Ecobee sued Amazon resellers eMonkey, Francisco Borboa, Quick Sales MP. Resale Kings, My Secret Style, Rhemacapital, and Wolfreeze, accusing each of trademark infringement, unfair competition, and false advertising arising from the defendants obtaining and reselling ecobee products despite not being authorized to do so. As with other such ecobee complaints, they here assert that the defendants obtain liquidated or used ecobee products and falsely advertise them as new and genuine, in violation of the Lanham Act.
Panoramic Images sued AGA-Boston and the Association of Government Accountants in the Worcester division, accusing them of using a Panoramic Images’ photograph of the Boston skyline on their respective websites, www.agacgfm.org and the Boston Chapter sub-domain. Panoramic Images accuses the Boston corporation of direct copyright infringement, and the national entity of vicarious copyright infringement, asserting that the national entity had the right to supervise the Boston corporation’s website activity and had a direct financial interest in the infringement. The case is before Judge Hennessy.
The FBA and the WCBA is holding a lunch with Magistrate Judge David Hennessy on March 12, beginning at 1:00, to discuss the state of civil cases, mediation, and developments in criminal practice. You can register here.
On March 16th at 6:00, the FBA will host a panel of clerks from the District of Massachusetts and the Southern and Eastern Districts of New York titled “What Attorneys Should Know Practicing in Federal Court.” The panel, made up of Robert Farrell of Massachusetts, Ruby Krajick of the Southern District of new York, and Douglas Palmer of the Eastern District of New York, will speak and take questions. You can find the link to register here.
The Court will present an update on Court Operations during Covid on March 31st at noon. The Court is accepting input on topics that attorneys would like to see covered here, and registration can be found here.
I spoke with Jeffrey Davis of Radio Entrepreneurs recently about when an “exclusive” licensee of a patent can (and cannot) bring suit to stop others from practicing the licensed patent and protect their exclusivity. You can see the interview here.
Florida couple Jason and Mary Young accuse Agawam’s Hydropolis of infringing U.S. Patent No. 9,468,865, titled “Tincture Preparation Method and Use.” The ‘865 patent includes claims directed to methods of making a tincture using a particular apparatus. The general idea is to incorporate cannabis into butter or oils to form tinctures. The Youngs, who are the named inventors on the ‘865 patent, assert that Hydropolis’ “Butter Brewer” product matches the apparatus of the claims, and that it comes with instructions for using the brewer to create tinctures that ultimately induces infringement of the method claims. The Youngs say they notified Hydropolis of the infringement in 2017, but Hydropolis refused to cease and desist in the offering for sale and selling of the product. The Youngs seek injunctive relief as well as trebling of damages for willful infringement.
Stockfood is a food image agency that licenses food images, videos, articles, features and recipes. Stockfood accuses New England Cheesemaking of using Stockfood’s copyrighted images on N.E. Cheesemaking’s website, www. Cheesemaking.com. Stockfood seeks injunctive and monetary relief.
Monsarrat filed suit against Ron Newman last summer, accusing him of defamation and copyright infringement. Monsarrat had alleged that a Russian social network known as LiveJournal, allows users to post content without restriction, including pornography, obscenities, and defamation. He says that Newman moderated a discussion group on LiveJournal that republished defamatory posts from a prior social media site, EncyclopediaDramatica, that included defamatory suggestions regarding Monsarrat, including falsely associating Monsarrat with pedophilia. Monsarrat had previously gone after Newman and EncyclopediaDramatica in both state and federal court, but his claims were denied as time barred. Monsarrat says that Newman reposted the subject material again in 2017, this time to a different website known as Dreamwidth. In January, Judge Stearns granted Newman’s motion to dismiss for failure to state a claim. Monsarrat’s copyright claim was based on the republication of a post made by Monsarrat on the LiveJournal site demanding removal of the offending posts. Judge Stearns found that, as a matter of law, the republication of the post was covered by the fair use defense. He found the republication to be for a different purpose, namely historical preservation as opposed to Monsarrat’s purpose of seeking to obtain deletion o the underlying posts. He further found that there was no conceivable market for Monsarrat’s original post, meaning that there was no likelihood that Newman’s republication could affect the market for the work. He found that Newman was shielded from liability on the defamation claim under the fair harbor provisions of the Communications Decency Act. Newman then moved for attorney’s fees, while Monsarrat filed a notice of appeal. Judge Stearns has now granted n part Newman’s motion for fees. He found that Newman’s obtaining dismissal of the copyright claim on the basis of his affirmative defenses demonstrated the flimsiness of Monsarrat’s copyright complaint. He also found the copyright complaint, which was premised largely on a restatement of LiveJournal’s anti-harassment policy, left no plausible argument that the republication effectuated the same purpose (and thus did not constitute fair use) as the underlying post. With respect to the defamation claim, Judge Stearns found that Newman’s lawyer raised the safe harbor issue in response to the demand letter from Monsarrat demonstrated that Monsarrat should have been aware of the weakness of that count Judge Stearns found that an award of fees was warranted. He did, however, reduce the requested fee amount by half, given that the case did not proceed beyond the motion to dismiss phase, and awarded $29,382 in fees.
Judge Hillman denied Lacerta’s motion to compel notes taken by one of Inline Plastics’ expert. Lacerta sought eleven pages of notes taken by Inline’s damages expert during conversations with Inline employees, another Inline expert, and Inline’s counsel in connection with the preparation of his report. Inline’s in-house or outside counsel took part in each of these conversations, and the conversations took place in connection with his preparation to testify, and were not produced in response to Lacerta’s subpoena.
When Lacerta discovered the existence of the notes during the deposition of the expert, Inline produced a redacted set of the notes, contending the redactions were exempt as expert or attorney thought process, analysis, opinions or commentary. Judge Hillman noted that the rules concerning expert discovery were amended to protect expert-attorney communications, with the exception of communications related to the expert’s compensation, the facts and data provided by the attorney and relied upon in forming the expert’s opinions, and assumptions provided by the attorney and relied upon by the expert.
The 2010 changes to the rules did not provide for work product protection for communications between a party’s experts, but where an attorney is involved, work product protection will apply to anything not falling within one of the exceptions, under which the requested subject matter does not fall. Such subject matter can still be obtained in the limited circumstance where the requesting party has substantial need for the discovery and cannot obtain it in some other way without substantial hardship, but Lacerta made no such argument. Accordingly, Lacerta’s motion to compel was denied.
Motus sued CarData, accusing CarData of using its CORPORATE REIMBURSEMENT SERVICES trademark in CarData’s “meta title” (which Motus defines as the HTML code in the header of a web page that helps search engines understand the content of the page). Motus was formerly known as Corporate Reimbursement Services, Inc., and says that it still uses the mark in connection with its workforce management business. Judge Gorton granted CarData’s motion to dismiss for lack of personal jurisdiction. CarData, a Canadian corporation headquartered in Ontario, has offices in Colorado and New York, but no locations in Massachusetts.
Motus did not allege that CarData had a physical presence in Massachusetts or any clients in the state. Judge Gorton noted that, where no evidentiary hearing had taken place, the Court applies a prima facie standard of review and construes the factual allegations in the light most favorable to the plaintiff, but the complaint still must provide more than unsupported evidence to demonstrate the existence of personal jurisdiction. Motus relied primarily on a website run by CarData that was available to residents of Massachusetts. Judge Gorton looked to case law that finds cases involving interactions through a website operated outside of Massachusetts focus primarily on the “purposeful availment” portion of the jurisdictional analysis, namely that the plaintiff must demonstrate that the defendant’s website contacts represent a purposeful availment of the privileges of conducting activities in the state. This is determined by evaluating the level of interactivity of the website, looking for something more than merely a nationally available website to support personal jurisdiction.
The “something more” can be whether the sire specifically targets Massachusetts residents or whether the website results in the knowing receipt of substantial revenue from Massachusetts residents. Here, the “something more” was absent – Motus had put forth no evidence supporting either prong, and the mere presence in state of the trademark holder was not sufficient to confer personal jurisdiction over the foreign defendant, particularly given that there was no evidence that CarData was even aware that Motus resided in Massachusetts. Accordingly, Motus’ complaint was dismissed without prejudice.
Inline Plastics accused Lacerta of infringing three patents relating to tamper resistant plastic packages. Lacerta moved to strike portions of Inline’s expert report for allegedly proposing infringement under the doctrine of equivalents for a pair of claims, because Inline had not asserted infringement by equivalents in any of the prior infringement contentions set forth by Inline in accordance with the local patent rules. Inline had supplemented its infringement contentions on three separate occasions. A Markman hearing was held, and fact discovery closed without Inline asserting infringement by equivalents. Judge Hillman determined that this was, in fact, and improperly late disclosure of the doctrine of equivalents theory.
Under the Mass. Local Rule 16.6 ( Massachusetts’ local patent rule), the plaintiff must file infringement contentions that set forth on an element-by-element basis certain information, including whether each element of each asserted claim is asserted to be present literally or under the doctrine of equivalents. None of Inline’s contentions asserted equivalents for any element, which Inline conceded. Judge Hillman rejected Inline’s argument that its late disclosure of the equivalents theory would not prejudice Lacerta, finding that Inline’s proposal that Lacerta be allowed to depose the expert for an additional hour on the theory (Inline’s expert had already been deposed) and allow Lacerta’s expert to rebut the theory would not cure the additional scope of defense and trial preparation that allowing the introduction of the theory would present. He also rejected Inline’s argument that Lacerta’s noninfringement contentions were too vague to permit Inline to present the equivalents theory earlier, noting that Inline had never raised any issue with Lacerta’s report. Judge Hillman further rejected Inline’s request to allow them to supplement their contentions to include the equivalence theory, noting that late supplementation of contentions are only allowed on a showing of good cause and Inline had shown no cause, much less good cause, for such a supplementation.