ecobee, Inc. v. Filter Pro et al. (18-cv-12235), Hatzlacha LLC d/b/a The Corner Store et al. (18-cv-12236), and Ultra Design (18-cv-12237).

Ecobee filed three trademark suits, accusing Filter Pro, The Corner Store, and Ultra Design of trademark infringement, unfair competition, false designation of origin, and tortious interference. Ecobee makes smart home control products, including light switches and thermostats, that it sells through authorized resellers who are contractually obliged to provide specific quality controls on the products sold and prevented from selling to subsequent, unauthorized resellers. Each of the defendants is an Amazon Seller Account that, despite not being ecobee authorized resellers, are alleged to have sold ecobee products.  Ecobee asserts that the defendants could only have obtained ecobee inventory through knowingly soliciting authorized resellers, intentional and knowing interference with the resellers contracts and business relationships with ecobee, or through fraudulent or illicit means. They further assert that the defendants violate the ECOBEE trademark by selling actual ecobee goods without authorization. The cases are presently before Judges Stearn, Woodlock, and Saris.

Xiao Wei Yang Catering Linkage In Inner Mongolia Co., Ltd. et al. v. Inner Mongolia Xiao Wei Yang USA, Inc. et al. (15-cv-10114).

Judge Casper granted Defendants’ renewed motion for attorneys fees, finding the case exceptional under 35 U.S.C. § 1117(a), which allows for the award of fees to the prevailing party in exceptional cases. She had previously granted summary judgment in favor of the Defendants on all issues. Judge Casper, applying the Supreme Court’s 2014 Octane Fitness guidance in the analysis of whether a patent case is “exceptional” pursuant to 35 U.S.C. § 285, found that sanctions had already been imposed on the Plaintiff for their litigation conduct, repeatedly failed to meet court-imposed deadlines, submitted filings that failed to provide sufficient support for their positions, and otherwise engaging in unreasonable conduct. Moreover, she determined that the plaintiffs’ substantive positions following the completion of discovery were weak and that they failed to produce any evidence of damages. Judge Casper found that Defendants need to be compensated for discovery-related motion practice and for prolonging litigation after discovery through summary judgment. She ordered Defendant to submit its request for fees from the denial of their motion to dismiss forward, excluding fees that had already been awarded through discovery sanctions.

Acushnet Company v. Golf Gods Pty ltd. (18-cv-12093).

Acushnet, the maker of Titleist golf equipment, filed suit against Australia’s Golf Gods, accusing them of violating Titleist trademarks through Golf Gods’ sale of apparel bearing a “TITTIES” mark in the Titleist stylized script, “HOE V1” (instead of “PRO V1,” a Titleist golf ball), and a few other racy take-offs on Titleist marks. Titleist also asserts that golf balls sold by Golf Gods infringes the trade dress of Acushnet’s TITLEIST PRO V1 packaging.

Titleist asserts (and is almost certainly correct) that its marks are famous, and accuses Golf Gods of intentionally creating an “unwholesome and undesirable association” in consumers’ minds, thereby tarnishing the Titleist marks. Titleist asserts trademark infringement, false designation of origin, unfair competition, and trademark dilution under both state and federal law. Judge Boal has the case.

Xiao Wei Yang Catering Linkage In Inner Mongolia Co., Ltd. et al. v. Inner Mongolia Xiao Wei Yang USA, Inc. et al. (15-cv-10114).

Judge Casper granted summary judgment in favor of the Defendants on the trademark infringement, false designation of origin, trademark dilution, unfair competition, and unfair and deceptive trade practices. The case arose over a dispute between a Chinese restaurant chain and a US company seeking to become a franchisee. The two entered an agreement whereby the US entity opened a restaurant using the Chinese companies’ “Little Lamb” trademark. Plaintiffs allege that the Defendants violated this agreement by not opening another restaurant within one year of opening the Boston restaurant, making their use of the mark infringing as unsanctioned. The Court disagreed, and further determined that the attempted rescission of the agreement by the Plaintiffs was not proper under the terms of the agreement. As the agreement authorized the use of the mark, infringement could not be found. In a footnote, Judge Casper also noted that the Plaintiffs had failed to produce any evidence of damages, and that no presumption of damages could be had under the Lanham Act, which would also support a denial of the motion for summary judgment. As the remainder of the claims for which summary judgment was sought relied on a finding of infringement, these claims were also denied. Summary judgment in the Defendants’ favor had already been granted on breach of contract, breach of implied covenant of good faith and fair dealing, fraudulent inducement and unjust enrichment claims, meaning that all of Plaintiffs’ claims have been denied.

Global Protection Corp. et al. v. Arthur et al. (18-cv-10966).

Global accused Eric Arthur and Marketing Sales Concepts of infringing its “ONE” mark and a design patent for condom packaging, and the Defendants moved to dismiss for lack of personal jurisdiction and improper venue, contending that they do no business in Massachusetts and never marketed or sold the accused condoms in the Commonwealth. Global responded that the defendants’ websites and social media presence, accessible in Massachusetts, supported jurisdiction and that the patent claim could be brought in Massachusetts under the “pendent venue” doctrine. Judge Stearns found that under TC Heartland, pendant venue cannot be applied to patent infringement claims (but note that at least one other Court has found that pendent venue is applicable to patent infringement claims); he decided, however, to transfer the entire matter to the Western District of Arkansas rather than to dismiss the complaint outright.

Massachusetts Mutual Life Insurance Co. v. PMN II, LLC et al. (18-cv-30150).

Mass. Mutual sued Chuck Yeager, his wife, PMN II and III  (partnerships involving the Yeagers – the name allegedly stands for “Protect My Name”), and a corporation and foundation owned and run by the Yeagers, seeking a declaration that Mass. Mutual has not violated Yeager’s rights of publicity, rights of privacy, trademark rights in the Chuck Yeager mark, and a determination of which defendant owns the rights in Yeager’s name. According to the complaint, Victoria Yeager has demanded that Mass. Mutual make payment for alleged violations of Yeager’s right of publicity. Her claim is based on an article written by a Mass. Mutual employee and published by BenefitsPRO, a trade journal, that made one use of Yeager’s name in an analogy likening the breakthrough of increased sales of group life insurance to the breaking of the sound barrier. After Victoria Yeager complained, Yeager’s name was removed from the article; Mrs. Yeager, who is Chuck Yeager’s legal guardian following his being deemed incompetent, persisted in demanding payment. Mass. Mutual asserts that Victoria Yeager was deemed to be a vexatious litigant by the U.S. District Court for the Eastern District of California for repeated frivolous right of publicity filings.  Specific personal jurisdiction over the defendants is alleged to exist through the defendants’ repeated contacts with Mass. Mutual in connection with Yeager’s publicity rights as well as through the defendants’ operation of a “highly interactive” website, www.chuckyeager.com, that is available in Massachusetts and through a gofundme page alleged to have been set up by the defendants to create a Chuck Yeager documentary.

Sazerac Brands, LLC et al. v. MS Walker, Inc. (18-cv-11708).

Sazerac Brands sells flavored liquor under the name DR. MCGILLICUDDY’S, Sazerac alleges that DR. MCGILLICUDDY’S is particularly popular in Massachusetts, with its “Mentholmint” flavor being the most popular shot in the Commonwealth across all distilled spirits (it also comes in Apple Pie, Butterscotch, Cherry, Coffee, Peach, Peppermint, Raw Vanilla, Root Beer and Wild Grape, for the discriminating palate). mcgillicuddyheadSazerac uses a design made up of a portrait of Dr. McGillicuddy, sporting a moustache and bowtie against a sepia background, and has used this design widely on the bottles themselves, as well as in their web presence, tap handles, signs, stand up displays, and the like.  A considerable amount of their marketing material emphasizes the moustache, although a number of different moustache styles are employed. Sazerac owns a registration on a design mark that depicts said doctor sitting at a small table topped with bottles of spirits, with his arm around a dog.  mcgillicuddy registrationSazerac does not, apparently, have a registration on the actual design used on their bottles, but asserts common law rights in that design, as well as a state registration in Massachusetts.

Sazerac asserts that MS Walker recently began selling a similar product, MAURICE’S distilled spirits in “Mentholated Mint” and “Root Beer” flavors, 6042_Maurice_750mlusing a confusingly similar mark of a portrait of a turn-of-the-century style man with a moustache and bowtie against a sepia background. Sazerac asserts that these similarities, along with the use of other turn-of-the-century elements, use of the design on a product bearing a possessive personal name that begins with the letter “M,” and use of an uncommon “menthol” formative flavor name, infringes on the registered design mark, on the Massachusetts registration, and on Sazerac’s common law trademark rights, and also claims dilution under M.G.L. ch. 110H § 13.