FH Cann & Associates, Inc. v. McKinney (D. Mass. 20-cv-11180).

Debt collection company FH Cann filed an additional lawsuit in which a debtor, Carlos McKinney, has claimed copyright infringement for Cann’s use of his name in its collection efforts.  McKinney filed a notice of dispute that demanded a number of things from Cann that the complaint contends are not required by law, such as additional documentation and verification under oath that the claims are valid.  This demand included language stating that Cann’s failure to provide the demanded information within 30 days would result in a waiver of Cann’s right to collect the debt, which Cann contends is not valid.  The demand includes a statement that McKinney declares “under penalty of perjury without the United States that the above statements are the truth…” (emphasis added).  Finally, the demand included an invoice for $500,000 for the alleged breach of McKinney’s common law copyright in his name., and to authorize McKinney to file a UCC-1 Financing Statement asserting a lien for that amount on Cann’s assets.  This document purported to be notarized in Georgia, but Cann asserts that the alleged notary is not licensed in Georgia and that the notarization is fraudulent.  Cann seeks declaratory and injunctive relief as well as damages for tortious interference with business relations.

While it seems unlikely for two such claims to arise in such a short period of time, Cann asserts that the documents provided by McKinney evidence a “number of fraudulent theories circulating on the internet and by various militia and ‘sovereign nation’ groups” to avoid debt collection and defraud creditors.  This case is before Judge Saylor.

Intellectual Property Development, Inc. v. Boise Cascade Engineered Wood Products et al. (D. Mass. 19-cv-10228).

Intellectual Property Development (“IPD”) sued Warren Trask Company, Inc., National Lumber Co. and others in state court.  After the case was removed to Federal court, Judge Gorton referred all pretrial matters to Magistrate Judge Boal.  Both defendants asserted counterclaims seeking declaratory judgment of non-infringement and invalidity of certain patents, and National Lumber asserted state law claims against and Glenn Robbell, IDP’s CEO and the sole inventor and apparent owner of the two patents.  In December, IPD’s and Robbell’s attorney moved to withdraw from representation, citing breakdown of communications, fundamental disagreements over the handling of the litigation, and failure of the plaintiffs to pay for legal services.  This motion was granted in January.  Trask and National Lumber each then moved for sanctions and dismissal, citing the plaintiffs’ continuous failures to engage in discovery, to provide a list of claim terms to be construed or file a claim construction brief, and failure to participate in conferences regarding claim construction.  The motions also noted that plaintiffs had failed to obtain new counsel, and that IDP, being a corporation, could not represent itself pro se.  Judge Boal recommended dismissing IDP’s claims and entering default judgment against IDP, noting that the corporation had been given four months to find new counsel and had been warned of the consequences of failure to so do.  She recommended denial of the motion with respect to Robbell, who (as an individual) can represent himself pro se, and declined to recommend other sanctions against Robbell.

JT IP Holdings, LLC et al. v. Florence et al. (20-cv-10433).

JT IP and its member and manager, Jeffery Eldredge, filed suit against FloPack, LLC and its members and managers Thomas Florence and his daughter, Kimberly Perry. According to the complaint, Florence approached Eldredge in 2016 about going into business together. The two subsequently formed JT IP Holdings, with Florence’s contribution to the company to include the development of a new product, as well as to set up the business, which Eldredge contends Florence failed to do. In the summer of 2019, Florence was issued U.S. Patent No. 10,364,563 entitled “Runoff Water Management System.” Eldredge asserts that this patent was the result of his working with Florence to update and improve upon a previous Florence patent to a similar system. He says that he relied upon Florence’s assertion that he need not be named an inventor, and that the ‘563 patent was assigned to JT IP, protecting his rights. Eldredge asserts that Florence has hinder their ability to obtain necessary additional funding, and subsequently purported to assign the ‘563 patent to new entity, FloPack, LLC, that was set up in the name of Kimberly Perry, in violation of the operating agreement of JT IP. Eldredge brings claims for correction of inventorship. violation of the Lanham Act in misrepresenting ownership of the ‘563 patent, infringement of the ‘563 patent, declaratory judgment that the assignment of the ‘563 patent to FloPack is null and void, conversion, breach of fiduciary duty, unjust enrichment, fraud and misrepresentation, tortious interference with a contract and with prospective economic advantage, and violation of 93A.

Holistic Technologies, LLC v. Lumina Group Inc. (19-cv-11677).

Holistic Technologies filed suit against Lumina Group, seeking a declaration that it does not infringe Lumina’s TENDLITE product trade dress. The TENDLITE is a therapy device that uses red light to treat skin conditions such as wrinkles, scars, and the like. Holistic markets its own red light therapy device, the Quantum Rejuvenation device.

In late July, Holistic received a cease-and-desist letter from Quantum, asserting trade dress infringement and asserting that Holistic had copied Lumina’s advertising and packaging. Holistic denies copying the advertising and packaging, and asserts that the product design is generic, has not acquired distinctiveness, and thus unprotectible. Holistic further alleges that Lumina had the Quantum Rejuvenation product removed from Amazon and Google by asserting infringement of Lumina’s trademark in bad faith – Holistic used the mark to reference the Lumina product in a comparative advertisement, which would not constitute infringement. Lumina further posted on Holistic’s Amazon page that Holistic was running inaccurate and illegal advertisements, and is alleged to have posted negative reviews of the Holistic product. Finally, Holistic asserts that Lumina falsely claims that the TENDLITE is patented. In addition to the declaratory judgment claim, Holistic brings affirmative claims of unfair competition, false patent marking and violation of 93A. Holistic seeks an award of Lumina’s profits for the unfair competition claim, as well as its damages and attorneys’ fees. Judge Talwani has the case.

New England Wheels, Inc. v. Delphini, LLC (19-cv-11622).

New England Wheels (“NEW”), a Billerica business that (among other things) retrofits vehicles for disabled drivers and passengers, seeks a declaration that it does not infringe two patents directed to retrofitting sliding doors in vans. Delphini, whom NEW asserts to be a non-practicing entity, first asserted these patents by sending a cease and desist letter in June 2019, accusing NEW’s Ford Transit, Ram Promaster, and Mercedes-Benz Sprinter retrofitted vans of infringing the two patents, but identifying no specific claims alleged to be infringed and providing no infringement analysis. As NEW had already moved away from retrofitting van doors, agreed to remove the portions of their website showing such and to cease and desist with so doing moving forward. Undeterred, Delphini responded by demanding a full accounting for past work, which NEW asserts is prohibited due to lack of notice that would preclude past damages. NEW noted that it had been retrofitting van doors since 2007, well before the patents were filed. NEW further noted that Delphini had sent cease and desist letters to other entities, using images from NEW’s website of both accused and un-accused products as proof of infringement, and demanded Delphini stop with this practice. When Delphini again responded with a demand for an accounting dating to the publication date of the earlier patent, NEW filed the instant declaratory judgment action, seeking a declaration that the two patents are invalid and not infringed and alleging tortious interference with advantageous business relations based on Delphini’s having sent cease and desist letters to customers and potential customers of NEW that included photographs of a new NEW product, the “Frontrunner” bus, suggesting that the bus infringes, despite Delphini having acknowledged to NEW that the Frontrunner does not infringe.

ProStairs Fitness. LLC et al. v. Brown et al. (19-cv-11604).

ProStairs Fitness and Richard Mullen sued Collis Brown and Coliseum, LLC over a fitness product made up of a set of stairs and a slide, permitting users to work out by climbing the stairs while eliminating the stress of impact that would result from descending the stairs. According to the complaint, Mullen provided more than a quarter of a million dollars in funding to the development and production of the product, with the expectation that he would market the product with Brown and Coliseum. bottom-image-prostairs

When Brown declined to proceed, Mullen began marketing the product through ProStairs Fitness. In response to Brown’s subsequent threat to sue Mullen for infringing U.S. Patent No. 9,114,271, on which Brown is the sole named inventor, Mullen filed the instant complaint, seeking a declaration that the ProStairs exercise apparatus does not infringe the ‘271 patent.

Abiomed, Inc. v. Maquet Cardiovascular, LLC (16-cv-10914).

Judge Saylor denied Abiomed’s motion for a protective order prohibiting discovery of foreign sales of products whose components were exported from the United States and assembled abroad. Abiomed had sought to preclude this information because Maquet had not specifically pled 35 U.S.C. § 271(f) as a basis for infringement. Noting that the limits on discovery set forth in Rule 26 may encompass matters that could bear on any issue that “is or may be in the case,” Judge Saylor determined that discovery as to worldwide sales is potentially relevant to damages. He stated that the order concerns only discoverability, and that he was taking no position on whether a claim under 271(f) was properly pled or on whether the resulting discovery would ultimately be admissible at trial. Judge Saylor further denied Abiomed’s motion to compel discovery from the Getinge Group, a consortium of companies that includes Maquet and that is owned by Getinge AB, a Swedish company. Getinge AB had initially been named as a defendant in Abiomed’s declaratory judgment complaint, but had successfully moved to dismiss because it’s lack of ownership of the subject patents meant that it lacked standing to defend such claims. Abiomed then had sought information and documents related to patent transactions, assessments, valuations and licenses held by Getinge Group entities located outside of the United States. Judge Saylor determined that the documents were not in the possession, custody or control of Maquet, because the fact that Maquet is a subsidiary of and shares a legal services department with Getinge was insufficient to establish that Maquet is an alter ego of Getinge.

Kaspersky Lab, Inc. v. Greater Boston Authentication Solutions, LLC (19-cv-10735).

Kaspersky filed suit against GBAS seeking a declaration that it does not infringe three GBAS patents related to remote authorization to unlock electronic data. In October of last year, GBAS had filed suit accusing Kaspersky of infringing the three patents; GBAS never, however, actually served the complaint, and instead dismissed it without prejudice at the 90-day service date. The patents have since expired. Kaspersky notes that GBAS acquired the three patents sometime in 2017, and has filed twelve complaints asserting these patents, with all of them voluntarily dismissed before any accused infringers filed a responsive pleading. Kaspersky suggests that GBAS has sought nuisance-level damages, a classic patent troll tactic. Kaspersky further asserts that GBAS knows that Kaspersky does not infringe because arguments made during prosecution foreclose a claim construction that would cover Kaspersky’s software. To that end, Kaspersky seeks a declaration of non-infringement and a finding that the case is exceptional under 35 U.S.C. § 285, entitling them to attorneys’ fees.

Earle et al. v. Standard Process, Inc. (19-cv-10613).

Daniel Earle and his Amazon reseller company, The Antitrend, filed a lawsuit seeking a declaration that they do not infringe a number of Standard Process’ trademarks or otherwise unfairly compete with Standard Process. The Antitrend is in the business of reselling branded goods bought on the open market through an Amazon storefront. This district has seen a number of suits brought by trademark holders against Amazon resellers, notably ecobee’s recent series of suits. In this case, Earle claims that he obtains Standard Process goods legally and without restriction. He further asserts that his site makes clear that it is not affiliated with any of the manufacturers whose products are sold thereon, and that no manufacturer’s guarantees or warranties will apply to goods purchased from his site. Despite this, he has received a number of cease and desist letters from Standard Process, and that Standard Process filed (but did not serve) a complaint against his site in the Western District of Wisconsin last month. By this complaint, Earle challenges the claims in that complaint, asserting that the first sale doctrine prohibits these claims. Earle notes that Standard Process has already lost on the first sale doctrine in a prior litigation in the Eastern District of Wisconsin (although I would note that Banks prevailed at summary judgment with respect to a website that included an express disclaimer of affiliation, but denied summary judgment with respect to solicitations that included pictures of Standard’s products and lacked a disclaimer of affiliation). Earle also asserts that Standard Process’ resale policy does not form an enforceable contract, particularly where Earle bought the products on the open market, another issue that Standard Process had previously litigated and lost on (in a 2008 case, Standard’s unilateral resale policy was found not to constitute a valid contract, because it imposed no obligations on Standard; it is unclear from the complaint in this case whether Standard has since changed the policy). Earle’s complaint does not provide a reason why this case should be heard in Massachusetts instead of the first-filed district, so it will be interesting to see whether this case moves forward in the Commonwealth.

Larson v. Perry et al. (19-cv-10203).

Sonya Larson filed suit against Dawn Dorland Perry, Los Angeles-based Cohen Business Law Group, and attorney Jeffrey A. Cohen, seeking a declaration that a short story published by Larson does not infringe the copyright of a letter posted by Dorland Perry on Facebook. Dorland Perry donated a kidney to an anonymous recipient in 2015, and subsequently wrote a letter to the unknown recipient outlining the reasons for her donation and expressing interest in meeting the recipient. She posted the letter to a private forum on Facebook that included Larson. Larson, who acknowledges having had a nominal social relationship with Dorland Perry in the past, asserts she was included in the forum without her permission or authority and that she had seen Dorland Perry’s letter. Three years later, Dorland Perry registered her copyright in the letter. Larson authored a short story about a working class Chinese-American woman who receives a kidney from a wealthy white woman, with a primary goal of depicting a “person of color resisting a white savior narrative,” in which the recipient receives a letter from the previously-anonymous donor. Larson states that in preparing this portion of her story, she researched and viewed many websites and similar letters from organ donors that were widely available on the internet. After a public reading of a portion of her story was reported to Dorland Perry, Larson alleges that Dorland Perry believed the story to be about her and became very upset. In subsequent edits, Larson made changes to the story to distinguish the fictional letter from Dorland Perry’s actual letter. The story was subsequently published in audio book format and accepted for printed publication, at which point Dorland Perry is alleged to have instituted a smear campaign against Larson and repeatedly accused her of plagiarism to Larson’s employer, members of her writing group, various writing organizations, and the Boston Globe newspaper. Larson was moved to file the action when Attorney Cohen, representing Dorland Perry, sent a demand to her publisher that they case and desist from further printings of the story, and the acceptance for publication was rescinded. Larson’s claims against Cohen and his firm are based in part on their threat of statutory damages and attorney’s fees against her publisher, which Larson asserts Cohen knew or should have known were not legally viable, as registration occurred more than three years after Dorland Perry’s letter was first published. Larson also asserts tortious interference with contractual relationships, defamation, and violation of Ch. 93A.