Massachusetts strip club owners beware – an IP firm is scouring advertising that falsely suggests that models are appearing at, or otherwise sponsoring, local establishments. The five cases here include These suits, which include more than thirty different plaintiffs (some of whom appear in several cases) follow the Mitcheson suit earlier this month, and include counts for false advertising and false association, rights of privacy and publicity, statutory unauthorized use of an individual’s name, portrait or picture, conversion, unjust enrichment, quantum meruit and negligence.
Ecobee filed suit against another set of Amazon sellers, accusing each of reselling ecobee products and using ecobee trademarks without authorization. As with its previous complaints, ecobee asserts that the defendants improperly acquire ecobee goods from authorized resellers who are contractually prohibited from selling to unauthorized sellers, and that the sales by defendants, which come without warranty and are not subject to the same quality controls as that of authorized sellers, render their offerings materially different than ecobee’s products as to render the use of the ecobee marks inappropriate. These are the latest in a series of such suits filed by ecobee in the District of Massachusetts
Motus, a mobile workforce and fleet management company headquartered in Boston, sued Event Solutions for infringement of its federally-registered MOTUS trademark. According to the complaint, Event Solutions rebranded itself as “Motus One” in September 2018, and provides similar consulting services for parking, transportation, and the like. Motus alleges that, following a cease and desist letter, Event Solutions agreed to transition away from the “Motus One” name by the end of June, 2019. Despite this, Event Solutions continues to use the “Motus One” name and has indicated an intention to keep it. Motus brings counts for breach of contract (relating to the agreement to cease use of the mark), federal and state trademark infringement and dilution, unfair competition, and injury to business reputation.
Judge Mastroianni denied the parties’ joint motion to approve their consent judgment and permanent injunction. He noted that the court does not ordinarily adopt or endorse settlement agreements between private parties or retain jurisdiction over such agreements, and that there were no compelling public interest that would justify the court’s continued involvement. He further added that Penson & Co. had agreed to voluntarily cease using the trade dress in dispute, and that Excel would be able to enforce the injunction via a contract claim should Penson resume use.
Nuance, a designer of automated speech recognition (ASR) and transcription technologies, accuses Greek company Omilia of infringing eight patents related to ASR and conversational interactive voice response systems. Nuance states that Omilia was a licensee of the technology for use outside of the United States, but continued using the technology when the license terminated, subsequently expanding into the U.S. Nuance further alleges that Omilia was put on specific notice of the patents-in-suit by letter of October 8, 2018, but has refused to substantively respond or cease its activity.
A number of models, including first-named plaintiff Dessie Mitcheson, sued Springfield’s Aquarius Nightclub and its owner for false advertising and false association under the Lanham Act, as well as common law and statutory right of privacy, common law right of publicity and statutory unauthorized use of an individual’s name, portrait or picture in connection with the nightclub’s alleged use of photographs of the models in their advertising and promotional material. The models, who model for magazines such as Maxim, Stuff, Playboy and Glamour and appear in music videos, advertisements, assert that their being falsely associated with Aquarius, a strip club, injures their professional reputations and was done without their knowledge or consent and without payment. In addition to the above claims, the plaintiffs bring counts for conversion, unjust enrichment, quantum meruit and negligence.
Judge Saylor denied Abiomed’s motion for a protective order prohibiting discovery of foreign sales of products whose components were exported from the United States and assembled abroad. Abiomed had sought to preclude this information because Maquet had not specifically pled 35 U.S.C. § 271(f) as a basis for infringement. Noting that the limits on discovery set forth in Rule 26 may encompass matters that could bear on any issue that “is or may be in the case,” Judge Saylor determined that discovery as to worldwide sales is potentially relevant to damages. He stated that the order concerns only discoverability, and that he was taking no position on whether a claim under 271(f) was properly pled or on whether the resulting discovery would ultimately be admissible at trial. Judge Saylor further denied Abiomed’s motion to compel discovery from the Getinge Group, a consortium of companies that includes Maquet and that is owned by Getinge AB, a Swedish company. Getinge AB had initially been named as a defendant in Abiomed’s declaratory judgment complaint, but had successfully moved to dismiss because it’s lack of ownership of the subject patents meant that it lacked standing to defend such claims. Abiomed then had sought information and documents related to patent transactions, assessments, valuations and licenses held by Getinge Group entities located outside of the United States. Judge Saylor determined that the documents were not in the possession, custody or control of Maquet, because the fact that Maquet is a subsidiary of and shares a legal services department with Getinge was insufficient to establish that Maquet is an alter ego of Getinge.