Bravado International Group Merchandising Services, Inc. v. Does et al. (19-cv-12061).

Judge Zobel has been assigned yet another case involving pre-emptive blocking of the sale of bootleg concert merchandise, this time involving an upcoming show by Post Malone. In addition to the POST MALONE trademark, the artist has registrations on POSTY CO, POSTY, POSTY FEST and SHABOINK. Malone is playing the TD Garden later this week, and Bravado (who is licensed to sell Malone merchandise) looks to prevent bootleggers from selling merchandise bearing the Malone marks.

Palomar Technologies, Inc. v. MRSI Systems, LLC (18-cv-10236).

Judge Saylor overruled Palomar’s objections to the Magistrate Judge Bowler’s order partially granting MRSI’s motion to compel, finding that her ruling was not clearly erroneous nor contrary to law. The discovery dispute surrounded the selection of search terms to search e-mail, that Palomar contended were over-broad and would result in a significant number of documents not related to the litigation and would result in the production sensitive personal information, in violation of the California state constitution. Judge Saylor found no reason that the constitution of the state should impact discovery in a federal case and based on federal, not California, law, and further determined that the argument was waived as not having been raised in the written responses to the discovery requests. Judge Saylor did, however, permit Palomar to submit for in camera review any specific documents for which it contends that the laws of California should control discovery (despite the case arising under federal patent law) and that the privacy concern was not waived.

Timmins Software Corporation d/b/a Mitrend v. EMC Corporation d/b/a Dell EMC et al. (19-cv-12053).

Mitrend, a Marlborough company that provides software and services relating to datacenter infrastructure assessment and performance, accuses EMC and Dell of copyright infringement, violation of the Digital Millenium Copyright Act, unjust enrichment, breach of contract, and unfair competition. Mitrend contends that EMC, a wholly-owned Dell subsidiary, began using Mitrend’s analysis service in 2006 under a master services agreement and a number of statements of work, using EMC software for data collection. Mitrend realized that the data collection process could be improved upon, and independently conceived of an automated and accelerated process for data collection that substantially reduced collection times. Mitrend contends that the new software was adopted throughout EMC and became the company’s primary data collection method. Mitrend’s relationship with EMC rapidly grew to several million dollars per year, and EMC did not develop its own competing software. Under the statement of work dealing with this, Mitrend’s software was deemed to remain Mitrend’s property, and all derivative works would belong to Mitrend. Further, a separate software license agreement prohibited reverse engineering of the software by EMC, as well as prohibiting removal of copyright notices. These terms were carried forward in a 2015 agreement between the businesses. In 2017, however, after EMC was acquired by Dell, EMC demanded changes to the license that would include transfer of ownership of the software IP to EMC/Dell. Mitrend refused, and provided notice of termination effective March 2, 2017, although at EMC’s request the parties subsequently agreed to extend the termination date to November 30, 2017. Shortly thereafter, EMC announced the launch of its own competing product. Mitrend contends that EMC sought the extension to develop and deploy its competing software, which it later discovered to be using the same scripts as the Mitrend product, which it alleges EMC copied. The case is assigned to Judge Talwani.

Stross v. Louis C. Allegrone, Inc. (19-cv-12037).

Photographer Alexander Stross accuses Lenox, Massachusetts construction company Allegrone of using one of his photographs extensively on its website, and of removing copyright management information in violation of the Digital Millenium Copyright Act. The case was immediately transferred to the Western Division.

Fenway Enterprises 1271 Boylston Street LLC v. Hard Rock Café International (USA), Inc. (19-cv-11998).

Fenway Enterprises runs the “Verb” Hotel, a retro, music-themed hotel located just outside of Fenway Park that opened in 2014. Verb hotelAs is mentioned on its website, the name for the hotel was chosen as a shortened form of the musical term “reverb,” as well as for signifying action.

Fenway asserts that Hard Rock’s planned launch of a series of musical themed hotels under the name “Reverb” will infringe its federally-registered “VERB” mark for hotel services, as well as its common law rights in the mark. Hard Rock has filed intent-to-use applications for “Reverb” and “Reverb by Hard Rock” for hotel, restaurant, bar and casino services, and already has a website devoted to the new hotel chain, www.reverbhotels.com. Fenway Enterprises asserts that its hotel’s success hinges on the authenticity of its hotel, which would be harmed by association with the Hard Rock’s “glitzy, overstated chain hotels,” expressly citing a giant, guitar-shaped hotel to be opened by the Hard Rock in Florida that has earned the description “monstrosity that has offended nature itself.” Fenway Enterprises further cites the reality television show Rehab: Party at the Hard Rock Hotel as associating the Hard Rock brand with drinking, drug abuse and debauchery. Fenway says that Hard Rock was notified of the Verb Hotel in March, but has thus far refused to rebrand the planned REVERB hotel franchise. In addition to trademark infringement, Fenway asserts violation of Ch. 93A, although it may have difficulty proving that the acts complained of occurred substantially within the Commonwealth – the first REVERB hotel is planned for Atlanta, with a second to follow in California.

Ohio State Innovation Foundation v. Akamai Technologies, Inc. (19-cv-11528).

Ohio State Innovation Foundation, which holds title to intellectual property developed by and for The Ohio State University, brought suit against Akamai, accusing the company of infringing U.S. Patent No. 9,531,522, which covers systems and methods for proactive resource allocation by which an algorithm monitors mobile user device history to automatically provide information that any particular user repeatedly requests during off-peak hours. Dr. El Gamal, the lead inventor and OSU professor, approached Akamai in 2013 about licensing the patent. Dr. El Gamal’s company, Inmobly, Inc., executed an NDA with Akamai and provided demonstration software. Akamai ultimately turned down the license, and subsequently filed its own patent application on similar technology. OSU filed suit when Akamai released its version.

Akamai moved to dismiss the complaint pursuant to Rule 12(b)(6), asserting that OSU did not (and could not) make a plausible assertion that Akamai’s software involves the machine learning required by the claims of the ‘522 patent. Judge Burroughs disagreed, however, finding Akamai’s own publications describing its software map out to the ‘522 specification and identify “machine-learning-based algorithms,” and that therefore the complaint states a legally sufficient claim of patent infringement. Accordingly, she denied Akamai’s motion.

CardioNet, LLC et al. v. InfoBionic, Inc. (15-cv-11803).

At the request of the parties, Judge Talwani reversed her prior decision and entered partial final judgment that U.S. Patent Nos. 7,212,850 and 7,907,996 are invalid for failing to claim patentable subject matter. By such order, CardioNet will be able to immediately appeal this finding.