Independent Film Society of Boston, Inc. v. Patrick Jerome d/b/a Boston International Film Festival (17-cv-11856).

The Independent Film Society of Boston (“IFSB”) has been running the Independent Film Festival Boston (“IFF Boston”) since 2003. The festival occurs each spring, and screens more than a hundred films in area independent art-house cinemas.  The IFSB previously sued the International Film Festival (“BIFF”) for trademark infringement and false designation of origin arising from BIFF’s use of BOSTON IFF and BOSTONIFF marks similar to the IFSB’s IFF BOSTON marks and for BIFF’s adoption of the www.bostoniff.org domain name.  IFSB alleges that BIFF falsely claimed priority in the BOSTON IFF mark, and that BIFF falsified evidence in an attempt to prove priority.  The case was successfully mediated by Magistrate Judge Bowler, and a settlement agreement was executed in May 2017.  (It should be noted that the falsification of evidence allegation was never proven or admitted to by BIFF).

IFSB now alleges breach of the settlement agreement by BIFF’s continued use of the BOSTONIFF mark in various places on its website, for example ,in the copyright notice at the bottom of every page, in numerous drop-down menus, and in background photographs. IFSB further alleges that BIFF has continued to direct traffic to its bostoniff.org website rather than directing all traffic to its bostoniff.com site and has failed to place a noticeable disclaimer of affiliation on all film submission documents, as required by the agreement.  IFSB also brings counts for breach of the implied covenant of the good faith and fair dealing, which is imposed as a matter of law in Massachusetts to all contracts, unfair competition, trademark infringement, and false designation of origin under the Lanham Act, common law unfair competition and trademark infringement; and violation of M.G.L. c. 93A.  IFSB seeks damages, trebling of damages for willfulness, punitive damages, a permanent injunction, specific corrective advertisements and notices from BIFF, and attorneys’ fees and costs.

 

Premium Sports, Inc. v. Keville et al. (17-cv-11848).

Premium Sports sued David Keville and his company Country Saloon Products, Inc., which does business as “Kelly’s Cellar” in Quincy, MA, alleging that Kelly’s Cellar unlawfully intercepted and descrambled the satellite signal of a Gaelic Athletic Association (“GAA”) football match between Donegal and Galway, which took place on July 22, 2017. Premium Sports brings counts for copyright infringement as well as violation of 47 U.S.C. §§ 553 and 605(a), which prohibit the unauthorized reception and publication of communications.  The latter statutes provide for injunctive relief, actual or statutory damages, and reasonable attorneys’ fees.

The defendants had previously been sued for pirating prior GAA matches, (15-cv-13009). The case settled after the defendants moved to vacate a finding that they were in default and awarding Premium Sports $69,387.07 in damages, fees and costs.

GAA football, also known as Gaelic football, is a team sport in which the object is to punch or kick a ball into the other team’s goal (a “goal”), for three points, or between two upright posts extending above the goal (a “point”) for one point. Galway won the July 22 match by a final score of 4 goals, 17 points (for a total of 29 points) to 0 goals, 14 points for Donegal.

Country Mutual Insurance Co. et al. v. Vibram USA et al. (DAR-25491).

The Massachusetts Supreme Judicial Court, the state’s highest court, agreed to review a decision concerning insurance coverage of trademark claims and the right of the insurance companies to recoup defense costs once the court determines that the underlying suit did not trigger coverage. Shoe maker Vibram was sued by the family of the late Olympic marathoner Abebe Bikila for unlawfully obtaining a trademark for a shoe using his name. Vibram’s insurers, Country Mutual Insurance Co. and Maryland Casualty Co., initially agreed to defend the case subject to a reservation of rights to challenge their obligation to cover the suit, and for some period of time paid for the defense. Judge Kaplan of the Massachusetts Superior Court subsequently found the insurance contracts were not triggered, but denied the insurance company the ability to recover defense costs they had already paid because the contracts did not expressly provide for a right to reimbursement. On appeal, the insurance companies seek reimbursement under a theory of unjust enrichment.

Microsoft Corp. v. John Does 1-10 (17-cv-11831).

Judge Martinez of the Western District of Washington, in response to Defendants Charlie’s One Stop Computer Center, Inc. and its president, Michael Aucoin’s motion to dismiss for lack of personal jurisdiction, instead transferred the litigation to Massachusetts. The case was initially filed in June, 2016, against unknown defendants, alleging infringement of Microsoft copyrights and trademarks on software being installed using fraudulent product keys.  Discovery led to the identification of Charlie’s One Stop and Mr. Aucoin, who then moved to dismiss.  Microsoft indicated that, if dismissed, it would simply re-file here.  When the defendants admitted that jurisdiction would exist in Massachusetts, transfer was ordered.  Judge Wolf has been assigned to the case.

Washington’s long-arm statute allows a court to award attorney’s fees for a party served under the statute who prevails in the action. Judge Martinez determined that Microsoft, when first notified about the jurisdictional issue, told Defendants that it would “vigorously defend against any motion to dismiss,” and after Defendants filed the motion, that it would consent to transfer to Massachusetts only if the motion and request for fees were withdrawn.  He determined that such conduct, followed by Microsoft appearing in court and not opposing transfer, warranted the award of fees.

Cengage Learning, Inc. et al. v. Does 1-11 (15-cv-11577).

Judge Wolf entered default judgment in favor of Cengage, finding the well-pled facts of the complaint showed that defendents sold counterfeit versions of Cengage’s copyrighted textbooks bearing Cengage’s trademarks. Most of the defendants failed to answer the complaint, and the one who did file an answer then failed to respond to a motion for preliminary injunction and ceased responding to its counsel.  Judge Wolf went on to determine that the infringement was willful, based on the defendants’ use of false names and addresses to register online storefronts on Amazon.com and on their failure to appear.  Maximum statutory damages for both trademark and copyright infringement totaling $2.9 million were awarded, and a permanent injunction was entered.

Purdue Pharma LP et al. v. Collegium Pharmaceutical, Inc. (17-cv-11814).

Purdue asserts that Collegium infringes U.S. Patent No. 9,693,961, which covers improved oxycodone hydrochloride compositions, both by filing an NDA and by making and selling the now-approved Xtampza® ER oxycodone extended release capsules.  This marks the latest in a series of lawsuits filed by Purdue alleging Xtampza® infringes Purdue patents.

The District of Massachusetts seeing rise in patent lawsuits since TC Heartland

According to an article published today by Law360, there have already been more patent cases filed in the District of Massachusetts this year than in all of 2016.  This may be the result of the changes brought about to venue in patent cases by the Supreme Court’s TC Heartland decision, which limited venue in patent cases to districts in which a defendant corporation is incorporated or districts in which the defendant committed acts of infringement and has a regular and established place of business.  According to RPX, filings in the Eastern District of Texas – previously the busiest patent district by far – dropped from 57% of cases filed between January 1 and May 22, 2017 (the date TC Heartland issued) to 28% of all new filings in the nine weeks post-TC Heartland.  While the sample sizes are small, this seems to point to a busier patent litigation practice for Massachusetts.