Debt collection company FH Cann filed an additional lawsuit in which a debtor, Carlos McKinney, has claimed copyright infringement for Cann’s use of his name in its collection efforts. McKinney filed a notice of dispute that demanded a number of things from Cann that the complaint contends are not required by law, such as additional documentation and verification under oath that the claims are valid. This demand included language stating that Cann’s failure to provide the demanded information within 30 days would result in a waiver of Cann’s right to collect the debt, which Cann contends is not valid. The demand includes a statement that McKinney declares “under penalty of perjury without the United States that the above statements are the truth…” (emphasis added). Finally, the demand included an invoice for $500,000 for the alleged breach of McKinney’s common law copyright in his name., and to authorize McKinney to file a UCC-1 Financing Statement asserting a lien for that amount on Cann’s assets. This document purported to be notarized in Georgia, but Cann asserts that the alleged notary is not licensed in Georgia and that the notarization is fraudulent. Cann seeks declaratory and injunctive relief as well as damages for tortious interference with business relations.
While it seems unlikely for two such claims to arise in such a short period of time, Cann asserts that the documents provided by McKinney evidence a “number of fraudulent theories circulating on the internet and by various militia and ‘sovereign nation’ groups” to avoid debt collection and defraud creditors. This case is before Judge Saylor.
Onyx, which sells auto parts and accessories under its “iD®” mark, accuses ID Parts of copying this mark in connection with sales of auto parts to benefit from the name recognition and good will associated with the mark and to mislead consumers into believing that ID Parts’ website, www.idparts.com, is associated with Onyx. Onyx, a pure online retailer, began selling through its www.CARiD.com website in 2008. Since then, Onyx says it’s iD® line has grown into one of the largest online retailers of automotive products in the country, receiving over 10 million visitors monthly. Onyx holds registrations for several stylized “iD” marks as well as “CARiD,” “BOATiD,” “CAMPERiD,” “MOTORCYCLEiD,” “POWERSPORTSiD,” “RACINGiD,” “RECREATIONiD,” “STREETiD,” “TOOLSiD” and “TRUCKiD.” Onyx asserts that ID Parts took on that name at the end of 2009, with full knowledge of Onyx’s rights in the “iD” marks, and in 2014 sought registration of a stylized mark consisting of the term “id” contained within a circle. That registration was refused due to a likelihood of confusion with Onyx’s “iD” mark, and ultimately the application was abandoned. Despite this, and despite receiving two cease and desist letters from Onyx, ID Parts has continued using the mark and domain name. Onyx asserts trademark infringement, unfair competition and false designation of origin under the Lanham Act and Massachusetts common law, dilution, cybersquatting, and deceptive trade practices under M.G.L. c. 93(a) § 2. Judge Zobel has the case.
FH Cann, a debt collection company, sought to collect defendant and North Carolina resident Troy Moorman’s past due student loan debt. In response, Moorman mailed a packet of documents to FH Cann that included an affidavit claiming that he had a “common law copyright” and had trademarked his name and another purporting to establish a security interest in all of FH Cann’s assets, which FH Cann says included a forged signature on behalf of FH Cann. Moorman subsequently sent an invoice to FH Cann seeking $500,000 for Cann’s use of Moorman’s name. He then filed a UCC-1 statement with the Secretary of the Commonwealth, purporting to place a $500,000 lien on the home of co-plaintiffs Sherri and Frank Cann, owners of FH Cann. Cann seeks declaratory judgment that Moorman has no copyright or trademark rights in his name, that the purported contract, lien and UCC statement are not valid, injunctive relief preventing continuations of Moorman’s behavior, a decree granting the Cann’s quiet title in the house on which Moorman purports to have a lien, and actual and punitive damages resulting from the lien under a conversion or trespass to chattel theory. Judge Woodlock has the pleasure of unwinding this case.
Yogasleep sells white noise sound machines under a variety of registered trademarks, including Yogasleep®, Dohm®, Dohm Elite®, Hushh®, Rohm® and Whish® accuses 1st Avenue of trademark infringement, unfair competition and false designation of origin in connection with 1st Avenue’s sales of Yogasleep products through online commerce sites such as Amazon. The complaint characterizes the accused products as being “non-genuine, potentially stolen or counterfeit,” and asserts that advertising such products as “new” deceives customers. Because 1st Avenue is not a licensed retailer and it is unclear how it obtains Yogasleep products, Yogasleep’s warranty may not apply to 1st Avenue-sold products. Yogasleep further points to a negative review on Amazon that cited 1st Avenue’s lack of customer service as evidence of harm to Yogasleep’s good will. Judge Wolf has the case.
Bosch makes fuel injectors and related car parts and sells them through a network of authorized distributers and authorized internet dealers. The distributers are permitted to sell only to the authorized Internet dealers, who can only sell to end-users through designated websites. The authorized resellers are further authorized to provide aftermarket service and warranties for Bosch products, such as maintenance, diagnostic and repair services. Bosch asserts that Lincoln Diesel sells both new and remanufactured parts that it identifies as OEM Bosch Parts, but that Lincoln Diesel is not an authorized reseller of Bosch. The complaint asserts that Lincoln Diesel obtains Bosch products as used products that have already been sold, at liquidation, or through importation from other regions of the world, and obtained or attempted to obtain products from authorized Bosch distributors or resellers in violation of the authorized parties’ agreements with Bosch. Bosch asserts trademark infringement, tortious interference with contractual relations, and unfair competition under the laws of multiple states. The case is before Judge Zobel.
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.
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.