Oakley, Inc. v. Kim (19-cv-10651).

Oakley accuses Kyong Kim and his retail business known as “It’s All About the Accessories” of selling counterfeit Oakley sunglasses. Oakley investigators visited Kim’s locations at the Northshore Mall in Peabody and the Cambridgeside Galleria (just down the street from my office in Cambridge) in February, and purchased sunglasses bearing Oakley trademarks that are asserted to be counterfeit. Oakley claims trademark counterfeiting and seeks injunctive and monetary relief. The case is before Judge Burroughs.

DogWatch, Inc. v. DogWatch of Sarasota, Inc. et al. (19-cv-10625).

DogWatch, a Natick company that makes electronic pet restraint systems such as the “invisible fence,” accuses its former Florida dealer DogWatch of Sarasota (“DoS”) of trademark and trade dress infringement, trade secret misappropriation, breach of contract, passing off, unfair competition, tortious interference with contractual relationships, and unjust enrichment in connection with DoS’ continued use of DogWatch’s name and proprietary information following termination of their business relationship. DogWatch has had a federal registration to its name since 1993, and asserts (with no real evidentiary support) that the name is famous. DogWatch further asserts trade dress protection in some combination of its order forms, yard flags, letterhead, stationary, internet web pages, URL’s van graphics and other unspecified materials. DogWatch further asserts trade secret protection in pricing information, draft marketing and promotional material, and business strategy and plans, and it asserts that the exclusive dealer agreement with DoS included an implied covenant not to use or disclose these purported secrets. Late last year, DogWatch notified DoS that they were terminating the exclusive dealer agreement, for reasons not specified in the complaint. Despite this, they assert that DoS continues to hold itself out as a DogWatch dealer and to use the trademark, trade dress, and trade secrets of DogWatch. The breach of contract count cites acts of DoS that occurred following termination of the agreement – there is no suggestion that DoS did anything wrong prior to termination. Judge Saris has this case.

Earle et al. v. Standard Process, Inc. (19-cv-10613).

Daniel Earle and his Amazon reseller company, The Antitrend, filed a lawsuit seeking a declaration that they do not infringe a number of Standard Process’ trademarks or otherwise unfairly compete with Standard Process. The Antitrend is in the business of reselling branded goods bought on the open market through an Amazon storefront. This district has seen a number of suits brought by trademark holders against Amazon resellers, notably ecobee’s recent series of suits. In this case, Earle claims that he obtains Standard Process goods legally and without restriction. He further asserts that his site makes clear that it is not affiliated with any of the manufacturers whose products are sold thereon, and that no manufacturer’s guarantees or warranties will apply to goods purchased from his site. Despite this, he has received a number of cease and desist letters from Standard Process, and that Standard Process filed (but did not serve) a complaint against his site in the Western District of Wisconsin last month. By this complaint, Earle challenges the claims in that complaint, asserting that the first sale doctrine prohibits these claims. Earle notes that Standard Process has already lost on the first sale doctrine in a prior litigation in the Eastern District of Wisconsin (although I would note that Banks prevailed at summary judgment with respect to a website that included an express disclaimer of affiliation, but denied summary judgment with respect to solicitations that included pictures of Standard’s products and lacked a disclaimer of affiliation). Earle also asserts that Standard Process’ resale policy does not form an enforceable contract, particularly where Earle bought the products on the open market, another issue that Standard Process had previously litigated and lost on (in a 2008 case, Standard’s unilateral resale policy was found not to constitute a valid contract, because it imposed no obligations on Standard; it is unclear from the complaint in this case whether Standard has since changed the policy). Earle’s complaint does not provide a reason why this case should be heard in Massachusetts instead of the first-filed district, so it will be interesting to see whether this case moves forward in the Commonwealth.

Naismith Memorial Basketball Hall of Fame, Inc. v. Naismith’s Pub & Pretzel, Inc. (19-cv-30039).

James Naismith created the game of basketball in Springfield, Massachusetts in 1891. Beginning at least as early as 1959, the Hall of Fame began operating a basketball hall of fame in the same town, named for James Naismith. The Hall owns a number of trademark registrations involving the name Naismith, including NAISMITH MEMORIAL BASKETBALL HALL OF FAME, NAISMITH BASKETBALL HALL OF FAME, NAISMITH COACHES CIRCLE, NAISMITH ORANCE, and several logo marks that incorporate “Naismith” in the logo. The Hall accuses Naismith’s Pub & Pretzel of deceit as to affiliation, false designation of origin, sponsorship or approval, dilution, and unfair competition, under both the Lanham Act and Massachusetts common law, asserting that the name of the restaurant, located a mere 1.3 miles from the Hall of Fame, was intended to trade off the good will of the Hall. The Hall notes that the restaurant is decorated with basketball memorabilia, including a number of images of James Naismith. The Hall’s claims all rely on “Naismith” being the dominant part of both its registered marks and Defendant’s name. Notably, the Hall does not indicate any direct connection with Naismith or his family. Also noteworthy, the first of the registrations was initially refused over a prior registration to “Naismith Awards,” with the examining attorney noting that the dominant part of each was “Naismith.” The Hall overcame the rejection through a consent agreement in which each asserted that there was no confusion between the two. While that might seem inconsistent with the current lawsuit, the “Naismith Awards” took place in Atlanta, not Springfield, and had coexisted at the time for nearly twenty years with no confusion noted.

ecobee, Inc. v. eKings et al. (19-10557).

Ecobee sued Amazon sellers eKings, Arad Systems, Western Ridge, as well as unknown individuals who run these sellers, asserting that they infringe ecobee’s trademark and interfere with ecobee’s contracts with its authorized resellers by reselling ecobee products without authorization. The allegations in the complaint track those of previous suits brought by ecobee in this district. Judge Zobel has been assigned to this case.

AirFit, Inc. d/b/a ROAM Fitness v. Lesage d/b/a Roam Team (19-cv-10444).

ROAM Fitness, which opened a fitness center for travelers in 2017 at the Baltimore International Airport, sued Worcester resident Dianne Lesage, who runs a company called the “Roam Team” that connects hotel guests with personal trainers, accusing Lesage of trademark infringement and false designation of origin. ROAM Fitness, who plans to expand to other airports in the country, obtained a federal registration for ROAM FITNESS for health club services in June 2017. ROAM Fitness says that Lesage approached them about a potential partnership between the two companies, which led to the discovery of the extensive use of “Roam Team” on Lesage’s website. After several requests to have Lesage change the name of her business, ROAM Fitness filed suit.

Channing Bete Co., Inc. v. Breenberg (29-cv-30032).

Channing Bete filed suit against Dr. Mark Greenberg for trademark infringement, tortious interference with business relations, and violations of non-compete and non-disclosure agreements. Dr. Greenberg jointly developed a curriculum for the social and emotional development of children, known as the “PATHS® Program,” in 1993. This curriculum was exclusively licensed to Channing Bete predecessor Developmental Research Programs, Inc., who registered the PATHS® trademark in 1995. Dr. Greenberg continued to develop the program, resulting in a “PATHS® Preschool/Kindergarten Program,” and jointly registered copyright in these developments. Channing Bete obtained exclusive rights to this program as well, and has since worked with Dr. Greenberg and the other authors to develop additional program-based materials to cover elementary-school children. Channing Bete partnered with a training organization run by Dr. Greenberg, “PATHS® Education Worldwide (PEW), to train purchasers of the PATHS® programs, and licensed PEW certain rights in the programs.

In the summer of 2014, Channing Bete decided to sell its rights in the PATHS® programs. They allege that Dr. Greenberg immediately began to interfere with its efforts to sell. According to the complaint, this interference led to the major large publishers refusing to consider a purchase. Channing Bete subsequently put the program out for bid, requiring non-disclosure agreements from any bidder. PEW placed a bid and executed an NDA, as did Dr. Greenberg personally. Channing Bete subsequently notified Dr. Greenberg that they had selected a different buyer, who would need to coordinate with Dr. Greenberg and the other authors. Dr. Greenberg was reminded of his non-disclosure obligations in this communication. The complaint alleges that Dr. Greenberg threatened to withhold assent to the transfer of the curriculum unless he received concessions for himself and PEW. It further alleges that Dr. Greenberg directly contacted the buyer on multiple occasions, indicating again that he intended to block the sale unless he received concessions and revealing the contents of his communications with Channing Bete, in violation of the NDA he had signed. Channing Bete then received an offer from a different party, seeking to buy the curriculum at the same terms offered by PEW. Channing Bete subsequently received communications from other authors of curriculum materials, each threatening to withhold consent to the sale, that Channing Bete alleges to have been orchestrated by Dr. Greenberg. Finally, Dr. Greenberg has published books laying out “PATHS Plus” that he has marketed as an alternative to the PATHS® program, allegedly in violation of non-compete language contained in his original exclusive license to Channing Bete.