Judge Martinez of the Western District of Washington, in response to Defendants Charlie’s One Stop Computer Center, Inc. and its president, Michael Aucoin’s motion to dismiss for lack of personal jurisdiction, instead transferred the litigation to Massachusetts. The case was initially filed in June, 2016, against unknown defendants, alleging infringement of Microsoft copyrights and trademarks on software being installed using fraudulent product keys. Discovery led to the identification of Charlie’s One Stop and Mr. Aucoin, who then moved to dismiss. Microsoft indicated that, if dismissed, it would simply re-file here. When the defendants admitted that jurisdiction would exist in Massachusetts, transfer was ordered. Judge Wolf has been assigned to the case.
Washington’s long-arm statute allows a court to award attorney’s fees for a party served under the statute who prevails in the action. Judge Martinez determined that Microsoft, when first notified about the jurisdictional issue, told Defendants that it would “vigorously defend against any motion to dismiss,” and after Defendants filed the motion, that it would consent to transfer to Massachusetts only if the motion and request for fees were withdrawn. He determined that such conduct, followed by Microsoft appearing in court and not opposing transfer, warranted the award of fees.
Judge Wolf entered default judgment in favor of Cengage, finding the well-pled facts of the complaint showed that defendents sold counterfeit versions of Cengage’s copyrighted textbooks bearing Cengage’s trademarks. Most of the defendants failed to answer the complaint, and the one who did file an answer then failed to respond to a motion for preliminary injunction and ceased responding to its counsel. Judge Wolf went on to determine that the infringement was willful, based on the defendants’ use of false names and addresses to register online storefronts on Amazon.com and on their failure to appear. Maximum statutory damages for both trademark and copyright infringement totaling $2.9 million were awarded, and a permanent injunction was entered.
Judge Zobel is presiding over another pre-emptive concert merchandise case, this one involving the performer Katy Perry. Blackout Merch claims the exclusive right to utilize Ms. Perry’s registered trademarks in connection with concert merchandise in North America, and seeks to prevent the sale of infringing merchandise at or around Boston’s TD Garden when Ms. Perry performs there on the 29th and 30th of September.
Silvia Leary is the owner of a trademark registration on the stylized mark “VIA,” in which the “A” lacks the horizontal line, looking like an upside-down “V.” The identified goods and services are “fashion modelling for entertainment purposes.” Ms. Leary alleges that she has a pending copyright application on the mark. She uses the mark at her “Viasworld” website, where (among other things) she sells socks, t-shirts, and other merchandise. Berkshire developed the “Via Seaport Residences” on Fan Pier in Boston, and apparently created some “VIA” merchandising in connection with the development. Berkshire’s use has a similar “A” that lacks the horizontal line. Ms. Leary alleges that Berkshire is using the same VIA mark on hats, glasses, t-shirts and other types of items, causing customer confusion. She claims trademark and copyright infringement and unfair competition. The case is before Judge Saris.
Kleen Concepts was accused of infringing Hilsinger’s SHIELD mark by using the brand SHIELDME for its screen and lens cleaning products. Hilsinger uses the SHIELD mark for lens cleaning products. Kleen Concepts was also accused of misusing the phrase “Made in USA,” with Hilsinger contending that “significant components” of the products were manufactured abroad. Kleen Concept’s motion for summary judgment of non-infringement as to its screen-cleaning products was denied, because the similarity of the marks and the products, combined with disputes of material fact as to the channels of trade and targeted customers, left material facts in dispute. Judge Saylor further struck the portion of Kleen Concept’s reply brief that argued for the first time that products that had been re-branded with the (unaccused) mark KLEENME did not infringe, despite the continued existence of the SHIELDME mark on the interior of the packaging, refusing to allow new arguments not raised in the opening brief. Judge Saylor also denied Kleen Concept’s motion for summary judgment on the false designation of origin claims, finding that (disputed) facts had been introduced that Hilsinger was actually harmed due to sales losses that coincided with buyer Wal-Mart’s initiative to increase sales of domestically-made products and evidence that a Wal-Mart buyer believed Kleen Concepts’ products were made in the USA. Finally, Judge Saylor struck the portion of Kleen Concepts’ expert report that asked survey respondents to identify their “primary purchasing consideration,” because Kleen Concepts could not point to any evidence that the expert’s methods for determining this had been tested, subject to peer review, or otherwise scientifically validated.
In an interesting trademark infringement lawsuit, a manufacturer seeks to prevent a reseller from using its trademarks to identify products the manufacturer actually made, but made for use and sale only outside of the United States. GN Netcom is a headset manufacturer based in Lowell, MA. It sells headsets under the brand names “Jabra,” “VXi,” and “GN Netcom.” GN alleges that the Defendant is a reseller of phone systems and headsets, both through its own website and through Amazon, eBay, and other online platforms. Defendants are said to sell, without authorization, GN headsets that it purchased from international resellers, and to use GN’s trademarks (and some GN copyrighted images) in the process. These products were designed and manufactured differently than GN products intended for sale in the U.S., are said to contain “material differences” (such as language differences in the interface, battery and voltage differences) from the U.S. products, and are not subject to GN’s U.S. warranty. GN further alleges that Defendant advertise U.S. versions of the GN products it sells, but then ships the international versions. GN brings counts for trademark infringement, unfair competition and false designation of origin. The case has been assigned to Judge Sorokin.
Judge Zobel issued a preliminary injunction and seizure order preventing bootleg sales of concert merchandise. The concert promoter for Coldplay filed suit prior to Coldplay’s August 4th concert at Gillette Stadium in an attempt to deter counterfeiting related to merchandise bearing various “COLDPLAY” registered marks. Judge Zobel noted that numerous defendants had been served with the complaint at the Gillette show but had failed to appear for the hearing on the motion for preliminary injunction. The order prohibits the defendants from using the band’s trademarks on any merchandise or from aiding or inducing others from using them, and further orders the U.S. Marshal for any district in which the Plaintiff seeks to enforce the order to seize and impound all infringing merchandise being offered for sale in within ten miles of any Coldplay concert for a period of time from six hours prior to the concert to six hours after the show ends. While the injunction came too late to help the band (and the concert promoter Plaintiff) in Foxboro, it should serve to protect them on the remainder of their shows in America.
It is interesting to note that Coldplay is no stranger to intellectual property lawsuits, having itself been sued by guitarist Joe Satriani for infringing the copyright in his instrumental song “If I Could Fly” through Coldplay’s hit “Viva la Vida” (a comparison of the two songs can be found here). That case settled out of court in 2009.