ecobee, Inc v. Danik Enterprises et al. (D. Mass. 20-cv-12109) and Prime Cellutions et al. (D. Mass. 20-cv-12097).

Ecobee accuses Amazon sellers DANIK, Technology Station, JAMS Deal, Prime Cellutions, Home Headquarters and Archstanton of infringing its “ecobee” trademarks, false advertising and unfair competition through their unauthorized sale of ecobee products.  As with the many other ecobee complaints against similar resellers, this complaint asserts that these resellers obtained used or liquidated ecobee products that they falsely advertise as new.  Ecobee further asserts that the infringement was willful.  Judges Burroughs and Cabell are assigned to the cases.

Jaho, Inc. v. Adagio Teas, Inc. (D. Mass. 18-cv-11451).

Jaho accused Adagio of infringing its ZODIAC TEA mark, and Adagio counterclaimed that the registration was fraudulently obtained and that the mark is generic,  Judge Zobel denied Adagio’s motion for summary judgment of noninfringement.  She noted that likelihood of confusion is a factual question not readily amenable to summary judgment., and that there was evidence that would permit a reasonable factfinder to disagree on similarity and strength of the marks, and thus on the question of likelihood of confusion.  The accused Adagio teas are sold as the “Zodiac Series,” with different teas being named after different signs of the zodiac.  Judge Zobel found that, while the marks sound familiar, sharing “zodiac” as the primary word, the total effect of the packaging, which includes distinct artwork and a brand logo, could be deemed sufficiently different to weigh against confusion, but did not command such a determination.  She further held that, while there was an argument that Jaho’s mark was not distinctive, the question of distinctiveness is not one for summary judgment.  Finally, she noted that the evidence presented of actual confusion raised issues of fact that likewise precluded summary judgment.

Gleason v. Gawne et al. (D. Mass. 20-cv-12014).

Jean Berko Gleason, an expert in language learning by children, created a language instructional tool known as “The Wug Test,” a set of flash cards featuring a creature known as “The Wug.”  Gleason owns a copyright registration on the collection of flash cards, as well as federal trademark registrations that include the “Wug” logo and/or the trademarked phrases “This is a Wug” or “Wug Life.”  Gleason says that Lauren Gawne and Gretchen McCulloch, who run a business known as “Lingthusiasm,” have infringed her copyright and trademarks and have actively encouraged others to do the same.  Gleason asserts that the defendants approached her in March about obtaining a license to sell merchandise bearing the “Wug” character and trademarks, but that the parties never reached agreement.  Nevertheless, Gleason discovered Lingthusiasm products for sale bearing the character and marks.  In response to a cease and desist letter, Lingthusiasm asserted that Gleason’s marks were unenforceable and her copyright was invalid.  Lingthusiasm subsequently published a statement on is website asserting that the WUG is in the public domain, and continued selling WUG-related products.  The site includes a lengthy note asserting that the Wug character was created in 1958, at a time where copyright did not come into existence without certain legal requirements being fulfilled, and that it therefore entered the public domain.  It further asserts that the WUG character can be used as a decorative, ornamental element without infringing the trademark registrations.  Finally, the website provides a downloadable picture of a WUG from Gleason’s initial 1958 publication, and encourages others to use that 1958 version for the creation of new WUG works.  Gleason also says that someone, believed to be friends and allies of Lingthusiasm, began altering the Wikipedia page about Gleason to change the reported dates of Gleason’s publications of the Wug characters. Gleason issued a take-down notice to retail site relating to Lingthusiasm WUG products being sold on that site, and Lingthusiasm delivered a counter-notification contesting the removal of the products.  Gleason asserts federal and common law trademark infringement, copyright infringement, palming off under Massachusetts common law, unfair competition and false designation of origin.  She further asserts that the infringement was willful.

Concepts NREC, LLC v. SoftInWay, Inc. et al (D. Mass. 19-cv-12033).

In 2019, turbomachinery designer Concepts NREC filed suit against SoftInWay and Actual Mechanics, Ltd., accusing them of copyright infringement, trade secret misappropriation under the Defend Trade Secrets Act and Massachusetts statutory and common law and violation of 93A in connection with software.  The complaint alleged that SoftInWay is a Burlington, Massachusetts company, that Actual Mechanics is (while admittedly a different corporation) the “Ukraine office” and is the “development arm” for SoftInWay, and that the two operate as a common enterprise to develop and sell the software that is the subject of the lawsuit.  It further alleges as factual support that the two businesses share common ownership and management share e-mail addresses and domain names, and hold themselves out to the public as a single entity

Defendants moved to dismiss for failure to state a claim.  Judge Talwani had previously denied the 12(b)(6) motion, finding that the complaint adequately pled that defendants SoftInWay and Actual Mechanics formed a common enterprise.  She noted that SoftInWay’s motion did not challenge whether the factual allegations, if true, gave rise to the legal conclusion of a common enterprise but instead sought to challenge the accuracy of the factual allegations, which is inappropriate at the 12(b)(6) stage.  Defendant Actual Mechanics further moved to dismiss for ineffective service and lack of personal jurisdiction.  Concepts served SoftInWay, which it asserts to be effective service of Actual while Actual asserts that, as a Ukrainian company, it must be served through the Hague convention.  Judge Talwani noted that service of process on a foreign defendant need not be through the Hague convention so long as the service complies with the internal law of the forum, and thus if Actual were an alter ego of SoftInWay, service was sufficient.  She noted the dueling affidavits and evidence indicated a factual dispute on the alter ego issue, and set an evidentiary hearing for November 17th

Each party submitted further evidence on the issue, and each sought to seal the evidence being filed.  Judge Talwani ordered further briefing from SoftInWay  on the respective motions to seal, noted the strong presumption of public access to judicial documents that only the most compelling reasons can justify withholding such access.  In this case, while both parties moved to file documents under seal, all of the documents were designated confidential by SoftInway.  Judge Talwani required SoftInWay to provide “a particular factual demonstration of potential harm” if the documents were placed on the public docket.  She also required Concepts to indicate whether it objects to the sealing of the materials.

Nuance Communications, Inc. v. Omilia Natural Language Solutions, Ltd. (D. Mass. 19-cv-11438).

Judge Saris granted in part Omilia’s motion to supplement its noninfringement and invalidity contentions in this case to address discovery responses and the court’s construction of the claims.  She permitted Omilia to add new prior art references, but otherwise denied the motion as Omilia had not shown good cause.

National Review, Inc. v. MacDonald (D. Mass. 20-cv-11968).

Conservative magazine and website publisher National Review, Inc. accuses Brett MacDonald of infringing its registered NATIONAL REVIEW and NATIONAL REVIEW ONLINE trademarks, as well as National Review’s common-law “NR” trademark through MacDonald’s use of “Nationalist Review” and “NR” in connection with his website.  Surprisingly (to me, at least), MacDonald’s site does not appear to seek to lure conservative readers to his site to post liberal/Democratic content, and instead is itself pretty right-leaning.  In addition to the title of the website, MacDonald has a “Donate to NR” tab on the site.  MacDonald was notified of the infringement in August, but to date has continued with the usage of these accused marks.  National Review brings counts of common law and federal trademark infringement, state and federal unfair competition and false designation of origin, and state and federal trademark dilution.

Edwards v. Polanski et al. (D. Mass. 20-cv-11942).

Photographer Harvey Edwards, known for a series of ballet-related photographs, accuses the film-making defendants including Roman Polanski of infringing his copyright in a particular photograph, “Leg Warmers,” in their 1992 film “Bitter Moon,” which is now available through streaming services.  He says that the photograph, which has been sold in poster form since 1979, has been used as scenery or set decoration in hundreds of films, television shows, commercials and the like, for which he receives compensation.  Edwards says that, had he been asked, he would have refused permission for Polanski to use the poster in the film, a disturbing and poorly-reviewed movie that involves emotional and sexual torture between a husband and wife that culminates in their murder-suicide.  In addition to the copyright infringement claim, Edwards asserts negligent infliction of emotional distress in connection with the use of the photograph in a film bearing an utterly inconsistent artistic message.  Personal jurisdiction is based on the film being available for streaming in Massachusetts – none of the defendants are based in Massachusetts, and no other ties to the Commonwealth are pled. 

EcoFactor, Inc. v. Alarm Incorporated et al. (D. Mass. 20-cv-11007).

After EcoFactor filed this patent infringement suit against it, Alarm Inc. filed a motion to stay the district court case pending the outcome of a previous ITC proceeding between Alarm Inc. and EcoFactor .  The ITC case involves a different set of patents that are also the subject of a previous district court proceeding between the two parties.  Alarm Inc. also sought to combine the two district court cases.  EcoFactor opposed both, noting that the ITC action and other district court case involved different patents and different claims (which are the subject of a prior-filed lawsuit between EcoFactor and Alarm Inc.).  Judge Sorokin granted in part the defendants’ motion.  He stayed the case for three months, with the parties to file a joint status report updating the status of the ITC proceeding and indicate their positions as to whether the stay should be continued.  He denied the motion to combine as moot, giving Alarm Inc. the opportunity to re-raise the issue when they report on the status of the ITC case.

D’Pergo Custom Guitars, Inc. v. Sweetwater Sound, Inc. (D. N.H. 17-cv-00747).

New Hampshire guitar-maker D’Pergo accused instrument retailer Sweetwater Sound of using a copyrighted photograph of D’Pergo’s trademarked custom guitar necks and headstock to promote and sell Sweetwater products.  Liability has already been decided in favor of D’Pergo, but damages remain to be determined.  In the litigation, Sweetwater designated an expert on damages and served an expert report.  The expert subsequently became seriously ill and had to withdraw from the case.  When Sweetwater designated a substitute expert and produced a new expert report, D’Pergo moved to strike all paragraphs containing an opinion or fact that did not appear in some form in the original expert’s report.  Judge McCafferty denied the motion to strike.  She noted that the Federal Rules of Civil Procedure disallow the use of an expert whose report was untimely uncles the delay was either substantially justified or harmless.  The incapacity of an expert due to illness or death constitute substantial justification for the untimely disclosure of a substitute expert’s report, so long as the substitute report is not unduly delayed.  She further noted that courts look with disfavor on parties who claim surprise or prejudice but who fail to seek a continuance to counter the belated testimony.  In this case, Sweetwater had notified D’Pergo on April 23rd of the need for the original expert to withdraw, and provided the new report on July 15th, just over a month prior to the trial date.  Sweetwater also moved to continue the trial for 60 days to allow D’Pergo time to address the new expert and potentially update its own report.  D’Pergo does not contest that Sweetwater was substantially justified in serving the delayed report, but contends that it will be prejudiced if the report is permitted to stray from the original.  Judge McCafferty noted, however, that this approach would require that the delay be both justified and harmless, in contravention to the case law.  Further, while D’Pergo suggests prejudice, it has not identified any particular prejudice it would suffer if the report were allowed to stand.  Additional time and discovery had been granted to address the new report, and the differences between the reports were not significant enough to cause a change in D’Pergo’s litigation strategy.  Given the justification for the delay, and the lack of suggestion that the designation of the new expert involved evasion or concealment, the report was allowed to stand.

Upcoming D. Mass. Virtual Events.

The District of Massachusetts is hosting a number of virtual events.  First, tomorrow, October 29, Judges Saylor, Saris, Casper, and Hillman will provide a general update on federal jury trials during the COVID pandemic, and will take questions from the bar.  Information and registration information can be found at this link.

On November 12th, the Massachusetts chapter of the Federal Bar Association is presenting on qualified immunity.  Professor Karen Blum and civil rights attorneys Howard Friedman and Leonard Kesten will speak.  To take part in this program, you must register by November 10th.  Further information can be found here.

On November 17th, there will be an update on jury trials at the Springfield courthouse, with Judges Saylor, Mastroianni, Sorokin and Robertson participating.  Further information is available here.

Finally, on November 18th, the Federal Bar Association is hosting Breakfast with the Bench with guest Magistrate Judge Boal.  Information on this event can be found here.