Hillside Plastics, Inc. v. Dominion & Grimm USA, Inc. et al. (17-cv-30037).

Hillside owns a trademark registration for the design of its “Sugarhill Jug” plastic maple syrup jugs, and accuses Dominion of violating that trade dress. Dominion moved for judgment on the pleadings, on the grounds that the trade dress was invalid as functional.

Sugarhill Jug

The trademark application had, in fact, initially been refused because of functionality concerns, but Hillside was able to overcome the refusal with evidence of the many alternative designs for syrup jugs. Dominion, once a Hillside distributor, began offering the accused jugs in 2016. Magistrate Judge Robertson recommended denial of Dominion’s motion. She noted that, as the trade dress is registered and incontestable, Dominion bears the burden of demonstrating functionality. Further, functionality is a question of fact, and Dominion was unable to demonstrate through the pleadings that the designs were factually functional. Judge Robertson did grant Dominion’s motion to stay discovery pending appeal of her recommendation to the District Court judge.

Balor Audio LLC. v. Avid Technology, Inc. (18-cv-11662) and v. Mark of the Unicorn, Inc. (18-cv-11663).

Plano Texas company Balor Audio sued Avid Technology and Mark of the Unicorn in separate suits, alleging infringement of U.S. Patent No. 8,649,891, which covers audio signal generation. Avid’s Pro Tools software and Mark of the Unicorn’s Digital Performer software, both of which allows users to record, mix and master audio, stand accused. The Avid case is assigned to Magistrate Judge Dein, while the Mark of the Unicorn matter is before Judge Talwani.

1818 Farms, LLC v. Plum Island Soap Company, LLC (18-cv-00135, N.D. Alabama).

1818 Farms, after negotiating a settlement in principal on Plum Island’s trade dress and trademark assertions, surreptitiously filed this lawsuit and withdrew form settlement talks. Upon learning of this lawsuit, Plum Island Soap filed its own suit in Massachusetts. The background is discussed in detail here. Plum Island Soap sought to dismiss or stay the Alabama suit or, in the alternative, to transfer the Alabama suit to the District of Massachusetts for consolidation. Judge Kallon determined that transfer was appropriate. While 1818 Farms was the first to file suit, Judge Kallon noted that filing suit in anticipation of another pending proceeding or to improperly forum shop may be sufficient to show the compelling circumstances needed to overcome the presumption in favor of the first-to-file rule, particularly when the suit is a declaratory judgment action brought in the face of clear threats to sue. Here, he found that the parties were engaged in on-going discussions that had reached a mutually agreeable framework for settlement, and that in the middle of these discussions, and without informing Plum Island Soap, 1818 Farms filed the Alabama suit. 1818 Farms then continued negotiating without informing Plum Island Soap about their filing. This was found to be a clear attempt to preempt Plum Island Soap and obtain a jurisdiction desirable to 1818 Farms. Additionally, it was found to be in bad faith, given that 181 Farms continued to mislead Plum Island that settlement was imminent. Finally, Judge Kallon determined that a refusal to transfer would undermine the strong Federal interest in encouraging potential plaintiffs to attempt settlement negotiations rather than racing to the courts.

Inline Plastics Corp. v. Lacerta Group, Inc. (18-cv-11631).

)Inline Plastics accuses Lacerta of infringing three patents on tamper-resistant containers. Inline, who makes the SAFE-T-FRESH® line of food packaging products, asserts that Lacerta’s “FRESH N’ SEALED” products infringe U.S. Patent Nos. 7,118,003, 7,073,680, and 9,630,756.

Willfulness is alleged, based both on marking and on Lacerta having faced the earlier pair of the asserted patents in prosecution of their own applications. In addition to injunctive and monetary damages, Inline seeks an order requiring destruction of the tooling, molds, prints, and the like used to make the accused products.

Three Ten Merchandising Services, inc. v. Does 1-100 et al. (18-cv-11605).

Three Ten Merchandising, a concert merchandising company for Beyonce, sued unnamed persons and corporations to preempt sales of counterfeit merchandise bearing any of Beyonce’s registered or pending trademarks – BEYONCE, BEYHIVE, BEYGOOD, #BEYGOOD, and YONCE – at or around Gillette Stadium during her August 5th concert. Three Ten seeks an injunction and an order that U.S. Marshalls and local and state police seize and impound any such merchandise. This preemptive, effectively ex-parte mechanism is permitted under 1984 amendments to the Lanham Act.  Judge Zobel, who has been assigned to the case, seems to be the Massachusetts judge for such matters – she has had a number of similar cases involving artists such as Pink, Coldplay, Katy Perry and Lady Gaga .

Trust Safe Pay, LLC v. Dynamic Diet, LLC et al. (17-cv-10166).

Trust Safe alleges that the defendants misappropriated proprietary information relating to its diet product business and opened a competing company, Dynamic Diet, and that they copied portions of Trust Safe’s website without authorization. Trust Safe’s original complaint was dismissed without prejudice after Magistrate Judge Kelley determined that it failed to meet the Twombly pleading standards, laying out specific deficiencies in the pleadings and allowing Trust Safe the opportunity to amend its complaint. The new complaint again failed to properly plead ownership and pre-registration of a copyright registration as required by Federal copyright law. Instead, Trust Safe again failed to plead that it had submitted a complete application, along with the fees and deposit copy, to the Copyright Office, and failed to plead that it took any action prior to the filing of the lawsuit. While under First Circuit law an application is deemed to meet the preregistration requirement when it is received by the Copyright Office, an incomplete application cannot satisfy the preregistration requirement. Here, not only was the completeness of the deposit pled, the documents attached to the complaint suggested that the deposit was not complete as of the filing of the original complaint. I would note without comment that among the documents submitted there was reference to submitting the copyright applications via Legal Zoom, a dubious proposition where litigation is anticipated. Judge Kelley also found that the complaint failed to allege which elements of the website were actually subject to copyright protection, making it impossible to analyze whether the defendants copied protected material. Given that this was the second failed attempt to properly plead infringement, Judge Kelley dismissed the copyright claim with prejudice. She further dismissed the claims for trade secret misappropriation, fraud, and unfair and deceptive business practices without prejudice, declining to exercise supplemental jurisdiction over the state law claims with the sole federal claim having been dismissed.

Bowers v. JR Language Translation Services, Inc. et al. (18-cv-11588).

Eric Bowers, a Kansas-based photographer, filed copyright infringement charges against JR Language Translation Service and unknown Does 1-10. He says that JR used one of his photographs of a Christmas tree in Crown Center, Kansas City, on its website www.jrlanguage.com in connection with articles on Christmas traditions. In addition to infringement, Bowers asserts violation of the Digital Millennium Copyright Act’s prohibition on removing or altering copyright management information. Judge Casper has been assigned to the case.