EcoFactor, Inc. v. Google LLC (19-cv-12322), Alarm.com Holdings, Inc. and Alarm.com (19-cv-12323), Schneider Electric SE and Schneider Electric USA, Inc. (19-cv-12326), Daikin America,Inc., Daikin Industries, Ltd., and Daikin North America LLC (19-cv-12324), Vivint, Inc. (19-cv-12327), and ecobee, Inc. and ecobee Ltd. (19-cv-12325).

California company EcoFactor, a provider of smart home energy products and services, brought several suits in Massachusetts, accusing a number of businesses of infringing patents relating to evaluating and improving efficiency in HVAC systems and to smart thermostats. These suits follow an October ITC complaint seeking to block importation of products accused of infringing these same patents.  The cases are presently spread between Judges Saylor, Sorokin, and Bowler.

Adler v. Her Campus Media, LLC (19-cv-10087).

Judge Saylor denied Her Campus Media’s motion to dismiss or, in the alternative, for summary judgment, finding it premature to determine whether the use of Adler’s photograph constituted fair use or that Her Campus Media was shielded by the safe harbor provisions. Judge Saylor noted that the complaint alleges that Her Campus Media, which accepts and posts content from non-employees, utilizes an editorial staff to review proposed publications, including the submission that included the Adler photograph, and that a review of fair use and safe harbor would turn on facts such as the nature of the relationship between the website and its student contributors that preclude a finding at this early stage of the proceeding, much as it did in a different case involving Her Campus Media with a very similar fact pattern. Judge Saylor also denied the motion with respect to Mass. G.L. c. 214, § 3A, which provides a civil cause of action for any person whose name, portrait or picture is used in Massachusetts for advertising or trade without their consent. Her Campus Media asserted that, because the subject of the photographs had an independent right to their likenesses that Adler had not secured, an award of money damages to Adler would not be proper. Judge Saylor found this to be legally incorrect, because (a) Her Campus Media lacked the right to enforce the subjects’ rights under the Massachusetts law; (b) court-awarded monetary damages for copyright infringement would not qualify as a “use for advertising purposes or for the purposes of trade” within the meaning of the Massachusetts law; and (c) to the extent the Massachusetts law did somehow prevent an award for copyright infringement, it would likely be preempted by copyright law.

Emrit v. Universal Music Group et al. (19-cv-30147).

In a case before Judge Mastroianni, Ronald Satish Emrit filed a pro se complaint against rapper Rick Ross, his record label Def Jam Group, Universal Music Group (which owns Def Jam), and the estate of Shakir Stewart, the A&R agent who signed Ross to Def Jam, accusing them of copyright infringement in connection with Ross’ song “Billionaire.” Emrit, performs as “Satish Dat Beast,” asserts that the Ross song utilizes the same backing track as his song “Dilemma.” Emrit says that “Dilemma” was distributed by Tunecore and Ditto Music, music distribution services that assist independent artists in selling their music through on-line retailers like iTunes, Tik Tok, Amazon Music and the like. “Billionaire” was released in 2008; the complaint does not allege dates on which “Dilemma” was recorded or released. In addition to the copyright claim, Emrit brings counts for conversion, which seems unlikely as the complaint does not allege that anything physical was taken, and tortious interference with business relations and with contracts, which also seem questionable as no particular business relations or contracts are identified as having been impaired. Further, it is entirely unclear why the complaint was filed in Massachusetts or why personal jurisdiction exists over the defendants – Emrit suggests that he might move to Massachusetts in the near future, but currently resides in Florida, and none of the defendants are alleged to reside in this state.  In addition to damages, Emrit seeks an order mandating that Def Jam and/or Universal sign him to a recording deal.

Emrit is well-known to the federal court system – one federal judge stated that “other courts have taken note of Plaintiff’s extensive and abusive litigation practices” and noted that Emrit has been deemed a vexatious litigant in multiple district courts. Further, Emrit has already sued the same defendants in the Middle District of Florida, the Central District of California, and the Northern District of Iowa, all within the past month.  I would note, however, that while the complaint does have issues with jurisdiction, lacks an express allegation that “Dilemma” and with the non-copyright counts, the backing tracks of the two songs do strike me as remarkably similar.

Smartling, Inc. v. Skawa Innovation Ltd. (14-cv-13106).

Smartling asserted that Skawa’s “EASYLING” mark infringed its “SMARTLING” mark and sought to cancel the mark pursuant to 15 U.S.C. § 1115. In June, however, the jury found for Skawa on all counts. Undeterred, Smartling moved the TTAB to reopen its petition to cancel Skawa’s mark on the same grounds, leading Skawa to ask the Court to order dismissal of Smartling’s petition. Judge Burroughs denied Skawa’s motion, finding that while § 1115 gives the court the power to order the TTAB to cancel a mark or register a mark, it does not empower the court to order the TTAB to dismiss a cancellation proceeding. She further noted that Skawa can (and has) asserted res judicata before the TTAB, who can reach their own conclusion.

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

Cedar Bay sued Canadian Fish Exporters, or “CFE,” for false association and false designation of origin in connection with the importation of salmon products. Cedar Bay is a Nova Scotia business that holds registrations on “CEDAR BAY” and on design marks that include “CEDAR BAY GRILLING COMPANY.” cedarbay-new-logo

Cedar Bay and Massachusetts business CFE had previously entered into an agreement by which CFE distributed Cedar Bay’s products in the United States and the Caribbean. Cedar Bay alleges that CFE demanded lower prices from Cedar Bay to permit sales to large retail customers such as Kroger and Walmart, but did not pass the cost savings on to these customers, and that CFE misled Cedar Bay about the mark-ups CFE was charging on Cedar Bay products. Cedar Bay further alleges that the failure to pass on the cost savings resulted in the loss of accounts, and that CFE failed to properly seek to expand the business. Cedar Bay hired a broker to assist in expanding the business, but alleges that CFE has blocked the broker from contacting existing customers and has asserted that Cedar Bay has no right to contact retail customers in the United States, which Cedar Bay denies. Cedar Bay asserts that CFE uses Cedar bay’s trademarks in a manner that falsely suggests that the products and trademarks are owned by CFE. In addition to false designation of origin, Cedar Bay alleges tortious interference with economic advantage and violation of 93A. Apparently, the contract with CFE remains in place, however, as there is no allegation that it terminated or was breached.

Getty Images (US), Inc. v. Her Campus Media, LLC (19-cv-11084).

Judge Sorokin denied Her Campus Media’s motion to dismiss for failure to state a claim or, in the alternative, for summary judgment. Getty asserts that Her Campus Media has republished without authorization hundreds of Getty-owned photographs, and continued to do so after Getty notified Her Campus Media of their infringements. Her Campus Media asserted that it was entitled to the safe harbor provision of the Digital Millennium Copyright Act, and that its use of Getty-owned photographs constituted fair use under the copyright laws. Judge Sorokin denied dismissal because Getty, in its complaint, did not admit to all of the components of the safe harbor defense that would permit dismissal on the pleadings, and because the facts as alleged in the complaint were insufficient to analyze the fair use issue. Her Campus Media submitted affidavits in support of summary judgment, but failed to include a statement of material facts as required by Local Rule 56.1, which alone is sufficient to deny the motion. Judge Sorokin further noted, however, that much of the information necessary to evaluate the affirmative defenses on which the motion was based (for example, the relationship between Her Campus Media and its student contributors) was entirely within the control of Her Campus Media but were either absent from the record or disputed by the parties and would require. He therefore denied summary judgment as premature.

Exxon Mobile Corp. v. Arvidson d/b/a Turbo Lube & Repairs (19-cv-12226).

Exxon Mobile filed suit against Ayer, Massachusetts business Turbo Lube, accusing the repair shop of trademark infringement, dilution, counterfeiting, unfair competition and unjust enrichment. Exxon Mobile asserts a number of trademarks, including the “MOBILE” mark in red and blue, the red Pegasus mark, and “Mobile 1 Lube Express.” Exxon Mobile accuses Turbo Lube of misusing these marks in its on-site advertising, website, and even on the employees’ uniforms, and of ignoring Exxon Mobile’s cease and desist demand letter. Exxon Mobile seeks a finding of willful infringement, and seeks preliminary and permanent injunctive relief as well as monetary damages.