Judge O’Toole ruled on a pair of privilege disputes in this trade secret litigation, finding some claims of privilege to be without merit while upholding others. Lynx accuses Zebra of misappropriating real-time player tracking technology and used it to obtain a deal with the NFL that did not include Lynx. During discovery, certain e-mail chains were produced by Zebra in both keyword-searchable and non-searchable formats; redactions based on privilege were made in only one of the formats. The parties could not resolve whether the privilege claim was legitimate, leading to the filing of a motion to remove the redactions by Lynx. A first set of e-mails included communications between Zebra, Zebra’s counsel, and non-employee consultants hired by Zebra o assist in reaching agreement with the NFL. Following en camera review of the communications in question, Judge O’Toole determined that Zebra had waived privilege in these communications by sharing them with the consultants. He found that the Kovel doctrine, which extends privilege to communications with third parties that are necessary, or at least highly useful, for effective consultation between the client and the attorney, did not apply, because the redacted communications were not made for the purpose of obtaining legal advice, and instead concerned business advice. The communications also did not demonstrate that the consultants were necessary to interpret matters beyond the lawyers’ reach. He also rejected Zebra’s attempted reliance on the “functional equivalent” doctrine, by which non-employee agents of a corporation can be considered functionally equivalent to corporate employees by virtue of their close connection to the corporation, such that privilege would extend. Here, the consultants were not so closely tied to Zebra as to be equivalent to employees – they lacked longstanding relations with the company, worked remotely, were not Zebra’s sole representatives in negotiations, and were free to work for others. Judge O’Toole further noted that neither the First Circuit nor the District of Massachusetts had ever adopted or applied the doctrine. The results were different with respect to a different set of communications, with Judge O’Toole upholding the privilege in communications between Zebra executives and in-house counsel. He noted that such communications would only be privileged if they revolved around legal, as opposed to business, advice, but noted that the communications in question did address legal perspectives on issues being discussed.
The Plum Island Soap Company sued 1818 Farms sued Alabama’s 1818 Farms and its sole operator, Natasha McCrary for trademark and trade dress infringement relating to men’s grooming products sold in combination and packaged in a paint can. The background of the lawsuit is interesting. Plum Island Soap Co. has an incontestable registration on “THE MAN CAN” mark. It alleges it has been using the paint can trade dress for more than five years, establishing a prima facie case of secondary meaning, and successfully obtained injunctive relief relating to the mark in 2013.
After discovering 1818 Farms’ “The Man of the Farm Grooming Can” product in the fall, counsel for Plum Island Soap Co. contacted 1818 Farms.
According to the complaint, they negotiated and agreed upon terms to resolve the dispute in which 1818 Farms acknowledged the validity of the trade dress and agreed to be enjoined, needing only to memorialize the agreement into a formal settlement document, and in reliance upon this, Plum Island Soap Co. did not file suit; yet in January, while in daily communication with Plum Island’s attorneys , 1818 Farms filed suit in Alabama seeking declarations of non-infringement, challenging the validity of the trade dress , and seeking to cancel the trademark registration. Six days later, 1818 Farms then contacted Plum Island’s lawyers and reneged on the agreed-upon terms of the settlement and informed Plum Island of the Alabama complaint. Plum Island asserts that, but for the false indication that 1818 Farms was settling the dispute, it would have filed suit in Massachusetts, and that Massachusetts should thus be the forum for the litigation. Plum Island claims trademark and trade dress infringement, as well as contributory and vicarious trademark infringement in connection with third-party sales of “The Man of the Farm Grooming Can” product and the preparation of marketing materials by third parties for 1818 Farms’ benefit. Plum Island also alleges breach of contract and of the covenant of good faith and fair dealing, stating that the settlement discussions had reached the point of an actual agreement, as well as fraud relating to statements made in the Alabama complaint that Plum Island made false statements to the PTO when seeking to register THE MAN CAN mark, and unfair and deceptive practices under Mass. G.L. 93A. Plum Island seeks temporary, preliminary and permanent injunctions, enforcement of the settlement agreement, monetary damages, and treble damages and attorney’s fees.
Solid Holdings, Solid Surface Care, Inc. and Solidcare, LLC (collectively, “Solid”) sued Solid Logic, along with two of its officers, for trademark and trade dress infringement, false designation of origin, dilution and cybersquatting. Solid alleges that it is the registrant and owner of SOLID marks in connection with cleaning and maintenance of stone, metal, concrete, terrazzo, grout and wood surfaces, as well as a distinctive trade dress using red-orange and gray. Solid asserts that, after meeting with Solid to discuss possibly becoming a franchisee, the defendants formed Solid Logic Limited to offer the same services in a deliberate attempt to poach off of the good-will of the SOLID mark and trade dress, and that its registration of its “solidlogicltd.com” website comprises cybersquatting on Solid’s “solidcare.com” domain name.
Anova sued a number of different Chinese businesses for trademark and trade dress infringement related to its Sous Vide Precision Cooker, a constant temperature immersion circulator that cooks food in a sealed bag at a constant temperature in a water bath.
Anova designed its product in 2014 using funds generated via a Kickstarter campaign. Anova registered the mark PRECISION, and asserts that the distinctive design of the product constitutes highly distinctive trade dress. The product enjoyed considerable success, leading to Anova being purchased by Electrolux for $250 million in February of this year. Anova asserts that the defendants make nearly-identical replicas and sell them through internet websites such as GlobalSources.com and Alibaba.com, as well as through U.S. distributors. In addition to infringement, Anova asserts claims for trademark dilution, unfair competition, and false designation of origin.