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.