MacDonald, aka “Tommy Mac” et al. v. WGBH Educational Foundation et al. (18-cv-10773).

Woodworker and former TV host Thomas MacDonald sued Boston public television station WGBH for trademark infringement, false suggestion of connection, false endorsement/sponsorship, unauthorized use of name and picture under state law, misrepresentation, and breach of contract in connection with WGBH continuing to produce and broadcast the show “Rough Cut – Woodworking with Tommy Mac” after not renewing MacDonald’s contract to host the show.  According to the complaint, Mr. MacDonald had a highly successful fine furniture business that had utilized the marks “Tommy Mac” and “rough Cut” for a nine-year period of time when WGBH approached him about hosting a woodworking show on the station.  At that point, MacDonald had been discussed in the media on many occasions, had appeared on Bob Vila’s “Home Again” show, and had established a weekly web-based show, called “The Rough Cut Show,” which had over 2 million page views and hundreds of thousands of followers and established common-law trademark rights in “Tommy Mac” and “Rough Cut.”  His contract to host the WGBH show, titled “Rough Cut: Woodworking with Tommy Mac,” required him to permit WGBH to register the show name as a WGBH-owned trademark and required him to give up his woodworking business to focus exclusively on the show.  The agreement did not, however, convey rights to “Tommy Mac” or “Rough Cut” standing alone; WGBH did, however, register “Rough Cut” without informing MacDonald.  MacDonald hosted the show for seven seasons, at which point his contract was not renewed.  Rather than simply cancelling the show, WGBH hired a new host, Tom McLaughlin, and aired another season, which WGBH referred to as “Season 8” of the show.  WGBH continued using the name “Rough Cut – Woodworking with Tommy Mac,” and continued using MacDonald’s likeness in advertisements and listings.  MacDonald seeks injunctive relief, including a requirement that WGBH air an oral and written statement indicating that MacDonald is no longer associated with the show; cancellation of WGBH’s “Rough Cut” mark, monetary damages and attorney’s fees.

I recall watching some of the shows MacDonald hosted – he created really beautiful furniture, such as this Hepplewhite Sideboard found at his website.

GAL-Hepplewhite_Sideboard_01-150x150

Emseal Joint Systems, Ltd. v. MM Systems Corp. (14-cv-14706).

Judge Zobel, having issued a claim construction that rendered Emseal’s infringement position unfeasible, issued a final judgment of non-infringement pursuant to Fed. R. Civ. P. 54(b).  MM Systems had opposed Emseal’s motion for entry of final judgment of non-infringement on the grounds that, absent a tolling of the statute of limitations on its counterclaims, it would most likely lose the ability to pursue those claims.  Emseal had sought to have the counterclaims dismissed with or without prejudice, or in the alternative to enter final judgment under Rule 54(b) and stay the counterclaims.  MM Systems was concerned that, with the litigation having been filed in 2014, a dismissal of its counterclaims would result in their not being capable of being refiled, as a dismissed complaint is treated as though it never existed for Federal statute of limitations purposes, and provides for refiling within one year for state statute of limitations purposes.  MM Systems also asserted that the Federal Circuit would not accept jurisdiction if the counterclaims were stayed rather than dismissed (although I note that the principal case cited for this proposition, Pause Technology v. TiVo, notes that the Federal Circuit lacks jurisdiction in such circumstances “short of meeting the conditions specified in Rule 54(b)…”).  Judge Zobel stayed any activity relating to the counterclaims pending the outcome of the appeal.

American Chair & Seating Corp. v. Restaurant Seating Corp. et al. (18-cv-10750).

In a sibling rivalry gone wrong, American Chair accuses Restaurant Seating and Stephen DiStasio of copyright and trademark infringement, palming off, and violation of M.G.L. 93A in connection with Restaurant Seating’s alleged use of American Chair’s copyrighted photographs, trademarks, and trade dress to steer business from the former to the latter.  Prior to forming Restaurant Seating, Stephen DiStasio worked for American Chair under the supervision of his brother and American Chair’s President, Michael DiStasio.  Restaurant Seating is accused of using American Chair’s copyrighted photographs on its website, using confusingly similar slogans to those registered by American Chair (e.g., “We build furniture to last the life of your concept” versus American’s registered “Furniture built to last the life of your concept”), and passing off American Chair products as if they were Restaurant Seating’s offerings, including in at least one instance hiring a manufacturer to knock off an American design that had been used to sell to a Salem, MA restaurant.  American Chair seeks temporary, preliminary, and permanent injunctive relief in addition to damages and attorneys fees.  The case is before Judge Woodlock.

Xiao Wei Yang Catering Linkage in Inner Mongolia Co., Ltd. et al. v. Inner Mongolia Xiao Wei Yang USA, Inc. et al. (15-cv-10114).

Judge Kelley continued to hammer at the litigation misconduct of Xiao Wei Yang Catering, this time granting the defendant’s motion that their requests for admissions be deemed admitted.  She noted that the plaintiffs never responded to correspondence received on two separate occasions from the defendants relating to deficiencies in the objections and responses to the admissions, and filed a supplemental response (only after being threatened with motion practice) that contained no amended answers, only legal arguments about why the plaintiff would not agree to any of the admissions.  Judge Kelley characterized these arguments as “baseless,” and specifically criticized the plaintiffs’ refusal to admit several things that were clearly beyond dispute.  For example, the plaintiffs refused to admit that it had entered into a Cooperation Agreement with the defendants despite having repeatedly so alleged in is complaint.  Judge Kelley also faulted the plaintiffs for refusing to answer clearly relevant requests because they were “beyond the scope” of the litigation, and for making several responses that were “nearly incomprehensible.”  In addition to deeming all of the requests admitted, Judge Kelley indicated she will schedule a hearing regarding whether the plaintiffs should be sanctioned.

Syneron Medical Ltd. v. Multiple Defendants

Syneron, Candela Corporation, and the Massachusetts General Hospital sued a number of different entities in multiple filings in the District of Massachusetts, accusing them of infringing U.S. Patent Nos. 9,095,357 and 9,510,899, each directed to dermatological treatment and tissue reshaping.  The defendants are:

– EndyMed Medical (18-cv-10678);

– Cutera, Emvera Technologies, Illooda, and Rohrer Aesthetics (18-cv-10679);

– InMode MD, Invasix, and Ivasix (18-cv-10680);

– Jeisys Medical and Perigree Medical (18-cv-10681);

– Lumenis and Pollogen (18-cv-10682);

– Lutronic (18-cv-10683); and

– Aesthetics Biomedical, Cartessa Aesthetics, and Sung Hwan E&B Co. d/b/a SHENB Co. (18-cv-10684).

Syneron claims to be the exclusive licensee to the patents for clinical applications, and to market a product, known as Profound, that practices the inventions of the two patents.  The product delivers radio frequency energy through microneedles to the dermis below the skin, causing small regions of damage; the healing process produces collagen that pushes out wrinkles and smooths skin.  Syneron accuses manufacturers, importers and sellers of similar devices of direct, contributory and induced infringement.  Syneron claims personal jurisdiction in Massachusetts exists with respect to at least some of the defendants by way of interactive websites available in(but not necessarily directed specifically to) Massachusetts.  Venue is only generally alleged, however, leaving the viability of Massachusetts as a venue for these cases uncertain.  The cases are currently split among Judges Young, O’Toole, Stearns, Gorton, and Magistrate Judge Kelley.

Rothschild Digital Confirmation LLC v. Fingent Corp. (18-cv-10656).

Rothschild accuses Fingent of infringing U.S. Patent No. 7,456,872 by sales of its “ReachOut Suite,” a field service management software application.  It is not clear why Rothschild, a Texas entity, is suing Fingent, a New York business, in Massachusetts, and it is equally unclear why venue in Massachusetts is appropriate, as the pleadings related to venue do not appear consistent with the TC Heartland line of cases.

Araca Merchandise LP v. Does 1-10 et al. (18-cv-10648).

Araca Merchandise, the authorized seller of merchandise in connection with the U.S. tour of the artist “Pink,” brought suit against unknown sellers of counterfeit merchandise in anticipation of next week’s Pink shows at the TD Garden in Boston.  Araca seeks an injunction barring the sale of unauthorized merchandise bearing the registered PINK trademark.  The case has been assigned to Judge Zobel.