Robert Bosch LLC d/b/a Bosch v. Lincoln Diesel Specialties, LLC (D. Mass. 20-cv-11033).

Bosch makes fuel injectors and related car parts and sells them through a network of authorized distributers and authorized internet dealers.  The distributers are permitted to sell only to the authorized Internet dealers, who can only sell to end-users through designated websites.  The authorized resellers are further authorized to provide aftermarket service and warranties for Bosch products, such as maintenance, diagnostic and repair services.  Bosch asserts that Lincoln Diesel sells both new and remanufactured parts that it identifies as OEM Bosch Parts, but that Lincoln Diesel is not an authorized reseller of Bosch.  The complaint asserts that Lincoln Diesel obtains Bosch products as used products that have already been sold, at liquidation, or through importation from other regions of the world, and obtained or attempted to obtain products from authorized Bosch distributors or resellers in violation of the authorized parties’ agreements with Bosch.  Bosch asserts trademark infringement, tortious interference with contractual relations, and unfair competition under the laws of multiple states.  The case is before Judge Zobel.

Modulus Financial Engineering, Inc. v. Modulus Data USA Incorporated et al. (D. Mass. 20-cv-10997).

Modulus Financial Engineering (MFE) filed suit against Modulus Data USA and Modulus Data, Inc. (collectively, MDU) asserting trademark infringement, unfair competition and false designation of origin.  MFE has used the MODULUS mark for software design and development since 20002, and owns registrations for MODULUS in connection with the same.  MFE asserts that MDU began using the mark “Modulus Data” through a website known as Log10solutions.com in 2015 when it applied for a registration on the mark.  MFE asserts that, in the application for registration, MDU falsely asserted a date of first use that preceded MFE’s application for a federal trademark on MODULUS.  MFE further alleges that MDU strategically described its offerings to obscure the fact that software is the base of its products and services.  In March 2016, MDU changed its name from Logic10 Solutions to Modulus Data.  MFE then sent a cease and desist letter, after which MFE asserts that MDU filed a Section 7 Request with the PTO to change the date of first use in commerce of November 10, 2015. In addition to the trademark infringement and related claims, MFE seeks cancellation of MDU’s “Modulus”-based trademarks.

RS Means Company, LLC et al. v. SED Associates, Inc. et al. (D. Mass. 20-cv-10993)

RS Means and The Gordian Group accuse SED Associates and Aaron Richardson of copyright and trademark infringement in connection with SED’s alleged sales of counterfeit copies of books relating to construction cost estimating data.  RS Means asserts that its RS Means data is the construction industry standard for local cost estimation data, and that SED sells counterfeit copies on Amazon under the pseudonym “Code Emporium.”  RS Means says that Aaron Richardson, an SED engineer, purchased seven different RS Means titles in November 2019,  which were then copied and sold via Amazon, several specifically from Aaron Richardson himself.  RS Means points to reviews of these books on Amazon, which include complaints as to the quality of the physical books themselves, as opposed to the content.  In addition to copyright and trademark claims, RS Means asserts unfair competition under M.G.L. c. 93A.  Judge Casper has the case.

Toddle Inn Franchising, LLC v. KPJ Associates, LLC et al. (D. ME. 18-cv-00293).

Toddle Inn, a franchisor of educational and day care service, sued former franchisee KPJ Associates in 2018, asserting breach of contract, Lanham Act unfair competition and trade secret misappropriation in connection with KPJ’s continuing use of the Toddle Inn marks and materials.  The parties were ordered to arbitration pursuant to the franchise agreement.  On March 31, 2020, following completion of the arbitration process, Judge Levy confirmed the arbitration award and deemed it a final judgment.  A writ of execution to enforce the judgment was entered on May 7, 2020, followed a day later by KPJ’s filing of an emergency motion to quash the writ and asserting that the judgment was not yet final, in that the time to appeal had not yet passed.  Judge Levy granted KPJ’s motion.  He determined that General Order 2020-2, which the Court had issued on March 18th in response to the COVID-19 pandemic and which extended all deadlines in civil cases by thirty days, applied to deadlines for appeals to the First Circuit.  This pushed the deadline for KPJ to appeal from the original April 30, 2020 date to May 30th, making the writ premature.  He rejected Toddle Inn’s contention that any extension of the deadline for appeal must originate from the First Circuit, noting that Fed. R. App. P 4, which governs the time for appeal, expressly permits district courts to extend the deadline.  Further, under that Rule, if a party moves to extend the deadline for appeal within 30 days of its passing and demonstrates excusable neglect or good cause, the deadline can be extended regardless of whether General Order 2020-2 automatically did so.  KPJ orally requested extension at a May 12th videoconference hearing, within 30 days of the initial April 30th deadline, and demonstrated good cause in that the plain wording of the General Order supported KPJ’s belief that the deadline had been extended.   Thus, either way, KPJ’s motion to quash the writ of execution would be granted.

Note – While this blog has thus far focused exclusively on intellectual property in the United States District Court for the District of Massachusetts, I am expanding the scope to cover northern New England (Vermont, New Hampshire and Maine) as well.  The name of the blog will remain the same.

Cedar Bay Grilling Co. Ltd. V. Canadian Fish Exporters Inc. (19-cv-12264).

Judge Gorton denied Canadian Fish’s motion to set aside Cedar Bay’s voluntary dismissal of the complaint.  Canadian Fish was a distributor for Cedar Bay in the United States.  The relationship lasted for nine years, when a dispute arose as to Cedar Bay’s pending trademark registrations, leading Cedar Bay to accuse Canadian Fish of false association and false designation of origin for Canadian Fish’s alleged misuse of Cedar Bay’s marks.  Canadian Fish promptly countersued for breach of contract and declaratory judgment in Nova Scotia/  The parties mediated the disputes and came to a settlement in January, memorialized in a document titled “Settlement Agreement.”  When, days later, Cedar Bay asserted that this document was merely a memorialization of potential points of agreement and not an actual agreement, Canadian Fish moved to enforce the agreement and separately moved to dismiss the complaint in the Massachusetts case.  Cedar Bay initially opposed the motion, but shortly thereafter filed a notice of voluntary dismissal, leading to termination of the case by the Court.  Canadian Fish, apparently angered by Cedar Bay’s attempted reneging of the agreement, sought to vacate the dismissal so that it could seek a better outcome than the compromise of the settlement agreement.  Judge Gorton noted that if a plaintiff voluntarily dismisses a complaint pursuant to Rule 41(a)(1), where no answer or motion for summary judgment has been filed, the Court has no power to condition the dismissal – the plaintiff has an absolute right to dismiss.  He rejected Canadian Fish’s assertion that the motion to enforce the settlement agreement was functionally equivalent to a motion for summary judgment; while the summary judgment standard is generally applied to motions to enforce settlement agreements, application of the same standard does not mean that a motion to enforce a settlement agreement is the equivalent to a motion for summary judgment, as this is clearly not contemplated by the plain language of the Rule.

Supreme Court weighs in on disgorgement of profits for trademark infringement and appealability of IPR institutions.

The Supreme Court has resolved a Circuit split and held that willfulness is not a prerequisite to disgorgement of defendant’s profits in a trademark infringement case.  Willfulness remains a factor to consider, but is no longer a threshold to obtaining profits.  You can read my summary of the case on the L&A website here.

This was not the Supreme Court’s only recent foray into the IP world.  Earlier this week, the Supreme Court determined that the decision of the Patent Office on the timeliness of a petition for inter partes review is  not appealable.  An IPR petition must be filed within one year of the service of a complaint alleging patent infringement of the subject patent.  Should the PTO accept a petition that the patent holder considers to have been untimely, the patent holder has no recourse through the courts as a result of this ruling.  My colleagues Craig Smith and  Peter Evangelatos provide more detail here.  

 

Also, a reminder that we at Lando & Anastasi are tracking the impact of COVID on the USPTO, prominent foreign patent offices, and the Copyright Office, as well as the impact on civil litigation in the Federal Courts of New England and the state courts of Massachusetts.  You can find this information, updated as new information becomes available, here.  

Tile, Inc. v. S&W Dealz et al. (20-cv-10712).

Tile, which sells Bluetooth devices that can be attached to phones, car keys and the like and can be used to find the item to which it has been attached, sued S&W Dealz and Trend Goods, accusing them of infringing its federally-registered “TILE” trademark through their sale of Tile products through on-line commerce sites including Amazon.com.  Tile sells its products through authorized resellers, who are limited in the locations and websites that they can offer the products.  Authorized resellers are also prohibited from selling or otherwise diverting Tile products to any other party for subsequent resale.  While the defendants sell Tile products (apparently liquidated or used), their sale outside of the authorized network are non-genuine in that they are not new (despite being so listed) and do not come with Tile’s warranty.  Tile asserted trademark infringement unfair competition and false advertising under the Lanham Act, as well as state law unfair competition.

Tile’s complaint acknowledged that Tile did not know the name and address of either defendant, but did know the Amazon seller identification number for each.  Accordingly, the same day that Tile filed the complaint, it filed a motion for alternative service of process, seeking leave to serve them through Amazon’s electronic mail service that the defendants use to communicate with customers.  Under Massachusetts state law, which the Federal Rules refer to as an allowable means of service, service by alternative means can be used when a plaintiff cannot find the defendant, the last and usual abode of the defendant, or an agent on whom service can be made.  So long as the alternative means of service is reasonably calculated, under the circumstances, to give notice of the pendency of the action and afford them an opportunity to respond, due process is met.  Judge Burroughs, who is assigned to the case, agreed and granted the motion for alternative service.

God’s Era v. New Era Cap Company, Inc. (18-cv-11065).

God’s Era brought claims of false designation of origin and unfair competition under the Lanham Act as well as common law trademark infringement and unfair competition in connection with New Era’s 2016 collaboration with Jerry Lorenzo, owner of fashion brand Fear of God that resulted in a hat with a New Era design directly above the FEAR OF GOD mark. God’s Era, which formed in 2015, sought in October 2016 to register GOD’S ERA as a trademark, which New Era opposed. New Era first used the combined mark in commerce at the Major League Baseball All-Star Game in July 2017. God’s Era was only able to produce receipts totaling $235 in sales of t-shirts, hoodies and sweatshirts prior to that time, and none in interstate commerce. Judge Talwani granted New Era’s motion for summary judgment on the trademark claims, finding that the God’s Era mark was not entitled to common law trademark protection outside of the Boston area as of mid-2017. All of God’s Era’s sales prior to then had been made in person by God’s Era’s founder and sole employee to people in the greater Boston area. Any common law rights that had arisen as a result of these sales would not extend to Miami, the site of the All-Star Game and the sales of New Era’s products. Judge Talwani specifically noted that the website that God’s Era ran did not establish trademark rights because as of mid-2017 no actual sales had been made through the website. As no common law trademark rights were established, the false designation of origin and unfair competition claims likewise failed.

Tawa Supermarket, Inc. d/b/a 99 Ranch Market v. 99 Asian Supermarket (20-cv-10637).

99 Ranch, an Asian supermarket, operates 53 stores in the United States, including their most recent store in Massachusetts (which just opened in January). The store has utilized a red “99” surrounded by green laurel leaves as a mark, as well as the name “99 RANCH MARKET” for thirty years, and has registrations on both. 99 Ranch asserts that 99 Asian Supermarket opened a store in Malden that utilizes a red 99 surrounded by green laurel leaves in an attempt to capture 99 Ranch customers, and that “99 Asian Supermarket” infringes the 99 RANCH MARKET mark. 99Ranch asserts trademark counterfeiting under 15 U.S.C. 1114(a), state and federal trademark infringement, state and federal unfair competition, and state federal trademark dilution.

FabriClear, LLC v. Harvest Direct, LLC (20-cv-10580).

FabriClear, LLC developed a spray for treating bed bug infestations, and reached an agreement with Harvest Direct by which Harvest would advertise and sell the product, which was known as “FabriClear.” FabriClear asserts that, after several years of complying with the agreements with FabriClear, Harvest began re-labelling the product as “X-Out” and failing to pay FabriClear on sales of the same. FabriClear identifies several examples in which the “X-Out” label was simply superimposed directly over the “FabriClear” label. The complaint further alleges that Harvest essentially copied FabriClear’s label, packaging, website and advertisements for X-Out, including an advertisement in which the FabriClear bottle remained in several segments. FabriClear asserts breach of contract, trade secret misappropriation, and false designation of origin, as well as unfair competition. Magistrate Judge Hillman has the case.

(Note – I filed this complaint on behalf of FabriClear. As I always do when reporting on cases in which I and my firm are involved, I blog about the issues presented in the pleadings or orders, and avoid adding any “insider information.”)