Hinton et al. v. The Greatest Bar, LLC et al. (D. Mass. 20-cv-11232).

A number of models, including Jessica Hinton, filed suit in June 2020, asserting that Boston’s The Greatest Bar of misusing photographs of the models in promotional material for the bar.  When more than 90 days passed without the complaint being served, an Order to Show Cause was issued, with the attendant threat of dismissal.  The plaintiffs responded by noting that they had discovered that the bar had been sold years before to The Next Place, LLC and its owner William Fairweather.  An amended complaint was filed naming these entities as the defendants (although still naming the previous owner, who was subsequently dismissed, and the now-dissolved The Greatest Bar, LLC).  Judge Talwani denied the defendants’ motion for a more definite statement.  The defendants asserted that the complaint fails to identify the time period the photographs were allegedly used, preventing them from determining whether a statute of limitations defense might exist.  Judge Talwani, noting that such motions are disfavored in light of the availability of discovery, found that the complaint gave ample notice of the claims against the defendants, and that the plaintiffs have no affirmative duty to plead facts necessary to defeat affirmative defenses such as the statute of limitations.

Johnson v. North East Response Services LLC (D. N.H. 21-cv-00173).

Professional photographer Geoff Johnson accuses North East Response Services of using one of his copyrighted photographs on its website without license, and of removing digital copyright management information when so doing.  The photograph in question stems from a project in which Johnson returned to and photographed his childhood home, where he grew up with a hoarder mother.  Johnson says that a copy of one of the photographs was put on North East Response Services’ website, www.cleanwayservices.com, with the copyright metadata having been stripped from the photograph.  The complaint alleges that North East Response Services is a New Hampshire LLC, but the company’s site indicates that Cleanway Services is an emergency restoration and cleaning company with locations throughout New England, including one in Littleton NH, but is headquartered in Waltham, Massachusetts, and it appears that the LLC is registered in Vermont, not New Hampshire.  Johnson asserts copyright infringement and improper removal of copyright management information.

Monahan Products LLC d/b/a UPPAbaby v. Sam’s East, Inc. et al. (D. Mass. 18-cv-11561).

UPPAbaby accuses Sam’s Club of infringing trademarks on UPPAbaby strollers by purchasing UPPAbaby strollers overseas and importing them for sale into America without license or authorization.  With trial drawing near, Judge Saylor granted in part UPPAbaby’s motion in limine to exclude portions of a proposed exhibit to be used by a damages expert for Sam’s Club.  The proposed exhibit, which is entitled “Calculating Damages in Intellectual Property Disputes,” includes information on accounting measures that can be used to measure the apportionment of incremental profits for damages analyses (e.g., whether to attribute some or all of a defendant’s profits to infringement or to other factors not subject to recovery) as well as portions discussing and analyzing legal standards and the meaning of statutes and common law.   Judge Saylor determined that the proposed exhibit would likely qualify as a learned treatise and thus an exception to hearsay.  He excluded, however, the substantial portions of the treatise that focused on legal principles governing recovery of net profits and the burden of proof, finding these portions would impermissibly permit the expert to instruct the jury on legal principles.

This case, which is nearing trial, was brought by Craig Smith and Nathan Harris of my firm, Lando & Anastasi.   

Thermacell Repellants, Inc. v. Ideavillage Products Corp. et al. (D. Mass. 21-cv-1-263).

Thermacell Repellants, which sells mosquito and tick repellant devices, accessories and clothing, accuses Ideavillage of trademark infringement, false designation of origin and statutory and common law unfair competition.  Thermacell says that it began using the THERMACELL trademark in 1985 (when Thermacell was known as Schwabel) for cartridges containing liquid fuel for curling irons and brushes, and in 1986 obtained a  registration on the mark for this application.  Schwabel began using the mark for additional products, including insect repellant devices, in 1998, and obtained a federal registration on the mark for “devices having a heating element powered by cartridges containing liquid fuel which dispense insect repellant” in 2002.   After expanding the use of the mark to other products, Thermacell obtained a registration on the mark for various types of bags, hats and utility lights.  Thermacell says that New Jersey’s Ideavillage is a company that partners with individual clients to market products through television advertising.  Ideavillage recently began advertising shirts using the THERMACELL mark, and filed an intent to use application for COPPER FIT THERMACELL for compression garments.  The application was apparently rejected based on a likelihood of confusion with Thermacell’s registration.  Thermacell says that, despite the rejection and despite Thermacell’s having expressed concerns with the potential use of the Ideavillage mark, Ideavillage nevertheless began selling apparel under the COPPER FIT THERMACELL mark, and presented the mark on its packaging in a way that separated THERMACELL from the COPPER FIT portion of the mark.  Moreover, the COPPER FIT portion is designated with a ® symbol, while the THERMACELL portion is separately designated with a “TM” symbol, indicating an intent to claim trademark rights in THERMACELL standing alone.  Ideavillage sells products bearing these marks through Lowed Home Improvement, which also carries Thermacell products, further enhancing the likelihood of confusion.  Thermacell seeks destruction of products bearing the THERMACELL mark, injunctive relief against further usage of the mark, and monetary damages, fees and costs.

Larson v. Perry et al. (D. Mass. 19-cv-10203).

In this lawsuit involving copyright claims and various state law claims, Judge Talwani denied Larson’s motion to dismiss Perry’s copyright infringement counterclaim for failure to state a claim.  She found that Dorland adequately pled substantial similarity between a letter that she wrote to the anonymous recipient of her kidney donation and Larson’s short story the Kindest, which included a letter that Dorland asserts to infringe on the copyright in Dorland’s letter.  She noted that substantial similarity is an issue of fact that is not typically susceptible to motions to dismiss, and can only be dismissed where either the similarity exists only in non-copyrightable portions of the copyright-holder’s work or where no reasonable jury could find the works to be substantially similar.  She compared the two works and found enough similarity, including the similarities in the protagonists and their motivations, the structure of the letters and some specific terms and phrases, to preclude dismissal on this ground.

Judge Tawlani denied dismissal on Larson’s fair use assertion.  She found that Larson’s work could not be said to be transformative (and thus fair) at this stage of the proceeding, because most of the fair use factors involve factual issues that must be fleshed out through discovery.  Finally, Judge Talwani refused to dismiss for lack of damages.  While statutory damages and attorney’s fees appear to be unwarranted, given Larson’s publication of her story prior to Dorland’s registration of her copyright, Dorland would still be entitled to nominal damages and to injunctive relief, entitling her to proceed with her claims. 

Intellectual Property Development, Inc. v. Boise Cascade Engineered Wood Products et al. (D. Mass. 19-cv-10228).

Intellectual Property Development (“IDP”) brought suit against a number of lumber companies, which case was removed to federal court in 2019.  The defendants asserted counterclaims for a declaration of non-infringement of patents owned by IPD and/or its CEO, Glen Robell, as well as asserting state law claims against both.  Counsel for IDP and Robell subsequently withdrew from representation, leading to IDP’s claims being dismissed when no new counsel could be found.  Robell, who as an individual could appear pro se, remained  in the case, although his patent infringement and conversion claims were previously dismissed. 

From that point on, Robell failed to meaningfully participate in the litigation.  He refused to confer with the defendants on a proposed schedule, and failed to attend a hearing on a motion to compel.  When he subsequently missed the deadline to serve the answers to discovery that the Court had ordered and failed to attend a noticed deposition, Robell moved to have the case dismissed.  Magistrate Judge Boal recommended dismissal of Robell’s remaining claims, which Judge Gorton has not yet ruled on.  The claims against Robell remained, and Judge Boal ordered Robell to provide responses to discovery by December 17th.  Robell did serve responses, but defendant National Lumber filed another motion to compel, asserting the responses to be deficient.  After Robell again missed the hearing on this new motion, Judge Boal has now recommended that default judgment be entered against Robell as a discovery sanction pursuant to F.R.C.P. 37(b).

Generate IP Holdings LLC et al. v. Generate Biomedicines, Inc. (D. Mass. 21-cv-10179).

Generate IP Holdings and Generate Life Sciences accuse Cambridge’s Generate Biomedicines of trademark infringement.  Generate Life Sciences is a provider of reproductive services, including newborn stem cell preservation.  A subsidiary of the company, California Cryobank LLC is said to be the world’s premier donor sperm and egg bank.  Generate IP Holdings, a wholly-owned subsidiary of California Cryobank, owns certain intellectual property rights of the various Generate businesses, including trademark registrations to GENERATE and GENERATE LIFE SCIENCES, and the plaintiffs claim to have used the GENERATE mark in commerce since at least October 23, 2019 (although the registrations claim a first use in commerce of December 31, 2019).  The plaintiffs assert that the defendant began using the GENERATE and GENERATE BIOMEDICINES mark for products and services relating to the use of generative biology to create therapeutics.  The complaint says that Generate Biomedicines began using the marks no earlier than January 13, 2020 and in commerce no earlier than September 2020.  The plaintiffs have already filed oppositions to the defendants’ applications to register GENERATE.  Plaintiffs bring claims for federal and common law trademark infringement and unfair competition.

Cozy, Inc. v. Dorel Juvenile Group, Inc. (D. Mass. 21-cv-10134).

Cozy was founded in 1997 to develop new child car seat designs. Cozy owns a number of patents relating to foam-filled side airbags on child car seats, dating back to an application filed in 1999. According to the complaint, Cozy hired an engineer in 2006 to assist in developing the product, and had him sign an NDA, as he would have access to confidential design and technical information as a part of his work. Two years later, the engineer left Cozy and went to work for Dorel Juvenile as Engineering Director. Shortly thereafter, Dorel filed a provisional application for foam-filled airbags for use in car seats.

Cozy and Dorel subsequently executed an NDA to collaborate on development of further car seat technology, with Cozy disclosing confidential information to Dorel under the agreement. Cozy says that this information was used by Dorel to make its Air Protect seats, which it introduced in June 2009. Cozy notified Dorel of Cozy’s patents that are asserted to cover the Air Protect seats that year, and notified Dorel of subsequent issuance of Cozy patents that were also said to be infringed. Cozy accuses Dorel of infringing four patents – two, U.S. 7,156,416 and 8,136,835 titled “Easy Ejector Seat with Skeletal Crash Safety Beam,” and two, U.S. 9,669,739 and 9,902,298 titled “Vehicle Occupant Support.” Each of these claims priority to a 1999 application, meaning that all have expired. It is unclear why Cozy waited so long to file suit, as it exposes Cozy to defenses of laches and estoppel.

Magistrate Judge Dein is assigned to this case

Lickerish Ltd. v. Auction Holdings, Inc. (D. Mass. 21-cv-10113).

London-based photographic syndication company Lickerish accuses Auction Holdings of infringing the copyright in a photograph of Laura Vandervoort by Dimitry Loiseau, a photographer represented by Lickerish. The complaint asserts that Auction Holdings used the photograph on its http://www.auctionzip.com website. The site seems to be an on-line collection of actions taking place across the country, with some ability to place bids on-line, that included the a signed copy of the Vandervoort photograph. Of note, the complaint does not allege that the actual photograph being auctioned was unlicensed, only that the images (copies of the photograph) used to advertise the auction were violations of the copyright. The case is before Judge O’Toole.

Radio Entrepreneurs Interview

I had the fortune of speaking with Jeffery Davis on the Radio Entrepreneur about the state of intellectual property litigation in Massachusetts, including the change in the number of new filings and the rise in trade secret claims. Radio Entrepreneurs interviews a broad range of people to expose innovative and fast moving companies and create a knowledge pool for enrichment of the entrepreneurial community. You can listen to my interview here.