed in the appeal to the Ninth Circuit and the district court, there is a Trader Joe's store in Bellingham, Washington. It is relatively near to the United States-Canada border. Canadians constituted about forty percent of the Bellingham Trader Joe's business. 

An individual, Mr. Hallatt, has purchased over $350,000 in Trader Joe's groceries. He makes several trips a week into the United States, purchasing large amounts of groceries. Apparently, he takes them back to Canada, perishables and all, and sells them at his store, Pirate Joe's at inflated prices. When the Bellingham store cut him off, Mr. Hallatt began going to stores as far as Seattle, Portland, and further south to gather the groceries.

Does the Lanham Act apply in Canada?

Arguably, the infringing activity takes place in Canada, not the United States. The Ninth Circuit, through Judge Christen, explained that the extraterritorial reach of the Lanham Act is a merits question. It does not implicate the United States' federal courts' subject matter jurisdiction. 

Some readers might question, how can it affect sales in the United States? After all, he was purchasing the groceries. Presumably even if someone purchase from Mr. Hallatt's Pirate Joe's store, there was still a purchase of that same good in the United States.

First of all, trademark law concerns itself about quality control. Here, Trader Joe's could not control quality. Secondly, higher prices in Vancouver could affect United States' commerce by harming Trader Joe's reputation. Finally, there were Canadians coming to the United States to purchase the goods. 

What does Pirate Joe's teach us?

Typically, overseas sales impact the Lanham Act when the goods sold make their way back to the United States. Here, though, the case hinges on reputational damage. There is no argument that the goods have made it back into the United States.

While this is certainly an expansion of the Lanham Act's reach, it may not be as drastic as thought of. Given the dictates of geography, it would seem that the Ninth Circuit's holding will apply only to places like Cascadia in the Pacific Northwest, Detroit-Windsor, Toronto-Buffalo, Lorado-Nuevo Lorado, San Diego-Tijuana, and other cross-border areas of higher population density. However, it will be interesting to see if the law keeps expanding. 

Cypress Creek Renewables in Livingston and Grundy Counties

A California-based developer of large-scale solar power projects has started soliciting interest from farmers and other landowners in at least two Illinois Counties – Grundy and Livingston. Cypress Creek Renewables, LLC has developed large, multi-acre solar power projects in several states in the U.S., and is attempting to extend its reach into Illinois. In order to develop a project, Cypress Creek typically leases 10 - 40 contiguous acres, the flatter the better, for up to 40 years (typically 20 years base term and successive 5 year renewal options). After an initial diligence period, if the site is suitable, Cypress Creek will install a series of photovoltaic panels elevated on structures a few feet above the ground. 

These types of projects take land out of agricultural production until the lease expires and the solar facilities are removed. Cypress Creek is offering to pay a flat amount to the landowner during the initial diligence period, and if it decides to build the project, would pay a flat annual amount per acre, with an annual escalation factor, for the life of the project. The form of land lease Cypress Creek is proposing contains many important terms and conditions, and landowners are advised to consult an attorney experienced with long term land leases and easements for energy projects. 

Shay Phillips Ltd. has been retained by landowners who Cypress Creek has approached about a land lease, and we are available to represent others as well. Our experience in negotiating leases and easements on the behalf of landowners for wind energy projects, gas and oil pipelines, and electric transmission lines provides us valuable experience in providing quality legal representation to landowners who may wish to negotiate land lease terms, both financial and non-financial, with developers like Cypress Creek Renewables.

Illinois Appellate Court Stops Controversial Rock Island Clean Line Power Line Project

William Shay and Jonathan LA Phillips recently helped achieve a major legal victory on behalf of a large group of landowners, which should stop the construction across their lands of a proposed new high voltage electric transmission line. On August 10, 2016, the Illinois Appellate Court, Third District, reversed an Order of the Illinois Commerce Commission which had authorized Rock Island Clean Line LLC to construct the transmission line in Illinois. The basis of the Appellate Court opinion is that Rock Island does not possess the attributes of a public utility under the Illinois Public Utilities Act, and therefore is ineligible to receive regulatory approval for the line. Our client, the Illinois Landowners Alliance, consists of over 300 individuals with interests in over 100,000 acres of land in Illinois. The ILA, represented by Shay Phillips, Ltd., intervened and actively participated in Illinois Commerce Commission Docket 12-0560, opposing Rock Island’s application to the ICC for approval of the project.

Rock Island Clean Line Project; Required State Regulatory Approvals

Rock Island is a subsidiary of recently formed and privately owned Clean Line Energy Partners LLC, based in Houston, Texas. Its project, a direct current transmission line, was proposed to run from O’Brien County in northwest Iowa to Grundy County in northeast Illinois, crossing lands of ILA members. Rock Island needs regulatory approval from both the Illinois Commerce Commission and the Iowa Utilities Board in order to construct the project. Regulatory proceedings in Iowa are pending.

Following testimony, hearings, and briefing in the Illinois regulatory proceeding, the Commerce Commission awarded Rock Island a certificate of public convenience and necessity to construct the Illinois portion of the project on November 25, 2014. The ILA appealed, along with the Illinois Farm Bureau and Commonwealth Edison Company. We prevailed on that appeal.

Third District holds that Rock Island lacks required Public Utility status

In its August 10, 2016 opinion, which can be seen here, the Illinois Appellate Court, Third District, reversed the Illinois Commerce Commission. It found that Rock Island did not satisfy the definition of “public utility” under the Illinois Public Utilities Act for two reasons. First, the Court found that Rock Island did not own any utility assets within the state of Illinois. Secondly, the Court found that Rock Island’s planned sales of capacity on the transmission line to electric generators and other parties was to a limited group of eligible users, and therefore was not for public use. As such, Rock Island is not eligible for, and the ICC lacked authority to issue, a certificate for the project. The ILA, Farm Bureau and ComEd argued that other reasons existed for the Commerce Commission’s Order to be reversed, but the Appellate Court declined to address those arguments once it found that Rock Island failed to satisfy the threshold public utility status requirement.

 

Where does Rock Island go from here?

It has the right to request that the Illinois Supreme Court review the Appellate Court’s opinion, by filing a petition for leave to appeal. The Supreme Court’s decision whether to accept such a request is discretionary, and it accepts only a small minority of such petitions. Even if Rock Island files a petition, and even if the Supreme Court grants the petition and agrees to review the Appellate Court decision, Rock Island will still have to convince the Supreme Court, through briefing and oral argument, that the Appellate Court’s decision should be reversed. Rock Island’s opponents who participated in the appeal, including the ILA, would have the right to participate fully in proceedings before the Supreme Court.

Seventh Circuit affirms our victory over Phoenix Entertainment Partners

Phoenix's Complaint dismissed at the District Court

We previously wrote about our successful defense of a Phoenix Entertainment Partners and Slep-Tone lawsuit in the Central District of Illinois. Our blog article can be found here. In that case, Shay Phillips' attorneys did not answer the Complaint. They moved to dismiss it, and the Court granted the motion. This was one of only a handful of victories against Phoenix Entertainment Partners and Slep-Tone across the country. 

The dismissal obtained is affirmed by the Seventh Circuit

As that article points out, Phoenix and Slep-Tone appealed that decision. Shay Phillips's attorneys defended the appeal. We filed a response brief and argued before Chief Circuit Judge Wood, Circuit Judge Rovner, and District Court Judge Blakey (sitting by designation).

On July 21, 2016, the Seventh Circuit Court of Appeals affirmed the dismissal of the action. The Court's opinion can be found here. This is the first known victory against Phoenix Entertainment Partners, LLC or Slep-Tone Entertainment Corporation at the appellate level, concerning their "media-shifting" lawsuits.

Nationwide defense against Phoenix Entertainment Partners' suits

Shay Phillips, Ltd. defends against lawsuits brought by Phoenix Entertainment Partners. We do so across the United States. We have worked for our clients in the midwest, Florida, California, and New York. Our defense efforts are truly nationwide. We offer free consultations for anyone sued by Phoenix Entertainment Partners and work with insurance companies, when coverage exists. Contact us using our contact page to set up a free consultation.

Richard Bell's Indiana copyright suits dismissal affirmed on appeal

Shay Phillips, Ltd. is one of the rare downstate Illinois firms that focuses a significant portion of its practice on intellectual property matters. We have gained a reputation for tenacious and zealous advocacy of both intellectual property rights holders and those they sue. In order to succeed, we keep apprised of recent developments in the case law. Mr. Richard Bell has brought a slew of lawsuits in the Southern District of Indiana (where we have succeeded in some intellectual property matters).  

Richard Bell's lawsuits in the Southern District of Indiana

In the past few years, Indiana photographer Richard Bell has filed a slew of lawsuits against individuals using his Indianapolis skyline photo. The Southern District of Indiana consolidated some select groups of those cases. Undoubtedly, a large portion of those individuals likely settled their cases, however, a select few defended against his claims. Several of them won. This post discusses one consolidated case where several defendants did defend the case and won.

Bell sued over the wrong photograph, destroying his case at the outset

After discovery, summary judgment motions were filed. The District Court for the Southern District of Indiana determined that one defendant did not infringe the copyright because Mr. Bell sued about the wrong photograph. The Court previously refused to allow him to change the suit to allege the appropriate paragraph. It explained that too much time had gone past and, essentially, blamed Mr. Bell's carelessness. After judgment was entered, he tried filing another lawsuit for the correct photograph, but the Court dismissed it on res judicata grounds. Res judicata is a latin word for a thing adjudicated. In short, Court's do not let litigants file new suit after new suit when the litigant should have raised all its issues at once. Here, the District Court essentially decided that Mr. Bell should have raised the

Failure to prove damages

As for the others, the District Court determined that Mr. Bell did not prove any damages. The facts concerning why Mr. Bell did not simply seek statutory damages are beyond the scope of this post. In the end, the Southern District of Indiana entered judgement in favor of the Defendants. (the author of this post has not determined whether or not the Defendants sought attorney's fees as prevailing parties under Section 505 of the Copyright Act). Mr. Bell's blanket statement that he would like to license the image for $200 was not sufficient to show the actual damages from infringement.

Bell appeals to the Seventh Circuit

Disappointed, Mr. Bell appealed the decision to the Seventh Circuit Court of Appeals. It just issued its Opinion. It affirmed the District Court's decision. In short, Mr. Bell never proved his damages and his attempt to get a second bite at the apple were not well taken.

There are a few lessons to be gleaned from this case. First, copyright holders should ensure their ability to seek statutory damages under the Copyright Act. Otherwise you find yourself in the difficult position of attempting to prove up your damages. Secondly, make sure your pleadings match the infringement. You may not get multiple bites at the apple.

Utility Line & Pipeline Easements Damages to the Remainder (Part 3)

Previous discussions (this is the third and final part of a series of blog posts on damages to the remainder) of the damage to the remainder have addressed Illinois courts’ recognition of such and the impact of utility facilities on property that remains after a partial taking for the purpose of constructing utility facilities.  This part will briefly consider how Illinois courts will assess the value of the damage to the remainder; it is not meant to be all encompassing.  The Illinois Supreme Court may have described just compensation for damage to the remainder most simply when it stated that the diminution in value is the difference between the fair market value of the remainder prior to the taking and its fair market value after the taking and improvement.  While this may sound simple, for many landowners this has proven difficult. 

In practice, a landowner should consider his or her parcel as two separate parcels: the easement parcel and the remainder parcel.  The fair cash market value of the remainder parcel will then need to be determined under two different scenarios: (1) the remainder parcel sits next to the easement parcel as it currently exists (before anything has been done with the easement parcel), and (2) the remainder parcel sits next to the easement parcel with the project for which it was taken having been completed.  The difference between the values under the two scenarios represents the damages to the remainder parcel.  To help ascertain the value of the remainder parcel under the two scenarios, a landowner should consider employing more than one professional appraiser in order to establish a range of values.

To determine the competency of a witness to testify to value in a condemnation proceeding, a witness must have some means of forming an intelligent and valid judgment as to value beyond what is presumed to be possessed by members of the general public.  Individuals the Court has found competent to testify about the impact of a pipeline on their land, for example, include lifelong farmers, one of whom had been a drainage commissioner and a president of the local Farm Bureau.  In another example, the Court permitted testimony about the inconvenience to farming caused by transmission line poles and the corresponding expense increases.  The Court noted that the testimony appropriately pertained to what a willing buyer would pay for an operating grain farm that happened to be located next to a transmission line.

The main lesson from past court decisions is that landowners should focus on market valuation of the land and not lost farming income.  Lost income may affect the land’s value, and so is relevant, but lost income must be translated into impacts on the value of the subject property. Attempts to recover damages based on lost income have failed.  To the extent that rental property may be at issue, the Court has consistently found that in eminent domain proceedings involving premises which are owner occupied, evidence of projected or future rental income is too speculative and dependent upon too many contingencies to be safely accepted as evidence of the fair cash market value.  Furthermore, not every factor that brings about a reduction in value represents a recoverable item of damage.  Diminution suffered in common by all lands in the vicinity of an improvement is not compensable.  A landowner must show a direct disturbance peculiar to his or her property.  In addition, in some situations, the public use for which a portion of private property was taken may actually result in a benefit to the remainder of the private property.  Under such circumstances, any benefit accruing to the remainder property may not be set off against the land taken; but it may be taken into consideration as reducing or completely offsetting any damages to the remainder.

Clearly, knowing the proper elements of damage and how to present them makes a significant difference in whether a landowner receives the compensation he or she believes is merited for damages to the remainder of land in a partial taking.

Trademark Tips - Genericide

Jonathan LA Phillips teaches Intellectual Property Law for the Entrepreneur at Bradley University. One of the more interesting topics, according to his students, is trademark genericide. Whether it is the interesting name or the fact that its an interesting concept to pontificate on, the students are more interested than usual. This post briefly explains genericide and provides some tips to avoid it.

As you may know, the primary function for a trademark is to identify the source of goods or services. In exchange for this source identification, which should prevent consumer confusion, society grants a trademark owner a sort-of monopoly over a word, design, color, scent, or other protectable matter. This is the essential trade off - no consumer confusion in exchange for the ownership of a word. Trademark owners exploit this monopoly by restricting their competitors from using their trademark in any way that is likely to confuse consumers.

Once they have a protectable MARK, many trademark owners build brands around it. They market their products and services under the MARK, trying to build up good will, awareness, and generate sales. If they are successful, someone hears about a good and immediately thinks of the MARK. But, what happens if they get too successful?

Aspirin used to be a trademark for a certain source of acetylsalicylic acid. Thermos used to be a trademark for a certain kind of beverage container.  Neither identify source of those goods anymore. Both words are generic. Aspirin is just... aspirin. A thermos are just... a thermos. The former MARKS lost their meaning as source identifiers to a company. Accordingly, the trademark owner lost any protectable rights in the word. The MARK died; hence, "genericide."

You might be able to think of other close calls:

  • Chapstick (a source identifier for a specific brand of lip balm)
  • Xerox (a source identifier for a specific copying machine brand)
  • Kleenex (a source identifier for a specific brand of facial tissue)
  • Google (a source identifier for a search engine)

These companies carefully tread the line of incredibly successful marketing and becoming generic. Here are a few tips to help you avoid crossing that line:

  • Always use a generic description in conjunction with your MARK. For example, thing "Q-Tip cotton swabs" or "Oreo cookies." The first word is the mark. The second is the generic term. Having both shows the dichotomy between source identifier and generic term.
  • Do not use your MARK as a verb. Many people say they are going to "Google that." Google's intellectual property attorneys wish they would "conduct a search using the Google search engine."
  • Capitalize the MARK as appropriate.
  • Put a (R) next to the MARK when you have a registration with the USPTO. Otherwise use the TM next to it. Be sure to put the designation next to the MARK, not the generic descriptor. For example, you might say "Scotch(R) brand adhesive tape. 

If you have any further questions or concerns, we encourage you to call our offices for a consultation. We also have a trademark brochure you can access from our Intellectual Property page. It may help you with some of your questions.

Utility Line & Pipeline Easements Damages to the Remainder (Part 2)

In Part 1, we introduced the Illinois Supreme Court’s overall treatment of damages to the remainder.  In this discussion, damages to the remainder will be considered in the context of utility easements.  Upon application to and approval from the Illinois Commerce Commission (“ICC”), regulated public utilities in Illinois may resort to the courts to acquire property for utility facility construction projects through eminent domain.  Typically, such projects require the acquisition of an easement from landowners so that a major utility facility such as an electric transmission line, water main, natural gas main, or pipeline can be constructed.  If the utility can demonstrate to the ICC that it has made reasonable efforts to acquire the property interest it needs but has failed to negotiate an agreement with any particular landowner, the ICC may authorize the use of eminent domain in circuit court against that landowner.

Utility facilities that arguably have the greatest impact on the remaining portions of the parcels on which they are constructed are electric transmission lines.  This is so because most other utility facilities (mains and pipelines) are buried; when properly installed and maintained, they are deep enough to avoid contact with general surface uses.  The Illinois Supreme Court as well as lower courts have had opportunities to consider the proper elements of damage to land not taken in the context of electric transmission lines in agricultural settings.  In proving damage to property remaining after an eminent domain taking, the Court has explained that the damage must be direct and proximate and not merely what someone may imagine or “feel.”  A jury, the Court adds, has no right to take into consideration any damage which is merely speculative or which is remotely contingent.

Examples of improper elements of damage identified by the Court include the possibility that at some time a wire or other attachment may fall and cause damage, possible injury from fire or lightning, injury to crops from falling towers or tractors colliding with towers, or livestock or machinery being caught in the towers.  Such damages are too speculative in the Court’s opinion.  Similarly, the Court has found that temporary inconsequential interference with the use of property occasioned by the construction of a public improvement is not a proper element of damage to the remainder.  Temporary inconsequential interference could include temporary easements necessary for the construction of the utility facilities.

On the other hand, the Court has found that if weeds or insects come from around the base of towers/poles, there has been a disturbance upon the land.  In other words, if insects and weeds are disseminated, the whole field is affected.  Additionally, if inconvenience results from requiring more time to perform field work, a right of the landowner has been invaded.  Such circumstances, the Court has held, impact the free use of the remainder of a farm for the best purpose for which it is adapted, i.e. farming.  In considering damages to the remainder, the Court has recognized the impact of transmission lines on farm land by acknowledging that crops throughout a field may be lost or diminished by the different methods of cultivation dictated by the presence of transmission lines.

 Interestingly, in a 1930 case the Court held that the unsightliness of towers was not a proper element of damages to the remainder.  In a case decided in 1977, however, the Court described unsightliness as a bona fide element of damage to the value of property in eminent domain suits.  In so holding, the Court found that an electric transmission line may be considered aesthetically distasteful to potential buyers in a residential area.  Noting the reference to a residential area, five years later the Second District Appellate Court concluded that unsightliness is a proper damage element only in a residential setting.  In a 1984 case, the Third District Appellate Court declined to follow the Second District in this regard and held that unsightliness is a proper damage element when considering compensation for agricultural land.

How a landowner can determine the value of the damage to the land not taken will be addressed in the next installment.

Utility Line & Pipeline Easements Damages to the Remainder (Part 1)

John Albers focuses his practice on utility and energy matters at Shay Phillips, Ltd. He has written a three part series of blog posts discussing damages to the remainder of a property (that is, the part of the property that is not taken for the easement) during eminent domain proceedings involving utility transmission line and pipeline easements. This is the first part.

Well established in American jurisprudence is the principle that private property may not be taken for public use without just compensation.  Typically, a governmental entity, or an entity with government authorization, seeks to take or condemn private property through an eminent domain court proceeding after efforts to negotiate the purchase of the property have failed.  A key sticking point in such negotiations frequently relates to the amount of money offered for the property.  In those situations where less than an entire parcel is to be taken, some landowners want compensation for more than just the property interest condemned.  They also expect to be compensated for the impact that the condemnation has on their property that remains after the condemnation.  The impact on the remaining property is commonly referred to as the “damage to the remainder.” Absent a negotiated agreement, the court in an eminent domain proceeding is to determine the amount of money to which the landowner is entitled.  Both parties in the proceeding – the condemnor and condemnee – may present testimony and evidence.

Those entities seeking to take only a portion of a parcel often maintain that there is no impact or damage to the remainder of the parcel beyond the property interest that is actually taken.  Regardless of the condemnor’s assertions, however, to the extent that there is an impact on the remainder, the Illinois Supreme Court has long recognized that landowners may receive compensation for damages to property interests remaining after other property is taken via eminent domain.  In considering the compensation to which a landowner is entitled, the Illinois Supreme Court has held that the owner is entitled to the amount of money necessary to put him in as good financial condition as he was with the ownership of his property prior to the use of eminent domain.  The Court, however, has also made clear that to recover for damages to land not taken it must appear that there has been some direct disturbance of a right, either public or private, which a person enjoys in connection with his property, and which gives it additional value, and that by reason of such disturbance he has sustained a special damage with respect to his property in excess of that sustained by the public generally.  The disturbance need not be a physical disturbance or direct injury.

In cases involving the condemnation of an easement strip (typically between 50 and 150 feet wide), the Court has identified three elements of damage for a jury to consider: (1) the fair cash market value of the land actually occupied by any structures, (2) the diminishment in the fair cash market value of the land burdened by the easement strip, and (3) the diminishment, if any, of the fair cash market value of the remainder of the parcel outside of the easement strip.  Which party has the burden of proving damages to property impacted by eminent domain, and the value of such damages, depends on whether the property is that which is to be taken or lies outside of the property to be taken.  The Court has held that a condemnor bears the burden of proving the value of the property interests actually taken.  In contrast, the landowner bears the burden of proof in seeking to recover for damage to the remainder.

In the next installment of this discussion of damage to the remainder, such damages in the context of utility easements will be examined.  The third installment will consider how Illinois courts have calculated the value of the damages to the remainder.