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.

Motus, LLC v. Event Solutions International, Inc. d/b/a Motus One (19-cv-11453).

Motus, a mobile workforce and fleet management company headquartered in Boston, sued Event Solutions for infringement of its federally-registered MOTUS trademark. According to the complaint, Event Solutions rebranded itself as “Motus One” in September 2018, and provides similar consulting services for parking, transportation, and the like. Motus alleges that, following a cease and desist letter, Event Solutions agreed to transition away from the “Motus One” name by the end of June, 2019. Despite this, Event Solutions continues to use the “Motus One” name and has indicated an intention to keep it. Motus brings counts for breach of contract (relating to the agreement to cease use of the mark), federal and state trademark infringement and dilution, unfair competition, and injury to business reputation.

Fantastic Sams Franchise Corporation v. Talukders Inc. et al. (19-cv-11369).

Fantastic Sams accuses former Georgia franchisee Talukders of continuing to use Fantastic Sams’ trademarks following termination of the franchise agreement. Talukders became a franchisee in 2017, when it purchased the salon of a Sams franchisee. As part of the franchise agreement, Talkuders would be permitted to only offer, use and sell products and services that were prescribed or approved by Sams. According to the complaint, Fantastic Sams terminated the franchise agreement for cause when it discovered that Talukders was operating “unlicensed medical spas” in the franchised salons. Rather than cease using the registered marks, Sams asserts that Talukders transferred ownership of the salons to co-defendants Paula Gomez and Michelle Scott, who continue to use the “Fantastic Sams” marks or a “Fantastic Salon and Spa” mark that is asserted to be confusingly similar. Fantastic Sams asserts trademark infringement, unfair competition and breach of contract, and seeks specific performance on the contract claim.

Elvan Confectionary Corp. et al. v. Yalim et al. (19-cv-11089).

Elvan, a Turkish candy maker, utilized Turkana Food to import and distribute its products in the United States.  High-Quality-Today-Hazelnut-Wafer.jpeg_350x350In 2017, Elvan formed a U.S. entity, based in Massachusetts, to import and distribute its products through grocery stores, which Turkana did not do. Turkana in response terminated their agreement, claiming that Elvan’s actions were in violation of “exclusive rights” of Turkana under the agreement. Elvan accuses that Turkana, its affiliate Spirit Food Group, and their agent Cengiz Yalim of breaching their distribution agreement and selling Elvan products without authorization. Elvan further asserts that the defendants fraudulently attempted to register Elvan’s trademarks, including JELAXY, COFFEX, TOFFEX and TODAY, with the PTO and asserted the marks against customers who were buying directly from Elvan. Finally, Elvan asserts that the Defendants are obtaining and selling counterfeit Elvan products bearing Elvan’s trademarks. In addition to this complaint, Elvan and Turkana have several cancellation proceedings before the USPTO as each tries to register the same marks.

SiOnyx, LLC et al. v. Hamamatsu Photonics K.K. et al. (15-cv-13488).

The jury returned a verdict in this long-running saga over black silicon technology that SiOnyx disclosed to Hamamtsu under a nondisclosure agreement, finding that Hamamatsu breached the NDA and was unjustly enriched and awarding $1,377,109 in damages for these claims. They rejected Hamamatsu’s statute of limitations and equitable estoppel defenses. They further determined that SiOnyx employee Dr. Carey should be named as a co-inventor on the Hamamatsu patents-in-suit under 35 U.S.C. § 256. Finally, they determined that Hamamatsu willfully infringed SiOnyx’s patent and that the patent is valid, but awarded no damages for the infringement.

Epstein v. Miller Brothers Furniture, Inc. (19-cv-30055).

John Epstein, who engages in advertising for retail furniture stores as Direct Results, sued Miller Furniture Brothers, a Pennsylvania company with a store in Punxsutawney (home of Punxsutawney Phil from Groundhog Day!), accusing them of breach of contract and copyright infringement. Epstein alleges that Miller Brothers contracted with him to create promotional material in 2010, which Miller Brothers could not use without his permission. He says that Miller Brothers used this material without authorization in 2011 and 2012; Epstein objected, and Miller Brothers ultimately compensated him for this use. Epstein alleges that Miller Brothers again improperly utilized this copyrighted promotional material last year. Oddly, the complaint alleges subject matter jurisdiction solely under 28 U.S.C. 1331 and 1338 (federal question and patents/plant variety protection/copyrights/mask works/designs/trademarks/unfair competition) and then seeks joinder of the copyright and breach of contract claims, rather than asserting diversity or supplemental jurisdiction.

SiOnyx, LLC et al. v. Hamamatsu Photonics K.K. et al. (15-cv-13488).

As this case goes to trail, the Court is dealing with the parties’ motions in limine. Hamamatsu moved to preclude testimony from one co-inventor, Dr. Mazur, to corroborate the testimony of a different coinventor. The Court had already found that Dr. Mazur could not prove that he was a coinventor due to a lack of corroborating evidence. Citing the lack of documentary corroboration and the fact that Dr. Mazur is an interested party, Hamamatsu asserted that he could not corroborate the alleged contribution of the other coinventor to the invention, and thus sought to preclude his testimony. Judge Saylor denied the motion, finding that the motion was effectively an untimely motion for summary judgment, and indicated that he (or the jury) would determine whether the evidence at trial, including Dr. Mazur’s testimony, was sufficient to establish inventorship.

He granted Hamamatsu’s motion to preclude SiOnyx from referring to the PTAB’s decision not to institute an inter partes review at trial. Hamamatsu’s request for inter partes review was declined entirely with respect to one of the asserted patents and was partially declined with respect to another patent. Judge Saylor determined that the decision on whether to institute an IPR was not a decision on the merits (and that the decision to partially decline may be a statutory violation under recent case law) and would thus have little probative value, would take considerable time to explain to the jury, and would carry substantial risk of misinterpretation and unfair prejudice.

Judge Saylor further, in response to a request made by SiOnyx at the April 16th status conference, precluded Hamamatsu from arguing that it was excused from meeting its obligations under the NDA at issue due to a prior material breach of the agreement by SiOnyx, finding that Hamamatsu had waived such an argument by failing to raise it in the joint pretrial memorandum. He denied SiOnyx’s motion to preclude Hamamatsu form raising a defense of equitable estoppel. He also overruled Hamamatsu’s objection to deposition testimony from a senior corporate officer regarding the contract, finding that it did not impermissible call for a legal conclusion. Trial on this matter began yesterday.