The Atomic Café et al. v. Roy et al. (17-cv-11927).

Following up on Friday’s post, Judge Talwani’s Order enjoined the use of The Atomic Café’s trademarks in written and electronic material, but denied the injunction without prejudice with respect to retail sales of Plaintiff’s prepackaged coffee beans, based on Plaintiff’s assertion at argument that it was not seeking to enjoin this use of the mark.

GN Netcom, Inc. v. Online King LLC d/b/a Amazon Reseller Online King (17-cv-12097).

Headset manufacturer GN Netcom accuses electronics reseller Online King of infringing its JABRA and VXI trademarks. GN’s factual allegations are similar to those of its September lawsuit against TelQuest International; here, GN alleges that Online King buys actual GN products manufactured and sold to the international market that were not intended for sale in the United States and that are materially different than GN products intended to be sold in this country.  As a general rule, the resale of genuine trademarked goods is not infringement, under an “exhaustion” theory; this does not apply, however, when the accused party is selling goods that materially differ from those sold by the trademark owner.  The importation of “gray-market” goods, foreign manufactured goods that bear a valid U.S. trademark but that are imported into the country without the trademark owner’s consent, fall within this exception; it is not immediately clear whether goods actually manufactured in America, and GN’s complaint does not make clear where its goods intended for foreign sale are actually made.

Microsoft Corp. v. Teratech Corp. d/b/a Terason et al. (17-cv-12038).

Microsoft sued Terason and its president, Alice Chiang, for copyright and trademark infringement, false designation of origin, and unfair competition related to allegedly pirated versions of Microsoft software being advertised and distributed by Terason. Microsoft alleges that Terason customers purchase the software without being aware that it is not legally licensed by Microsoft.  Terason manufactures color portable ultrasound equipment, and (according to the complaint) thousands of activations and attempted activations of Windows 10 and Windows 7 software occurred over the past six years from an IP address assigned to Terason.  The product keys for these activations were either used more times than authorized by the applicable license or were used to activate software outside of the region for which they were authorized.  Microsoft alleges that Chiang personally participated in or had the right to direct and control these activities and received a direct financial benefit from these activities, justifying personal liability either directly or under principles of secondary liability such as respondeat superior, vicarious liability and contributory infringement. The case is before Judge Gorton.

DSI Assignments, LLC v. American Road Products, Inc. et al. (17-cv-11963).

DSI Assignments sued American Road Products, Installernet, Inc., Anthony Frangiosa, Stephen Witt, and unknown Does 1-100 for trademark infringement and dilution, false designation of origin, false advertising, unfair competition, breach of contract and fraud in the inducement. DSI brought suit for the benefit of creditors of Pearl Automation, Inc., which made driver assistance technology, including a rear view camera contained in a license plate frame that broadcast the video to a cell phone mounted in the vehicle.  DSI alleges that Pearl entered into a sales/distribution agreement with InstallerNet whereby InstallerNet was to purchase Pearl’s entire remaining inventory.  InstallerNet’s president, Frangiosa, directed delivery of these products to American Road Products; when questioned about this by Pearl, Frangiosa represented that the two entities were “the same company” and that he owned both entities.  Pearl was never paid for the inventory, and subsequently ceased operations.  DSI subsequently learned that, during the time that InstallerNet placed its order for the remaining inventory, its registration in Massachusetts as a foreign corporation had been suspended.  DSI contends that Frangiola and InstallerNet’s other shareholders (Witt and Does 1-100) are not shielded by the corporate form and are individually liable.  DSI further contends that American Road Products is an unfunded sham corporation that was set up for the sole purpose of shielding InstallerNet and its shareholders from liability, and that no such shielding should be allowed.

Performance Motion Devices, Inc. v. Ion Motion Control et al. (17-cv-11943).

Ion Motion Control, alleged to be the trade name for a suspended California corporation known as Basic Micro Products, Inc., was sued by computer hardware manufacturer Performance Motion Devices (“PMD”) for trademark infringement, cybersquatting, dilution and false designation of origin. PMD owns an incontestable registration in ION for computer hardware, and owns and operates the domain name <pmdcorp.com>.  PDM alleges that Basic Micro improperly selected the domain names <ionmc.com> and <ionmotioncontrol.com> and further that Basic Micro infringes the ION mark through the use of the logo:

Ion Motion Control

PDM seeks injunctive and monetary relief, as well as forfeiture/cancellation of the <ionmotioncontrol.com> and <ionmc.com> web domains.

The Atomic Café et al. v. Roy et al. (17-cv-11927).

John Mahoney and the Atomic Café accuse Kyle and Peter Roy and their companies Cold Brew Ventures, LLC, and Lean & Local, LLC, of trademark infringement, trade secret misappropriation, breach of contract, and various other state law claims. The complaint alleges that the defendants, who operate under the names LeanBox (which delivers vending machines and provides vending services) and Grind (which provides coffee products that are offered through LeanBox’s vending services), induced Mahoney to enter into a joint venture to produce and market his cold brew products on  a larger scale.  The joint venture, Cold Brew Ventures, designed and configured a production facility largely at Mahoney’s direction.  The group agreed to the terms by which Mahoney would provide expertise to the venture – he was to receive a 25% equity stake in the facility and a fixed salary; yet once the facility became operational and his trade secret information had become known to them, the defendants refused to sign and unilaterally withdrew from the agreement.  The defendants are accused of using two registered trademarks covering ATOMIC COFFEE ROASTERS, which Mahoney had used in his three retail shops and a manufacturing facility that makes cold brew coffee, latte, and tea.  They are also accused of misappropriating proprietary information relating to Mahoney’s cold brew formulas and processes, as well as business information and contacts.