Onyx, which sells auto parts and accessories under its “iD®” mark, accuses ID Parts of copying this mark in connection with sales of auto parts to benefit from the name recognition and good will associated with the mark and to mislead consumers into believing that ID Parts’ website, www.idparts.com, is associated with Onyx. Onyx, a pure online retailer, began selling through its www.CARiD.com website in 2008. Since then, Onyx says it’s iD® line has grown into one of the largest online retailers of automotive products in the country, receiving over 10 million visitors monthly. Onyx holds registrations for several stylized “iD” marks as well as “CARiD,” “BOATiD,” “CAMPERiD,” “MOTORCYCLEiD,” “POWERSPORTSiD,” “RACINGiD,” “RECREATIONiD,” “STREETiD,” “TOOLSiD” and “TRUCKiD.” Onyx asserts that ID Parts took on that name at the end of 2009, with full knowledge of Onyx’s rights in the “iD” marks, and in 2014 sought registration of a stylized mark consisting of the term “id” contained within a circle. That registration was refused due to a likelihood of confusion with Onyx’s “iD” mark, and ultimately the application was abandoned. Despite this, and despite receiving two cease and desist letters from Onyx, ID Parts has continued using the mark and domain name. Onyx asserts trademark infringement, unfair competition and false designation of origin under the Lanham Act and Massachusetts common law, dilution, cybersquatting, and deceptive trade practices under M.G.L. c. 93(a) § 2. Judge Zobel has the case.
Bosch makes fuel injectors and related car parts and sells them through a network of authorized distributers and authorized internet dealers. The distributers are permitted to sell only to the authorized Internet dealers, who can only sell to end-users through designated websites. The authorized resellers are further authorized to provide aftermarket service and warranties for Bosch products, such as maintenance, diagnostic and repair services. Bosch asserts that Lincoln Diesel sells both new and remanufactured parts that it identifies as OEM Bosch Parts, but that Lincoln Diesel is not an authorized reseller of Bosch. The complaint asserts that Lincoln Diesel obtains Bosch products as used products that have already been sold, at liquidation, or through importation from other regions of the world, and obtained or attempted to obtain products from authorized Bosch distributors or resellers in violation of the authorized parties’ agreements with Bosch. Bosch asserts trademark infringement, tortious interference with contractual relations, and unfair competition under the laws of multiple states. The case is before Judge Zobel.
Bravado, the holder of exclusive rights to the “BILLIE EILISH” mark in connection with tour merchandise, filed a lawsuit against unknown bootleggers in advance of Eilish’s March 19th concert at the TD Garden. Eilish has several pending trademark applications, but does not appear to have any issued registrations. Bravado claims common law trademark rights by way of Eilish’s having played concerts throughout the United States before hundreds of thousands of people. and brings a count for false designation of origin under 15 U.S.C. § 1125(a), rather than common law trademark infringement, thus obtaining federal subject matter jurisdiction. Bravado has appeared in this blog several times previously, filing similar suits in advance of shows by Lady Gaga, Arianna Grande, and Post Malone. As with all of these cases, this case is before Judge Zobel.
Judge Zobel has been assigned yet another case involving pre-emptive blocking of the sale of bootleg concert merchandise, this time involving an upcoming show by Post Malone. In addition to the POST MALONE trademark, the artist has registrations on POSTY CO, POSTY, POSTY FEST and SHABOINK. Malone is playing the TD Garden later this week, and Bravado (who is licensed to sell Malone merchandise) looks to prevent bootleggers from selling merchandise bearing the Malone marks.
Following the Federal Circuit’s affirmance of JMOL that the patent-in-suit was not infringed, Perrigo sought $90,637.02 in costs. Brigham and Women’s objected to virtually all of the requested costs and asserted that the case should be treated as a “mixed-result” case because Brigham “prevailed” on every issue save infringement (i.e., prevailed on standing, laches, invalidity, marking and damages). Judge Zobel rejected this argument, finding that Brigham had not prevailed on its sole claim of infringement and that, as a result, Perrigo was entitled to costs under F.R.C.P. 54(d). Judge Zobel did not award the full amount sought, however; she denied pro hac vice motion fees as not allowable in this district, denied costs associated with depositions that were not used in trial or in the post-trial briefing and denied all costs associated with videotaping or obtaining rough transcripts, finding these costs were not taxable absent prior permission. She also denied costs associated with the use of realtime transcripts, finding these to also not be “necessary” within the meaning of 28 U.S.C. § 1920(2). Judge Zobel refused to award $35,298 in costs associated with the use of a graphic designer to prepare charts, figures and demonstratives used at trial, based on both the excess amount of time spent in their preparation and a lack of evidence supporting these costs. Finally, Brigham’s had, in its motion seeking refusal of the Bill of Costs, sought expert witness fees under F.R.C.P. 26(b)(4)(E), which generally requires a party seeking expert discovery to pay the expert for the time spent in responding. Judge Zobel noted that expert discovery had concluded three years earlier with neither party seeking fees, and denied the request as untimely. In total, she awarded $22,843.48 to Perrigo.
Minden Pictures accuses Lynn company Kate-Den, which does business as “Dennis the Mennis Pest Control,” of willful copyright infringement and violation of the Digital Millennium Copyright Act. Minden asserts itself to be the premier provider of rights-managed wildlife and nature stock photographs, including photos taken by Michael Durham. Minden says that Kate-Den uses Durham photographs on its website, removed the copyright management information associated with the photographs, and have failed to respond to cease and desist letters from Minden. The case is before Judge Zobel.
Ecobee sued Amazon sellers eKings, Arad Systems, Western Ridge, as well as unknown individuals who run these sellers, asserting that they infringe ecobee’s trademark and interfere with ecobee’s contracts with its authorized resellers by reselling ecobee products without authorization. The allegations in the complaint track those of previous suits brought by ecobee in this district. Judge Zobel has been assigned to this case.
Bravado is a merchandising company that has exclusive rights to sell products bearing the federally registered ARIANNA GRANDE mark, a logo for which registration is pending, and/or Grande’s name and likeness. Bravado brought this suit in advance of Grande’s upcoming performance at the TD Garden in Boston to prevent bootleggers from offering infringing merchandise in or around the arena, and to obtain an order for authorities to seize and impound any such merchandise. As with other such pre-emptive suits, Judge Zobel is assigned to this matter.
Audio company Kicker sued Techtronics, theXmarketing.com, and Amazon resellers Techtronics Inc. and Amazing Dealzzz, accusing the defendants of improperly selling Kicker products, using Kicker trademarks, and altering or removing serial numbers from Kicker products that they were selling. Kicker uses the registered KICKER mark on audio components, primarily speakers, that it sells through authorized resellers. It asserts that the defendants, who are not authorized resellers, are nonetheless selling Kicker speakers bearing the KICKER trademark. The defendants did not receive Kicker training in proper installation of its speakers, and speakers sold through defendants do not come with Kicker’s warranty. Thus, according to the complaint, the defendants’ KICKER goods are materially different than those of Kicker and its authorized resellers. Kicker brings claims of trademark infringement, tortious interference with business relations in connection with defendants receiving inventories of Kicker speakers from authorized Kicker dealers, and unfair competition. It is not clear why Kicker chose to file suit in Massachusetts, given that it is an Oklahoma corporation and it asserts that defendants are located in California. The case is before Judge Zobel.
DiscoverOrg, a company that provides business-to-business marketing data, sued Timlin Enterprises for copyright infringement. DiscoverOrg provides its marketing information to customers through a password-protected on-line user interface. According to the complaint, a Timlin employee accessed the database while employed by a licensed company, downloaded the data, and took it with him when he moved on to work for Timlin. A second person, meanwhile, who worked with the first accessed the database from their new, licensed company, and the data made its way to the first employee now working for Timlin. DiscoverOrg asserts that Timlin knowingly used the misappropriated data in marketing efforts. In addition to copyright infringement, DiscoverOrg asserts federal and state trade secret misappropriation (the state claim under Washington law, as DiscoverOrg is a Washington-based company), unjust enrichment, tortious interference with contractual relations, negligence for failure to properly train and supervise its employees regarding misappropriation of trade secrets, and violation of Ch. 93A. The case was assigned to Judge Zobel.