Prime Hookah sued several distributors of hookah-related products, accusing them of importing and selling products bearing Prime Hookah’s DUD trademark. The case was originally filed in New Jersey, and included trademark infringement and dilution claims as well as unfair competition claims under state and federal law. The case was transferred to Massachusetts in early 2020, at which point the Defendants moved to dismiss for failure to state a claim. Judge Saylor granted in part and denied in part that motion. He noted that the complaint was poorly drafted with primarily conclusory allegations, and while it asserted that the Defendants sold DUD-labelled products, it did not allege that these products were not genuine DUD (i.e., Prime Hookah-produced) products. The reference to the websites of the Defendants provided no further information, as one was disabled and a second did not display products, and no screenshots of the sites were attached to the complaint. He reluctantly, and “with considerable misgivings,” however, determined that the infringement claims managed to “scrape over the low bar necessary to survive a motion to dismiss.” He dismissed the dilution count, as the complaint did not sufficiently allege facts that would support the DUD mark being famous. He also dismissed the count for importation of goods bearing infringing names or marks as inadequately pled, again pointing to the lack of specific, non-conclusory factual allegations. Finally, the counts against specific individuals were dismissed for failing to allege that they personally took steps in the alleged infringements.
Judge Saylor has now denied Prime Hookah’s motion for a preliminary injunction. He indicates his belief that Prime could have marshalled sufficient evidence to demonstrate a likelihood of success on the merits, but for whatever reason failed to do so. He noted that the Defendants’ suggestion that the registration is invalid for fraud on the PTO was not implausible, even if at present they had not proven that Prime knew about a prior registration for the same mark by another company in the Netherlands. He found that likelihood of confusion had not been demonstrated because Prime had introduced little evidence of what the allegedly infringing marks look like. Prime’s registration is to a stylized version with the mark “DUD” in fanciful font, surrounded by a circle and with a flame arising from the “U” in DUD. Yet Prime gave no description of what the marks on the accused products look like, and provided photos of unrelated products or unauthenticated photographs. The sole exception is the testimony on a single individual that one of the defendants sold a single product at a trade show that bore a similar mark. Further, Judge Saylor determined that the DUD mark is not particularly strong, having been registered only in January 2018 and having had no evidence of Prime’s renown in the industry or efforts made to promote and protect the mark. Judge Saylor determined that, while there is certainly a chance that Prime will prevail, at this stage it has failed to demonstrate a substantial likelihood of success on the merits. Accordingly, the motion for a permanent injunction was denied.
Judge Casper granted RS Means’ motion for a preliminary injunction. She noted that RS Means had purchased copies of its construction cost estimation books that were sold by Defendant Aaron Richardson of SED. Judge Casper had previously entered a temporary retraining order prohibiting sales of the book by Defendants. She reasoned that RS Means had demonstrated a likelihood of success on the merits of both the copyright and trademark allegations that supported the preliminary injunction.
Judge Burroughs denied iRobot’s motion for a preliminary injunction barring sales of accused Shark IQ Robot vacuum cleaners alleged to infringe two iRobot patents (while the complaint identified a total of six patents, iRobot did not assert the other four patents-in-suit in its motion for a preliminary injunction). The two patents covered robotic vacuums that could travel to their base stations to recharge and, once charged, resume cleaning where they left off as well as robotic cleaners that could self-empty into the base station. SharkNinja asserted that it knew of the two patents and that they designed the Shark IQ Robot to avoid infringement of these claims – by placing the service opening (through which self-emptying occurs) in a location different from that required by the claims. This argument required construction of the phrase “bottom portion,” which the specification and prosecution history suggested would be limited to only the bottom surface, as SharkNinja suggested. Judge Burroughs found that this at least raised a substantial question as to whether the IQ Robot infringed the ‘048 patent. Similarly, SharkNinja’s products do not detect a weak battery and then seek to recharge – instead, they simply run on a 60-minute timer and recharge at the end of the 60-minute cycle, regardless of charge state. iRobot pointed to language in the specification that indicated that a timer could be used to predetermine a time period before recharging “without determining which energy level subsequence” the robot is operating in. Judge Burroughs looked to the plain meaning of the claim phrase “detect a need to recharge” and determined that it required the robot to take an action in order to determine whether there is a need to charge itself, which the Shark IQ Robots do not do. Accordingly, iRobot’s request for a preliminary injunction was denied.
Judge Saris denied Bassett’s motion for a preliminary injunction seeking to prevent the release of the accused films. The case was brought by Leah Bassett, a Martha’s Vineyard artist who rented her home to the defendants, who used the home as the setting for pornographic films. Bassett asserted copyright infringement, base don her original artworks in the house being displayed in the films. She filed suit nearly three years after discovering that the defendants were filming at her house, and first sought preliminary injunctive relief nearly eighteen months after filing suit. Judge Saris determined that Bassett could not make the requisite element of irreparable harm. She cited several reasons – Bassett had disavowed claims for actual damages and sought only statutory damages; all of the copyrighted articles were personal belongings not for sale, eliminating many of the categories of irreparable harm (reputational harm, tarnishment, dilution) that might exist for items that were the subject of commerce; the minimal use of the copyrighted material in the films; and Bassett’s delays in filing suit and then seeking the injunction, which undercuts the notion of irreparable harm. Judge Saris further noted that the Defendants had agreed to voluntarily remove all the films and photographs shot in Bassett’s home from distribution, leaving only bootleg copies that an injunction would not address in distribution.
Global merchandising, who had exclusive rights to the OZZY OSBOURNE mark, filed a preemptive trademark suit in advance of Osbourne’s upcoming show at the Xfinity Center in Mansfield, MA. Global seeks a TRO and preliminary injunction prohibiting the unknown defendants from making, distributing or selling merchandise bearing the mark or Osbourne’s likeness. As with the majority of these types of cases, Judge Zobel has been assigned to handle this matter.
Three Ten Merchandising, a concert merchandising company for Beyonce, sued unnamed persons and corporations to preempt sales of counterfeit merchandise bearing any of Beyonce’s registered or pending trademarks – BEYONCE, BEYHIVE, BEYGOOD, #BEYGOOD, and YONCE – at or around Gillette Stadium during her August 5th concert. Three Ten seeks an injunction and an order that U.S. Marshalls and local and state police seize and impound any such merchandise. This preemptive, effectively ex-parte mechanism is permitted under 1984 amendments to the Lanham Act. Judge Zobel, who has been assigned to the case, seems to be the Massachusetts judge for such matters – she has had a number of similar cases involving artists such as Pink, Coldplay, Katy Perry and Lady Gaga .
Oomph Hair filed suit against Hair Illusions and its founder, Salvatore Passariello, accusing them of infringing Oomph’s trademark, cybersquatting, falsely disparaging Oomph products, and other forms of unfair competition, as well as seeking declaratory judgment that Hair Illusion’s “hairline enhancement” trademark application is invalid as merely descriptive. Hair Illusions is purported to control 90% of the real hair fiber market (real hair fiber is, as near as I can tell, small hair fibers, that are temporarily adhered to natural hair, making thinning hair look fuller). Oomph claims that Hair Illusions uses unfair and tortious means to maintain this market share, such as threatening Oomph and Oomph customers with patent lawsuits, despite having no patent to assert (Passariello had a pair of application undergoing prosecution at the time; they have since gone abandoned). Oomph also asserts that Hair Illusion registered domain names confusingly similar to Oomph’s registered HAIR FUSION trademark, which disparage Oomph’s product (e.g., alleging that the product contains parasites) and redirect customers to Hair Illusion’s on-line store. Oomph seeks preliminary and permanent injunctive relief, transferal of the offending domain names, and monetary damages. Oomph filed a motion for a preliminary injunction concurrently with the filing of the complaint. Judge Zobel scheduled a hearing on the motion for March 28.
Judge Capser denied Bokhary’s motion for a preliminary injunction seeking to prevent Southern Foods from using the mark GODAVARI in connection with its Indian restaurants. Bokhary sells prepackaged rice-based food products under the mark, and has a registration, which serves as prima facie evidence that the mark is valid. Bohkary admits, however, that the products it sells originate from the Godavari River region of India, which is known as a major source of rice and rice products, which Judge Casper found sufficient to overcome the prima facie evidence based on the registration and to suggest that the mark is merely geographically descriptive. Bohkary propounded no evidence at this stage of the proceedings to show that the mark has secondary meaning; thus, it is not reasonably likely that Bohkary would succeed in proving that the mark is valid. Judge Casper also found that a likelihood of confusion had not been established, because restaurant services are sufficiently distinct from retail selling of pre-packaged foods, and that the rest of the evidence thus far put forth failed to overcome the weakness of the mark (assuming it were to be valid at all). (Full disclosure – Southern Foods is represented by Nate Harris here at my firm – congrats, Nate!).
Judge Stearns denied Global Strategies’ motion for a preliminary injunction for failure to establish a likelihood of success on the merits. Global alleges Interbulk infringes a Global patent and Global’s “DEMO BAGS” family of marks through sale of its “Ox Demolition Clean Up Bag” or “Ox Demo Bag.” Judge Stearns found that Interbulk had raised substantial questions concerning the validity of the asserted patent, because Interbulk had demonstrated that the accused product was on sale more than a year before the filing date of the asserted patent. He also indicated that there was a likelihood that at least some of the claims would be found obvious over the asserted prior art combined with common sense under KSR, which came out after the asserted patent had issued. With respect to the trademark, Judge Stearns found that “DEMO BAG” was an abbreviation for “demolition bag,” which would render the mark generic and unprotectable, which was enough to overcome the weak showing of likelihood of consumer confusion.