Baystate Health, Inc. v. Bay State Physical Therapy, PC et al. (20-cv-30042).

Baystate Health accuses Bay State Physical Therapy of willfully infringing its trademarks, and further seeks cancellation of Bay State Physical Therapy’s U.S Registration No. 3,943,252 for “BAY STATE PHYSICAL THERAPY.” In addition to Bay State Physical Therapy, Baystate Health seeks to hold Steven Windwer, Bay State Physical Therapy’s sole officer and director, personally liable. Baystate Health, which runs a number of hospitals and medical practices, asserts that it first began using the BAYSTATE mark in 1976 in association with a wide range of healthcare services, including physical therapy. Baystate Health holds registrations, both state and federal, for various marks that include “BAYSTATE,” including a registration on “BAYSTATE” standing alone. According to the complaint, Bay State Physical Therapy began using the name in August 1995, and Baystate Health first became aware of this use in 2008. At the time, all of Bay State Physical Therapy’s locations were in eastern Massachusetts, which Baystate Health deemed acceptable. In 2010, however, Bay State Physical Therapy applied for a federal registration in which it asserted that, to its knowledge, no one else had the right to use the same or a similar mark in commerce, which Baystate Health asserts was knowingly false. Further, in 2019, BayState Physical Therapy expanded considerably, including into Springfield, Massachusetts, an area Baystate Health operates. Baystate Health asserts common law, state and federal trademark infringement, false designation of origin, violation of M.G.L. c. 93A, and fraud on the PTO.

Given that “Baystate” seems (to me, at least) to be geographically descriptive of Massachusetts, I am curious to see how this plays out for both parties. Bay State Physical Therapy’s registration is to a design mark that incorporates both design elements and colors, and disclaims the wording absent the design, which may be sufficient to overcome the geographical descriptiveness issue (which was not raised in examination). The case, being in the Springfield Division, is before Judge Mastroianni.

Night and Day Furniture, LLC v. Atlantic Furniture, Inc. (18-cv-30104).

After the parties to this patent litigation reached a settlement just before the scheduled Markman hearing, the parties sought to have the case dismissed. Judge Mastroianni granted the motion to dismiss with prejudice, but denied the parties’ request that the court retain jurisdiction and incorporate the settlement agreement into the dismissal order, citing the general policy of the court not to adopt or endorse settlement agreements between private parties.

Moreland a/k/a Ana Cheri et al. v. Malebox, LLC d/b/a Shadow Bar & Lounge et al. (19-cv-30093).

Judge Mastroianni granted Shadow Box owner Brian Goldricks’ motion to dismiss the claims asserted against him in his individual capacity. To survive the motion to dismiss, Moreland was required to make factual allegations that Goldrick was the motive, active conscious force behind the alleged trademark infringement, and (with respect to the state law claims) that he was personally involved in the alleged tortious acts. Judge Mastroianni found that the complaint made only conclusory statements (such as “on information and belief” allegations), which are not, as phrased, factual allegations and are therefore not credited when determining whether the complaint meets the Iqbal/Twombly pleading standards.

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.

Sanderson-MacLeod, Inc. v. Hobbs Medical, Inc. (19-cv-30013).

Judge Mastroianni granted Hobbs’ request for attorney’s fees pursuant to 35 U.S.C. § 285, finding the case to be exceptional. Judge Mastroianni dismissed the complaint for failing to provide sufficient factual detail or legal underpinning to state a claim on which relief could be granted. The complaint, which had already been amended once, failed to specify which products were accused of infringement, and failed to describe how any products infringed the patents, and was dismissed with prejudice. Noting that the pleading standards had been established years before the complaint was filed, and that Hobbs had notified Sanderson-MacLeod prior to filing its motion to dismiss of the legal issues it would present, but Sanderson-MacLeod failed to withdraw the complaint or move to further amend. Judge Mastroianni referred he case to Magistrate Judge Robertson to determine the fee award.

Moreland a/k/a Ana Cheri et al. v. Black Budda Associates, LLC d/b/a The Zone d/b/a Club Zone et al. (19-cv-30091).

Judge Mastroianni granted individual defendant Paul Ramesh’s motion to dismiss, finding the complaint includes no factual assertions that Ramesh personally was the moving, active conscious force behind the alleged trademark infringement or was personally involved in a tortious act, but instead only contained conclusory statements. The complaint asserted that “according to publicly available records and upon information and belief,” Ramesh maintained operational control over the club. Judge Mastroianni noted that, had the complaint specified what publicly available records had been consulted and stated what those records contained, they would likely have risen to factual assertions sufficient to survive a motion to dismiss.

Emrit v. Universal Music Group et al. (19-cv-30147).

In a case before Judge Mastroianni, Ronald Satish Emrit filed a pro se complaint against rapper Rick Ross, his record label Def Jam Group, Universal Music Group (which owns Def Jam), and the estate of Shakir Stewart, the A&R agent who signed Ross to Def Jam, accusing them of copyright infringement in connection with Ross’ song “Billionaire.” Emrit, performs as “Satish Dat Beast,” asserts that the Ross song utilizes the same backing track as his song “Dilemma.” Emrit says that “Dilemma” was distributed by Tunecore and Ditto Music, music distribution services that assist independent artists in selling their music through on-line retailers like iTunes, Tik Tok, Amazon Music and the like. “Billionaire” was released in 2008; the complaint does not allege dates on which “Dilemma” was recorded or released. In addition to the copyright claim, Emrit brings counts for conversion, which seems unlikely as the complaint does not allege that anything physical was taken, and tortious interference with business relations and with contracts, which also seem questionable as no particular business relations or contracts are identified as having been impaired. Further, it is entirely unclear why the complaint was filed in Massachusetts or why personal jurisdiction exists over the defendants – Emrit suggests that he might move to Massachusetts in the near future, but currently resides in Florida, and none of the defendants are alleged to reside in this state.  In addition to damages, Emrit seeks an order mandating that Def Jam and/or Universal sign him to a recording deal.

Emrit is well-known to the federal court system – one federal judge stated that “other courts have taken note of Plaintiff’s extensive and abusive litigation practices” and noted that Emrit has been deemed a vexatious litigant in multiple district courts. Further, Emrit has already sued the same defendants in the Middle District of Florida, the Central District of California, and the Northern District of Iowa, all within the past month.  I would note, however, that while the complaint does have issues with jurisdiction, lacks an express allegation that “Dilemma” pre-dates the accused song, and with the non-copyright counts, the backing tracks of the two songs do strike me as remarkably similar.

Excel Dryer, Inc. v. Penson & Co. LLC (18-cv-30179).

Judge Mastroianni denied the parties’ joint motion to approve their consent judgment and permanent injunction. He noted that the court does not ordinarily adopt or endorse settlement agreements between private parties or retain jurisdiction over such agreements, and that there were no compelling public interest that would justify the court’s continued involvement. He further added that Penson & Co. had agreed to voluntarily cease using the trade dress in dispute, and that Excel would be able to enforce the injunction via a contract claim should Penson resume use.

Epstein v. Miller Brothers Furniture Inc. (19-cv-30082).

John Epstein again sued Miller Brothers Furniture for copyright infringement related to the unauthorized use of promotional material he created for the company. Epstein had filed suit in April, alleging breach of contract in addition to copyright infringement, and Miller Brothers counterclaimed with interference with advantageous business relations and unfair competition claims. Epstein sought to add a second registration by amended complaint, but subsequently withdrew the amended complaint because the second registration had not issued prior to the initial filing of the complaint. This new complaint alleges infringement of both the new registration and the registration that was asserted in the original complaint, meaning the first registration is being asserted in both cases (although joinder of the two cases would resolve that issue). As with the initial case, this case is before Judge Mastroianni.

Hallmark Licensing, LLC et al. v. Northstar Pulp & Paper Company, Inc. et al. (18-cv-30066).

In a case that has some potentially interesting legal questions, Hallmark sued waste management and recycling company Northstar and co-defendant Square Peg Logistics, LLC, for trademark infringement and dilution for the unauthorized sale of actual Hallmark products.  Hallmark owns uncontestable registrations for the HALLMARK mark and the HALLMARK mark & crown design mark.  In 2012, Hallmark entered into an Enterprise Agreement with Northstar by which Northstar would pick up for destruction by recycling Hallmark products that were deemed unfit for sale.  When Hallmark decided to close its Enfield, Connecticut distribution center, it had Northstar pick up millions of cards and other goods bearing the HALLMARK marks for recycling.  Hallmark alleges that, instead of destructively recycling the products as required, Northstar secretly sold 73 truckloads of HALLMARK-branded products to Square Peg, for a fraction of the fair market price, and that Square Peg subsequently sold about a third of the products to third-party distributors.  Hallmark initially discovered the resale of these products by Dickens, Inc., of Long Island, NY.  In litigation against Dickens, Hallmark discovered that the products had come from Square Peg, who, it subsequently sued.  The parties entered into a consent decree in June 2017, enjoining Square Peg from further sales of Hallmark products pending the outcome of the Dickens litigation, and gave Hallmark the right to periodically inspect Square Peg’s warehouse.  After a January inspection revealed further product movement, Hallmark filed the instant suit seeking immediate destruction of the remaining 50 or so truckloads of products in Square Peg’s possession.  In addition to the Lanham Act charges, Hallmark asserts breach of contract against Northstar.  Hallmark seeks destruction of the infringing products, as well as injunctive and monetary relief and attorney’s fees.  The case is in the Springfield division, and is before Springfield native Judge Mastroianni.