A Corp. d/b/a Rooter Man v. Palmetto Group Investment, LLC et al. (D. Mass. 20-cv-11901).

A Corp. the franchisor for “Rooter Man” plumbing franchises, accuses former South Carolina franchisee Kenneth Hart, Hart’s wife and son, and several businesses owned by the Harts.  A Corp. was formed in 1982 for the purpose of selling Rooter Man franchises.  By 2019, there were about 89 franchisees operating at more than 600 locations in more than half of the states as well as in Bermuda and Canada.  A Corp. obtained a number of federal and state trademark registrations related to the “Rooter Man” businesses, including state registrations in South Carolina.  Kenneth Hart signed a franchise agreement with A Corp. in 2018.  The agreement included minimum monthly payments and a personal guarantee by Hart.  By February 2020, A Corp. asserts that Hard was in default for failure to make payments due under the agreement, and that Hart had obtained domain registrations that include the “Rooter Man” mark in violation of the agreement.  When Hart failed to cure these breaches, A Corp. terminated the agreement on March 31st and demanded the defendants cease use of the marks and de-identify themselves as a Rooter Man business.  A Corp. says that Hart’s wife responded that Kenneth Hart had passed away, but that Hart in fact remains alive as evidenced by ongoing active posting on his Facebook page and records of a complaint filed in July with the Better Business Bureau to which Hart personally filed a response.  A Corp. asserts counts of trademark infringement, false designation of origin, dilution, breach of contract, interference with contractual relations, cybersquatting, conversion, unjust enrichment, and breach of the implied covenant of good faith and fair dealing.  Judge Wolf is assigned to the case.

DiversiTech Corporation v. RectorSeal, LLC et al. (D. Mass. 20-cv-11896).

DiversiTech and RectorSeal compete in the HVAC industry.  DiversiTech claims that RectorSeal and affiliated entities The RectorSeal Corporation and CSW Industrials, Inc. infringe U.S. Patent No. 9,550,223, entitled “Flaring and Swaging Bits, and Methods Using Same” through its sales of its PRO-Fit Flaring and PRO-Fit Swaging kits.  DiversiTech asserts willfulness based on a discussion between the inventor and representatives of the Defendant about an embodiment of the ‘233 patent at a trade show in 2014, which led to discussions about RectorSeal becoming a distributor of the embodiment.  The complaint further alleges that a predecessor of the plaintiff sent a cease and desist letter in 2017 that included infringement claim charts.  Direct, induced and contributory infringement are asserted.  Judge Gorton has the case.

American Science & Engineering, Inc. v. Viken Detection Corporation (D. Mass. 20-cv-11883).

Security technology company American Science & Engineering (AS&E) accuses Viken of infringing three patents related to the use of backscatter and transmission x-ray technology to inspect luggage and the like.  In 1994, AS&E hired an MIT graduate, Dr. Peter Rothschild, who ultimately because a Chief Scientist for the company.  Dr. Rothschild remained with AS&E until 2013, when he resigned.  AS&E alleges that prior to his resignation, Rothschild had already formed Viken’s predecessor, Heuresis Corporation, to compete with AS&E.  AS&E says that Viken’s recently-released backscatter X-ray systems that scan vehicles from the top, bottom, and sides, infringe the three patents.  This technology allows a vehicle to be inspected with the occupants still in the vehicle, without overexposing the occupants.  The complaint asserts that Rothschild took part in the invention of this technology and assisted in the preparation and filing of the asserted patents while he was with AS&E.  AS&E had earlier filed suit against Rothschild and Viken in Massachusetts state court, accusing them of trade secret misappropriation, breach of contract and breach of fiduciary duty. 

Fitbit, Inc. v. Koninklijke Philips N.V. (D. Mass. 20-cv-11611).

After Philips filed a complaint against Fitbit at the International Trade Commission, Fitbit filed suit seeking a declaration that it does not infringe three Philips’ patents – U.S. 7,845,228, entitled “Activity Monitoring,” U.S. 9,820,698, entitled “Actigraphy Methods and Apparatuses,” and U.S. 9,717,464, entitled “Continuous Transdermal Monitoring System and Method.”  The case was originally filed in the Northern District of California, but was transferred to Massachusetts when the California court determined that Philips’ service of the ITC complaint at Fitbit’s California headquarters was not sufficient to qualify as purposefully directing its activities to the forum, and that specific personal jurisdiction over Philips (who does not do business in the United States) did not exist.  The court noted that at the time the case was filed, Fitbit and Philips were engaged in patent-related actions in N.D. California, D. Mass., the ITC and the PTO.  The court noted that Rule 42(k), which allows for jurisdiction in any state over a foreign entity without sufficient contacts in any single state, could be defeated by Philips designating a state in which the suit could proceed.  As Philips identified Massachusetts, the location of two Philips’ subsidiaries, was a suitable forum, the court transferred the case to Massachusetts in August.

Judge Stearns has now granted Philips’ motion to stay pending resolution of the ITC action.  The ITC has already made a summary determination of non-infringement of two of the patents and the third patent is infringed by Fitbit.  A trial on validity is scheduled to begin later this month, with a final decision expected in May 2021.  An institution decision from the PTAB on Fitbit’s petition for inter partes review is expected in the next four weeks as well. 

De Rouw v. International Sustainable Development Institute, Inc. (D. Mass. 19-cv-10198).

Judge Stearns sua sponte entered an order offering to convert this copyright infringement case from a jury trial to a bench trial.  He noted that, while trials have resumed in Massachusetts, jury trials in civil cases will not likely resume until “well into 2021” due to the shortage of properly-fitted courtrooms and the need to give priority to criminal cases.  He indicated that bench trials can begin much sooner, with the ability to take evidence and witnesses both virtually and in person as needed and the scheduling flexibility that a bench trial would provide.  He further indicated that bench trials would be scheduled on a first-come, first-serve basis, suggesting that he is making a similar offer in other suitable cases before him.

I have experienced similar comments regarding converting from jury to bench trials from other Massachusetts judges, without the suggestion having been formalized into an order. If you have a civil case pending, you may want to consider the bench trial option with the Court.

Myeress v. PRX, Inc. (D. Mass. 20-cv-11769).

Photographer Joe Myeress accuses PRX of using his copyrighted photograph of a fawn without license.  He says that PRX operates the website www.radiotopia.fm/, which is a network of various podcasts including “The Allusionist,” and that the photograph was used in a Twitter post promoting an “Allusionist” episode.  The post that is attached to the complaint is from “twitter.com/AllusionistShow/status,” however, and was clearly written by the author of the podcast, and the complaint does not indicate why PRX is responsible or should be liable for its inclusion in the post.

Howarth v. Szlag (D. Mass. 20-cv-11721).

Photographer Morgan Howarth accuses David Szlag, who operates Parkside on Ellery Bed and Breakfast in Cambridge, of copying one of Howarth’s photographs off of the internet and using it for promotional purposes.  The photograph depicts an individual rower about to pass under the Weeks Footbridge, which crosses the Charles River near Harvard University (and near Szlag’s inn).  According to the complaint, Szlag placed copies of the photograph in his inn’s advertisement on www.BedandBreakfast.com.  Howarth asserts willful copyright infringement, based on Szlag’s failure to respond to two demand letters, sent in the spring and early summer of 2018.  Interestingly, there is no accusation that Szlag used the photograph on the inn’s actual website, and there are no factual allegations in the complaint that Szlag had control over the third-party BedandBreakfast website or that Szlag, and not the website owners, who selected the photograph.  Judge Woodlock has this case.

Boston East Brunswick Holdings LLC et al. v. Saco and Biddeford Savings Institution et al. (D. Mass. 20-cv-11696).

Plaintiff Boston East bought the Captain Daniel Stone Inn in Brunswick Maine from Saco on 2013, two years after Saco itself had acquired the property from one of its borrowers.  Over four months of diligence, Boston East claims it was never informed of significant problems in the HVAC and sprinkler systems at the inn by Saco.  Boston East obtained a loan from Saco to make the purchase.  Boston East says that is invested over $2.8 million on renovations and upgrades to convert the inn into a high-end boutique hotel, which it rebranded as “The Daniel Hotel,” with an interior restaurant branded as “Coast Bar + Bistro.”  Boston East asserts that, through its considerable advertising and promotional efforts, these brands have acquired trademark status and have become famous.

When two separate instances of HVAC pipe failures in the summer of 2019 caused the hotel to shut down during the peak season, Boston East fell behind on its payments to vendors and upon its loans., and the company filed for Chapter 11 bankruptcy in January 2020.  This bankruptcy was dismissed a month later, after which Saco offered to hold off on foreclosure proceedings if Boston East agreed to forgo refiling for bankruptcy and instead market the hotel for sale.  According to Boston East, Saco was aware that sale of the hotel would likely take some time, as Saco had taken 23 months in 2011 to find a buyer and Maine (like the rest of the country) was at that point entering into the COVID pandemic, which would necessarily impact travel, lodging and real estate sales.  Nevertheless, despite knowing that Boston East would expend considerable resources maintaining and running the hotel while seeking a buyer, Saco determined in July to foreclose, and in August Saco changed the locks on the property and placed it with an auction house, co-defendant Tranzon Auction Proprties to auction the property.  The auction is scheduled for today, September 17th.  According to Boston East, in marketing the hotel, the defendants wrongfully used, and tarnished, the marks used by Boston East in running the hotel.  Boston East brings counts for common law trademark infringement, false designation of origin, unfair competition and trademark dilution under the Lanham Act, trademark dilution under Massachusetts G.L. c. 110H § 13, violation of the Federal Trade Commission Act through unfair and deceptive practices, violation of c. 93A, conversion in connection with the retention of Boston East property that was in the hotel when the locks were changed, breach of contract, detrimental reliance and violation of the implied covenant of good faith and fair dealing.

Update from D. Mass. On Resumption of Trials.

Chief Judge Saylor held a Zoom conference this afternoon to inform the bar on the steps the District has taken to resume jury trials.  Four of the larger courtrooms in Boston have been configured to allow for proper social distancing, including plexiglass barriers, spreading the jury out into the well of the courtroom, and electronic equipment to allow for sidebars without counsel approaching the bench.  While this will allow for jury trials to resume, the continuing COVID issues will require some differences from the pre-COVID era:

  • Criminal trials will take preference, particularly where the defendant remains in custody;
  • Civil trials will resume based on the level of complexity and the number of people likely to be required, although they will potentially provide more flexibility for witnesses by video or the like; and
  • Courtrooms will be limited to a maximum of 24 people (and will be less for smaller courtrooms), inclusive of jurors, Judge, parties, lawyers, witnesses, courtroom reporters, clerks, etc.

The trials will also entail some safety precautions.  Everyone, including lawyers, parties, and jurors, will be required to wear masks throughout, other than witnesses who are testifying – they will speak without masks to enable jurors to assess their credibility.  Jury rooms will not be available, as they are too small to allow for proper distancing; instead, smaller courtrooms will be used as jury rooms or staging rooms for trial teams, to limit the number of attorneys and staff necessary at any one time in the courtroom.  Public access will likely be restricted to Zoom (or the equivalent), although the right to public access remains to be balanced with the restrictions on broadcasting federal trials.  Even access to elevators in the courthouse will be limited to four people at a time, with each facing a different wall.  Attorneys, potential jurors, and witnesses will be required to fill out self-assessments relating to their health and potential COVID exposures.  Further, given the civil unrest (which has included attacks on court security personnel in Arizona), courthouse security would remain a priority.  Judge Saylor indicated that the same restrictions would apply in the Worcester and Springfield courthouses.

A number of issues remain to be determined.  No determination has been made with regard to an attorney or juror getting sick – HIPPA likely prevents the Court from determining whether they have symptoms consistent with, or a diagnosis of, COVID, and would likely prevent the Court from notifying co-jurors or others should this occur Judge Saylor did indicate that a single juror’s illness would not result in a termination of the trial.  No decisions have yet been made for dealing with witnesses who refuse to attend trial, or witnesses from locations from which travel is prohibited by Governor Baker’s emergency orders – while the state’s travel restriction do not apply to federal court proceedings, the Court is reluctant at this time to counter these restrictions. Finally, the potential jury pool will potentially be reduced due to the exclusion of those more at risk from COVID, as well as those who choose not to appear as a result of the pandemic and/or political climate.

The first jury empanelment is scheduled to begin on September 29th, and the first few trials will allow the court to determine the effectiveness of the safety procedures put in place.  While the Moakley Courthouse has four courtrooms set up for trials, all four will not be put into initial simultaneous use.  After that, the Court will determine a trial schedule as a collective whole – trials will not be scheduled at the discretion of the individual judges.  The Court is looking at alternative spaces in which to hold bigger trials, which might include Hanscom Air Force Base in Bedford and/or the courtroom in the McCormack Building that formerly housed the federal courthouse (although neither remain certain yet).  It seems likely, however, that complex civil matters will not occur until 2021.

ecobee, Inc. v. Ayarzl et AL. (d. Mass. 20-cv-11620).

Ecobee sued Ayarzyl, Certified Tech USA, Maj Deals, and Bitsnbites 1, accusing each of selling ecobee products on-line without authorization.  Ecobee brings counts of trademark infringement, false advertising and unfair competition.  As has been the case with its many similar prior complaints, ecobee does not assert that counterfeit goods bearing the registered ECOBEE mark are being sold; instead, it asserts that they sell used or liquidated ecobee products through their respective Amazon Seller Accounts that they improperly identify as “new.”  As these entities are not authorized, they lack the training and quality controls to which ecobee’s authorized resellers are subject.  Customers may, for example, order products meant for professional installation, or products configured and intended for use outside of the United States.  Ecobee cites a number of customers who left negative feedback after purchasing ecobee products from these sites, evidencing customers’ belief that the products were new when they turned out not to be.  As a result of these issues, ecobee contends that the products being sold by the Defendants are “materially different” than authorized ecobee products, and thus fall outside of the “first sale” doctrine that would normally permit the resale of a product bearing the original seller’s trademark.  

Ecobee has brought a number of complaints against unauthorized Amazon resellers who are selling actual ecobee products, albeit used, damages, liquidated, or other products that ecobee would not itself have offered for sale.  Since October 2018, ecobee has filed twelve such complaints in this district (including this one).  Each of these involved obtaining leave of court to serve the defendants by alternative means, namely via the resellers’ Amazon e-mail service that the resellers used to communicate with their customers.  Of the eleven prior suits, one was transferred to the Eastern District of New York, where it remains pending and one settled.  In the remainder, ecobee successfully obtained default judgment and a permanent injunction.  While these suits were effectively unopposed, the court still must determine that the well-pled facts of the complaint stated a proper claim on which the relief could be granted.