Design Pics, Inc. v. Max Hartshorne d/b/a GoNomad.com Travel et al. (18-cv-30103).

Canadian company Design Pics provides stock photographs to registered members. Design Pics obtained the rights to a series of pictures of Chinese food dishes taken by photographer Kyle Rothenborg, which were registered in a bulk registration with other works. The pictures are displayed on Design Pics’ website along with metadata indicating the photographer and the copyright status. Design Pics asserts that GoNomad.com displayed the Rothenborg photographs without license. Design Pics claims copyright infringement and violation of the Digital Millennium Copyright Act for the removal of the copyright management metadata.

BMW of North America, LLC et al. v. Dunbar Euro-Sports, Inc. (18-cv-11395).

bmwroundelBMW sued Brockton’s Dunbar Euro-Sports for infringing BMW’s registered “roundel” trademark, which BMW has used since 1955 on automobiles and motorcycles.  BMW licenses the mark to authorized dealerships for use in connection with the sale and service of BMW products. Dunbar was on such licensee, having been authorized in 1987 to sell and service BMW motorcycles.  BMW asserts that Dunbar is using the roundel outside of the direction of BMW, apparently through the use of outdated and/or unauthorized signage, which hinders BMW’s ability to control the nature and quality of products and services provided under the mark. The complaint asserts breach of contract as well as trademark infringement, and seeks an order that Dunbar remove and destroy any BMW signage containing BMW marks, including the roundel. Oddly, the complaint does not specifically indicate how Dunbar’s use of the roundel is improper, and appears to assert that Dunbar’s dealership agreement remains in force.

Fertility Centers of New England, LLC v. IntegraMed America, Inc. (18-cv-11350).

Fertility Centers accuses IntegraMed of infringing its “IVF ASSIST” trademark. Fertility Centers began using the mark in 2011 in connection with a cost-effective in vitro fertilization program, and has promoted the program extensively, including through its website. The mark was registered in 2012, and has become incontestable. IntegraMed offers a similar program under the name “Attain IVF Assist,” and at one time simply “IVF Assist,” which IntegraMed described as inadvertent in response to a cease and desist letter. IntegraMed removed the stand-alone use of “IVF Assist,” but refused to stop using the “Attain IVF Assist” mark. Fertility Centers asserts that IntegraMed also uses the “IVF Assist” mark in metadata to drive search results to their site. In addition to trademark infringement, Fertility Centers brings claims of federal and state unfair competition and false designation of origin.

Purse Seine Holdings, LLC v. Starkist Co. (17-cv-11186).

Judge Stearns granted Starkist’s motion to amend its answer to introduce an additional counterclaim of fraud on the Trademark Office. He found the proposed counterclaim, which alleged that Purse Seine had declared to the PTO that it was using the “Bela” mark for fish pate and fish paste when it knew this to be false, properly alleged facts which, accepted as true, stated a viable claim that met the “good cause” standard for amending after the date when such amendments can only be made for good cause. He further determined the motion to be timely, in that Starkist had learned of the relevant facts during discovery and filed within a month of so learning. The discovery schedule was amended to permit fact and expert discovery on the counterclaim.

SiOnyx, LLC et al. v. Hamamatsu Photonics K.K. et al. (15-cv-13488).

Magistrate Judge Boal denied SiOnyx’ motion for evidentiary sanctions against Hamamatsu Photonics and Hamamatsu Corp.SiOnyx and Harvard filed suit in 2015, asserting correction of inventorship, patent infringement, and breach of contract. In discovery, Hamamatsu produced summary spreadsheets of damages information without providing the underlying invoices and purchase orders. By order of October 2017, the court ordered Hamamatsu to provide that information and some additional sales data. SiOnyx asserts that Hamamatsu failed to produce the information prior to the taking of depositions of Hamamatsu personnel and provided inaccurate and shifting information relating to damages, and sought both to preclude Hamamatsu from relying on the summary data and to have sales figures taken from annual reports be deemed established pursuant to Rule 37. Citing the strong presumption of allowing cases to be decided on the merits, Judge Boal determined that the defendants’ conduct was no so extreme as to warrant evidentiary sanctions (which were the only sanctions sought by SiOnyx). Judge Boal next addressed a dispute as to the interpretation of the October order, which modified certain requests for sales data to exclude data on unaccused products. Hamamatsu chose to interpret this to require production only of documents expressly mentioning an accused product. Judge Boal corrected them and ordered production of all sales documents that pertained to an accused product, but did not find them to be in contempt of the October order.

Butler Home Products, LLC v. Avent, Inc. et al. (18-cv-11263).

GlovesButler filed a complaint against Avent and O&M Halyard, Inc., seeking a declaratory judgment of non-infringement and cancellation of two trademark registrations claiming rights in the color purple for latex gloves. Butler, a manufacturer of home cleaning products, sells reusable purple latex gloves to Wegmans Food Markets, who then sells the gloves under the WEGMANS® brand.  The registrations cover the color purple for “protective gloves for industrial use, and disposable nitrile gloves for use in laboratories and clean room environments,” “gloves for medical and surgical uses,” and “disposable nitrile gloves for general uses.” In April, Avent and O&M Halyard sent Wegmans a cease and desist letter, which was forwarded to Butler. After a response challenging the protectability of the color purple, Butler received a second cease and desist letter, setting up the DJ action. Butler asserts that the color purple is functional, in that laboratories use different color gloves for different areas to prevent cross-contamination or to signify the material the gloves are made of, as well as the existence of other purple gloves, asserted to preclude the color from serving as an identifier of source.

Stross v. IvyMedia Corporation et al. (18-cv-10240).

Judge Sorokin denied IvyMedia’s motion to dismiss the amended complaint, asserting that it is not responsible for the conduct alleged in the complaint. At the pleadings stage, where all factual allegations must be accepted as true, the Court cannot make the determination that IvyMedia is the improper party. He also denied both defendants’ motions to dismiss for failure to state a claim, finding the arguments to be factual in nature rather than a legal assertion that the alleged conduct fails to violate any of the cited copyright statutes.