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.

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.