Country Mutual Insurance Co. et al. v. Vibram USA et al. (DAR-25491).

The Massachusetts Supreme Judicial Court, the state’s highest court, agreed to review a decision concerning insurance coverage of trademark claims and the right of the insurance companies to recoup defense costs once the court determines that the underlying suit did not trigger coverage. Shoe maker Vibram was sued by the family of the late Olympic marathoner Abebe Bikila for unlawfully obtaining a trademark for a shoe using his name. Vibram’s insurers, Country Mutual Insurance Co. and Maryland Casualty Co., initially agreed to defend the case subject to a reservation of rights to challenge their obligation to cover the suit, and for some period of time paid for the defense. Judge Kaplan of the Massachusetts Superior Court subsequently found the insurance contracts were not triggered, but denied the insurance company the ability to recover defense costs they had already paid because the contracts did not expressly provide for a right to reimbursement. On appeal, the insurance companies seek reimbursement under a theory of unjust enrichment.

Microsoft Corp. v. John Does 1-10 (17-cv-11831).

Judge Martinez of the Western District of Washington, in response to Defendants Charlie’s One Stop Computer Center, Inc. and its president, Michael Aucoin’s motion to dismiss for lack of personal jurisdiction, instead transferred the litigation to Massachusetts. The case was initially filed in June, 2016, against unknown defendants, alleging infringement of Microsoft copyrights and trademarks on software being installed using fraudulent product keys.  Discovery led to the identification of Charlie’s One Stop and Mr. Aucoin, who then moved to dismiss.  Microsoft indicated that, if dismissed, it would simply re-file here.  When the defendants admitted that jurisdiction would exist in Massachusetts, transfer was ordered.  Judge Wolf has been assigned to the case.

Washington’s long-arm statute allows a court to award attorney’s fees for a party served under the statute who prevails in the action. Judge Martinez determined that Microsoft, when first notified about the jurisdictional issue, told Defendants that it would “vigorously defend against any motion to dismiss,” and after Defendants filed the motion, that it would consent to transfer to Massachusetts only if the motion and request for fees were withdrawn.  He determined that such conduct, followed by Microsoft appearing in court and not opposing transfer, warranted the award of fees.

Cengage Learning, Inc. et al. v. Does 1-11 (15-cv-11577).

Judge Wolf entered default judgment in favor of Cengage, finding the well-pled facts of the complaint showed that defendents sold counterfeit versions of Cengage’s copyrighted textbooks bearing Cengage’s trademarks. Most of the defendants failed to answer the complaint, and the one who did file an answer then failed to respond to a motion for preliminary injunction and ceased responding to its counsel.  Judge Wolf went on to determine that the infringement was willful, based on the defendants’ use of false names and addresses to register online storefronts on and on their failure to appear.  Maximum statutory damages for both trademark and copyright infringement totaling $2.9 million were awarded, and a permanent injunction was entered.

Purdue Pharma LP et al. v. Collegium Pharmaceutical, Inc. (17-cv-11814).

Purdue asserts that Collegium infringes U.S. Patent No. 9,693,961, which covers improved oxycodone hydrochloride compositions, both by filing an NDA and by making and selling the now-approved Xtampza® ER oxycodone extended release capsules.  This marks the latest in a series of lawsuits filed by Purdue alleging Xtampza® infringes Purdue patents.

The District of Massachusetts seeing rise in patent lawsuits since TC Heartland

According to an article published today by Law360, there have already been more patent cases filed in the District of Massachusetts this year than in all of 2016.  This may be the result of the changes brought about to venue in patent cases by the Supreme Court’s TC Heartland decision, which limited venue in patent cases to districts in which a defendant corporation is incorporated or districts in which the defendant committed acts of infringement and has a regular and established place of business.  According to RPX, filings in the Eastern District of Texas – previously the busiest patent district by far – dropped from 57% of cases filed between January 1 and May 22, 2017 (the date TC Heartland issued) to 28% of all new filings in the nine weeks post-TC Heartland.  While the sample sizes are small, this seems to point to a busier patent litigation practice for Massachusetts.

LovePop, Inc. v. PaperPopCards Inc. (17-cv-11017).

LovePop amended its complaint against PaperPop Cards, adding some new card designs to the allegations. LovePop originally filed suit in June, alleging copyright and trademark infringement relating to 3-D pop-up cards and videos promoting the cards.  PaperPop moved to dismiss the copyright claims, on the basis that the complaint did not identify any allegedly protectable expression that is found in PaperPop’s cards, and fails to separate out the public domain elements that are not protectable under copyright law.  Here is an exemplary comparison of each companies’ Hanukah card found in PaperPop’s motion to dismiss, with LovePop’s on the left and PaperPop’s on the right:

The motion to dismiss was denied as to certain card designs and otherwise taken under advisement.

LovePop was launched out of the Harvard Innovation Lab in 2014. The cards are beautiful – you can see one of the allegedly copied videos of a Christmas sleigh card being opened at LovePop’s website here.

Blackout Merch, LLC v. John Does 1-5 et al. (17-cv-11799).

Judge Zobel is presiding over another pre-emptive concert merchandise case, this one involving the performer Katy Perry. Blackout Merch claims the exclusive right to utilize Ms. Perry’s registered trademarks in connection with concert merchandise in North America, and seeks to prevent the sale of infringing merchandise at or around Boston’s TD Garden when Ms. Perry performs there on the 29th and 30th of September.