JUUL Labs, Inc. v. Murshed (D. N.H. 20-cv-00868).

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, Ltd. V. Uncoached Corp. (D. Mass. 20-cv-11505).

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, Inc. v. MK Distributors Inc. et al. (D. Mass. 20-cv-10231).

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 LLC v. BeautyMark.International, LLC (D. Me. 20-cv-00284).

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.

Reiffer v. Haywood Kristiansen Group et al. (D. Mass. 20-cv-11471).

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.

Affordable Aerial Photography, Inc. v. Gorman Associates LLC d/b/a Golfliferealestate.com (D. Mass. 20-cv-11405).

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. 

Hanesbrands Inc. et al. v. Keds, LLC et al. (D. Mass. 20-cv-11354).

Hanesbrands (“Hanes”) accuses Keds and SR Holdings of infringing its “CHAMPION” brand.  Hanes and its predecessors in interest have used the CHAMPION brand for about 100 years on athletic clothing and uniforms, and asserts that it is one of the most recognized sportswear brands in history.  Keds owned rights to the CHAMPION mark for footwear, so when Hanes sought to expand into athletic footwear in 1987, it reached a coexistence agreement with Keds to share the brand with Keds for footwear only and only in the United States, Canada and Puerto Rico.  Under this agreement, Keds could utilize the mark for casual street and play time shoes, while Hanes could use the mark for athletic shoes.  The two businesses did not specifically allocate usage of the marks in other countries, with each free to pursue rights under the mark elsewhere.  Hanes asserts that it obtained superior rights in much of the world, and that it agreed in 2018 to hold off on asserting these rights against Keds in exchange for a promise to renegotiate the 1987 agreement to enhance Hanes’ rights in the US.  Hanes now asserts that Keds has refused to enter into negotiations, in an attempt to preserve the “moratorium” on Hanes’ enforcement abroad for as long as possible and in breach of that agreement.  Hanes asserts actual and anticipatory breach of contract, breach of the implied covenant of good fair and fair dealing and violation of 93A as well as trademark infringement, unfair competition, false association and trademark dilution based on usage of the CHAMPION mark beyond that permitted by the 1987 coexistence agreement and on Keds’ foreign use, which Hanes contends is driven from Keds’ U.S. headquarters

Fitzpatrick v. Kulesh et al. (D. Me. 20-cv-00247).

Brad Timothy Fitzpatrick, who does business as “207 Threads,” sells printed t-shirts and stickers bearing original designs.  He obtained a copyright registration on a recent design of a skull wearing a gas mask, surrounded by “Essential Worker COVID-19 2020.  He accuses Victoryia Kulesh, who does business through an Amazon storefront known as “Tuopedia,” and Katsiaryna Dulevich, who operates the storefront “Katyalike,” of selling stickers that infringe this design.  He asserts that Kulesh and Dulevich, who are each alleged to reside in Minsk, Belarus, consented to personal jurisdiction in Maine, although he does not indicate how.  Fitzpatrick claims the accused stickers are either direct copies or derivative works that infringe, and seeks monetary and injunctive relief.  Judge Woodcock has been assigned the case.

Juul Labs, Inc. v. Nikant 167, Inc. (D. Mass. 20-cv-11304).

Juul accuses Nikant of infringing four design patents related to vaporization cartridges.  Nikant, who allegedly conducts business through a store front called “City Smoke” on Newbury Street, sells ES JUUL COMPATIBLE PODS that are accused of infringement.  This case in one of 29 cases asserting the same patents filed last week.  The case is before Judge Gorton.

Argov v. Simon & Schuster, Inc. et al (D. Mass. 20-cv-11284).

Author Sherry Argov asserts that she had an agreement with the predecessor of Simon & Schuster Digital Sales to publish and sell digital paperback hard-copies of her book Why Men Love Bitches.  The agreement required the payment of royalties on a per-copy basis.  The book was successful, selling more than 2 million copies between 2002 and Simon & Schuster’s 2016 acquisition of the company that had initially published the book.  Argov says that this agreement was violated by Simon & Schuster’s inclusion of the book in its sBook and eLending subscription programs and other all-inclusive bulk marketing platforms, which is expressly prohibited by the agreement and with no royalties paid to Argov.  Argov says that she waived an advanced payment in return for the clause prohibiting the inclusion of the book in bulk subscriptions.  She further asserts that some of the subscription s permit the downloading of her book without t the digital rights management information, allowing the book to be copied and further distributed due to the lack of encryption security.  Argov says that Simon & Schuster refused to withdraw the book from these subscription services and refused to provide an accounting of the number of views or downloads occurred through the subscription services.  Argov asserts copyright infringement, breach of contract and of the implied covenant of good faith and fair dealing, and violation of 93A.  She further seeks a declaration that the agreement with Simon & Schuster is terminated as a result of the breaches of the agreement.  Judge O’Toole has the case.