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.

Larson v. Perry et al. (19-cv-10203).

Sonya Larson sued Dawn Dorland Perry, seeking a declaratory judgment that a story written by Larson did not infringe Perry’s copyright in a similar story, and sued Perry, her attorney and his law firm for defamation and tortious interference with contractual relationships when Larson’s publisher was threatened with a lawsuit if they continued to publish Larson’s story. Perry’s lawyer, Jeffrey Cohen, and his California firm, Cohen Business Law Group, moved to dismiss for lack of personal jurisdiction, which Judge Talwani denied. She noted that Cohen Law had sent letters to BFF in Cambridge, MA, alleging that Larson’s story plagiarized Perry’s letter and that publication would infringe on Perry’s rights, and threatened statutory damages of up to $150,000 should BFF publish. Larson alleges that this letter knowingly misrepresented both the facts and the law such that it constituted an unfair or deceptive trade practice under Massachusetts law and was designed to interfere with her agreement with BFF. As this behavior was targeted to a Massachusetts company for the purpose of affecting BFF’s business decision. This therefore is sufficient to establish specific personal jurisdiction.

Cohen and his firm also moved for dismissal on the grounds that, as a matter of law, their alleged conduct is shielded by Massachusetts’ litigation privilege. An attorney’s statements in the Commonwealth are absolutely privileged where such statements are made by an attorney engaged in his function as an attorney whether in the institution or conduct of litigation or in conferences and other communications preliminary to litigation. Where the communication is to a prospective defendant, however, the anticipated litigation must be contemplated in good faith, and does not allow a lawyer the freedom to act with impunity. While lawyers cannot be held liable for the contents of their speech, that speech can be used as evidence of misconduct, with the line between the two determined on a case by case basis. In this case, the complaint asserts that the Cohen letter was used to effectuate unlawful ends, rather than looking to establish liability based on the content standing alone, and Judge Talwani determined that the good faith of the Cohen firm could not be determined on the pleadings. Accordingly, she refused to dismiss based on litigation privilege.

Judge Talwani denied Perry’s moved to dismiss on the grounds that defamation was not properly pled and that Larson failed to plead actual malice, a requirement under Massachusetts defamation law when the plaintiff is a limited purpose public figure. The complaint identified instances in which Perry is alleged to have told several writing organizations, Larson’s employer, and a writing organization where Larson sought a fellowship that Larson plagarized her work, providing Perry with enough specificity to mount a defense. Regarding the “limited public figure” issue, Judge Talwani noted that while the issue is one of law, it is inherently fact-specific such that it cannot be determined on the pleadings.

Judge Talwani granted Perry’s motion to dismiss the tortious interference counts. The complaint alleged that, as a result of Perry’s conduct, two publishers decided to pull Larson’s story from their website earlier than call for by the contracts between Larson and the two. Ordinarily, this would be sufficient to survive a motion to dismiss. Here, however, the two contracts were included as exhibits to the complaint and could thus be fairly considered in determining the motion. In reviewing the contracts, neither included the promises alleged in the complaint that the story actually be published or remain on available for any particular length of time.

As a note, Judge Talwani denied Perry’s request for a hearing on her motion, finding that the coronavirus crisis combined with the Court’s determination that it could properly adjudicate the issue on the papers weighed against a hearing.

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.”)

Ethic Inc. v. Admirals Bancorp, Inc. et al. (20-cv-10581).

Ethic, an investment advisor that specializes in socially aware investing, filed suit against Admirals Bancorp and Ethic Wealth Advisors, LLC, accusing the two of rebranding to the “ETHIC” mark for the provision of similar services. Ethic asserts federal and common law trademark infringement, false designation of origin and unfair competition and unfair trade practices. Ethic further asserts that the infringement was willful, because Admiral’s intent-to-use applications for registration of ETHIC and ETHIC A WEALTH BANK were each refused in light of Ethic’s prior registration. Ethic asserts that, in response to the latter rejection, Admiral misled the PTO as to the differences between the respective services, banking services versus investment advisory services, that rendered confusion unlikely. According to Ethic, at the time of this representation, Admiral had already taken steps to offer investment services under the “Ethic” mark, as evidenced by Admiral’s SEC filings. The case is before Judge Sorokin.

Biogen, Inc. et al. v. Creative Biolabs Inc. (20-cv-10543).

Biogen, along with the University of Zurich, accuses New York-based Creative Biolabs of infringing U.S. Patent No. 8,906,367. The patent is said to cover an antibody, Aducanumab, that Biogen is investigating as a treatment for early Alzheimer’s disease. Biogen licensed the antibody from a Swiss biotech company, Neurimmune Therapeutics, who had itself licensed the antibody and accompanying intellectual property from the University of Zurich. The antibody was developed from antibodies in healthy, aged donors who did not have Alzheimer’s, under the theory that these individuals’ immune systems had successfully resisted the disease, and the treatment has reduced the plaques that are a marker of the disease in animal studies. Biogen is presently working in collaboration with pharmaceutical company Eisai in clinical development and commercialization of the antibody, which is also known by the widely-used designation “BIIB037,” and is currently seeking regulatory approval for its use, currently back in trials after having previously been pulled. In addition to patent infringement, Biogen asserts that Creative Biolabs infringes Biogen’s trademark rights in the “BIIB037” alternate designation, which Biogen believes will cause confusion or mistake as to the origin, sponsorship or approval of Creative Biolabs’ aducanumab products. Biogen also asserts violation of 93A. The case is with Magistrate Judge Cabell.

HubSpot, Inc. v. Zoho Corporation Pvt. Ltd. (20-cv-10520).

Cambridge’s HubSpot, a marketing and customer relations software company, accuses India’s Zoho of trademark infringement and dilution of its HUBSPOT and HUB family of marks, including HUBSPOT MARKETING HUB (the sole mark on which it has registration) and MARKETING HUB, which HubSpot alleges to have used since 2017. HubSpot asserts that Zoho’s use of the term “ZOHO MARKETINGHUB” on similar products through similar channels, infringes these marks. Zoho announced in January 2019 that it was rebranding its products with that mark. HubSpot asserts that Zoho continued with the use of this mark despite receiving cease and desist communications, making the infringement willful. In addition to the federal trademark infringement and dilution claims, HubSpot alleges false designation of origin, common law trademark infringement and violation of 93A, although it is difficult to see how Zoho’s acts occurred primarily and substantially in Massachusetts to sustain the 93A claim.

JT IP Holdings, LLC et al. v. Florence et al. (20-cv-10433).

JT IP and its member and manager, Jeffery Eldredge, filed suit against FloPack, LLC and its members and managers Thomas Florence and his daughter, Kimberly Perry. According to the complaint, Florence approached Eldredge in 2016 about going into business together. The two subsequently formed JT IP Holdings, with Florence’s contribution to the company to include the development of a new product, as well as to set up the business, which Eldredge contends Florence failed to do. In the summer of 2019, Florence was issued U.S. Patent No. 10,364,563 entitled “Runoff Water Management System.” Eldredge asserts that this patent was the result of his working with Florence to update and improve upon a previous Florence patent to a similar system. He says that he relied upon Florence’s assertion that he need not be named an inventor, and that the ‘563 patent was assigned to JT IP, protecting his rights. Eldredge asserts that Florence has hinder their ability to obtain necessary additional funding, and subsequently purported to assign the ‘563 patent to new entity, FloPack, LLC, that was set up in the name of Kimberly Perry, in violation of the operating agreement of JT IP. Eldredge brings claims for correction of inventorship. violation of the Lanham Act in misrepresenting ownership of the ‘563 patent, infringement of the ‘563 patent, declaratory judgment that the assignment of the ‘563 patent to FloPack is null and void, conversion, breach of fiduciary duty, unjust enrichment, fraud and misrepresentation, tortious interference with a contract and with prospective economic advantage, and violation of 93A.