DogWatch, a Natick company that makes electronic pet restraint systems such as the “invisible fence,” accuses its former Florida dealer DogWatch of Sarasota (“DoS”) of trademark and trade dress infringement, trade secret misappropriation, breach of contract, passing off, unfair competition, tortious interference with contractual relationships, and unjust enrichment in connection with DoS’ continued use of DogWatch’s name and proprietary information following termination of their business relationship. DogWatch has had a federal registration to its name since 1993, and asserts (with no real evidentiary support) that the name is famous. DogWatch further asserts trade dress protection in some combination of its order forms, yard flags, letterhead, stationary, internet web pages, URL’s van graphics and other unspecified materials. DogWatch further asserts trade secret protection in pricing information, draft marketing and promotional material, and business strategy and plans, and it asserts that the exclusive dealer agreement with DoS included an implied covenant not to use or disclose these purported secrets. Late last year, DogWatch notified DoS that they were terminating the exclusive dealer agreement, for reasons not specified in the complaint. Despite this, they assert that DoS continues to hold itself out as a DogWatch dealer and to use the trademark, trade dress, and trade secrets of DogWatch. The breach of contract count cites acts of DoS that occurred following termination of the agreement – there is no suggestion that DoS did anything wrong prior to termination. Judge Saris has this case.
Magnesium Elektron (“MgE”) filed suit against Applied Chemistries, Inc., Brian St. Pierre and Mark Pellerin, accusing them of misappropriating trade secret processes for making etching additives used in the graphic arts industry. According to the complaint, St. Pierre and Pellerin both worked for U.S. Fluids, MgE’s contract manufacturer of etching additives, where they were exposed to the trade secret technology. Each executed a non-disclosure agreement with U.S. Fluids, and each was responsible at some point during their employment with maintaining the secrecy of the technology. St. Pierre now runs Applied Chemistries, who recently began marketing chemicals alleged to be substantially the same as MgE’s proprietary additives, and Pellerin is employed by Applied Chemistries. MgE further asserts that Applied Chemistries is selling photo engraving developer solutions under MgE’s RED TOP and HYRDO-SOLVE trademarks. MgE brings trade secret claims under the federal DTSA and the new Massachusetts trade secrets statute, as well as trademark infringement and unfair competition claims, and claims under 93A.
DiscoverOrg, a company that provides business-to-business marketing data, sued Timlin Enterprises for copyright infringement. DiscoverOrg provides its marketing information to customers through a password-protected on-line user interface. According to the complaint, a Timlin employee accessed the database while employed by a licensed company, downloaded the data, and took it with him when he moved on to work for Timlin. A second person, meanwhile, who worked with the first accessed the database from their new, licensed company, and the data made its way to the first employee now working for Timlin. DiscoverOrg asserts that Timlin knowingly used the misappropriated data in marketing efforts. In addition to copyright infringement, DiscoverOrg asserts federal and state trade secret misappropriation (the state claim under Washington law, as DiscoverOrg is a Washington-based company), unjust enrichment, tortious interference with contractual relations, negligence for failure to properly train and supervise its employees regarding misappropriation of trade secrets, and violation of Ch. 93A. The case was assigned to Judge Zobel.
B. Luxe, a Medway hair salon, accuses Belmont’s B Luxe Aesthetics and Bianca Jacqueline Paraison of infringing its registered “B. LUXE” trademark in connection with hair and skin products and services. While the complaint does not clarify, it seems that Ms. Paraison is the owner of B Luxe Aesthetics. In addition to federal trademark and unfair competition claims, B. Luxe brings counts for state and common-law trademark infringement and unfair and deceptive trade practices under 93A.
In August, Governor Baker signed a new law governing trade secrets, broadening the types of information that can qualify as a trade secret and setting up protections for trade secrets during litigation. By the passage of this law, Massachusetts joins the vast majority of states in adopting the Uniform Trade Secrets law. Governor Baker also signed a law placing significant restrictions on non-compete clauses in employee agreements, including limits on scope and time and requirements that an ex-employee be compensated during the time the former employee is restricted. A summary of these laws can be found here.
Judge Saylor granted in part SiOnyx’s renewed motion to compel in this patent infringement, correction of inventorship, and breach of contract case. SiOnyx had entered into an agreement with Hamamatsu to explore a possible business relationship surrounding laser-textured infrared-sensing silicon photonic devices. The business relationship never came to fruition, and Hamamatsu subsequently applied for patents directed to similar technology. A discovery dispute arose over whether SiOnyx could obtain information on products that were textured by some means other than a laser, with Hamamatsu taking the position that the infringement contentions did not accuse such products and the former SiOnyx founder now working for Hamamatsu did not contribute to the invention of non-laser-textured devices. SiOnyx’s initial motion to compel was denied without prejudice, because at the time there was insufficient evidence to support a charge of infringement; since then, SiOnyx was able to develop sufficient information that the products infringe, and that an offer for sale of the accused products has been made that, if accepted, would generate significant sales. Judge Saylor found that SiOnyx’s evidence related to the breach of contract and use of confidential information claims (that the Hamamatsu engineers who were exposed to this information developed the non-laser-textured products) was insufficient to overcome the significant differences in the resulting textures that negate an inference that they were developed using SiOnyx’s confidential information. Because the motion was granted only with respect to the patent claims, Hamamatsu was compelled to produce information relating only to U.S. sales or imports.
The patent claims of this multi-claim lawsuit surrounding 3-D metal printing were bifurcated, and a jury trial on the patent claims was held in late July. The jury returned a verdict finding the two asserted patents valid but not infringed. The remaining trade secret, breach of contract, and unfair competition claims will be tried at a later date.