Excel Dryer, Inc. v. Penson & Co. LLC (18-cv-30179).

Excel Dryer accuses Penson & CO. of infringing its trade dress in its XLERATOR restroom air hand dryer. Excel asserts that its patented hand dryer has achieved considerable success, and that it has a distinctive shape and appearance that is associated with Excel.

Excel Dryer.png

Excel further asserts that it has already established secondary meaning of its trade dress in a prior proceeding before the International Trade Commission, in which Penson was a respondent, and both a General Exclusion Order and a Cease and Desist Order were entered prohibiting importation of the accused hand dryers. Excel brings charges of trade dress infringement and violation of C. 93A.

Luxottica Group SpA et al. v. Shun Hao Gift Shop LLC et al. (18-cv-12374) and Super Discounts, Inc. et al. (18-cv-12375).

Eyeglass manufacturer Luxottica (and, with respect to Shun Hao, Oakley Inc.) filed trademark infringement suits against Hyde Park retailers Shun Hao and Super Discounts, accusing them of selling counterfeit Ray-Ban and Oakley sunglasses. Luxottica sells RAY-BAN sunglasses through LensCrafters, Pearle Vision and ILORI, as well as other entities throughout the world, and Oakley has likewise sold sunglasses bearing the OAKLEY or “O” mark through its own and affiliated stores worldwide. Plaintiffs have engaged, at least recently, in investigating retailers throughout the country and enforcing their trademarks through litigation, with a large number of suits having been filed elsewhere. Apparently, their investigators have now hit Massachusetts, with these suits at the vanguard. They bring a single count for trademark counterfeiting, and seek exemplary damages as well as monetary and injunctive relief.

Deetz Family, LLC v. Rust-Oleum Corp. (16-cv-10790).

Dayton Deetz, the sole inventor on a pair of patents relating to magnetic additives for paint, ranted a non-exclusive license to Rust-Oleum in 2005. Deetz asserts that Rust-Oleum failed to make the minimum payments under the license in 2006-2010, and stopped making payments altogether on 2010, leading Deetz to terminate the license. Deetz then filed suit, asserting in addition to breach of contract that Rust-Oleum was continuing to use the patented technology and associated know-how that was transferred as a part of the 2005 license. Deetz then moved to disqualify Rust-Oleum’s litigation counsel, saying that his role in negotiating the 2005 license renders him a likely necessary witness, which would leave him unable to serve as counsel at trial. Judge Hillman denied the motion, noting that Deetz had not put forth any evidence beyond conclusory statements that the attorney was actually involved in the negotiations. Further, as it appeared that the negotiations were primarily (if not entirely) between Deetz and a Rust-Oleum employee, both of whom who would be available to testify. Absent some argument (not presented by Deetz) that the attorney held some unique knowledge that the other two could not provide, the attorney’s testimony would not be “necessary,” but would rather likely be cumulative. Accordingly, Deetz did not satisfy the burden of demonstrating that the attorney was likely to be a necessary witness.

ecobee, Inc. v. Filter Pro et al. (18-cv-12235), Hatzlacha LLC d/b/a The Corner Store et al. (18-cv-12236), and Ultra Design (18-cv-12237).

Ecobee filed three trademark suits, accusing Filter Pro, The Corner Store, and Ultra Design of trademark infringement, unfair competition, false designation of origin, and tortious interference. Ecobee makes smart home control products, including light switches and thermostats, that it sells through authorized resellers who are contractually obliged to provide specific quality controls on the products sold and prevented from selling to subsequent, unauthorized resellers. Each of the defendants is an Amazon Seller Account that, despite not being ecobee authorized resellers, are alleged to have sold ecobee products.  Ecobee asserts that the defendants could only have obtained ecobee inventory through knowingly soliciting authorized resellers, intentional and knowing interference with the resellers contracts and business relationships with ecobee, or through fraudulent or illicit means. They further assert that the defendants violate the ECOBEE trademark by selling actual ecobee goods without authorization. The cases are presently before Judges Stearn, Woodlock, and Saris.

ALMO Music Corp. et al. v. Vincent Hemmeter, Inc. d/b/a/ Ralph’s Rock Diner a/k/a Ralph’s et al. (18-cv-40188).

ALMO Music, and several other music companies, sued Worcester’s Ralph’s Rock Diner, accusing the venue of allowing the performance of copyrighted, unlicensed works by visiting artists. The plaintiffs, all members of ASCAP, allege that Ralph’s has repeatedly refused ASCAP’s licensing offers, but allowed the performance of several works in early August, 2018 that plaintiffs own copyright in. Somewhat unusually, ASCAP itself is not named as a plaintiff, with the copyright owners going it alone.  Plaintiffs seek statutory damages and costs and fees as well as injunctive relief.

MedIdea, LLC v. DePuy Orthopaedics, Inc. (17-cv-11172).

Judge Sorokin construed claim terms in this suit involving patents covering total knee replacement implants having cam and post designs. He first construed “cam” to mean “a structure that makes sliding or rolling contact with the tibial post as the knee bends.” He rejected MedIdea’s argument that the term would be discussed extensively at trial in a way that would permit the jury to discern the plain and ordinary meaning of the term, finding “cam” to be a critical term with which a lay jury would be unlikely to be familiar; moreover, it is the Court’s exclusive obligation to construe patent terms. He likewise construed related terms for which MedIdea suggested not construction was needed, indicating that the court is required to construe terms on which the parties disagree. He construed “cam mechanism” to require two or more cams, because the specification criticized one-cam structures and repeatedly referenced multiple cams. Judge Sorokin further agreed with DePuy that “early after initiation of flexion” of the knee should be construed as “prior to 30 degrees of flexion” rather than MedIdea’s proposed 60 degrees of flexion, as MedIdea’s number appeared to lack intrinsic or extrinsic support, while DePuy’s corresponded to the degree of flexion in prior art that was criticized in the patent. Finally, he refused to consider the definiteness of the terms “central cam” and terms using “superior” and “inferior,” finding that determination to be more suitably made on a fuller record at summary judgment.

Pierson v. Middleboro Restaurants, Inc. d/b/a Barrett’s Fireside Grille 918-cv-12268).

Coventry, RI photographer Kristen Pierson accuses Barrett’s of infringing her copyright in a photograph of New Bedford singer Craig DeMelo (known as the “Whiskey Poet”) in promotions for a performance by DeMelo at the restaurant. Pierson asserts that her notice of copyright was included at the bottom of the photograph as reproduced by Barrett’s, and further that she provides notice via her website, Rok-Pix.com. Despite receiving notice from Pierson, Barrett’s continued displaying the photograph on at least one webpage. Pierson seeks statutory damages and attorney’s fees, as well as injunctive relief.