Massachusetts strip club owners beware – an IP firm is scouring advertising that falsely suggests that models are appearing at, or otherwise sponsoring, local establishments. The five cases here include These suits, which include more than thirty different plaintiffs (some of whom appear in several cases) follow the Mitcheson suit earlier this month, and include counts for false advertising and false association, rights of privacy and publicity, statutory unauthorized use of an individual’s name, portrait or picture, conversion, unjust enrichment, quantum meruit and negligence.
Ecobee filed suit against another set of Amazon sellers, accusing each of reselling ecobee products and using ecobee trademarks without authorization. As with its previous complaints, ecobee asserts that the defendants improperly acquire ecobee goods from authorized resellers who are contractually prohibited from selling to unauthorized sellers, and that the sales by defendants, which come without warranty and are not subject to the same quality controls as that of authorized sellers, render their offerings materially different than ecobee’s products as to render the use of the ecobee marks inappropriate. These are the latest in a series of such suits filed by ecobee in the District of Massachusetts
Motus, a mobile workforce and fleet management company headquartered in Boston, sued Event Solutions for infringement of its federally-registered MOTUS trademark. According to the complaint, Event Solutions rebranded itself as “Motus One” in September 2018, and provides similar consulting services for parking, transportation, and the like. Motus alleges that, following a cease and desist letter, Event Solutions agreed to transition away from the “Motus One” name by the end of June, 2019. Despite this, Event Solutions continues to use the “Motus One” name and has indicated an intention to keep it. Motus brings counts for breach of contract (relating to the agreement to cease use of the mark), federal and state trademark infringement and dilution, unfair competition, and injury to business reputation.
A number of models, including first-named plaintiff Dessie Mitcheson, sued Springfield’s Aquarius Nightclub and its owner for false advertising and false association under the Lanham Act, as well as common law and statutory right of privacy, common law right of publicity and statutory unauthorized use of an individual’s name, portrait or picture in connection with the nightclub’s alleged use of photographs of the models in their advertising and promotional material. The models, who model for magazines such as Maxim, Stuff, Playboy and Glamour and appear in music videos, advertisements, assert that their being falsely associated with Aquarius, a strip club, injures their professional reputations and was done without their knowledge or consent and without payment. In addition to the above claims, the plaintiffs bring counts for conversion, unjust enrichment, quantum meruit and negligence.
Fantastic Sams accuses former Georgia franchisee Talukders of continuing to use Fantastic Sams’ trademarks following termination of the franchise agreement. Talukders became a franchisee in 2017, when it purchased the salon of a Sams franchisee. As part of the franchise agreement, Talkuders would be permitted to only offer, use and sell products and services that were prescribed or approved by Sams. According to the complaint, Fantastic Sams terminated the franchise agreement for cause when it discovered that Talukders was operating “unlicensed medical spas” in the franchised salons. Rather than cease using the registered marks, Sams asserts that Talukders transferred ownership of the salons to co-defendants Paula Gomez and Michelle Scott, who continue to use the “Fantastic Sams” marks or a “Fantastic Salon and Spa” mark that is asserted to be confusingly similar. Fantastic Sams asserts trademark infringement, unfair competition and breach of contract, and seeks specific performance on the contract claim.
Medacta makes and sells orthopedic and neurosurgical medical devices, including joint replacement products sold under the “MyKnee” mark. Medacta has a federal registration on a stylized version of the mark, in which the letter “M” is formed by two angled triangles.
While not yet incontestable, Medacta has filed the § 1065 declaration that should lead to incontestability. Medacta asserts that Conformis’ use of “#ThisIsMyKnee” in connection with advertisements for orthopedic products constitutes both federal and common law service mark infringement, as well as false designation of origin and dilution under Massachusetts law.
Medacta seeks injunctive relief and monetary damages, and asserts that the infringement is willful, despite making no allegations of having brought the issue to ConforMIS prior to filing suit. Judge Young has the case.
Earthwatch is a non-profit corporation that supports scientific research through “citizen science.” Under this approach, Earthwatch joins ordinary citizens who are concerned about environmental issues together with world-class scientists to conduct environmental surveys and research, such as tracking chimpanzees through the Ugandan forests. Earthwatch has been in existence since 1971, and has won numerous awards and achieved many scientific publications of its work. Earthwatch has operated under a number of federally-registered EARTHWATCH marks in a variety of classes, which have become incontestible. DigitalGlobe is a Colorado company that offers high-resolution satellite imagery of the globe for, among other things, environmental monitoring. Among the products offered by DigitalGlobe is a customizable subscription service under the name “EARTHWATCH.” Earthwatch asserts that DigitalGlobe is thereby infringing its trademarks under both federal and common law, and moreover that the infringement is willful – DigitalGlobe initially operated as “EarthWatch Incorporated,” and changed its corporate name after a cease and desist demand from Earthwatch. In addition to the trademark counts, Earthwatch asserts violation of Ch. 93A. Earthwatch has been a client of my firm, Lando & Anastasi, for many years, and the case was filed by my colleagues Nate Harris and Peter Lando. The case is before Judge Woodlock.