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.

1818 Farms, LLC v. Plum Island Soap Company, LLC (18-cv-00135, N.D. Alabama).

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.

Monahan Products LLC d/b/a UPPAbaby v. Sam’s East, Inc. (18-cv-11561).

UPPAbaby accuses Sam’s East, a corporation that runs Sam’s Club, of infringing several trademarks through stroller sales both at physical locations and via its’ on-line store. UPPAbaby has registrations on UPPABABY, UPPA BABY, VISTA, CRUZ and G-LUXE in connection with baby strollers. UPPAbaby asserts that Sam’s Club purchases UPPAbaby strollers sold into foreign markets, brings them back to America and offers them for sale without license or authorization. Sales of such strollers would take the strollers outside of the warranty offered by UPPAbaby, which is valid only in the original country of sale and only if purchased from an authorized retailer. UPPAbaby says that Sam’s Club affirmatively claim that the strollers they sell are covered by a manufacturer’s warranty, despite knowing this to be false. UPPAbaby brings claims of false advertising, common law trademark infringement and unfair competition, and violation of Chapter 93A. The case, which was brought by Craig Smith and Nathan Harris of my firm Lando & Anastasi, is before Judge Saylor.

Merchant Consulting Group, Inc. v. Beckpat, LLC (17-11405).

Merchant Consulting served a third-party subpoena on Blue Square Resolutions, a Scottsdale Arizona entity, seeking documents in its trademark infringement case against Beckpat. When Blue Square failed to respond or otherwise make contact with Merchant, Merchant filed a motion for contempt pursuant to Fed. R. Civ. P. 45(g). In granting the motion, Magistrate Judge Kelley found that the subpoena was properly served by mailing it to Blue Square, noting that in Massachusetts, service is proper where effectuated by a means reasonably calculated to complete delivery and the respondents had actual notice of the subpoena. She found that Massachusetts was the proper forum to enforce the subpoena, because the subpoena called for documents to be produced in Massachusetts, making this state the district where compliance was required, particularly given that Blue Square never raised an objection to production in Massachusetts. Having found Blue Square in contempt, Judge Kelley ordered Blue Square to comply with the subpoena within ten days, with a recommendation to the District Court that failure to do so should result in an order to show cause why monetary sanctions should not be imposed. She further recommended that Blue Square be ordered to pay Merchant’s legal fees associated with bring the motion for contempt.

Jaho Inc. v. Adagio Teas, Inc. (18-cv-11451).

Jaho sued Adagio Teas for infringement of Jaho’s ZODIAC TEA trademark. Jaho began using the mark in 2004 and obtained an incontestable federal registration on the mark. Jaho asserts that Adagio Teas sells a line of tea blends that it calls “the Zodiac Series,” and uses “Zodiac” and “Zodiac Gifts” on its website in connection with tea blends. Jaho brings claims of state and federal trademark infringement and unfair competition. The case is assigned to Judge Zobel.