Leary v. Berkshire Group LLC (17-cv-11723).

Silvia Leary is the owner of a trademark registration on the stylized mark “VIA,” in which the “A” lacks the horizontal line, looking like an upside-down “V.” The identified goods and services are “fashion modelling for entertainment purposes.”  Ms. Leary alleges that she has a pending copyright application on the mark.  She uses the mark at her “Viasworld” website, where (among other things) she sells socks, t-shirts, and other merchandise.  Berkshire developed the “Via Seaport Residences” on Fan Pier in Boston, and apparently created some “VIA” merchandising in connection with the development.  Berkshire’s use has a similar “A” that lacks the horizontal line.  Ms. Leary alleges that Berkshire is using the same VIA mark on hats, glasses, t-shirts and other types of items, causing customer confusion.  She claims trademark and copyright infringement and unfair competition.  The case is before Judge Saris.

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

Magistrate Judge Kelley granted defendants’ motion to dismiss the copyright infringement claims, citing the failure of the plaintiff to allege it held any validly registered copyrights and failure to identify any specific content that was alleged to be both original and copied. Trust Safe accuses its former employees of taking a confidential algorithm and using it to create a competing business, of copying Trust Safe’s website, and of tracking the website and changing its own in exactly the same way as Trust Safe’s site.  Applying the Twombly standard, Judge Kelley noted that the complaint asserts that Trust Safe is the assignee of three copyright registrations, but fails to allege that the applications, together with the deposit and fees, had been sent to the Copyright Office, which is required when relying on preregistration of a copyright.  She also found the failure to specify similarities between Trust Safe’s site and that the Defendant “frustrate[s] any effort to compare the parties’ materials” and thus fails to show copying.  Judge Kelley also dismissed the state statutory and common law trade secret counts for failure to adequately identify the trade secrets at issue – the recitation of an “algorithm,” without specifying what the algorithm was or what it did, was not sufficient.  Intentional fraud and M.G.L. 93A claims that depended on the trade secret misappropriation claim were also dismissed.  Because all of the claims were deemed plausible, albeit inadequately pled, all of the dismissals were without prejudice.  The case was before the Magistrate pursuant to 28 U.S.C. 636(c) and with the consent of the parties.

Rothschild Digital Confirmation LLC v. Repsly, Inc. (17-cv-11706).

Rothschild accused Repsly of direct and indirect infringement of U.S. Patent No. 7,456,872, “Devise and Method for Embedding and Retrieving Information in Digital Images.” The plaintiff is a Texas entity with a place of business in Plano, Texas, home to many non-practicing entities, and appears to be exlcusively in the patent infringement business.  Rothschild was registered as a limited liability company in August of 2016 by Leigh Rothschild, the sole named inventor on the patent, however, making this case at least somewhat different than many of the non-practicing entity suits we see.

Baystate Consulting, LLC v. Saasant Infortech Private Ltd. (17-cv-10921)

In a lengthy electronic order, Judge Stearns partially granted defendant’s motion to dismiss plaintiff’s copyright infringement claim relating to accounting software.  Baystate alleged that Saasant’s competing software misappropriated the look, feel, layout and flow of its own product and associated blog, and that Saasant was using a Baystate trademark.  Judge Stearns found that Baystate’s complaint did not identify any actual copying of protectable elements of the software, because Baystate’s software simply employs standard layouts that represent unprotected ideas or unoriginal expression.  To the extent Baystate alleged copying of the specific elements of the layouts, the two programs were not similar enough to suggest copying.  Judge Stearns denied the motion to dismiss the trademark, unfair competition, and false endorsement/false association claims.

In re: NeuroGrafix (‘360) Patent Litigation (13-md-02432).

Judge Stearns granted a motion to quash subpoenas served on more than 100 of defendant’s customers that were issued after the discovery deadline. Plaintiff was pursuing indirect infringement claims against the defendant, and sought through the subpoenas to obtain discovery on direct infringement.  Defendants moved for an emergency protective order on September 5th, and Judge Stearns granted the motion on September 6th, finding that a previous extension of discovery was limited to new issues raised by Plaintiff’s proposed new complaint and/or any new defenses; as Plaintiffs knew about its indirect infringement claim since at least December 2013, there was no justification for its not having sought discovery from the customers in a timely fashion.  He ordered the parties to meet and confer on the best way to notify the customers that they did not need to respond to the subpoenas, with the Plaintiff to bear the costs of such notification.

The Hilsinger Company v. Kleen Concepts, LLC (14-cv-14714).

Kleen Concepts was accused of infringing Hilsinger’s SHIELD mark by using the brand SHIELDME for its screen and lens cleaning products.  Hilsinger uses the SHIELD mark for lens cleaning products.  Kleen Concepts was also accused of misusing the phrase “Made in USA,” with Hilsinger contending that “significant components” of the products were manufactured abroad.  Kleen Concept’s motion for summary judgment of non-infringement as to its screen-cleaning products was denied, because the similarity of the marks and the products, combined with disputes of material fact as to the channels of trade and targeted customers, left material facts in dispute.  Judge Saylor further struck the portion of Kleen Concept’s reply brief that argued for the first time that products that had been re-branded with the (unaccused) mark KLEENME did not infringe, despite the continued existence of the SHIELDME mark on the interior of the packaging, refusing to allow new arguments not raised in the opening brief.  Judge Saylor also denied Kleen Concept’s motion for summary judgment on the false designation of origin claims, finding that (disputed) facts had been introduced that Hilsinger was actually harmed due to sales losses that coincided with buyer Wal-Mart’s initiative to increase sales of domestically-made products and evidence that a Wal-Mart buyer believed Kleen Concepts’ products were made in the USA.  Finally, Judge Saylor struck the portion of Kleen Concepts’ expert report that asked survey respondents to identify their “primary purchasing consideration,” because Kleen Concepts could not point to any evidence that the expert’s methods for determining this had been tested, subject to peer review, or otherwise scientifically validated.

GN Netcom, Inc. v. TelQuest International Corp. d/b/a American Telecom HQ and Amazon Reseller American Telecom Headquarters (17-cv-11671).

In an interesting trademark infringement lawsuit, a manufacturer seeks to prevent a reseller from using its trademarks to identify products the manufacturer actually made, but made for use and sale only outside of the United States. GN Netcom is a headset manufacturer based in Lowell, MA.  It sells headsets under the brand names “Jabra,” “VXi,” and “GN Netcom.”  GN alleges that the Defendant is a reseller of phone systems and headsets, both through its own website and through Amazon, eBay, and other online platforms.  Defendants are said to sell, without authorization, GN headsets that it purchased from international resellers, and to use GN’s trademarks (and some GN copyrighted images) in the process. These products were designed and manufactured differently than GN products intended for sale in the U.S., are said to contain “material differences” (such as language differences in the interface, battery and voltage differences) from the U.S. products, and are not subject to GN’s U.S. warranty.  GN further alleges that Defendant advertise U.S. versions of the GN products it sells, but then ships the international versions.  GN brings counts for trademark infringement, unfair competition and false designation of origin.  The case has been assigned to Judge Sorokin.