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

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.

Toddle Inn Franchising, LLC v. KPJ Associates, LLC et al. (D. ME. 18-cv-00293).

Toddle Inn, a franchisor of educational and day care service, sued former franchisee KPJ Associates in 2018, asserting breach of contract, Lanham Act unfair competition and trade secret misappropriation in connection with KPJ’s continuing use of the Toddle Inn marks and materials.  The parties were ordered to arbitration pursuant to the franchise agreement.  On March 31, 2020, following completion of the arbitration process, Judge Levy confirmed the arbitration award and deemed it a final judgment.  A writ of execution to enforce the judgment was entered on May 7, 2020, followed a day later by KPJ’s filing of an emergency motion to quash the writ and asserting that the judgment was not yet final, in that the time to appeal had not yet passed.  Judge Levy granted KPJ’s motion.  He determined that General Order 2020-2, which the Court had issued on March 18th in response to the COVID-19 pandemic and which extended all deadlines in civil cases by thirty days, applied to deadlines for appeals to the First Circuit.  This pushed the deadline for KPJ to appeal from the original April 30, 2020 date to May 30th, making the writ premature.  He rejected Toddle Inn’s contention that any extension of the deadline for appeal must originate from the First Circuit, noting that Fed. R. App. P 4, which governs the time for appeal, expressly permits district courts to extend the deadline.  Further, under that Rule, if a party moves to extend the deadline for appeal within 30 days of its passing and demonstrates excusable neglect or good cause, the deadline can be extended regardless of whether General Order 2020-2 automatically did so.  KPJ orally requested extension at a May 12th videoconference hearing, within 30 days of the initial April 30th deadline, and demonstrated good cause in that the plain wording of the General Order supported KPJ’s belief that the deadline had been extended.   Thus, either way, KPJ’s motion to quash the writ of execution would be granted.

Note – While this blog has thus far focused exclusively on intellectual property in the United States District Court for the District of Massachusetts, I am expanding the scope to cover northern New England (Vermont, New Hampshire and Maine) as well.  The name of the blog will remain the same.

Endobotics, LLC v. Design Standards Corporation et al. (20-cv-10742).

Endobiotics accuses Design Standards Corporation (DSC) and Medrobotics Corporation of infringing U.S. Patent No. 7,147,650, as well as trade secret misappropriation, violation of the Defend Trade Secrets Act, unfair competition, breach of contract, tortious interference, unjust enrichment and conversion.  Endobotics’ predecessor in interest, Cambridge Endoscopic Devices, developed and patented a surgical instrument that improved the manipulative ability of tools affixed to the end of the instrument.  Cambridge Endoscopy contracted with DSC to validate the design and manufacture of the instrument.  Endobotics alleges that this agreement provided that Cambridge Endoscopy would exclusively own all products, inventions and designs arising from this work, and that the agreement included confidentiality and non-disclosure clauses that protected Cambridge Endoscopy’s trade secrets, although Endobotics acknowledges that it does not have a copy of the agreement.  When Cambridge Endoscopy declared bankruptcy, Endobotics acquired the patent as well as Cambridge Endoscopy’s trade secret and know-how related to the instrument.  In 2010, Endobotics executed an NDA with Medrobotics to explore producing the instrument for Medrobotics.  According to the complaint, Medrobotics ultimately declined to enter into an agreement with Endobotics, and instead approached DSC directly to manufacture a competing system that improperly utilized Cambridge Endoscopy’s trade secret information.  Endobotics discovered the Medrobotics system at a 2017 trade show, and further investigation resulted in this lawsuit.  The case is before Judge Saylor.

Larson v. Perry (19-cv-10203).

Judge Talwani denied Defendants Jeffrey A. Cohen and Cohen Business Law Group’s motion for reconsideration of her previous finding that the claims against them could not be dismissed at the pleading stage.  She rejected Cohen’s argument that her prior decision was based on case law that was not controlling; while she agreed that the particular case was not “controlling” but instead was, as a decision of a district judge presiding over a diversity action, merely persuasive authority.  She instead pointed to the controlling decision of the Massachusetts Supreme Judicial Court, which provides for litigation privilege where the communications at issue are made prior to the onset of litigation only where the communications relate to a legal proceeding which is contemplated in good faith and which is under serious consideration.  Judge Talwani also rejected Cohen’s argument that Larson had failed to sufficiently allege bad faith as required under the controlling SJC decision, finding that the issue had not been raised in the Motion to Dismiss and thus could not be brought for the first time in a motion for reconsideration.

Larson v. Perry et al. (19-cv-10203).

Sonya Larson sued Dawn Dorland Perry, seeking a declaratory judgment that a story written by Larson did not infringe Perry’s copyright in a similar story, and sued Perry, her attorney and his law firm for defamation and tortious interference with contractual relationships when Larson’s publisher was threatened with a lawsuit if they continued to publish Larson’s story. Perry’s lawyer, Jeffrey Cohen, and his California firm, Cohen Business Law Group, moved to dismiss for lack of personal jurisdiction, which Judge Talwani denied. She noted that Cohen Law had sent letters to BFF in Cambridge, MA, alleging that Larson’s story plagiarized Perry’s letter and that publication would infringe on Perry’s rights, and threatened statutory damages of up to $150,000 should BFF publish. Larson alleges that this letter knowingly misrepresented both the facts and the law such that it constituted an unfair or deceptive trade practice under Massachusetts law and was designed to interfere with her agreement with BFF. As this behavior was targeted to a Massachusetts company for the purpose of affecting BFF’s business decision. This therefore is sufficient to establish specific personal jurisdiction.

Cohen and his firm also moved for dismissal on the grounds that, as a matter of law, their alleged conduct is shielded by Massachusetts’ litigation privilege. An attorney’s statements in the Commonwealth are absolutely privileged where such statements are made by an attorney engaged in his function as an attorney whether in the institution or conduct of litigation or in conferences and other communications preliminary to litigation. Where the communication is to a prospective defendant, however, the anticipated litigation must be contemplated in good faith, and does not allow a lawyer the freedom to act with impunity. While lawyers cannot be held liable for the contents of their speech, that speech can be used as evidence of misconduct, with the line between the two determined on a case by case basis. In this case, the complaint asserts that the Cohen letter was used to effectuate unlawful ends, rather than looking to establish liability based on the content standing alone, and Judge Talwani determined that the good faith of the Cohen firm could not be determined on the pleadings. Accordingly, she refused to dismiss based on litigation privilege.

Judge Talwani denied Perry’s moved to dismiss on the grounds that defamation was not properly pled and that Larson failed to plead actual malice, a requirement under Massachusetts defamation law when the plaintiff is a limited purpose public figure. The complaint identified instances in which Perry is alleged to have told several writing organizations, Larson’s employer, and a writing organization where Larson sought a fellowship that Larson plagarized her work, providing Perry with enough specificity to mount a defense. Regarding the “limited public figure” issue, Judge Talwani noted that while the issue is one of law, it is inherently fact-specific such that it cannot be determined on the pleadings.

Judge Talwani granted Perry’s motion to dismiss the tortious interference counts. The complaint alleged that, as a result of Perry’s conduct, two publishers decided to pull Larson’s story from their website earlier than call for by the contracts between Larson and the two. Ordinarily, this would be sufficient to survive a motion to dismiss. Here, however, the two contracts were included as exhibits to the complaint and could thus be fairly considered in determining the motion. In reviewing the contracts, neither included the promises alleged in the complaint that the story actually be published or remain on available for any particular length of time.

As a note, Judge Talwani denied Perry’s request for a hearing on her motion, finding that the coronavirus crisis combined with the Court’s determination that it could properly adjudicate the issue on the papers weighed against a hearing.

FabriClear, LLC v. Harvest Direct, LLC (20-cv-10580).

FabriClear, LLC developed a spray for treating bed bug infestations, and reached an agreement with Harvest Direct by which Harvest would advertise and sell the product, which was known as “FabriClear.” FabriClear asserts that, after several years of complying with the agreements with FabriClear, Harvest began re-labelling the product as “X-Out” and failing to pay FabriClear on sales of the same. FabriClear identifies several examples in which the “X-Out” label was simply superimposed directly over the “FabriClear” label. The complaint further alleges that Harvest essentially copied FabriClear’s label, packaging, website and advertisements for X-Out, including an advertisement in which the FabriClear bottle remained in several segments. FabriClear asserts breach of contract, trade secret misappropriation, and false designation of origin, as well as unfair competition. Magistrate Judge Hillman has the case.

(Note – I filed this complaint on behalf of FabriClear. As I always do when reporting on cases in which I and my firm are involved, I blog about the issues presented in the pleadings or orders, and avoid adding any “insider information.”)

Annis et al. v. Shinbone Alley, Inc. et al. (20-cv-10449).

Christopher Annis was engaged by Shinbone Alley to assist with photography for Shinbone’s planned website. Annis’ work included retouching photographs, work as a digital capture technician set styling and lighting, and photography over the course of several sessions. After delaying payment several times, Shinbone ultimately did not pay Annis for his work. The photographs were, however, put up on Shinbone’s website, www.shinbonealley.com, when it went live. Annis, having registered copyright in seventeen of the photographs, demanded Shinbone cease and desist using the photographs, which Shinbone has not done. Annis asserts copyright infringement, breach of contract, breach of the covenant of good faith and fair dealing, promissory estoppel, quantum meruit and unjust enrichment and breach of M.G.L. c. 93A. The complaint further notes that the Massachusetts Attorney General’s office has been given the information to review and that Annis will seek to amend the complaint to add a claim under M.G.L. c. 149 § 150, which relates to requirements for payment of wages, if the Attorney General fails to take action. Judge Young is assigned to the case.

The Art and Creative Materials Institute, Inc. v. Creative Paperclay Company, Inc. (20-cv-10442).

The Art and Creative Materials Institute (“ACMI”) is an association of arts and crafts material manufacturers that provides safety certifications for such materials. It tests materials to ensure that materials that are given the “ACMI Approved Product (AP) Seal” and “ACMI Cautionary Labeling (CL) Seal” are non-toxic and carry appropriate cautionary labels. ACMI obtained a federal registration on the “AP SEAL” mark in 2008. ACMI accuses Creative Paperclay of trademark infringement, counterfeiting, passing off, dilution, breach of contract and unfair competition and violation of 93A in connection with Creative Paperclay’s alleged wrongful use of the ACMI Seals. Creative Paperclay had been a member of ACMI via a Subscription Agreement that governs the terms of membership, including initial and subsequent testing of the materials and payment of annual fees. ACMI asserts that Creative Play was using the AP SEAL mark on products that had not been assessed and approved in a timely fashion and on products that had been tested and decertified.

Foss v. Spencer Brewery (19-cv-40098).

Cynthia Foss sued Spencer Brewery in June 2019, asserting breach of contract and copyright infringement. Judge Hillman granted Spencer’s motion to dismiss on res judicata grounds. Foss had previously sued Spencer Brewery on two separate occasions, asserting the same causes of action. Those cases ended with a judgment on the pleadings in favor of Spencer and dismissal for failure to state a claim on which relief could be granted. Judge Hillman found that each of these constituted a final decision on the merits, resulting in preclusion of the instant lawsuit.