Sonohm accuses Superlogics of infringing two patents, U.S. 6,651,207, related to improved voice quality in cordless communications utilizing frequency hopping, and U.S. 7,106,705, which is directed to methods and systems for transmitting data for multiple services via jointly used physical channels. The ‘207 patent is expired, while the ‘705 patent remains in effect only through May 2021. According to the assignment records of the PTO, Sonohm acquired both patents in September 2019, after the ‘207 patent had expired. Since then, Sonohm has filed seventeen infringement suits involving the two patents, nine of which settled within about six months. The case has been assigned to Judge Burroughs.
Sonya Larson sued Dawn Dorland Perry, seeking a declaratory judgment that a story written by Larson did not infringe Perry’s copyright in a similar story, and sued Perry, her attorney and his law firm for defamation and tortious interference with contractual relationships when Larson’s publisher was threatened with a lawsuit if they continued to publish Larson’s story. Perry’s lawyer, Jeffrey Cohen, and his California firm, Cohen Business Law Group, moved to dismiss for lack of personal jurisdiction, which Judge Talwani denied. She noted that Cohen Law had sent letters to BFF in Cambridge, MA, alleging that Larson’s story plagiarized Perry’s letter and that publication would infringe on Perry’s rights, and threatened statutory damages of up to $150,000 should BFF publish. Larson alleges that this letter knowingly misrepresented both the facts and the law such that it constituted an unfair or deceptive trade practice under Massachusetts law and was designed to interfere with her agreement with BFF. As this behavior was targeted to a Massachusetts company for the purpose of affecting BFF’s business decision. This therefore is sufficient to establish specific personal jurisdiction.
Cohen and his firm also moved for dismissal on the grounds that, as a matter of law, their alleged conduct is shielded by Massachusetts’ litigation privilege. An attorney’s statements in the Commonwealth are absolutely privileged where such statements are made by an attorney engaged in his function as an attorney whether in the institution or conduct of litigation or in conferences and other communications preliminary to litigation. Where the communication is to a prospective defendant, however, the anticipated litigation must be contemplated in good faith, and does not allow a lawyer the freedom to act with impunity. While lawyers cannot be held liable for the contents of their speech, that speech can be used as evidence of misconduct, with the line between the two determined on a case by case basis. In this case, the complaint asserts that the Cohen letter was used to effectuate unlawful ends, rather than looking to establish liability based on the content standing alone, and Judge Talwani determined that the good faith of the Cohen firm could not be determined on the pleadings. Accordingly, she refused to dismiss based on litigation privilege.
Judge Talwani denied Perry’s moved to dismiss on the grounds that defamation was not properly pled and that Larson failed to plead actual malice, a requirement under Massachusetts defamation law when the plaintiff is a limited purpose public figure. The complaint identified instances in which Perry is alleged to have told several writing organizations, Larson’s employer, and a writing organization where Larson sought a fellowship that Larson plagarized her work, providing Perry with enough specificity to mount a defense. Regarding the “limited public figure” issue, Judge Talwani noted that while the issue is one of law, it is inherently fact-specific such that it cannot be determined on the pleadings.
Judge Talwani granted Perry’s motion to dismiss the tortious interference counts. The complaint alleged that, as a result of Perry’s conduct, two publishers decided to pull Larson’s story from their website earlier than call for by the contracts between Larson and the two. Ordinarily, this would be sufficient to survive a motion to dismiss. Here, however, the two contracts were included as exhibits to the complaint and could thus be fairly considered in determining the motion. In reviewing the contracts, neither included the promises alleged in the complaint that the story actually be published or remain on available for any particular length of time.
As a note, Judge Talwani denied Perry’s request for a hearing on her motion, finding that the coronavirus crisis combined with the Court’s determination that it could properly adjudicate the issue on the papers weighed against a hearing.
My firm has compiled and summarized the steps that various courts and governmental agencies in the Intellectual Property area have taken to try to minimize the spread of COVID-19. I have posted about the things the Massachusetts courts have done, but please click here to see what the other New England Federal Courts, the USPTO, Copyright Office, and some of the international IP agencies are doing in light of the epidemic.
The District Court issued several new general orders over the past several days. On Thursday, the Court announced that the Springfield courthouse that had been closed to the public reopened on March 27th. The employee of the clerk’s office who had reported symptoms consistent with the disease tested negative for COVID, and the courthouse was given a thorough cleaning, making it safe to resume operations. Public counter hours for the clerks’ offices in each Federal courthouse were set to run from 9 a.m. to 2 p.m. to permit the limited staff to complete needed administrative business. The Court adjusted criminal procedures to allow for electronic filings of various documents previously accepted only in paper format and to allow for video and telephonic conferencing instead of in-person appearances for various criminal proceedings, pleas and sentencing.
Perhaps more relevant to the IP world, all jury trials in the District that were scheduled to begin on or before May 29th have been continued indefinitely, with the continuance of any trial-specific deadlines to be determined by the individual judges. This applies to both criminal and civil trials. Grand jury proceedings are also continued until at least May 29th, although grand jury proceedings may be scheduled for emergency or essential matters.
FabriClear, LLC developed a spray for treating bed bug infestations, and reached an agreement with Harvest Direct by which Harvest would advertise and sell the product, which was known as “FabriClear.” FabriClear asserts that, after several years of complying with the agreements with FabriClear, Harvest began re-labelling the product as “X-Out” and failing to pay FabriClear on sales of the same. FabriClear identifies several examples in which the “X-Out” label was simply superimposed directly over the “FabriClear” label. The complaint further alleges that Harvest essentially copied FabriClear’s label, packaging, website and advertisements for X-Out, including an advertisement in which the FabriClear bottle remained in several segments. FabriClear asserts breach of contract, trade secret misappropriation, and false designation of origin, as well as unfair competition. Magistrate Judge Hillman has the case.
(Note – I filed this complaint on behalf of FabriClear. As I always do when reporting on cases in which I and my firm are involved, I blog about the issues presented in the pleadings or orders, and avoid adding any “insider information.”)
Ethic, an investment advisor that specializes in socially aware investing, filed suit against Admirals Bancorp and Ethic Wealth Advisors, LLC, accusing the two of rebranding to the “ETHIC” mark for the provision of similar services. Ethic asserts federal and common law trademark infringement, false designation of origin and unfair competition and unfair trade practices. Ethic further asserts that the infringement was willful, because Admiral’s intent-to-use applications for registration of ETHIC and ETHIC A WEALTH BANK were each refused in light of Ethic’s prior registration. Ethic asserts that, in response to the latter rejection, Admiral misled the PTO as to the differences between the respective services, banking services versus investment advisory services, that rendered confusion unlikely. According to Ethic, at the time of this representation, Admiral had already taken steps to offer investment services under the “Ethic” mark, as evidenced by Admiral’s SEC filings. The case is before Judge Sorokin.
Wildlife Acoustics makes bioacoustics monitoring technology used to monitor various animal species around the world. This technology can supplement or replace other, more manpower-intensive monitoring methods. Wildlife’s recorder design allowed for a significant reduction in power usage, enabling the use of much smaller batteries and a smaller and lighter recording device that is considerably easier to pack into remote locations. Wildlife accuses Australia’s Frontier Labs of infringing its U.S. Patent No. 7,782,195, which covers these recording devices, through the sale of competing BAR audio recording devices. Judge O’Toole has been assigned to the case, which was filed by my firm, Lando & Anastasi.