Vape maker JUUL sued Salam Murshed, accusing him of infringing the JUUL® trademark, counterfeiting, and unfair competition under the Lanham Act and under New Hampshire state law. Murshed is said to own and operate the Salem Vape & Smoke Shop and the Smokers Choice II shop in Concord; each of these businesses are owned by corporations that Murshed owns and that are not in good standing with the State of New Hampshire. JUUL holds federal registrations on a basic word mark and a styled mark for “JUUL” as well as a word mark for “JUULpods.” JUUL asserts that Murshed sells counterfeit goods made outside of JUUL’s control and using unknown substances, and that Murshed also imports for sale in the United States products that are expressly identified on the packaging as authorized for sale only outside of the United States, with labeling that is not compliant with U.S. law. Both businesses ignored cease and desist letters and continued to sell the accused goods. Among other things, JUUL seeks an award of up to $2 million per mark for willful counterfeiting under 15 U.S.C. 1117(c).
Lickerish is a London-based photo syndication company, and is the exclusive licensee of photographer Dimitry Loiseau. Lickerish says that Uncoached, which does business as “TVOvermind.com,” has displayed one of Loiseau’s photographs without license. TVOvermind is a pop culture site that publishes articles on television shows, movies, comics and the like, and features articles like “10 Things You Didn’t Know About [insert celebrity name here].” A portion of the photograph alleged to have been wrongfully used, a fashion photo of actress Emmanuelle Vaugier, appears at the top of an article entitled “Whatever Happened to Emmanuelle Vaugier?” that was published in July 2018. I note that the article can still be accessed, but a different photograph of Vaugier now appears at the top. Lickerish asserts that TVOvermind’s infringement was willful because TVOvermind is a “serial infringer responsible for infringement on a massive scale.” The complaint does not make any factual allegations regarding the actual asserted photograph, however, in making the willfulness claim. Judge Stearns has the case.
Prime Hookah sued several distributors of hookah-related products, accusing them of importing and selling products bearing Prime Hookah’s DUD trademark. The case was originally filed in New Jersey, and included trademark infringement and dilution claims as well as unfair competition claims under state and federal law. The case was transferred to Massachusetts in early 2020, at which point the Defendants moved to dismiss for failure to state a claim. Judge Saylor granted in part and denied in part that motion. He noted that the complaint was poorly drafted with primarily conclusory allegations, and while it asserted that the Defendants sold DUD-labelled products, it did not allege that these products were not genuine DUD (i.e., Prime Hookah-produced) products. The reference to the websites of the Defendants provided no further information, as one was disabled and a second did not display products, and no screenshots of the sites were attached to the complaint. He reluctantly, and “with considerable misgivings,” however, determined that the infringement claims managed to “scrape over the low bar necessary to survive a motion to dismiss.” He dismissed the dilution count, as the complaint did not sufficiently allege facts that would support the DUD mark being famous. He also dismissed the count for importation of goods bearing infringing names or marks as inadequately pled, again pointing to the lack of specific, non-conclusory factual allegations. Finally, the counts against specific individuals were dismissed for failing to allege that they personally took steps in the alleged infringements.
Judge Saylor has now denied Prime Hookah’s motion for a preliminary injunction. He indicates his belief that Prime could have marshalled sufficient evidence to demonstrate a likelihood of success on the merits, but for whatever reason failed to do so. He noted that the Defendants’ suggestion that the registration is invalid for fraud on the PTO was not implausible, even if at present they had not proven that Prime knew about a prior registration for the same mark by another company in the Netherlands. He found that likelihood of confusion had not been demonstrated because Prime had introduced little evidence of what the allegedly infringing marks look like. Prime’s registration is to a stylized version with the mark “DUD” in fanciful font, surrounded by a circle and with a flame arising from the “U” in DUD. Yet Prime gave no description of what the marks on the accused products look like, and provided photos of unrelated products or unauthenticated photographs. The sole exception is the testimony on a single individual that one of the defendants sold a single product at a trade show that bore a similar mark. Further, Judge Saylor determined that the DUD mark is not particularly strong, having been registered only in January 2018 and having had no evidence of Prime’s renown in the industry or efforts made to promote and protect the mark. Judge Saylor determined that, while there is certainly a chance that Prime will prevail, at this stage it has failed to demonstrate a substantial likelihood of success on the merits. Accordingly, the motion for a permanent injunction was denied.
Vitaminsea accuses BeautyMark of infringing its federally-registered VITAMINSEA trademark. Vitaminsea manufactures bath and beauty products that utilize seaweed as a key ingredient, and has used the VITAMINSEA mark on such goods continuously since 2011. BeautyMark also makes beauty products containing seaweed, and at some point adopted VITAMINSEA.BEAUTY as a mark. BeautyMark sought to register this mark in 2018, but abandoned the application after receiving a rejection over Vitaminsea’s mark. Vitaminsea asserts that BeautyMark nevertheless continues to use the mark on similar products that are sold through similar channels of trade, including via Amazon and brick-and-mortar stores. Vitaminsea points to instances of actual confusion, where consumers contacted Vitaminsea looking for assistance with BeautyMark products. Vitaminsea also asserts unfair competition under the Lanham Act.
UK photographer Paul Reiffer accuses real estate agency Haywood Kristiansen Group and HKG co-founder Brian Haywood for using one of Reiffer’s photographs of the Boston skyline on HKG’s website without authorization. In addition to copyright infringement, Reiffer asserts counts under 17 U.S.C. § 1202(a) and (b) for wrongful removal of Reiffer’s copyright notice and watermark and for HKG having its own copyright notice at the bottom of the page on which the photograph appears, suggesting that HKG was the copyright holder of the photograph.
Judge Talwani sua sponte dismissed two patent infringement counts of CardioNet’s Third Amended Complaint after the two patents were held to cover unpatentable subject matter by the Patent Trial and Appeal Board. Once the PTAB cancelled the patents, CardioNet lost any cause of action based on these patents, rendering the two counts moot.
Uniloc 2017 sued athenahealth for patent infringement in 2019. Now in discovery, Uniloc sought to have athenahelath’s source code produced to Uniloc’s expert in Dallas. Athenahealth baulked, stating that its source code was highly valued and that disclosure in Dallas under the current COVID circumstances would involve undue risks. Uniloc, meanwhile did not want to engage a new expert from the Boston area. Judge Stearns, noting that both parties’ concerns were valid, denied Uniloc’s motion to compel production of the source code in Dallas and instead stayed the case until 2021. He did indicate that he would consider lifting the stay if the parties could mutually agree on a solution before then.
Connecticut Federal Judge Bolden granted OYO Toys’ motion to transfer venue to Massachusetts. LEGO sued OYO in Connecticut Federal Court, accusing it of copyright and trademark infringement, false designation of origin and violation of the Connecticut Unfair Trade Practices Act in connection with LEGO’s Minifigure characters. OYO moved to dismiss for lack of personal jurisdiction or in the alternative to transfer. Connecticut has a statute under which foreign corporations that do business in the state (which OYO does) without first obtaining a certificate of authenticity (which OYO lacks) “shall be subject to suit in this state by a resident of this state…” The Court found that this did not apply, however, because neither of plaintiffs LEGO A/S or LEGO Juris A/S. private companies located in Denmark, are “residents” of Connecticut who could take advantage of the statute, and the two cannot “bootstrap” themselves into being able to invoke the statute by way of the residency of third plaintiff LEGO Systems, Inc.’s Connecticut place of business. The Court further determined that OYO is not “conducting business” in Connecticut merely by selling figurines to national distributors who then bring them into Connecticut. Similarly, OYO’s sales of figurines through its website falls below the “conducting business” standard of the statute because the sales were a very minor part of OYO’s overall sales and were not targeted specifically to Connecticut. Rather than definitively find that Connecticut lacks personal jurisdiction over OYO, however, the Court instead opted to transfer the case to OYO’s home state of Massachusetts, and both personal jurisdiction and venue were certain to exist. While the Plaintiffs’ choice of forum is normally granted considerable weight, where the claims are nationwide, and the owners of the copyrights and trademarks at issue are non-residents of the chosen forum, that weight is not controlling. LEGO identified no Connecticut-based witnesses, while OYO identified both party and non-party witnesses located in Massachusetts, leading to the transfer.
Affordable Aerial Photography (“AAP”) provides high-end real estate photography services to brokers in South Florida, including photographs of real estate that abuts or is located on golf courses. Golfliferealestate provides services to connect buyers with real estate opportunities in golfing communities. AAP asserts that Golfliferealestate took one of its photographs, removed he copyright information from the photograph, and reproduced it on Golfliferealsestate’s website. AAP asserts copyright infringement and removal of copyright management information, and seeks damages, injunctive relief, and attorney’s fees. The case is before Judge Burroughs.
Uniloc 2017 sued Paychex for allegedly infringing a pair of patents covering distribution of applications over a network. In light of the COVID pandemic, Paychex sought to have all depositions taken remotely, with the sole exception that witnesses may have their attorney physically present. Uniloc agreed that Paychex need not be physically present, but sought to have its own attorney on-site with the witness for each third-party witness and each Paychex witness. Judge Stearns granted in part, determining that Uniloc may attend in person provided it takes appropriate COVID precautions and that the witness does not object. He further granted Paychex’s request to take an additional three depositions over the ten allowed by local rule, due to the complexities of the ownership and assertion of the patents-in-suit by various entities and in furtherance of license and lack of standing defenses.