Al Cass makes and sells lubricating oil for musical instruments under the “AL CASS FAST” mark – I fondly remember the distinct smell of their valve oil from my trumpet-playing days in elementary school. The company has been selling this oil for sixty years, after developing the formulation at the request of jazz trumpeter Dizzy Gillespie, and have used the AL CASS FAST mark since the Sixties. For the past thirty years or so, the oil was sold in these bottles, which Al Cass asserts to be its own trade dress. American Way Marketing (AWM) also makes and sells valve oil (including, at least in the past, Al Cass oil) and in early 2018 offered to buy All Cass, which Al Cass declined. Al Cass asserts that while the offer was being made, an AMW affiliate filed a federal trademark application for “AL CASS FAST” for lubricant oil for use with brass or metal musical instruments. AMW expressly abandoned this application in September following a demand to do so by Al Cass, but subsequently filed an application for “SUPERSLICK FAST.” Al Cass says that AMW sells their oil in bottles that are too similar to the Al Cass bottles.
Al Cass further alleges that AMW has told distributors and customers that Al Cass was no longer selling its FAST oil, saying that the Al Cass oil “is currently unavailable and future ETA is unknown.” Al Cass brings counts for federal, state and common law trademark infringement, trade dress infringement, false advertising, under the Lanham Act and state law, and unfair business practices.
Judge Hillman denied Deetz’s emergency motion to quash the deposition of a former Rust-Oleum employee that was noticed after the close of discovery. Rust-Oleum noticed the deposition in an attempt to obtain testimony that could be entered at trial, as the ex-employee now resides outside of the subpoena power of the court. Judge Hillman, noting that the ex-employee was more of a “friendly” witness for Rust-Oleum and that Deetz had discouraged the ex-employee from voluntarily appearing at trial, determined that the deposition was more in the guise of preserving testimony than in collecting discoverable evidence, which makes the deposition permissible despite being noticed past the close of discovery. To allow for meaningful cross-examination, Judge Hillman further ordered that Deetz would be permitted to take two hours of discovery testimony before the preservation testimony would begin.
Dayton Deetz, the sole inventor on a pair of patents relating to magnetic additives for paint, granted a non-exclusive license to Rust-Oleum in 2005. Deetz asserts that Rust-Oleum failed to make the minimum payments under the license in 2006-2010, and stopped making payments altogether on 2010, leading Deetz to terminate the license. Deetz then filed suit, asserting in addition to breach of contract that Rust-Oleum was continuing to use the patented technology and associated know-how that was transferred as a part of the 2005 license. Deetz then moved to disqualify Rust-Oleum’s litigation counsel, saying that his role in negotiating the 2005 license renders him a likely necessary witness, which would leave him unable to serve as counsel at trial. Judge Hillman denied the motion, noting that Deetz had not put forth any evidence beyond conclusory statements that the attorney was actually involved in the negotiations. Further, as it appeared that the negotiations were primarily (if not entirely) between Deetz and a Rust-Oleum employee, both of whom who would be available to testify. Absent some argument (not presented by Deetz) that the attorney held some unique knowledge that the other two could not provide, the attorney’s testimony would not be “necessary,” but would rather likely be cumulative. Accordingly, Deetz did not satisfy the burden of demonstrating that the attorney was likely to be a necessary witness.
Judge Hillman dismissed all counts of James Fischer’s amended complaint with prejudice for failure to state a claim. Fischer, acting pro se, brought claims of false association, false advertising, violation of rights of publicity, unfair competition, and tortious interference with prospective economic advantage in connection with online communications criticizing his theories relating to beekeeping made between the defendants and the Organic Beekeepers Discussion Group and BeeSource Forum. The gist of the complaint is that defendants Dean Stiglitz and Laurie Anne Herboldsheimer fabricated and published negative reviews, which they attributed to Fischer, of their book “The Complete Idiots Guide to Beekeeping” in an attempt to gain attention and notoriety within the beekeeping community for the book – Fischer himself being an oft-published beekeeper. Fischer had previously been allowed to amend his complaint to add additional factual pleadings relating to damages and supporting the elements of his claims, but Judge Hillman found (in fairly summary fashion) that the amended complaint failed to factually assert all of the elements of any of the asserted claims; there was no likelihood that the public would perceive Fischer as sponsoring or endorsing the book, no discussion of Fischer’s commercial activity in anything other than a satirical way, no allegations that the defendants sought to exploit Fischer’s name to exploit its value for advertising or trade purposes, no indication of any actual or prospective actual customer that was lost by Fischer, and with respect to the unfair competition claim, no allegation that Fischer is located in Massachusetts or claims an injury occurring in Massachusetts.