Crosby Legacy Company, LLC d/b/a Philip Crosby Associates v. TechnipFMC plc (18-cv-10814).

Crosby Legacy offers quality consulting services that employ the teachings of its founder, Philip J. Crosby, a pioneer in the field.  Crosby Legacy consulted for energy company FMC under an agreement executed in 2014 which permitted FMC to utilize the Crosby materials company-wide, including copyrighted works and the use of three Crosby trademarks – Absolutes of Quality Management™, Absolutes of Quality™, and Price of Nonconformance™.  The 2014 Agreement restricted continued use of the Crosby materials should FMC experience a change in control.  FMC subsequently merged with Technip S.A., creating defendant company Technip FMC in January 2017. Pursuant to the change of control provisions, Crosby Legacy sought to negotiate an agreement with the new entity to allow them continued use of the Crosby materials.  TechnipFMC expressed a strong interest in continuing the relationship, and according to Crosby Legacy, a $2.3 million agreement was reached via a string of e-mails in May 2017, needing only to be memorialized and executed.  TechnipFMC dragged its feet on the specific language to be included in the new agreement, and ultimately announced in November 2017 that it was no longer interested in working with Crosby Legacy.  At that point, TechnipFMC had used the Crosby materials for eleven months without paying, in violation of the 2014 Agreement’s change of control language.  Crosby accuses TechnipFMC of breaching the 2014 Agreement and of having formed, and then breached, the 2017 Agreement, and also brings claims of breach of the implied covenant of good faith and fair dealing, fraud, 93A claims, trademark and copyright infringement, and unjust enrichment.  The case is before Judge Wolf.

MacDonald, aka “Tommy Mac” et al. v. WGBH Educational Foundation et al. (18-cv-10773).

Woodworker and former TV host Thomas MacDonald sued Boston public television station WGBH for trademark infringement, false suggestion of connection, false endorsement/sponsorship, unauthorized use of name and picture under state law, misrepresentation, and breach of contract in connection with WGBH continuing to produce and broadcast the show “Rough Cut – Woodworking with Tommy Mac” after not renewing MacDonald’s contract to host the show.  According to the complaint, Mr. MacDonald had a highly successful fine furniture business that had utilized the marks “Tommy Mac” and “rough Cut” for a nine-year period of time when WGBH approached him about hosting a woodworking show on the station.  At that point, MacDonald had been discussed in the media on many occasions, had appeared on Bob Vila’s “Home Again” show, and had established a weekly web-based show, called “The Rough Cut Show,” which had over 2 million page views and hundreds of thousands of followers and established common-law trademark rights in “Tommy Mac” and “Rough Cut.”  His contract to host the WGBH show, titled “Rough Cut: Woodworking with Tommy Mac,” required him to permit WGBH to register the show name as a WGBH-owned trademark and required him to give up his woodworking business to focus exclusively on the show.  The agreement did not, however, convey rights to “Tommy Mac” or “Rough Cut” standing alone; WGBH did, however, register “Rough Cut” without informing MacDonald.  MacDonald hosted the show for seven seasons, at which point his contract was not renewed.  Rather than simply cancelling the show, WGBH hired a new host, Tom McLaughlin, and aired another season, which WGBH referred to as “Season 8” of the show.  WGBH continued using the name “Rough Cut – Woodworking with Tommy Mac,” and continued using MacDonald’s likeness in advertisements and listings.  MacDonald seeks injunctive relief, including a requirement that WGBH air an oral and written statement indicating that MacDonald is no longer associated with the show; cancellation of WGBH’s “Rough Cut” mark, monetary damages and attorney’s fees.

I recall watching some of the shows MacDonald hosted – he created really beautiful furniture, such as this Hepplewhite Sideboard found at his website.

GAL-Hepplewhite_Sideboard_01-150x150

American Chair & Seating Corp. v. Restaurant Seating Corp. et al. (18-cv-10750).

In a sibling rivalry gone wrong, American Chair accuses Restaurant Seating and Stephen DiStasio of copyright and trademark infringement, palming off, and violation of M.G.L. 93A in connection with Restaurant Seating’s alleged use of American Chair’s copyrighted photographs, trademarks, and trade dress to steer business from the former to the latter.  Prior to forming Restaurant Seating, Stephen DiStasio worked for American Chair under the supervision of his brother and American Chair’s President, Michael DiStasio.  Restaurant Seating is accused of using American Chair’s copyrighted photographs on its website, using confusingly similar slogans to those registered by American Chair (e.g., “We build furniture to last the life of your concept” versus American’s registered “Furniture built to last the life of your concept”), and passing off American Chair products as if they were Restaurant Seating’s offerings, including in at least one instance hiring a manufacturer to knock off an American design that had been used to sell to a Salem, MA restaurant.  American Chair seeks temporary, preliminary, and permanent injunctive relief in addition to damages and attorneys fees.  The case is before Judge Woodlock.

Syneron Medical Ltd. v. Multiple Defendants

Syneron, Candela Corporation, and the Massachusetts General Hospital sued a number of different entities in multiple filings in the District of Massachusetts, accusing them of infringing U.S. Patent Nos. 9,095,357 and 9,510,899, each directed to dermatological treatment and tissue reshaping.  The defendants are:

– EndyMed Medical (18-cv-10678);

– Cutera, Emvera Technologies, Illooda, and Rohrer Aesthetics (18-cv-10679);

– InMode MD, Invasix, and Ivasix (18-cv-10680);

– Jeisys Medical and Perigree Medical (18-cv-10681);

– Lumenis and Pollogen (18-cv-10682);

– Lutronic (18-cv-10683); and

– Aesthetics Biomedical, Cartessa Aesthetics, and Sung Hwan E&B Co. d/b/a SHENB Co. (18-cv-10684).

Syneron claims to be the exclusive licensee to the patents for clinical applications, and to market a product, known as Profound, that practices the inventions of the two patents.  The product delivers radio frequency energy through microneedles to the dermis below the skin, causing small regions of damage; the healing process produces collagen that pushes out wrinkles and smooths skin.  Syneron accuses manufacturers, importers and sellers of similar devices of direct, contributory and induced infringement.  Syneron claims personal jurisdiction in Massachusetts exists with respect to at least some of the defendants by way of interactive websites available in(but not necessarily directed specifically to) Massachusetts.  Venue is only generally alleged, however, leaving the viability of Massachusetts as a venue for these cases uncertain.  The cases are currently split among Judges Young, O’Toole, Stearns, Gorton, and Magistrate Judge Kelley.

Rothschild Digital Confirmation LLC v. Fingent Corp. (18-cv-10656).

Rothschild accuses Fingent of infringing U.S. Patent No. 7,456,872 by sales of its “ReachOut Suite,” a field service management software application.  It is not clear why Rothschild, a Texas entity, is suing Fingent, a New York business, in Massachusetts, and it is equally unclear why venue in Massachusetts is appropriate, as the pleadings related to venue do not appear consistent with the TC Heartland line of cases.

Araca Merchandise LP v. Does 1-10 et al. (18-cv-10648).

Araca Merchandise, the authorized seller of merchandise in connection with the U.S. tour of the artist “Pink,” brought suit against unknown sellers of counterfeit merchandise in anticipation of next week’s Pink shows at the TD Garden in Boston.  Araca seeks an injunction barring the sale of unauthorized merchandise bearing the registered PINK trademark.  The case has been assigned to Judge Zobel.

Anuwave LLC v. Sophos, Inc. (18-cv-10655).

Anuwave accuses cybersecurity company Sophos of infringing U.S. Patent No. 8,295,862 by means of its text security services.  The ‘862 patent covers methods of enabling communications via SMS messages that list all services at a terminal station, such as a cell phone, according to meta information found at the terminal station.  Anuwave specifically accuses Sophos’ mobile antitheft service, by which users who have lost their phones can enter a “locate” command and password in order to retrieve location information from the phone.  Anuwave asserts that Sophos directly infringes the method claims at least when performing internal testing; it does not, however, bring contributory or induced infringement claims, leaving the question of the calculation of damages (assuming, of course, that infringement is proven) a bit up in the air.