Araca Merchandise, the authorized seller of merchandise in connection with the U.S. tour of the artist “Pink,” brought suit against unknown sellers of counterfeit merchandise in anticipation of next week’s Pink shows at the TD Garden in Boston. Araca seeks an injunction barring the sale of unauthorized merchandise bearing the registered PINK trademark. The case has been assigned to Judge Zobel.
Judge O’Toole ruled on a pair of privilege disputes in this trade secret litigation, finding some claims of privilege to be without merit while upholding others. Lynx accuses Zebra of misappropriating real-time player tracking technology and used it to obtain a deal with the NFL that did not include Lynx. During discovery, certain e-mail chains were produced by Zebra in both keyword-searchable and non-searchable formats; redactions based on privilege were made in only one of the formats. The parties could not resolve whether the privilege claim was legitimate, leading to the filing of a motion to remove the redactions by Lynx. A first set of e-mails included communications between Zebra, Zebra’s counsel, and non-employee consultants hired by Zebra o assist in reaching agreement with the NFL. Following en camera review of the communications in question, Judge O’Toole determined that Zebra had waived privilege in these communications by sharing them with the consultants. He found that the Kovel doctrine, which extends privilege to communications with third parties that are necessary, or at least highly useful, for effective consultation between the client and the attorney, did not apply, because the redacted communications were not made for the purpose of obtaining legal advice, and instead concerned business advice. The communications also did not demonstrate that the consultants were necessary to interpret matters beyond the lawyers’ reach. He also rejected Zebra’s attempted reliance on the “functional equivalent” doctrine, by which non-employee agents of a corporation can be considered functionally equivalent to corporate employees by virtue of their close connection to the corporation, such that privilege would extend. Here, the consultants were not so closely tied to Zebra as to be equivalent to employees – they lacked longstanding relations with the company, worked remotely, were not Zebra’s sole representatives in negotiations, and were free to work for others. Judge O’Toole further noted that neither the First Circuit nor the District of Massachusetts had ever adopted or applied the doctrine. The results were different with respect to a different set of communications, with Judge O’Toole upholding the privilege in communications between Zebra executives and in-house counsel. He noted that such communications would only be privileged if they revolved around legal, as opposed to business, advice, but noted that the communications in question did address legal perspectives on issues being discussed.
Anuwave accuses cybersecurity company Sophos of infringing U.S. Patent No. 8,295,862 by means of its text security services. The ‘862 patent covers methods of enabling communications via SMS messages that list all services at a terminal station, such as a cell phone, according to meta information found at the terminal station. Anuwave specifically accuses Sophos’ mobile antitheft service, by which users who have lost their phones can enter a “locate” command and password in order to retrieve location information from the phone. Anuwave asserts that Sophos directly infringes the method claims at least when performing internal testing; it does not, however, bring contributory or induced infringement claims, leaving the question of the calculation of damages (assuming, of course, that infringement is proven) a bit up in the air.
A number of discovery disputes boiled over in a suit involving a Chinese hot-pot restaurant chain and a Boston restaurant who had tried to become its first American franchisee, resulting in the award of sanctions against plaintiffs’ attorney. Magistrate Judge Kelley is requiring the attorney to pay the defendants’ reasonable fees and costs for their work on a motion for a protective order and to quash subpoenas issued by the plaintiffs. Limited discovery had been allowed, to determine whether a forum selection clause in the franchise agreement had been triggered, which would require the bulk of the claims to be brought in China. A series of disputes over discovery arose, in which plaintiffs’ attorney repeatedly refused to meet and confer. Among the charges were that the attorney noticed numerous third party subpoenas seeking financial discovery well outside the bounds of the limited discovery that had been permitted at a time when the defendants were negotiating a resolution of a dispute concerning plaintiffs’ attempt to get this information directly from the defendants. Judge Kelley indicated that this is an improper attempt to circumvent the legitimate objections of the defendants to the discovery, and that plaintiffs should have moved to compel if they believed the objections to lack validity. She criticized plaintiffs’ arguments that defendants lacked standing to challenge third party subpoenas as “plainly without merit.” Perhaps most damaging, plaintiff itself cross-moved for sanctions, accusing defendants’ attorney of frivolous and vexatious conduct, obstruction of discovery, and “potentially falsifying discovery documents,” an allegation that he admitted at oral argument was entirely without basis.
Judge Saris denied Jonathan Monsarrat’s motion for reconsideration of her grant of Zaiger’s motion to dismiss. Monsarrat became aware of Zaiger’s publication of an alteration of a copyrighted photograph of Monsarrat, dressed in an MIT mascot costume, at least as early as 2013, yet did not file suit until 2017, beyond the three-year statute of limitaitons. Monsarrat argued that the “discovery rule,” whereby the statute of limitations does not begin to run until the plaintiff knows or should reasonably know of the claim, keeps the statute of limitations from starting until after the identity of the infringer is known. Judge Saris rejected this proposition, noting that First Circuit law clearly states that a copyright claim accrues when the plaintiff knows or should reasonably know about the conduct on which the claim is based. She also noted that complaints are often filed against unknown defendants. In a separate ruling, Judge Saris rejected Zaiger’s motion for attorney’s fees, finding that Monsarrat had objectively reasonable infringement and timeliness arguments and that Zaiger’s motion was untimely, coming beyond the two-week period of time laid out in FRCP 54. Finally, Judge Saris noted that Zaiger’s conduct had been “unduly nasty.” Zaiger, who was accused of altering the photograph to associate Monsarrat with pedophilia, indicated his intention to repost the offensive photograph, and had filed the photograph to the public record before the Court could rule on Monsarrat’s known objections.
MAP Royalty accuses MAP Energy Solutions (“MES”) of infringing its registered MAP and stylized MAP marks, as well as common law rights in the mark, in connection with investment and management of energy projects, including renewable energy projects such as solar and wind power. MAP Royalty asserts that it manages over $2 billion in capital energy commitments, and has been using the marks since 1998. It says that MES formed in 2015, and began using the MAP trademark shortly thereafter, both as a mark and as a part of its domain names, in connection with directly competing and closely related services. The case is before Judge Woodlock.
Alnylam filed suit against Silence Therapeutics, seeking a declaration that its Patisiran RNA interference product does not infringe five Silence patents. Patisiran is awaiting approval from the FDA for treatment of hereditary transthyretin-mediated ATTR amyloidosis, a genetic disease in which misformed proteins accumulate as deposits in the heart, erves, GI tract, and other organs, bringing forth a number of different symptoms. Currently, other than liver transplants for early-stage sufferers, there are no FDA-approved treatments for the disease. Alnylam asserts that it has spent hundreds of millions of dollars in developing Patisiran. Alnylam alleges that Silence, which has no products on the market or in advanced clinical trials, has claimed that Alnylam infringes the patents by correspondence in the United States as well as by filing infringement suits in Europe and challenging Alnylam patents on the technology in Europe. These disputes are on-going. Alnylam seeks declarations of non-infringment and injunctions prohibiting Silence from asserting infringement of the patents.