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.
Judge Zobel granted a temporary restraining order prohibiting defendants from selling souvenir and concert merchandise bearing counterfeit versions of the licensed marks of the plaintiff. Judge Zobel determined that the defendants were going to sell such merchandise, and that immediate and irreparable injury would result to the Plaintiff before the defendants could be identified and given notice. The order requires defendants to file responsive papers by August 29 and to appear before the Court on September 6th to show cause why a preliminary injunction should not be granted. The Plaintiff has the rights to sell concert merchandise bearing trademarks belonging to Lady Gaga, who is performing at Fenway Park in September.
Bravado International Group Merchandising Services, Inc., the marketing company holding rights to trademark registrations and applications owned by singer Lady Gaga, filed a preemptive infringement suit seeking to prevent various as-yet unidentified companies from selling merchandise (t-shirts, program books, hats, buttons, posters and the like) incorporating the marks at or in the vicinity of concerts given by Lady Gaga in North America. The complaint alleges that the defendants have sold similar merchandise at past shows, and includes charges for trademark infringement and false designation of origin. Plaintiff seeks injunctive relief to prevent counterfeit merchandise from being sold at or near Lady Gaga’s upcoming Fenway shows in September, as well as at her subsequent U.S. shows. The case is before Judge Zobel.
Milk Street Cafe, a café and catering business located on Milk Street in Boston, sued CPK Media when the latter opened the “Craig Kimball’s Milk Street Kitchen” (they have since dropped the word “Kitchen”), a cooking school also located on Milk Street. Judge Casper last year denied Milk Street Café’s motion for preliminary injunction, finding it had not shown a reasonable likelihood of success. After a bench trial, the court concluded that the defendant had rebutted the presumption of secondary meaning that came with the registration of the mark “Milk Street Café,” based largely on the fact that only the defendant offered consumer survey evidence on this issue. The court also determined that there was no likelihood of confusion, in part because the only real similarity of the marks was the phrase “Milk Street” in which Milk Street Café had no trademark rights and because the goods and services – breakfast and lunch restaurant and corporate catering by Milk Street Café versus cooking demonstrations and classes by the defendant – were not similar. Judge Casper found no trademark infringement, no false association, and no unfair competition. He did, however, refuse to cancel Milk Street Café’s trademark registration, finding the defendant had not shown that it would be damaged by the continued registration of the mark.
WorldCare Limited Corp. sued NOW Health International (Holdings) Ltd. for breaching a trademark license and co-existence agreement and for trademark infringement. WorldCare and NOW had previously had a dispute over the use of the “WorldCare” name. The parties resolved the dispute by entering into an agreement by which NOW was granted the right to use the mark to sell health insurance, but was prohibited form offering “second opinion” medical advice services in connection with its “WorldCare” policies, as that was the nature of WorldCare’s business. Jurisdiction and venue over NOW, a Bermuda company with no physical presence in the United States, is based on a clause of the 2013 agreement.
Capsule Collective filed suit against Tilt Lacrosse, alleging willful infringement of the “TILT” trademark and various stylized “TILT” marks and seeking cancellation of defendant’s Registration No. 4,818,851 for the “TILT” mark on t-shirts, hats, and other clothing. Capsule Collective claims to have first used the mark in commerce on clothing, hats, push scooters, and scooter accessories before Tilt Lacrosse’s first use in commerce. Additionally, Capsule Collective claims trademark and trade dress infringement, false designation of origin, passing off, violation of the Lanham Act and violation of M.G.L. 93A. It further seeks cancellation of Defendant’s “TILT” registration.