UIU accuses UIU (MA), UIU Massachusetts, and two individual officers of the defendant corporations of trademark infringement, fraud, unjust enrichment, slander of business title and tortious interference in connection with the formation of a rival nonprofit corporation, and sought a preliminary injunction. The controversy resulted from the election and subsequent removal of Massachusetts resident Ide-Okoye, which led to a split among the governing members of UIU into two factions. UIU asserts that it is the proper entity and owner of rights in the UIU name, while the defendants assert that Ide-Okoye was never formally removed, remains president of UIU, and properly reincorporated the entity in Massachusetts. Judge Gorton granted UIU’s motion for a preliminary injunction in part. He noted that the likelihood of success on the merits was the most important consideration, because the other factors (potential for irreparable harm absent the injunction, balance of the hardships, and effect on the public interest) favor the protection of trademark rights as a matter of public policy. He determined that, although each party’s claim to rights in the mark were muddled and convoluted, UIU was likely to prevail as the owner of the mark. UIU was incorporated in Nebraska in 2009 and, while defendants claim that they dissolved the corporation and reformed it in Massachusetts, the Nebraska corporation was never dissolved and remains active in Nebraska. Further, one of the current officers of the Nebraska entity was listed as the principal offer on the 501(c) filing in 2009 to obtain tax-exempt status. This contrasts with the defendant corporations, which were organized much later and which have no current officers listed on their recent tax-exempt filings. As this suggests that plaintiff UIU is the rightful owner of the mark, Judge Gorton granted a preliminary injunction to the extent it seeks to prevent the defendants from using the corporate name until such time the membership of the organization endorses one or the other faction. He further ordered the parties to call an emergency meeting of the UIU members to vote on the election of officers to determine which faction would be in control of the organization, prepare and adopt new, comprehensible by-laws, and dissolve whichever corporate faction does not prevail. He indicated that he would appoint a special master to oversee such activity.
Judge Gorton denied the defendants’ motion to dismiss the complaint for failure to join a necessary and indispensable party under Rule 19. Defendants sought to join a number of officers of UIU, finding that the individual officers of the plaintiff were not necessary for the resolution of the case, which involves the use of the trademark. He also rejected their res judicata arguments, finding that previous cases involved activity that occurred prior to the formation of the Massachusetts corporations and/or did not involve decisions relating to the rightful owner of the mark.
One would think that the time, effort and money spent on this litigation, which Judge Gorton characterizes as an “internal, self-destructive feud,” would be better spent on the people of Umuoji region of Nigeria, the purported purpose of each of the non-profit corporations.
Judge Sorokin denied ecobee’s motion for default judgment without prejudice. Ecobee asserted that it served the complaint by sending a copy of the complaint and summons on eMonkey by FedEx, signature required, and that the package was received and signed for by a receptionist at eMonkey’s Plano address. Judge Sorokin determined that service by FedEx was not shown to be in compliance with Fed. R. Civ. P. 4.
I note that ecobee immediately refiled their motion for default judgment, stating that their service was proper under Massachusetts and First Circuit law, so eMonkey is not off the hook just yet.
Boston Carriage, which does business as Logan Car Service, accuses Boston Suburban Coach and four individuals for trademark infringement, copyright infringement, violation of the Anticybersquatting Consumer Protection Act, violation of the Racketeer Influenced and Corrupt Organizations Act (RICO), as well as unfair competition and unfair business practices and related state law claims. Two of the individual defendants are officers of Boston Suburban Coach, while the other two are allege to be the people who actually control the business activities of Boston Suburban. Boston Carriage has operated under the trade name “Logan Car Service” since the early 2000’s. The business uses the domain name “logancarservice.com,” and on April 23, 2021 applied for a copyright registration on the website content at that URL as well as for trademark registration on the LOGAN CAR SERVICE mark. Boston Carriage says that they suffered a sudden and substantial loss of business in January 2018, which led it to discover the defendants’ “logan-car-service.com” site that mimics Boston Carriage’s site, including a substantial amount of content copied word-for-word. Boston Carriage sent a cease and desist letter in April 2018, to which the Defendants responded stating that the site had been taken down. The site itself was apparently no longer active, but it redirected visitors to Boston Suburban’s official website. Boston Carriage discovered use of the LOGAN CAR SERVICE mark by the Defendants elsewhere, such as the Defendants’ Facebook and Instagram pages. Finally, Boston Carriage asserts that the Defendants copied its customer reviews and posted them on Defendants’ advertisements as their own. Judge Talwani has been assigned to the case.
Australian company Elbee accuses Canadian corporation The Motherhood Collection of federal and common law trademark infringement. Elbee says that it has used the mark DREAM BABY in connection with child safety products since December 2003. Elbee holds six federal registrations for the mark, covering a variety of child safety categories. Elbee claims that The Motherhood Connection adopted the same mark in connection with the sale via Amazon of a baby monitor marketed as “Dream Baby Monitor Pro.” The Motherhood Collective applied for and received a federal registration for DREAM BABY MONITOR PRO, which asserted a first use in commerce of November 3, 2019. Elbee says that it has received numerous complaints from purchasers of the baby monitor who believe the monitor to have originated from Elbee. While the complaint does not make reference to this, Elbee successfully petitioned for cancellation of the DREAM BABY MONITOR PRO mark, which was cancelled on January 26, 2021. Elbee asserts personal jurisdiction pursuant to R.R.C.P. 4(k)(2), which states that service of a summons establishes personal jurisdiction over an entity that is not subject to personal jurisdiction in any state, so long a claim is asserted that arises under federal law.
Vacuum maker SharkNinja sued Amazon Resellers “Tech & Beyond,” “eCloseouts,” and “wackyjacky,” all from Lakewood NJ, in connection with their unauthorized sale of SharkNinja products. As with the majority of these types of cases, SharkNinja sells through a network of authorized resellers, and the defendants are not so authorized. SharkNinja says that each of the defendants took orders for certain SharkNinja products but then delivered different, less expensive models designed for international, rather than domestic, markets. Such international models may not have been certified under the applicable safety regulations in the United States, making them materially different than US-bound models. SharkNinja pointed to on-line reviews complaining about the receipt of the wrong model as evidence of the harm to its brand. SharkNinja asserts that the defendants infringe its federally-registered SHARK, SHARK IQ ROBOT, and NINJA marks, and also brings a count for violation of c. 93A.
In another suit against unauthorized resale of goods online, Dr. Dennis Gross Skincare accuses Specialty Skincare of trademark infringement, unfair competition, tortious interference with Gross’ authorized resellers’ contracts, and violation of c. 93A. Gross asserts that it has a network of authorized resellers that contractually agree to specific terms and conditions, including that they sell solely to end-user customers and not to unauthorized resellers, and that the authorized resellers receive specific training and quality control measures. Gross says that Specialty Skincare is selling Gross products bearing the DR. DENNIS GROSS trademark that it necessarily had to have obtained via an authorized reseller, in breach of the authorized reseller’s contract with Gross. Gross further alleges that Specialty Skincare falsely advertises that they “purchase all our products directly from brand-authorized dealers in the United States” and that the products are “fresh off the production line” and stored in “temperature controlled” environments, and that these false representations have led to negative reviews that have damaged Gross’ brand.
Brilliant Home Technology makes and sells smart home lighting and music control products under the BRILLIANT mark, which it registered in 2019. Brilliant sells its products through a network of authorized resellers. Brilliant asserts that eMonkey, an Amazon seller, improperly obtains Brilliant products and sells them on-line in a fashion that infringes the BRILLIANT mark. Brilliant says that the products sold by eMonkey are materially different than those sold by authorized resellers because its limited warranty does not apply to such unauthorized sales. Brilliant also says that at least some of the eMonkey sales involved liquidated or used products that cannot qualify as “new.” Brilliant points to a number of negative Amazon reviews of alleged Brilliant products sold by eMonkey to suggest actual confusion and harm to Brilliant’s reputation. Brilliant asserts trademark infringement and false advertising, as well as tortious interference with business relations relating to its assertion that eMonkey was obtaining products from authorized resellers in violation of the resellers’ agreements with Brilliant.
Mansfield photographer Sabine Nordberg accuses Ivy Studio, a Canton-based landscape design company, of misusing one of Nordberg’s copyrighted landscape photographs on its website. Nordberg says that she was hired to photograph a client’s backyard after Ivy Studio had done work on the yard. Nordberg says she offered to share the cost of the shoot wit the defendant and license some of the photos, but Ivy Studios refused. She says that Ivy Studios then obtained copies of her photographs from the client and put them on its website, and that Ivy Studios has ignored her demands that they remove the photographs.
Judge Stearns denied ISDI’s motion for sanctions against De Rouw and his counsel. ISDI asserted that De Rouw had continuously disregarded the local rules and had harassed ISDI, and noted that the Liebowitz Law Firm that represents De Rouw has been sanctioned in the Southern District of New York. Specifically, ISDI asserts that the complaint for copyright infringement and removal of copyright management information was brought without the knowledge, consent or approval of the plaintiff, a practice that Liebowitz has been accused of in the past – one of the sanctions against Liebowitz ordered by the S.D.N.Y. court was to file an affidavit in each case in which he or his firm has appeared stating that the plaintiff had prior knowledge of and consented to the filing of the complaint. De Rouw ultimately withdrew the complaint when it was set for trial, asserting that he realized that IDSI could not satisfy a judgment. While ISDI is correct concerning the faults that other courts have found with respect to Liebowitz’s litigation practices in general, ISDI did not appear to point to anything specific to this case that would warrant sanctions.
WellPet sued Honest Paws for federal and state trademark infringement, false designation of origin and unfair competition relating to Honest Paws’ alleged improper use of WellPet’s WELLNESS trademark. WellPet, a Tewksbury company, asserts that Honest Paws, a Texas company, is subject to personal jurisdiction in Massachusetts because the company is “present and doing business” in the state either directly or through their agents and selling product into the state. WellPet has registrations for WELLNESS for pet food, treats, and dietary supplements for pets. Honest Paws is said to have begun selling dog treats and supplements using the WELLNESS mark in January 2020, and has ignored WellPet’s demands to stop selling products under the mark.