Judge Hillman denied Lacerta’s motion to compel notes taken by one of Inline Plastics’ expert. Lacerta sought eleven pages of notes taken by Inline’s damages expert during conversations with Inline employees, another Inline expert, and Inline’s counsel in connection with the preparation of his report. Inline’s in-house or outside counsel took part in each of these conversations, and the conversations took place in connection with his preparation to testify, and were not produced in response to Lacerta’s subpoena. When Lacerta discovered the existence of the notes during the deposition of the expert, Inline produced a redacted set of the notes, contending the redactions were exempt as expert or attorney thought process, analysis, opinions or commentary. Judge Hillman noted that the rules concerning expert discovery were amended to protect expert-attorney communications, with the exception of communications related to the expert’s compensation, the facts and data provided by the attorney and relied upon in forming the expert’s opinions, and assumptions provided by the attorney and relied upon by the expert. The 2010 changes to the rules did not provide for work product protection for communications between a party’s experts, but where an attorney is involved, work product protection will apply to anything not falling within one of the exceptions, under which the requested subject matter does not fall. Such subject matter can still be obtained in the limited circumstance where the requesting party has substantial need for the discovery and cannot obtain it in some other way without substantial hardship, but Lacerta made no such argument. Accordingly, Lacerta’s motion to compel was denied.
Motus sued CarData, accusing CarData of using its CORPORATE REIMBURSEMENT SERVICES trademark in CarData’s “meta title” (which Motus defines as the HTML code in the header of a web page that helps search engines understand the content of the page). Motus was formerly known as Corporate Reimbursement Services, Inc., and says that it still uses the mark in connection with its workforce management business. Judge Gorton granted CarData’s motion to dismiss for lack of personal jurisdiction. CarData, a Canadian corporation headquartered in Ontario, has offices in Colorado and New York, but no locations in Massachusetts. Motus did not allege that CarData had a physical presence in Massachusetts or any clients in the state. Judge Gorton noted that, where no evidentiary hearing had taken place, the Court applies a prima facie standard of review and construes the factual allegations in the light most favorable to the plaintiff, but the complaint still must provide more than unsupported evidence to demonstrate the existence of personal jurisdiction. Motus relied primarily on a website run by CarData that was available to residents of Massachusetts. Judge Gorton looked to case law that finds cases involving interactions through a website operated outside of Massachusetts focus primarily on the “purposeful availment” portion of the jurisdictional analysis, namely that the plaintiff must demonstrate that the defendant’s website contacts represent a purposeful availment of the privileges of conducting activities in the state. This is determined by evaluating the level of interactivity of the website, looking for something more than merely a nationally available website to support personal jurisdiction. The “something more” can be whether the sire specifically targets Massachusetts residents or whether the website results in the knowing receipt of substantial revenue from Massachusetts residents. Here, the “something more” was absent – Motus had put forth no evidence supporting either prong, and the mere presence in state of the trademark holder was not sufficient to confer personal jurisdiction over the foreign defendant, particularly given that there was no evidence that CarData was even aware that Motus resided in Massachusetts. Accordingly, Motus’ complaint was dismissed without prejudice.
Inline Plastics accused Lacerta of infringing three patents relating to tamper resistant plastic packages. Lacerta moved to strike portions of Inline’s expert report for allegedly proposing infringement under the doctrine of equivalents for a pair of claims, because Inline had not asserted infringement by equivalents in any of the prior infringement contentions set forth by Inline in accordance with the local patent rules. Inline had supplemented its infringement contentions on three separate occasions. A Markman hearing was held, and fact discovery closed without Inline asserting infringement by equivalents. Judge Hillman determined that this was, in fact, and improperly late disclosure of the doctrine of equivalents theory. Under the Mass. Local Rule 16.6 ( Massachusetts’ local patent rule), the plaintiff must file infringement contentions that set forth on an element-by-element basis certain information, including whether each element of each asserted claim is asserted to be present literally or under the doctrine of equivalents. None of Inline’s contentions asserted equivalents for any element, which Inline conceded. Judge Hillman rejected Inline’s argument that its late disclosure of the equivalents theory would not prejudice Lacerta, finding that Inline’s proposal that Lacerta be allowed to depose the expert for an additional hour on the theory (Inline’s expert had already been deposed) and allow Lacerta’s expert to rebut the theory would not cure the additional scope of defense and trial preparation that allowing the introduction of the theory would present. He also rejected Inline’s argument that Lacerta’s noninfringement contentions were too vague to permit Inline to present the equivalents theory earlier, noting that Inline had never raised any issue with Lacerta’s report. Judge Hillman further rejected Inline’s request to allow them to supplement their contentions to include the equivalence theory, noting that late supplementation of contentions are only allowed on a showing of good cause and Inline had shown no cause, much less good cause, for such a supplementation.
A number of models, including Jessica Hinton, filed suit in June 2020, asserting that Boston’s The Greatest Bar of misusing photographs of the models in promotional material for the bar. When more than 90 days passed without the complaint being served, an Order to Show Cause was issued, with the attendant threat of dismissal. The plaintiffs responded by noting that they had discovered that the bar had been sold years before to The Next Place, LLC and its owner William Fairweather. An amended complaint was filed naming these entities as the defendants (although still naming the previous owner, who was subsequently dismissed, and the now-dissolved The Greatest Bar, LLC). Judge Talwani denied the defendants’ motion for a more definite statement. The defendants asserted that the complaint fails to identify the time period the photographs were allegedly used, preventing them from determining whether a statute of limitations defense might exist. Judge Talwani, noting that such motions are disfavored in light of the availability of discovery, found that the complaint gave ample notice of the claims against the defendants, and that the plaintiffs have no affirmative duty to plead facts necessary to defeat affirmative defenses such as the statute of limitations.
Professional photographer Geoff Johnson accuses North East Response Services of using one of his copyrighted photographs on its website without license, and of removing digital copyright management information when so doing. The photograph in question stems from a project in which Johnson returned to and photographed his childhood home, where he grew up with a hoarder mother. Johnson says that a copy of one of the photographs was put on North East Response Services’ website, www.cleanwayservices.com, with the copyright metadata having been stripped from the photograph. The complaint alleges that North East Response Services is a New Hampshire LLC, but the company’s site indicates that Cleanway Services is an emergency restoration and cleaning company with locations throughout New England, including one in Littleton NH, but is headquartered in Waltham, Massachusetts, and it appears that the LLC is registered in Vermont, not New Hampshire. Johnson asserts copyright infringement and improper removal of copyright management information.
UPPAbaby accuses Sam’s Club of infringing trademarks on UPPAbaby strollers by purchasing UPPAbaby strollers overseas and importing them for sale into America without license or authorization. With trial drawing near, Judge Saylor granted in part UPPAbaby’s motion in limine to exclude portions of a proposed exhibit to be used by a damages expert for Sam’s Club. The proposed exhibit, which is entitled “Calculating Damages in Intellectual Property Disputes,” includes information on accounting measures that can be used to measure the apportionment of incremental profits for damages analyses (e.g., whether to attribute some or all of a defendant’s profits to infringement or to other factors not subject to recovery) as well as portions discussing and analyzing legal standards and the meaning of statutes and common law. Judge Saylor determined that the proposed exhibit would likely qualify as a learned treatise and thus an exception to hearsay. He excluded, however, the substantial portions of the treatise that focused on legal principles governing recovery of net profits and the burden of proof, finding these portions would impermissibly permit the expert to instruct the jury on legal principles.
This case, which is nearing trial, was brought by Craig Smith and Nathan Harris of my firm, Lando & Anastasi.
Thermacell Repellants, which sells mosquito and tick repellant devices, accessories and clothing, accuses Ideavillage of trademark infringement, false designation of origin and statutory and common law unfair competition. Thermacell says that it began using the THERMACELL trademark in 1985 (when Thermacell was known as Schwabel) for cartridges containing liquid fuel for curling irons and brushes, and in 1986 obtained a registration on the mark for this application. Schwabel began using the mark for additional products, including insect repellant devices, in 1998, and obtained a federal registration on the mark for “devices having a heating element powered by cartridges containing liquid fuel which dispense insect repellant” in 2002. After expanding the use of the mark to other products, Thermacell obtained a registration on the mark for various types of bags, hats and utility lights. Thermacell says that New Jersey’s Ideavillage is a company that partners with individual clients to market products through television advertising. Ideavillage recently began advertising shirts using the THERMACELL mark, and filed an intent to use application for COPPER FIT THERMACELL for compression garments. The application was apparently rejected based on a likelihood of confusion with Thermacell’s registration. Thermacell says that, despite the rejection and despite Thermacell’s having expressed concerns with the potential use of the Ideavillage mark, Ideavillage nevertheless began selling apparel under the COPPER FIT THERMACELL mark, and presented the mark on its packaging in a way that separated THERMACELL from the COPPER FIT portion of the mark. Moreover, the COPPER FIT portion is designated with a ® symbol, while the THERMACELL portion is separately designated with a “TM” symbol, indicating an intent to claim trademark rights in THERMACELL standing alone. Ideavillage sells products bearing these marks through Lowed Home Improvement, which also carries Thermacell products, further enhancing the likelihood of confusion. Thermacell seeks destruction of products bearing the THERMACELL mark, injunctive relief against further usage of the mark, and monetary damages, fees and costs.
In this lawsuit involving copyright claims and various state law claims, Judge Talwani denied Larson’s motion to dismiss Perry’s copyright infringement counterclaim for failure to state a claim. She found that Dorland adequately pled substantial similarity between a letter that she wrote to the anonymous recipient of her kidney donation and Larson’s short story the Kindest, which included a letter that Dorland asserts to infringe on the copyright in Dorland’s letter. She noted that substantial similarity is an issue of fact that is not typically susceptible to motions to dismiss, and can only be dismissed where either the similarity exists only in non-copyrightable portions of the copyright-holder’s work or where no reasonable jury could find the works to be substantially similar. She compared the two works and found enough similarity, including the similarities in the protagonists and their motivations, the structure of the letters and some specific terms and phrases, to preclude dismissal on this ground.
Judge Tawlani denied dismissal on Larson’s fair use assertion. She found that Larson’s work could not be said to be transformative (and thus fair) at this stage of the proceeding, because most of the fair use factors involve factual issues that must be fleshed out through discovery. Finally, Judge Talwani refused to dismiss for lack of damages. While statutory damages and attorney’s fees appear to be unwarranted, given Larson’s publication of her story prior to Dorland’s registration of her copyright, Dorland would still be entitled to nominal damages and to injunctive relief, entitling her to proceed with her claims.
Intellectual Property Development (“IDP”) brought suit against a number of lumber companies, which case was removed to federal court in 2019. The defendants asserted counterclaims for a declaration of non-infringement of patents owned by IPD and/or its CEO, Glen Robell, as well as asserting state law claims against both. Counsel for IDP and Robell subsequently withdrew from representation, leading to IDP’s claims being dismissed when no new counsel could be found. Robell, who as an individual could appear pro se, remained in the case, although his patent infringement and conversion claims were previously dismissed.
From that point on, Robell failed to meaningfully participate in the litigation. He refused to confer with the defendants on a proposed schedule, and failed to attend a hearing on a motion to compel. When he subsequently missed the deadline to serve the answers to discovery that the Court had ordered and failed to attend a noticed deposition, Robell moved to have the case dismissed. Magistrate Judge Boal recommended dismissal of Robell’s remaining claims, which Judge Gorton has not yet ruled on. The claims against Robell remained, and Judge Boal ordered Robell to provide responses to discovery by December 17th. Robell did serve responses, but defendant National Lumber filed another motion to compel, asserting the responses to be deficient. After Robell again missed the hearing on this new motion, Judge Boal has now recommended that default judgment be entered against Robell as a discovery sanction pursuant to F.R.C.P. 37(b).
Generate IP Holdings and Generate Life Sciences accuse Cambridge’s Generate Biomedicines of trademark infringement. Generate Life Sciences is a provider of reproductive services, including newborn stem cell preservation. A subsidiary of the company, California Cryobank LLC is said to be the world’s premier donor sperm and egg bank. Generate IP Holdings, a wholly-owned subsidiary of California Cryobank, owns certain intellectual property rights of the various Generate businesses, including trademark registrations to GENERATE and GENERATE LIFE SCIENCES, and the plaintiffs claim to have used the GENERATE mark in commerce since at least October 23, 2019 (although the registrations claim a first use in commerce of December 31, 2019). The plaintiffs assert that the defendant began using the GENERATE and GENERATE BIOMEDICINES mark for products and services relating to the use of generative biology to create therapeutics. The complaint says that Generate Biomedicines began using the marks no earlier than January 13, 2020 and in commerce no earlier than September 2020. The plaintiffs have already filed oppositions to the defendants’ applications to register GENERATE. Plaintiffs bring claims for federal and common law trademark infringement and unfair competition.