Crosby Legacy offers quality consulting services that employ the teachings of its founder, Philip J. Crosby, a pioneer in the field. Crosby Legacy consulted for energy company FMC under an agreement executed in 2014 which permitted FMC to utilize the Crosby materials company-wide, including copyrighted works and the use of three Crosby trademarks – Absolutes of Quality Management™, Absolutes of Quality™, and Price of Nonconformance™. The 2014 Agreement restricted continued use of the Crosby materials should FMC experience a change in control. FMC subsequently merged with Technip S.A., creating defendant company Technip FMC in January 2017. Pursuant to the change of control provisions, Crosby Legacy sought to negotiate an agreement with the new entity to allow them continued use of the Crosby materials. TechnipFMC expressed a strong interest in continuing the relationship, and according to Crosby Legacy, a $2.3 million agreement was reached via a string of e-mails in May 2017, needing only to be memorialized and executed. TechnipFMC dragged its feet on the specific language to be included in the new agreement, and ultimately announced in November 2017 that it was no longer interested in working with Crosby Legacy. At that point, TechnipFMC had used the Crosby materials for eleven months without paying, in violation of the 2014 Agreement’s change of control language. Crosby accuses TechnipFMC of breaching the 2014 Agreement and of having formed, and then breached, the 2017 Agreement, and also brings claims of breach of the implied covenant of good faith and fair dealing, fraud, 93A claims, trademark and copyright infringement, and unjust enrichment. The case is before Judge Wolf.
Judge Hillman dismissed all counts of James Fischer’s amended complaint with prejudice for failure to state a claim. Fischer, acting pro se, brought claims of false association, false advertising, violation of rights of publicity, unfair competition, and tortious interference with prospective economic advantage in connection with online communications criticizing his theories relating to beekeeping made between the defendants and the Organic Beekeepers Discussion Group and BeeSource Forum. The gist of the complaint is that defendants Dean Stiglitz and Laurie Anne Herboldsheimer fabricated and published negative reviews, which they attributed to Fischer, of their book “The Complete Idiots Guide to Beekeeping” in an attempt to gain attention and notoriety within the beekeeping community for the book – Fischer himself being an oft-published beekeeper. Fischer had previously been allowed to amend his complaint to add additional factual pleadings relating to damages and supporting the elements of his claims, but Judge Hillman found (in fairly summary fashion) that the amended complaint failed to factually assert all of the elements of any of the asserted claims; there was no likelihood that the public would perceive Fischer as sponsoring or endorsing the book, no discussion of Fischer’s commercial activity in anything other than a satirical way, no allegations that the defendants sought to exploit Fischer’s name to exploit its value for advertising or trade purposes, no indication of any actual or prospective actual customer that was lost by Fischer, and with respect to the unfair competition claim, no allegation that Fischer is located in Massachusetts or claims an injury occurring in Massachusetts.
Oomph Hair filed suit against Hair Illusions and its founder, Salvatore Passariello, accusing them of infringing Oomph’s trademark, cybersquatting, falsely disparaging Oomph products, and other forms of unfair competition, as well as seeking declaratory judgment that Hair Illusion’s “hairline enhancement” trademark application is invalid as merely descriptive. Hair Illusions is purported to control 90% of the real hair fiber market (real hair fiber is, as near as I can tell, small hair fibers, that are temporarily adhered to natural hair, making thinning hair look fuller). Oomph claims that Hair Illusions uses unfair and tortious means to maintain this market share, such as threatening Oomph and Oomph customers with patent lawsuits, despite having no patent to assert (Passariello had a pair of application undergoing prosecution at the time; they have since gone abandoned). Oomph also asserts that Hair Illusion registered domain names confusingly similar to Oomph’s registered HAIR FUSION trademark, which disparage Oomph’s product (e.g., alleging that the product contains parasites) and redirect customers to Hair Illusion’s on-line store. Oomph seeks preliminary and permanent injunctive relief, transferal of the offending domain names, and monetary damages. Oomph filed a motion for a preliminary injunction concurrently with the filing of the complaint. Judge Zobel scheduled a hearing on the motion for March 28.
The Plum Island Soap Company sued 1818 Farms sued Alabama’s 1818 Farms and its sole operator, Natasha McCrary for trademark and trade dress infringement relating to men’s grooming products sold in combination and packaged in a paint can. The background of the lawsuit is interesting. Plum Island Soap Co. has an incontestable registration on “THE MAN CAN” mark. It alleges it has been using the paint can trade dress for more than five years, establishing a prima facie case of secondary meaning, and successfully obtained injunctive relief relating to the mark in 2013.
After discovering 1818 Farms’ “The Man of the Farm Grooming Can” product in the fall, counsel for Plum Island Soap Co. contacted 1818 Farms.
According to the complaint, they negotiated and agreed upon terms to resolve the dispute in which 1818 Farms acknowledged the validity of the trade dress and agreed to be enjoined, needing only to memorialize the agreement into a formal settlement document, and in reliance upon this, Plum Island Soap Co. did not file suit; yet in January, while in daily communication with Plum Island’s attorneys , 1818 Farms filed suit in Alabama seeking declarations of non-infringement, challenging the validity of the trade dress , and seeking to cancel the trademark registration. Six days later, 1818 Farms then contacted Plum Island’s lawyers and reneged on the agreed-upon terms of the settlement and informed Plum Island of the Alabama complaint. Plum Island asserts that, but for the false indication that 1818 Farms was settling the dispute, it would have filed suit in Massachusetts, and that Massachusetts should thus be the forum for the litigation. Plum Island claims trademark and trade dress infringement, as well as contributory and vicarious trademark infringement in connection with third-party sales of “The Man of the Farm Grooming Can” product and the preparation of marketing materials by third parties for 1818 Farms’ benefit. Plum Island also alleges breach of contract and of the covenant of good faith and fair dealing, stating that the settlement discussions had reached the point of an actual agreement, as well as fraud relating to statements made in the Alabama complaint that Plum Island made false statements to the PTO when seeking to register THE MAN CAN mark, and unfair and deceptive practices under Mass. G.L. 93A. Plum Island seeks temporary, preliminary and permanent injunctions, enforcement of the settlement agreement, monetary damages, and treble damages and attorney’s fees.
PointCare sued Brigham and Women’s Hospital, Mass. General Hospital, the Koch Cancer Institute, and the two named inveontors, both former PointCare employees, accusing them of infringing U.S. Patent No. 7,611,849, which is alleged to cover aspects of “enhanced cellular assays.” The technology, which addresses human cells that have been marked for detection as receptors, can lead to very early detection of conditions such as AIDS, lung cancer, and other diseases. The patent covers the binding of gold to receptor cells to facilitate in their detection and quantification. The complaint alleges that the defendants are preparing to market infringing technology, as evidenced by articles published by the defendants that indicated they had been conducting research to locate markers as to cancer cells which could be addressed through the patented process. In addition to the infringement claim, the defendants are accused of violating Mass G.L. c. 93A, conversion under state law, breach of contract (alleging that infringement of the patent is effectively a breach of the agreement whereby the inventors assigned the patent to PointCare), and interference with a contract (again, the assignment contract).
In a series of consolidated cases (discussed further here and here), a large number of Boston-area cab companies accuse Uber, as well as Uber founders Travis Kalanick and Garrett Camp, of unfair competition in violation of Massachusetts state and common law, and some of the plaintiffs further allege that Uber violated state and federal antitrust law, interfered with advantageous business relationships, engaged in civil conspiracy and aided and abetted unfair competition. Kalanick and Camp both moved to dismiss the claims against them as individuals. Judge Gorton granted this motion, finding that the plaintiffs had failed to allege specific facts demonstrating either general or specific jurisdiction – the complaint alleged only that the two formed Uber while in California and that Uber had undertaken activities in Massachusetts, but failed to identify any activities the individuals, as opposed to the company, had directed towards this forum.
As to the claims against Uber, Massachusetts passed a law in August 2016, the “TNC Act,” that pre-empts local municipalities from regulating ride-sharing companies like Uber, and the plaintiffs agree that this precludes Uber’s post-enactment activity. With respect to the pre-enactment activity, Judge Gorton found that, absent the TNC Act, Uber’s activities fell within the Boston municipal taxi regulations. Accordingly, allegations that Uber did not comply with the taxi regulations or incur the concomitant costs to gain an unfair advantage and cause economic injury sufficiently stated a cause of action for the statutory and common-law unfair competition claims. The court likewise denied the motion to dismiss with respect to claims that Uber conspired with its independent contractor drivers to violate the taxi rules. Judge Gorton allowed Uber’s motion to dismiss claims that Uber and its drivers, as an employer and employees (as opposed to independent contractors – it is not yet clear what status the drivers will ultimately be deemed to have held), conspired to violate the taxi regulations, because with the individual founders having been dismissed, this would effectively allege that Uber conspired with itself to do so, a claim that is untenable. Judge Gorton dismissed claims for interference with advantageous business relationships because the complaint did not allege interference with any specific anticipated business relationship, and the plaintiffs’ allegations regarding interference with people seeking for-hire ride services generally was not sufficiently specific. Finally, Judge Gorton also dismissed the antitrust claims. Those claims were based on a predatory pricing theory whereby a company sells products or services below its costs, hoping to drive competitors out of the market, at which point the company can raise its prices due to its monopoly position. The complaint did allege that Uber had lost “billions of dollars” (which seems to be accurate), but this was found to lack the particularity required of the antitrust laws.
Alamite Ventures, owners of a Russian-language internet video streaming service known as “TUA.tv,” filed an interesting lawsuit in the District of Massachusetts against a competitor Russian-language video streaming service, “eTVnet.” According to the complaint, eTVnet is populated with pirated copyrighted videos for which no license fees were paid, and advertises the service as legal and fully-licensed. Because of this, eTVnet can both offer content that the copyright owners do not license out, making the content unavailable to companies operating legitimately, and to offer lower prices as a result of not paying license fees. The complaint names eTVnet’s two owners and operators as co-defendants with the company, and use the multiplicity of defendants to assert claims of civil conspiracy, along with unfair business practices and false designation of origin/false or misleading representations of fact under the Lanham Act. It will be interesting to see if this complaint, which effectively argues for redress of harm resulting from infringement of third-party, non-plaintiff’s copyrights, can survive a preemption challenge under 17 U.S.C. § 301.