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.

Plum Island Soap Company, LLC v. Duke Cannon Supply Company, LLC (19-cv-10222).

Plum Island Soap Co. filed a lawsuit involving its “THE MAN CAN” trademark and trade dress, the second such suit over the past two years.  Plum Island Soap has sold packages of men’s toiletries in a paint can, “The Man Can,” since 2004, and it has already obtained injunctive relief relating to the now-registered mark and trade dress in a 2013 decision. Plum Island Soap alleges that Duke Cannon sells sets of men’s toiletries in identical paint cans, under the names “The Handsome Man Grooming Can” and “The Dapper Gentleman’s Grooming Can.” Plum Island Soap urges federal and common law trademark and trade dress infringement, unjust enrichment, injury to business reputation, and violation of C. 93A, although proving that the infringing acts occurred primarily and substantially within the state may be difficult, given that Duke Cannon is a Delaware company whose connection with Massachusetts appears to be the operation of a generally-available website.

Larson v. Perry et al. (19-cv-10203).

Sonya Larson filed suit against Dawn Dorland Perry, Los Angeles-based Cohen Business Law Group, and attorney Jeffrey A. Cohen, seeking a declaration that a short story published by Larson does not infringe the copyright of a letter posted by Dorland Perry on Facebook. Dorland Perry donated a kidney to an anonymous recipient in 2015, and subsequently wrote a letter to the unknown recipient outlining the reasons for her donation and expressing interest in meeting the recipient. She posted the letter to a private forum on Facebook that included Larson. Larson, who acknowledges having had a nominal social relationship with Dorland Perry in the past, asserts she was included in the forum without her permission or authority and that she had seen Dorland Perry’s letter. Three years later, Dorland Perry registered her copyright in the letter. Larson authored a short story about a working class Chinese-American woman who receives a kidney from a wealthy white woman, with a primary goal of depicting a “person of color resisting a white savior narrative,” in which the recipient receives a letter from the previously-anonymous donor. Larson states that in preparing this portion of her story, she researched and viewed many websites and similar letters from organ donors that were widely available on the internet. After a public reading of a portion of her story was reported to Dorland Perry, Larson alleges that Dorland Perry believed the story to be about her and became very upset. In subsequent edits, Larson made changes to the story to distinguish the fictional letter from Dorland Perry’s actual letter. The story was subsequently published in audio book format and accepted for printed publication, at which point Dorland Perry is alleged to have instituted a smear campaign against Larson and repeatedly accused her of plagiarism to Larson’s employer, members of her writing group, various writing organizations, and the Boston Globe newspaper. Larson was moved to file the action when Attorney Cohen, representing Dorland Perry, sent a demand to her publisher that they case and desist from further printings of the story, and the acceptance for publication was rescinded. Larson’s claims against Cohen and his firm are based in part on their threat of statutory damages and attorney’s fees against her publisher, which Larson asserts Cohen knew or should have known were not legally viable, as registration occurred more than three years after Dorland Perry’s letter was first published. Larson also asserts tortious interference with contractual relationships, defamation, and violation of Ch. 93A.

Pure Encapsulations, LLC v. Wind & Sky, Inc. et al. (19-cv-10127).

Pure Encapsulations sued Wind & Sky, which does business as “Wendy’s Wellness Supply” on Amazon, for Lanham Act and common law unfair competition, unfair and deceptive trade practices, and tortious interference with Pure Encapsulations’ agreements with its authorized resellers. The complaint is extremely similar to the one brought against Lean Living, down to identifying the same negative on-line reviews received for the defendants’ alleged bad acts (although the negative reviews on the defendants’ site differ from those of the prior complaint). Judge Burroughs has this case.

Pure Encapsulations, LLC v. Lean Living, Inc. et al. (19-cv-10113) and Tsalevich et al. (19-cv-10120).

Pure Encapsulations, a Sudbury company that makes and sells non-allergenic dietary supplements, sued lean Living and Tsalevich, as well as their principals, for Lanham Act and common law unfair competition, unfair and deceptive trade practices, and tortious interference with Pure Encapsulations’ agreements with its authorized resellers. Pure Encapsulations sells solely through authorized resellers and implements strict quality control requirements on their resellers. According to the complaint, the defendants operate Amazon storefronts, through which they sell Pure Encapsulation products that were purchased from authorized resellers. Pure Encapsulations asserts that the defendants mishandle these products, resulting in numerous complaints and poor on-line reviews, to the detriment of Pure Encapsulations. For example, customers complain if having received products whose safety seals had been tampered with; products with the incorrect number of pills or incorrect dosages; counterfeit products; and products that should have been, but were not, refrigerated. Pure Encapsulations seeks monetary and injunctive relief, as well as an order that the defendants take all action to remove references to Pure Encapsulation products from all sites on which defendants had listed them for sale.

ecobee, Inc. v. Techmatic et al. (19-10047).

Ecobee sued three Amazon sellers, accusing each of obtaining and reselling ecobee products bearing the ecobee trademark without authorization. Ecobee makes a number of automated, “smart” home control products (thermostats, light controls, and the like) which it sells only through authorized resellers. By contract, these resellers are prohibited from selling to anyone other than consumers. Ecobee asserts that the Amazon sellers obtained ecobee products either through fraud or by tortuously interfering with ecobee’s contracts with its authorized resellers. In addition to trademark and tortious interference claims, ecobee asserts unfair competition and false designation of origin. This is the second such case brought by ecobee in Massachusetts in the past several months. Judge Saris has the case.

ecobee, Inc. v. Filter Pro et al. (18-cv-12235), Hatzlacha LLC d/b/a The Corner Store et al. (18-cv-12236), and Ultra Design (18-cv-12237).

Ecobee filed three trademark suits, accusing Filter Pro, The Corner Store, and Ultra Design of trademark infringement, unfair competition, false designation of origin, and tortious interference. Ecobee makes smart home control products, including light switches and thermostats, that it sells through authorized resellers who are contractually obliged to provide specific quality controls on the products sold and prevented from selling to subsequent, unauthorized resellers. Each of the defendants is an Amazon Seller Account that, despite not being ecobee authorized resellers, are alleged to have sold ecobee products.  Ecobee asserts that the defendants could only have obtained ecobee inventory through knowingly soliciting authorized resellers, intentional and knowing interference with the resellers contracts and business relationships with ecobee, or through fraudulent or illicit means. They further assert that the defendants violate the ECOBEE trademark by selling actual ecobee goods without authorization. The cases are presently before Judges Stearn, Woodlock, and Saris.