1818 Farms, after negotiating a settlement in principal on Plum Island’s trade dress and trademark assertions, surreptitiously filed this lawsuit and withdrew form settlement talks. Upon learning of this lawsuit, Plum Island Soap filed its own suit in Massachusetts. The background is discussed in detail here. Plum Island Soap sought to dismiss or stay the Alabama suit or, in the alternative, to transfer the Alabama suit to the District of Massachusetts for consolidation. Judge Kallon determined that transfer was appropriate. While 1818 Farms was the first to file suit, Judge Kallon noted that filing suit in anticipation of another pending proceeding or to improperly forum shop may be sufficient to show the compelling circumstances needed to overcome the presumption in favor of the first-to-file rule, particularly when the suit is a declaratory judgment action brought in the face of clear threats to sue. Here, he found that the parties were engaged in on-going discussions that had reached a mutually agreeable framework for settlement, and that in the middle of these discussions, and without informing Plum Island Soap, 1818 Farms filed the Alabama suit. 1818 Farms then continued negotiating without informing Plum Island Soap about their filing. This was found to be a clear attempt to preempt Plum Island Soap and obtain a jurisdiction desirable to 1818 Farms. Additionally, it was found to be in bad faith, given that 181 Farms continued to mislead Plum Island that settlement was imminent. Finally, Judge Kallon determined that a refusal to transfer would undermine the strong Federal interest in encouraging potential plaintiffs to attempt settlement negotiations rather than racing to the courts.
God’s Era, a clothing company founded by a college student to sell clothing reflecting her Christian faith, filed suit against New Era Cap, accusing the big league hat manufacturer of trademark infringement, false designation of origin, and unfair competition in connection with New Era’s decision to market apparel bearing both the NEW ERA trademark and a new FEAR OF GOD mark. The dispute began when New Era filed an opposition against God’s Era’s application for federal registration of its mark, which remains pending. At the time of the filing of the opposition, New Era was not using the FEAR OF GOD mark, according to the complaint, and was not selling street apparel, the style of clothing that God’s Era was selling. God’s Era seeks an injunction preventing New Era from using the word “GOD” in connection with any of the “NEW ERA” marks and preventing New Era from continuing with the opposition to the GOD’S ERA application, as well as monetary damages, fees and costs, and destruction of the accused goods. The case is before Judge Talwani.
Schneider Electric USA and Keysight Technologies were sued by Great Boston Authentication Solutions, LLC (“GBAS”). In separate filings, GBAS accuses the two of infringing U.S. Patent Nos. 5,982,892, 6,567,793 and 7,346,583, all directed to remote authorization for unlocking electronic data. GBAS asserts that license management and authentication software employed by the two infringe each patent. All of the patents, which are related as family members to one another, expired in December; accordingly, while damages are sought, there is no prayer for injunctive relief. These new cases appear to be a part of a concerted effort to assert the patents that began just after they expired; for example, three additional cases were filed in Massachusetts in February. The Schneider case is before Judge Casper, while the Keysight case has been assigned to Judge Talwani.