Office supply company W. B. Mason filed a declaratory judgment action against Dairy Queen, seeking the right to continue use of the mark BLIZZARD for paper products and spring water. W. B. Mason registered the marks BLINDING WHITE BLIZZARD 78 COPY PAPER and BLIZZARD BLINDING WHITE COPY PAPER, and sought to register the marks BLIZZARD SPRING WATER and WHO BUT W.B. MASON’S BLIZZARD SPRING WATER; the latter two applications were opposed by Dairy Queen. Settlement negotiations ensued. W. B. Mason asserts that recently, after lulling W. B. Mason to hold off on further action while his client was out of town, Dairy Queen’s attorneys filed suit in Minnesota (18-cv-00693) claiming trademark infringement and dilution. In light of this, W. B. Mason asserts that the “first-to-file” rule should not apply or, alternatively, an exception to the rule should control, and the case should proceed in Massachusetts rather than Minnesota. The case has been assigned to Judge Gorton.
The Federal Courts in Boston and Worcester are closed today in light of the storm. The Springfield court will, however, be open, albeit with limited staffing.
Biotechnology company Glycosyn sued German company Jennewein, accusing it of infringing U.S. Patent 9,453,230 by manufacture and sale and/or importation into the United States of human milk oligosaccharide products produced by engineered E. coli bacterial strain. These products, which are believed to treat or prevent infections in infants, are intended to be added to formula strains to provide their benefits to infants not being breast-fed. Jennewein sought and obtained FDA approval to bring its products, sold under the name “Mum’s Sweet Secret,” into the country in November 2015, while the ‘230 patent was still pending.
Judge Sorokin sua sponte bifurcated Rolling Optic’s inequitable conduct defense from the impending jury trial, noting that submitting it to the jury would require consideration of evidence not relevant to anything else before the jury. Judge Sorokin apparently believes the jury will have more than enough on its hands in dealing with the remaining issues in the case, which involves patents covering micro-optic foils that produce a 3-D holographic image, as he also indicated that, while he would not automatically exclude jurors lacking a certain level of education, he would inquire as to potential jurors’ education and interest in learning about the technology. The bifurcation order is Judge Sorokin’s second sua sponte decision in this case; in January, he sua sponte granted summary judgment of definiteness in favor of Crane Security.
Realtime accuses Adobe of infringing seven Realtime patents relating to compression and decompression of audio and video files. Among the accused products are Adobe Media Encoder products, Adobe Premier Pro products, Adobe Flash products, and Adobe After Effects products. Realtime asserts direct, contributory and induced infringement.
Judge Saris denied in part and granted in part PaperPop’s motion to dismiss copyright claims relating to three-dimensional pop-up cards. PaperPop contended that the card designs consisted largely of unprotectable elements under the merger and/or scènes à faire doctrines. Judge Saris had previously denied the motion with respect to three card designs; she here rejected these arguments with respect to cards depicting a French flower cart and a bouquet of balloons extending from a decorative box to have ample room for interpretation, and that the accused designs were similar enough to merit trial. She determined that a nativity design was a closer question, as such a design is virtually certain to contain elements such as a manger, a Baby Jesus, Mary, Joseph, the three Wise Men, and livestock in a barn; however, there are many different ways to present these elements, and enough similarities existed in the presentations to survive a 12(b)(6) challenge. Judge Saris granted the motion with respect to a Menorah design, finding all of the similar elements to be substantially dictated by the indispensable elements of a menorah and the remaining elements so dissimilar as to preclude a finding of copying of protectable elements. With respect to several cards depicting willow trees or the like, Judge Saris noted that reproduction of natural phenomena such as a tree can enjoy copyright protection, but that proof of copying is difficult, as the alleged copier may well have drawn inspiration from the natural phenomenon itself rather than the copyrighted work. She determined that these cards presented a close call better resolved by the trier of fact, and denied the motion to dismiss as to these designs. Finally, LovePop challenged six promotional videos depicting PaperPop cards being slowly opened to reveal the pop-up design. PaperPop asserted that the cards being opened were its own, and that the videos differed in lighting, camera angle, etc., so as not to be copies of LovePop’s videos. At oral argument, LovePop shifted its argument to derivation, arguing that the similarity of the cards depicted rendered the PaperPop videos unauthorized derivative works. Judge Saris found that this reframing raised issues not adequately briefed, and denied the motion to dismiss without prejudice.
CR Associates sued Selfstorage and Sparefoot, Inc. (and a third party, since voluntarily dismissed), alleging state and federal trademark infringement and unfair competition relating to defendants’ alleged use of CR’s “Cross Road Storage” mark to boost defendants’ Google search results and to indicate, on defendants’ website, that CR’s self-storage facility is unavailable and redirect viewers to other storage sites under contract with the defendants. Judge Sorokin granted Selfstorage’s motion to dismiss for lack of personal jurisdiction, finding that Selfstorage merely licensed use of its “selfstorage.com” domain name to Sparefoot for a licensing fee, which was insufficient to demonstrate purposeful availment of Massachusetts. He granted Sparefoot’s motion to transfer pursuant to a forum selection clause in a contract between CR and Sparefoot executed on February 2, 2017, and denied CR’s emergency motion to amend its complaint as futile, as nothing in the amended complaint limited the allegations to the period prior to the execution of the agreement. Judge Sorokin rejected CR’s argument that the terms of service that included the forum selection clause could not be applied, finding the on-line terms’ notification and affirmative requirement of agreement sufficed to render the term enforceable. He likewise rejected CR’s argument that the requirement person executing the agreement on CR’s behalf lacked authority to bind CR, finding that the person had implied authority to do the acts required to enter into the agreement the company had asked him to enter into, and that the conduct of CR’s principal following the execution of the agreement was consistent with having conferred such authority. The case was transferred to the Western District of Texas.