Sound United, LLC d/b/a Definitive Technology v. Amazon.com seller audio video sales guy (19-cv-12541).

In December, home theater maker Sound United sued Amazon sellers Amazing Deals Online, and a third, unknown seller identified as “Amazon.com seller audio video sales guy” (“AVSG”), accusing each of infringing Sound United trademarks for such products, including DENON, POLK AUDIO, MARANTZ, DEFINITIVE TECHNOLOGY, HEOS, BOSTON ACOUSTICS, and CLASSE while not being authorized resellers of such products. The resellers are further accused of suggesting that a manufacturer’s warranty. Sound United does not assert that the marks are being placed on non-Sound United products; instead, Sound United asserts that the defendants obtained Sound United product from authorized resellers in knowing violation of the resellers’ agreements with Sound United. Sound United asserted trademark infringement, tortious interference with contractual relations, and violation of Ch. 93A.

Sound United, having been unable to find a physical mailing address or business location for the unknown seller AVSG, sought permission to serve that entity using its Amazon.com electronic mail service. Magistrate Judge Cabell granted the motion, noting that under Massachusetts law, when a process servers reports back that after a diligent search he or she cannot find the defendant, the defendant’s last and usual address, or an agent upon whom process may be served, the court may issue an order of notice. He determined that, under the circumstances, service via Amazon was reasonably calculated to prove requisite notice.

Welch Foods, Inc. v. Healthy Food Brands LLC (119-cv-12556).

Welch Foods, a cooperative corporation owned by more than 750 farmer families, filed suit against its former licensee Healthy Food Brands (“HFB”), accusing it of violating its contract with Welch and of trademark infringement in connection with HFB’s continued marketing and sale of licensed products post-termination. Welch owns a number of federal trademark registrations to marks that include the term “WELCH’S” for a variety of food products and services. In 2014, Welch and HFB entered into a license agreement under which HFB would develop, manufacture and sell products such as dried and freeze-dried fruits and trail mixes under the WELCH’S BRAND. The license granted exclusivity in this area. The agreement provided for the payment of royalties based on sales, with certain minimum royalties established, and also sets forth reporting requirements on HFB sales. Welch asserts that HFB has missed a number of royalty payments and has never provided the required sales information, with the purpose of hiding the actual level of sales. After providing written notice of these breaches and allowing the passage of the required time to cure, Welch terminated the agreement in June, 2019. While the agreement requires the return or destruction of all WELCH’S-branded products upon termination, Welch asserts that HFB has instead continued to sell these products. Welch asserts breach of contract, breach of the covenant of good faith and fair dealing that is inherently applied to Massachusetts contracts, quantum meruit, unjust enrichment, trademark infringement, false association, unfair competition and dilution under the Lanham Act, and violation of Mass. G.L. c. 93A. Judge Stearns has been assigned the case.

Sensitech, Inc. v. Grupo OFAS, SA de CV et al. (19-cv-12554).

Sensitech, a maker of monitoring devices for monitoring and maintaining manufacturing and storage conditions, sued its former Mexican distributor Grupo, accusing Grupo OFAS of trademark infringement and breach of contract. The agreement by which OFAS would distribute certain Sensitech products in Mexico terminated on November 30, 2015; at that point, OFAS was obliged to return all Sensitech IP and make all payments due. Sensitech asserts that OFAS never made the required payments and continues to use Sensitech trademarks and hold itself out as a licensed Sensitech distributor, and was using shell companies to try to obtain additional Sensitech products. Sensitech alleges a 93A violation in addition to the Lanham Act and contract causes of action. The case is before Judge Burroughs.

Epstein v. Bruce Furniture, Inc. (19-cv-30050).

John Epstein had sued Bruce Furniture for breach of contract and copyright infringement relating to an advertisement campaign that Epstein alleges he prepared for Bruce Furniture. Judge Mastroianni denied Bruce Furniture’s motion to dismiss, finding the complaint made clear that it was the specific content, arrangement, and phraseology of the advertisements, and not the ideas contained therein (such as interest-free financing), that was being asserted, and that such information is plausibly within the realm of copyright protection. He further found that the merger doctrine and the “scenes a faire” doctrine did not negate the substantial similarity alleged in the complaint.

Timmins Software Corporation d/b/a Mitrend v. EMC Corporation d/b/a Dell EMC et al. (19-cv-12053).

Mitrend, a Marlborough company that provides software and services relating to datacenter infrastructure assessment and performance, accuses EMC and Dell of copyright infringement, violation of the Digital Millenium Copyright Act, unjust enrichment, breach of contract, and unfair competition. Mitrend contends that EMC, a wholly-owned Dell subsidiary, began using Mitrend’s analysis service in 2006 under a master services agreement and a number of statements of work, using EMC software for data collection. Mitrend realized that the data collection process could be improved upon, and independently conceived of an automated and accelerated process for data collection that substantially reduced collection times. Mitrend contends that the new software was adopted throughout EMC and became the company’s primary data collection method. Mitrend’s relationship with EMC rapidly grew to several million dollars per year, and EMC did not develop its own competing software. Under the statement of work dealing with this, Mitrend’s software was deemed to remain Mitrend’s property, and all derivative works would belong to Mitrend. Further, a separate software license agreement prohibited reverse engineering of the software by EMC, as well as prohibiting removal of copyright notices. These terms were carried forward in a 2015 agreement between the businesses. In 2017, however, after EMC was acquired by Dell, EMC demanded changes to the license that would include transfer of ownership of the software IP to EMC/Dell. Mitrend refused, and provided notice of termination effective March 2, 2017, although at EMC’s request the parties subsequently agreed to extend the termination date to November 30, 2017. Shortly thereafter, EMC announced the launch of its own competing product. Mitrend contends that EMC sought the extension to develop and deploy its competing software, which it later discovered to be using the same scripts as the Mitrend product, which it alleges EMC copied. The case is assigned to Judge Talwani.

Chatham v. Canterbury Ventures, LLC (17-cv-11473).

Ex-Patriot Matt Chatham and his wife sued their former builder Daniel Lewis and his company, Canterbury Ventures in 2017, accusing Lewis of seeking to sell a house built using Chatham’s copyrighted custom architectural plans to a third party after failing to complete construction for the Chathams and then unilaterally terminating their agreement. Prior to the close of discovery, the Defendants moved for summary judgment on the copyright, breach of contract, and breach of the implied covenant of good faith and fair dealing claims, and further that specific performance was not available. The motion was argued before Magistrate Judge Cabell, who yesterday recommended denial the Defendants’ motion in its entirety. Defendants had argued that the copyright claim should fail because Chatham never reserved his copyrights when giving the plans to Lewis, and therefore could no longer claim copyright protection. Judge Cabell, noting that copyright vests at the time of creation, found this argument to have no legal consequences, because silence does not affect the validity of an existing copyright. He found that the First Sale Doctrine does not apply, because while the Chathams may have provided a copy of the plans and authorized the use to build the Chatham’s home, they did not sell the copyrighted article. Finally he determined that, while the Chathams’ Purchase and Sale Agreement licensed Canterbury to use the plans to construct the house, there was a factual dispute as to whether the scope of the license permitted construction of the house for sale to anyone other than the Chathams. On the contract issue, Judge Cabell determined that there was a factual dispute as to whether the P&S Agreement terminated as of the last closing date identified in the Agreement or whether there was an oral agreement to extend the Agreement to allow the home to be completed and sold to the Chathams. He noted that correspondence from counsel for the Defendants following the purported termination stating that “Canterbury continues to perform construction on the Property in good faith and in accordance with the P&S” and the fact that Canterbury continued working on the house in consultation with the Chathams following the purported termination date provided “strong if not dispositive evidence” that the parties had agreed to extend. Finally, he denied the motion with respect to the covenant of good faith and fair dealing and specific performance as they were reliant on success in the copyright and contract parts of the motion.

I and others at my firm, along with Paul Mordarski and Jordan Carroll of Morrissey, Hawkins & Lynch, represent the Chathams in this matter, and naturally, we are quite pleased with the result.

Foss v. Spencer Brewery et al. (18-cv-40125).

In 2018, Cynthia Foss, who does graphic design work as Hunter Foss Design filed a pro se complaint in state court against Spencer Brewery, St. Joseph Abbey, Ruggles Media, Northeastern University, Cup of Julie Show, and Big Eastern Exposition (known as the “Big E”), accusing each of copyright infringement, tortious interference with business relations, defamation and violation of 93A. Foss contends that she owns the copyright in graphic compositions that were commissioned by Spencer Brewery, located within St. Joseph’s Abbey, of a stained-glass wall found in the Abbey, with the composition to be displayed at Spencer Brewery’s exhibit room at the 2016 Big E. Foss asserted that Spencer modified the composition, displayed it in places not contemplated by the agreement between Foss and Spencer, and by using the composition in an electronic display continuously since 2016. Cup of Julie, a marketing business, and Ruggles Media, which is associated with Northeastern University. After the case was removed to federal court, Judge Hillman dismissed the state law claims with prejudice as against the Big E and Cup of Julie, and Foss filed an amended complaint alleging claims only for copyright infringement against the two. Subsequently, he granted motions to dismiss and for judgment on the pleadings, which Foss did not oppose – while the dismissal motion was pending, she instead filed a motion for default, apparently (and incorrectly) thinking that the motion to dismiss did not abrogate the need to answer the complaint. Following dismissal, the Big E filed a Bill of Costs under Fed. R. Civ. P. 54(d) and 28 U.S.C. §1920, seeking $1835 in costs. Noting that he had discretion to refuse to award costs despite the presumption that costs be awarded, Judge Hillman denied request despite Foss having not filed a motion for disallowance, because four of the six categories of costs sought were plainly not recoverable under the statute. He found that the Bill of Costs was thus not filed in good faith, but instead evidenced punitive intent, and denied the bill in total.

Foss has filed two other pro se copyright cases in Massachusetts, one of which was dismissed for failure to timely serve or to timely seek an extension to serve (and which asserted claims that were time-barred, implausible and/or preempted); the second was dismissed for failure to state a claim when Foss failed to oppose the motion to dismiss, but Foss was successful in having the case reopened and is presently seeking a preliminary injunction.