B Luxe, Inc. v. B Luxe Aesthetics LLC et al. (18-cv-11988).

B. Luxe, a Medway hair salon, accuses Belmont’s B Luxe Aesthetics and Bianca Jacqueline Paraison of infringing its registered “B. LUXE” trademark in connection with hair and skin products and services. While the complaint does not clarify, it seems that Ms. Paraison is the owner of B Luxe Aesthetics. In addition to federal trademark and unfair competition claims, B. Luxe brings counts for state and common-law trademark infringement and unfair and deceptive trade practices under 93A.

Global Protection Corp. et al. v. Arthur et al. (18-cv-10966).

Global accused Eric Arthur and Marketing Sales Concepts of infringing its “ONE” mark and a design patent for condom packaging, and the Defendants moved to dismiss for lack of personal jurisdiction and improper venue, contending that they do no business in Massachusetts and never marketed or sold the accused condoms in the Commonwealth. Global responded that the defendants’ websites and social media presence, accessible in Massachusetts, supported jurisdiction and that the patent claim could be brought in Massachusetts under the “pendent venue” doctrine. Judge Stearns found that under TC Heartland, pendant venue cannot be applied to patent infringement claims (but note that at least one other Court has found that pendent venue is applicable to patent infringement claims); he decided, however, to transfer the entire matter to the Western District of Arkansas rather than to dismiss the complaint outright.

Barth v. United States (18-cv-12001).

Maine resident John S. Barth, Jr., filed a pro se complaint against the United States and several individual defendants in connection with Barth’s alleged copyright infringement claims. Barth wrote a novel, The National Memorial, which was published in 2015. After sales were flat, Barth discovered a number of outlets offering low or no-cost digital versions on-line. In 2017, Barth instituted a lawsuit against several individuals and companies in the Central District of California, claiming copyright infringement and violation of the Racketeer influenced and Corrupt Organizations Act (“RICO”). He sought to file the complaint under seal, and to undertake RICO-related discovery under seal to ascertain the entities or individuals who owned and operated the relevant websites, most of which were registered under false names, and the locations of their servers. He also filed a motion for discovery assistance, seeking assistance from federal agencies in obtaining this information. Judge Olguin denied the request that the complaint and discovery-related documents be accepted under seal and published the documents on PACER. Judge Olguin denied several follow-up motions to seal the information as well as a motion to disqualify himself. Barth now claims that the actions of Judge Olguin constitute willful collusion with the defendants in that it allowed them to transfer evidence and funds outside of the jurisdiction of the United States, denying Barth just compensation for his claims. Barth presses copyright infringement claims and RICO violations against the individual defendants, and brings a count against the United States for compensation for the taking of his private property, namely (as near as I can decipher) his right to bring the California case under seal. Judge Stearns has the pleasure of untangling this mess.

Oxford Global Resources, LLC v. Hernandez (SJC-12439).

Oxford, a Massachusetts LLC with places of business throughout the country, hired Jeremy Hernandez to work as an account manager in its Campbell, California office. Hernandez signed an employee Confidentiality, Non-Solicitation and Non-Competition Agreement that included an agreement that any disputes arising thereunder would be governed by Massachusetts law and that any lawsuit would be brought in a Massachusetts court. As a part of his employment, Hernandez was given access to the “Oxford Database,” a secure database of client information. After Hernandez left his employment, Oxford became aware that Hernandez was soliciting Oxford customers and allegedly had brought confidential information of Oxford to his new employers. After Oxford filed suit in Massachusetts state court, Hernandez moved to dismiss or transfer under the doctrine of forum non conveniens. The SJC first determined that California and not Massachusetts, law should apply despite the language of the agreement. Where a choice of law provision is executed, Massachusetts will uphold the provision unless it is contrary to public policy, which will be found where the application of Massachusetts law would be contrary to a fundamental policy of a state having a materially greater interest in the issue than Massachusetts and would be the law that applied in the absence of the choice of law provision. California has a settled policy in favor of open competition and employee mobility that, among other things, prohibits non-solicitation clauses and provides a statutory remedy to employees where an employer tries to enforce a non-competition or non-solicitation clause. Applying Massachusetts law would run contrary to this policy, and with the exception of Oxford’s place of incorporation, all relevant events occurred in California – Hernandez applied for the job, executed the agreement, worked for Oxford, and allegedly breached the agreement in California. Accordingly, applying Massachusetts substantive law would run afoul of a fundamental policy of California, and the SJC determined that the choice of law provision was unenforceable and California law would apply. Having so determined, the SJC next addressed the non conveniens argument, and held that an agreement to have suit brought in Massachusetts cannot preclude a non conveniens challenge as a matter of law. Noting that all relevant witnesses were in California and could not be compelled to appear in Massachusetts for trial , and that the case would involve interpretation of recently-passed California laws relating to employee agreements, the SJC decided that the California court would be in the best position to address the factual issues and consider the evolution of the interpretation of the new law, and dismissed the Massachusetts complaint so that it could be brought in California.

This case creates a new concern for multi-state corporations seeking to impose restrictions on employees in other states that, while acceptable in Massachusetts, might run afoul of the laws of the states in which the employees work.  Businesses should review the employment laws of states in which they employ people and consider whether a choice of law clause will be upheld in light of the SJC’s decision.

Massachusetts Mutual Life Insurance Co. v. PMN II, LLC et al. (18-cv-30150).

Mass. Mutual sued Chuck Yeager, his wife, PMN II and III  (partnerships involving the Yeagers – the name allegedly stands for “Protect My Name”), and a corporation and foundation owned and run by the Yeagers, seeking a declaration that Mass. Mutual has not violated Yeager’s rights of publicity, rights of privacy, trademark rights in the Chuck Yeager mark, and a determination of which defendant owns the rights in Yeager’s name. According to the complaint, Victoria Yeager has demanded that Mass. Mutual make payment for alleged violations of Yeager’s right of publicity. Her claim is based on an article written by a Mass. Mutual employee and published by BenefitsPRO, a trade journal, that made one use of Yeager’s name in an analogy likening the breakthrough of increased sales of group life insurance to the breaking of the sound barrier. After Victoria Yeager complained, Yeager’s name was removed from the article; Mrs. Yeager, who is Chuck Yeager’s legal guardian following his being deemed incompetent, persisted in demanding payment. Mass. Mutual asserts that Victoria Yeager was deemed to be a vexatious litigant by the U.S. District Court for the Eastern District of California for repeated frivolous right of publicity filings.  Specific personal jurisdiction over the defendants is alleged to exist through the defendants’ repeated contacts with Mass. Mutual in connection with Yeager’s publicity rights as well as through the defendants’ operation of a “highly interactive” website, www.chuckyeager.com, that is available in Massachusetts and through a gofundme page alleged to have been set up by the defendants to create a Chuck Yeager documentary.

Massachusetts’ New Laws Governing Trade Secrets and Employee Non-Competition Clauses

In August, Governor Baker signed a new law governing trade secrets, broadening the types of information that can qualify as a trade secret and setting up protections for trade secrets during litigation.  By the passage of this law, Massachusetts joins the vast majority of states in adopting the Uniform Trade Secrets law.  Governor Baker also signed a law placing significant restrictions on non-compete clauses in employee agreements, including limits on scope and time and requirements that an ex-employee be compensated during the time the former employee is restricted.  A summary of these laws can be found here.

Maquet Cardiovascular LLC v. Abiomed, Inc. et al. (17-cv-12311).

After being sued for patent infringement by Maquet, Abiomed filed non-infringement counterclaims against Maquet its corporate parent, Swedish company Getinge AB. Judge Saylor granted Getinge’s motion to dismiss, agreeing that Getinge lacks standing to sue Abiomed and determining that this insulates Getinge from the declaratory judgment counterclaim. Judge Saylor noted that the counterclaim does not allege that a written agreement exists by which Getinge was given any rights in the subject patent, and absent a written transfer of rights, Getinge can have no rights in the patent. He refused to extend the doctrine of equitable title, stating that there is nothing inherently unfair or inequitable in a corporate subsidiary owning all rights in a patent or in the parent then exercising substantial control over the subsidiary that would require bringing the parent into the controversy. Accordingly, the counterclaim was dismissed as applied to Getinge (although it remains in place against Maquet).