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.

Chatham v. Canterbury Ventures et al. (17-cv-11473).

Judge Talwani on Thursday adopted Magistrate Judge Cabell’s Report and Recommendation that Canterbury’s motion for summary judgment be denied. Canterbury had moved for summary judgment on Chatham’s copyright, breach of contract, and breach of the covenant of good faith and fair dealing, as well as on the availability of specific performance (effectively, forcing transfer of the property to the Chathams) as a measure of damages. Judge Cabell for a variety of reasons had earlier recommended denial of all elements of Canterbury’s motion for the reasons laid out here. Canterbury subsequently switched counsel, and new counsel objected to Judge Cabell’s recommendation. Judge Talwani, however, rejected Canterbury’s objections. She first determined that Canterbury had not raised a specific objection to the recommendation on the copyright claim be denied, and accordingly adopted Judge Cabell’s recommendation that Canterbury’s attempt to scrap the copyright claim be denied. Judge Talwani further found that a reasonable jury could determine that the purchase and sales agreement had been extended as a result of Canterbury’s representations that it continued to operate in accordance with the agreement following the putative termination, and subsequently threatening to terminate, and ultimately unilaterally terminating the agreement when the Chathams refused to pay additional monies not called for by the agreement. She determined that Canterbury’s argument regarding specific performance – that it was unavailable because the Chathams had never proffered payment – was waived for failure to have raised it before. She further noted that, even if the argument hadn’t been waived, Canterbury could not object to any perceived failure of Chatham to proffer payment because a condition of closing was that Canterbury would have a certificate of occupancy, which Canterbury undisputably did not have a certificate of occupancy, rendering any failure to tender the purchase price moot. Judge Talwani finally noted that Canterbury had not disputed that a failure to attempt, in good faith, to construct the house in the time frame set forth by the agreement could result in a breach of duty of good faith and fair dealings. Accordingly, the report and recommendation of Judge Cabell was upheld in its entirety.

I represent the Chathams, along with Nate Harris and John Anastasi of my firm, Lando & Anastasi, along with Paul Mordarski and Jordan Carroll of Morrissey, Hawkins & Lynch. Needless to say, we are very happy with this decision, and look forward to trial.

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.