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.
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. Converse 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.
UPDATE – many thanks to The Fashion Law for quoting me in their report on this case. You can read their analysis of this case here, and check out the rest of their insights into fashion law, both intellectual property and otherwise, at www.thefashionlaw.com.
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 (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 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, 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.
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.
Bio-Rad and Harvard University sued 10X Genomics in 2019, accusing 10X of infringing two patents owned by Harvard and exclusively licensed by Bio-Rad and of infringing one Bio-Rad – owned patent. Judge Young denied 10X Genomics’ motion to dismiss the induced and willful infringement claims on the three patents, finding these claims to be sufficiently pled. The complaint alleges that 10X knew of the two Harvard-owned patents – with knowledge being an element of both induced and willful infringement – by way of previous litigation between the parties on the patents-in-suit that was dismissed in favor of the current suit and by way of 10X’s own license agreements with Harvard. This knowledge is further evidenced by 10X having cited the published application that matured into one of the patents in an IDS with the Patent Office. The complaint further alleges 10X had knowledge of the Bio-Rad patent because the sole inventor on that patent subsequently left Bio-Rad to form 10X. That patent was also cited by 10X in an IDS. Importantly, the complaint alleges that the knowledge of the three patents came about before the litigation was filed, as willfulness cannot in this district be predicated on knowledge resulting from the complaint. Judge Young further noted that, at the motion to dismiss stage, a pleading alleging pre-suit knowledge of the patents and continued sale of the allegedly infringing products is sufficient to state a claim of willful infringement.
10X also moved to dismiss for improper forum or transfer the Bio-Rad – owned patent claim. Judge Young denied the dismissal request. He found that this patent, unlike the Harvard-owned patents, was not the subject of the forum selection clause found in 10X’s license with Harvard that directed claims be brought in Massachusetts. Further, the patent venue statute had been held to limit suits to districts in which the defendant resides or has committed acts of infringement and has a regular place of business. 10X is incorporated in Delaware and is located in California, and the complaint lacks allegations that 10X has a physical location in Massachusetts. The patent venue statute thus does not provide for venue in Massachusetts. Judge Young determined that Bio-Rad could rely on pendant jurisdiction, because the non-Harvard infringement claims were directed towards the same products that the Harvard-owned infringement claims. He granted 10X’s request, however, to transfer the infringement claim with respect to the Bio-Rad patent to the Northern District of California. As Harvard is not a co-plaintiff on that claim, the forum selection clause in the Harvard license does not apply and the sole connection with Massachusetts does not exist. Both Bio-Rad and 10X are headquartered in N.D. California, the sole named inventor on the patent resides in the district, and the parties are already litigating a different patent, related to the Bio-Rad patent in this case, in that district. Judicial economy favors transfer.
Richard Rogers of Yourfavorite.com filed a pro se complaint alleging that Payment Printer, LLC and its sole owner and agent, Christopher Cardi, infringe the copyright in his works titled “Check Writer User Guide” and “Reasons for Return” by copying them verbatim at the paymentprinter.com website. Rogers alleges that the infringement began on March 18, 2018, although he claims he just discovered the infringement last month.
There are several problems with this complaint. First, Rogers makes no assertion that either Payment Printer, a Florida Corporation, or Cardi, a Florida resident, are subject to personal jurisdiction in Massachusetts. Additionally, it appears from the complaint that, while a copyright registration has been obtained for “Reasons for Return,” registration in “Check Writer User Guide is merely pending, meaning that the complaint with respect to this work is premature. Moreover, a review of the Copyright Office indicates that the copyright in the one work that has actually issued was not registered in time to permit Rogers to claim statutory damages under 17 U.S.C. 412, leaving Rogers only with actual damages as a potential remedy. Judge Saris is assigned to the case.
The Supreme Court has resolved a Circuit split and held that willfulness is not a prerequisite to disgorgement of defendant’s profits in a trademark infringement case. Willfulness remains a factor to consider, but is no longer a threshold to obtaining profits. You can read my summary of the case on the L&A website here.
This was not the Supreme Court’s only recent foray into the IP world. Earlier this week, the Supreme Court determined that the decision of the Patent Office on the timeliness of a petition for inter partes review is not appealable. An IPR petition must be filed within one year of the service of a complaint alleging patent infringement of the subject patent. Should the PTO accept a petition that the patent holder considers to have been untimely, the patent holder has no recourse through the courts as a result of this ruling. My colleagues Craig Smith and Peter Evangelatos provide more detail here.
Also, a reminder that we at Lando & Anastasi are tracking the impact of COVID on the USPTO, prominent foreign patent offices, and the Copyright Office, as well as the impact on civil litigation in the Federal Courts of New England and the state courts of Massachusetts. You can find this information, updated as new information becomes available, here.
Solta sued Lumenis, Inc. and its Israeli-based corporate parent Lumenis Ltd. In 2019, accusing them of infringing two patents related to improvements in controlled cooling of skin and other tissue being treated by lasers. Lumenis Ltd. Moved to dismiss for lack of personal jurisdiction, asserting that the U.S. entity was responsible for all efforts to market and sell the accused products in the United States (and in Massachusetts). Judge Casper applied the prima facie standard and taking all factual allegations in the complaint and uncontroverted factual allegations made by the defendant as true, as is required where the motion is decided without an evidentiary hearing. She noted that Lumenis Ltd. Manufactures the accused products in Israel and then sells the products through wholly-owned subsidiaries in the United States and other countries. Lumenis, Inc., one such wholly-owned subsidiary, has sold accused products and directed marketing activity into Massachusetts. The accused products were identified as Lumenis Ltd. Products in an SEC filing, and Lumenis Ltd. Is the entity that applied for FDA approval to market and sell in the United States. While noting that ownership of a Massachusetts subsidiary is not, standing alone, sufficient to establish personal jurisdiction, here the two Lumenis entities are both transacting business for the purposes of satisfying the long-arm statute of the Commonwealth. Lumenis Ltd’s’ SEC filing indicated that it provides training and certification of field service engineers for the accused products and operates communications centers for each regional sales and marketing areas. This collaboration with Lumenis, Inc. is sufficient to establish personal jurisdiction over Lumenis Ltd. For complaints associated with the sales of these products.