Robert Bosch LLC d/b/a Bosch v. Lincoln Diesel Specialties, LLC (D. Mass. 20-cv-11033).

Bosch makes fuel injectors and related car parts and sells them through a network of authorized distributers and authorized internet dealers.  The distributers are permitted to sell only to the authorized Internet dealers, who can only sell to end-users through designated websites.  The authorized resellers are further authorized to provide aftermarket service and warranties for Bosch products, such as maintenance, diagnostic and repair services.  Bosch asserts that Lincoln Diesel sells both new and remanufactured parts that it identifies as OEM Bosch Parts, but that Lincoln Diesel is not an authorized reseller of Bosch.  The complaint asserts that Lincoln Diesel obtains Bosch products as used products that have already been sold, at liquidation, or through importation from other regions of the world, and obtained or attempted to obtain products from authorized Bosch distributors or resellers in violation of the authorized parties’ agreements with Bosch.  Bosch asserts trademark infringement, tortious interference with contractual relations, and unfair competition under the laws of multiple states.  The case is before Judge Zobel.

Converse Inc. v. Steven Madden Ltd. (D. Mass. 20-cv-11032).

Boston shoe manufacturer Converse accuses Steve Madden Ltd. of infringing two design patents covering soles of sneakers.  Converse’s two patents, D873,547 and D874,106, cover portions of the sole of Converse’s Run Star Hike sneaker.Converse Run Star Hike

The ‘106 patent covers the rear portion of the sole (the black portion of the Converse sneaker at right), while the ‘547 patent covers the sole from about the mid-point of the front, tan section to the midpoint of the rearm black portion.  The remainder of the sneaker was disclaimed in both patents.

 

Converse asserts that Madden’s Madden Girl Winnona Flatform Hi-Top infringes the ‘106 patent. madden-girl-White-Fabric-WinonaConverse sent Madden a cease and desist letter shortly after the Madden Girl Winnona Flatform Hi-Top became available in March.  Not only did Madden continue selling the accused sneaker, Madden introduced a second model, the Shark sneaker, that Converse says infringes both design patents because it copies the two-part sole of the Converse sneaker.

 

This case demonstrates the importance of claiming many different aspects of a product design.  Here, by disclaiming the non-sole portions of the shoe, Converse enabled a broad scope that would cover sneakers having uppers that differed from Converse’s actual product.  Further, by having the front of the rear part of the sole in broken lines in the ‘106 patent, the patent potentially covers both Madden sneakers.

Foss v. Marvic, Inc. d/b/a Brady-Built Sunrooms et al. (D. Mass. 20-cv-4057).

Graphic designer Cynthia Foss, acting pro se, accuses Marvic of using a twenty-page brochure prepared by Foss in a scope beyond that contemplated by her (unwritten) agreement with Marvic and in violation of her copyright in the brochure.  Foss first brought suit in 2018, asserting copyright infringement, breach of contract, tortious interference with advantageous business relations, conversion, unfair and deceptive business practices, fraud, and breach of fiduciary duty.  The copyright claim was dismissed following the Supreme Court’s Fourth Estate decision because the Copyright Office had not yet acted on Foss’ application for registration, and Marvic was granted summary judgment on the remaining claims, in part because Foss failed to respond to Marvic’s requests for admissions, resulting in the admissions being deemed true.  Foss appealed the dismissal of the copyright count, believing that Fourth Estate allows for a stay of litigation pending a decision from the Copyright Office rather than dismissal, and the appeal remains pending.  Foss asserts that Marvic refused to agree to a tolling of the statute of limitations on her copyright claim while the appeal was pending, forcing her to file the new complaint to preserve her rights.  Judge Hillman, who presided over the previous case, has been assigned to this matter.

Modulus Financial Engineering, Inc. v. Modulus Data USA Incorporated et al. (D. Mass. 20-cv-10997).

Modulus Financial Engineering (MFE) filed suit against Modulus Data USA and Modulus Data, Inc. (collectively, MDU) asserting trademark infringement, unfair competition and false designation of origin.  MFE has used the MODULUS mark for software design and development since 20002, and owns registrations for MODULUS in connection with the same.  MFE asserts that MDU began using the mark “Modulus Data” through a website known as Log10solutions.com in 2015 when it applied for a registration on the mark.  MFE asserts that, in the application for registration, MDU falsely asserted a date of first use that preceded MFE’s application for a federal trademark on MODULUS.  MFE further alleges that MDU strategically described its offerings to obscure the fact that software is the base of its products and services.  In March 2016, MDU changed its name from Logic10 Solutions to Modulus Data.  MFE then sent a cease and desist letter, after which MFE asserts that MDU filed a Section 7 Request with the PTO to change the date of first use in commerce of November 10, 2015. In addition to the trademark infringement and related claims, MFE seeks cancellation of MDU’s “Modulus”-based trademarks.

RS Means Company, LLC et al. v. SED Associates, Inc. et al. (D. Mass. 20-cv-10993)

RS Means and The Gordian Group accuse SED Associates and Aaron Richardson of copyright and trademark infringement in connection with SED’s alleged sales of counterfeit copies of books relating to construction cost estimating data.  RS Means asserts that its RS Means data is the construction industry standard for local cost estimation data, and that SED sells counterfeit copies on Amazon under the pseudonym “Code Emporium.”  RS Means says that Aaron Richardson, an SED engineer, purchased seven different RS Means titles in November 2019,  which were then copied and sold via Amazon, several specifically from Aaron Richardson himself.  RS Means points to reviews of these books on Amazon, which include complaints as to the quality of the physical books themselves, as opposed to the content.  In addition to copyright and trademark claims, RS Means asserts unfair competition under M.G.L. c. 93A.  Judge Casper has the case.

Toddle Inn Franchising, LLC v. KPJ Associates, LLC et al. (D. ME. 18-cv-00293).

Toddle Inn, a franchisor of educational and day care service, sued former franchisee KPJ Associates in 2018, asserting breach of contract, Lanham Act unfair competition and trade secret misappropriation in connection with KPJ’s continuing use of the Toddle Inn marks and materials.  The parties were ordered to arbitration pursuant to the franchise agreement.  On March 31, 2020, following completion of the arbitration process, Judge Levy confirmed the arbitration award and deemed it a final judgment.  A writ of execution to enforce the judgment was entered on May 7, 2020, followed a day later by KPJ’s filing of an emergency motion to quash the writ and asserting that the judgment was not yet final, in that the time to appeal had not yet passed.  Judge Levy granted KPJ’s motion.  He determined that General Order 2020-2, which the Court had issued on March 18th in response to the COVID-19 pandemic and which extended all deadlines in civil cases by thirty days, applied to deadlines for appeals to the First Circuit.  This pushed the deadline for KPJ to appeal from the original April 30, 2020 date to May 30th, making the writ premature.  He rejected Toddle Inn’s contention that any extension of the deadline for appeal must originate from the First Circuit, noting that Fed. R. App. P 4, which governs the time for appeal, expressly permits district courts to extend the deadline.  Further, under that Rule, if a party moves to extend the deadline for appeal within 30 days of its passing and demonstrates excusable neglect or good cause, the deadline can be extended regardless of whether General Order 2020-2 automatically did so.  KPJ orally requested extension at a May 12th videoconference hearing, within 30 days of the initial April 30th deadline, and demonstrated good cause in that the plain wording of the General Order supported KPJ’s belief that the deadline had been extended.   Thus, either way, KPJ’s motion to quash the writ of execution would be granted.

Note – While this blog has thus far focused exclusively on intellectual property in the United States District Court for the District of Massachusetts, I am expanding the scope to cover northern New England (Vermont, New Hampshire and Maine) as well.  The name of the blog will remain the same.

Cedar Bay Grilling Co. Ltd. V. Canadian Fish Exporters Inc. (19-cv-12264).

Judge Gorton denied Canadian Fish’s motion to set aside Cedar Bay’s voluntary dismissal of the complaint.  Canadian Fish was a distributor for Cedar Bay in the United States.  The relationship lasted for nine years, when a dispute arose as to Cedar Bay’s pending trademark registrations, leading Cedar Bay to accuse Canadian Fish of false association and false designation of origin for Canadian Fish’s alleged misuse of Cedar Bay’s marks.  Canadian Fish promptly countersued for breach of contract and declaratory judgment in Nova Scotia/  The parties mediated the disputes and came to a settlement in January, memorialized in a document titled “Settlement Agreement.”  When, days later, Cedar Bay asserted that this document was merely a memorialization of potential points of agreement and not an actual agreement, Canadian Fish moved to enforce the agreement and separately moved to dismiss the complaint in the Massachusetts case.  Cedar Bay initially opposed the motion, but shortly thereafter filed a notice of voluntary dismissal, leading to termination of the case by the Court.  Canadian Fish, apparently angered by Cedar Bay’s attempted reneging of the agreement, sought to vacate the dismissal so that it could seek a better outcome than the compromise of the settlement agreement.  Judge Gorton noted that if a plaintiff voluntarily dismisses a complaint pursuant to Rule 41(a)(1), where no answer or motion for summary judgment has been filed, the Court has no power to condition the dismissal – the plaintiff has an absolute right to dismiss.  He rejected Canadian Fish’s assertion that the motion to enforce the settlement agreement was functionally equivalent to a motion for summary judgment; while the summary judgment standard is generally applied to motions to enforce settlement agreements, application of the same standard does not mean that a motion to enforce a settlement agreement is the equivalent to a motion for summary judgment, as this is clearly not contemplated by the plain language of the Rule.