District of Massachusetts IP Blog

TOEFL Tested

Everyone’s favorite junior high nemesis Educational Testing Service (Princeton, NJ) has sued the SAKAE Institute of Studies Abroad (Cambridge, MA) and its president and director, for infringement of ETS’ TOEFL trademarks.  (That stands for Test of English as a Foreign Language for those of you who don’t remember.)  SAKAE is marketing its own exams as SISA TOEFL or SAKAE TOEFL.

 

Just goes to show you never know what is a registered trademark.  I wonder if a consumer survey would show that TOEFL is strongly associated with a particular source or if it might be vulnerable to a genericide argument?

 

Educational Testing Service v. Sakae Institute of Studies Abroad - U.S.A., Inc., 10-10404-RGS (D. Mass. Mar. 8, 2010)

Professor Sues College for Copyright Infringement of Course Materials

Professor Dr. Joan Young (West Newton, MA) has sued her former employer Laboure College (Boston, MA) for continuing to use the content of her courses after her retirement.  The complaint alleges that prior to her employment at Laboure, she created course materials for her part-time teaching at other institutions.  She then began working part-time at Laboure, which eventually became full-time employment.  She then taught at Laboure for 17 years.  After her retirement this year, she alleges Laboure continued to use her course materials without authorization.  She applied for copyright registration for the course materials and sued the school.

 

Several thoughts here: 

 

(1)    The complaint cites only a copyright application case number, not a registration number.  Does she have a registration?  If not, does she meet the requirements of 17 U.S.C. § 412 requiring registration prior to suit?  There is considerable caselaw in D. Mass. which suggests that a full registration is required, though there may be one or two outliers.  I don’t remember offhand Judge Woodlock’s position on this.

 

(2)     Does Laboure have an argument for implied license here?  After all, she did teach the course as a full-time employee for 17 years.

 

(3)     The complaint does not make a jury demand.  I wonder if that was choice or oversight.

 

Dr. Joan Young v. Laboure College, 10-10403-DPW (D. Mass. Mar. 8, 2010)

Counterclaim to Cancel Incontestable Trademark Dismissed; Inequitable Conduct Claims Stay

Bose Corp. sued Lightspeed Aviation, Inc. accusing Lightspeed’s Zulu headsets of infringing Patent No. 5,181,252, directed to high compliance headphone driving.  Lightspeed counterclaimed asserting that Bose breached a settlement agreement from a previous lawsuit.  Later Lightspeed amended its answer to add counterclaims for cancellation of Bose’s QUIETCOMFORT trademark, and for a declaration that the ‘252 patent is unenforceable due to inequitable conduct in the form of material misrepresentations / omissions made before the PTO during prosecution.  Bose moved to dismiss these later counterclaims.

 

Because the mark in question had become incontestable, and because Lightspeed’s counterclaim did not plead any of the grounds set forth in 15 U.S.C. § 1115(b) for challenging incontestable marks (Lightspeed alleged breach of contract as the grounds for cancellation), Judge Young granted the motion to dismiss the trademark cancellation counterclaim.  The court denied the motion to dismiss the inequitable conduct counterclaims (one for improperly amending inventorship to avoid prior art, the other for failing to disclose prior public uses) because they stated plausible claims for relief.

 

Bose Corp. v. Lightspeed Aviation, Inc., 09-10222-WGY (D. Mass. Mar. 4, 2010)

Judge Stearns Refuses to Dismiss Defendant in S.D.N.Y. Case

In this S.D.N.Y. case (Judge Stearns of D. Mass. sitting by designation) Philips is suing a variety of defendants for selling unlicensed CDs in violation of certain license agreements and Philips’ rights in Patent No. 5,068,846.  One defendant moved to dismiss saying it is merely a holding company with no day-to-day operations or employees and therefore could not be liable for infringement or inducement to breach any contract.  Judge Stearns denied the motion finding that the facts as alleged in the complaint state a plausible entitled to relief under Twombly.

 

For the curious, the heavy docket of the S.D.N.Y. results in judges from other districts (including D. Mass.) assisting by designation.  This case has a particularly tortuous history when it comes to judges.  Upon filing (Jan. 2008) it was originally assigned to Judge Brieant who (on June 26, 2008) assigned it to Magistrate Judge Fox who then (two weeks later on July 10, 2008) gave notice to the parties that he was retiring.  On August 5, 2008 the case was reassigned to Judge Seibel who (on October 2, 2008) assigned it to Magistrate Judge Yanthis for discovery.  Then in Dec. 2008 it was assigned permanently to Judge Stearns of D. Mass. where it has remained.

 

You can follow the various docket entries here:

 

http://www.boliven.com/legal_proceeding/7:08-cv-00515-RGS?q

 

Koninklijke Philips Electronics N.V. v. Entertainment Distribution Co. (USA) LLC, 08-04070-RGS (S.D.N.Y. Mar. 5, 2010)

Asset Purchaser Demands Transfer of Patents

In this state court case Magmotor Technologies, Inc. (West Boylston, MA) sued SatCon Power Systems, Inc. and SatCon Tech. Corp., Inc. (Boston, MA) demanding transfer of two patents (5,818,137 and 6,049,148).  The complaint alleges that when defendants sold their magmotor business they represented they had no patents in the relevant area.  Plaintiff later discovered the two patents and demanded their transfer; defendants refused.  The complaint also asserts that defendants continue to operate their magmotor business in violation of non-competition clauses in the asset purchase agreement.

 

Magmotor Technologies, Inc. v. SatCon Power Systems, Inc., 10-0895 (Mass. Superior Court, Mar. 4, 2010)

Trademark Infringement Case Filed in Advance of Live Performance

In advance of a Boston performance by the band Muse, Bravado Int’l Group Merchandising Services (Los Angeles, CA), a manufacturer of various music related merchandise (poster, T-shirts, etc.), filed suit against a number of anonymous individuals and companies who plaintiff believes will be selling counterfeit merchandise at the concert.  These anonymous suits are a common tool used to get an order allowing a trademark owner to seize counterfeit goods at the venue of live performances.

 

Bravado Int’l Group Merchandising Services, Inc. v. John Does 1-100, 10-10370-RWZ (D. Mass., Mar. 2, 2010)

Autism Service Provider Founder Sued by Former Employer

The Option Institute and Fellowship (Sheffield, MA) has sued Relate to Autism, Inc. (South Egremont, MA) and its founder, an individual who formerly worked with and trained at the Option Institute.  The 45 page, seventeen count verified complaint is quite detailed in tracing the history of RTA’s founder with the plaintiff and laying out the various acts for which plaintiff brings suit.

 

The complaint alleges that both the Option Institute and RTA are in the business of providing services related to Autism and RTA’s founder violated several agreements with the Option Institute in founding and working for RTA.  The complaint also alleges wrongful use of Option Institute’s confidential information and trademarks by RTA, as well as the failure of the RTA founder to complete certain contractually obligated projects for Option Institute prior to her departure.

 

The Option Institute and Fellowship v. Houghton, 10-30037-MAP (D. Mass., Feb. 17, 2010)

Owner of Gun Sight Registration Asserts Trademark Infringement Against Reading Device

Resident Artist Studio (Boxborough, MA) sued ABiSee, Inc. (Acton, MA) for infringement of the trademark EYE PAL.  Plaintiff RA alleges use of the mark since 2005 for an optical pinhole lens that can be attached to eyeglasses to assist in the ability to see remote objects.  Primarily the device was used in firearm shooting and RA owns a federal registration for the mark in connection with gun sights for firearms.   

 

Defendant ABiSee uses the mark in connection with a reader product (including camera lens and light source) which scans material to be read and converts it into an audio signal for playback.  The complaint alleges ABiSee started using the mark in 2008 (along with an improper ®).

 

RA also alleges that its own product is currently promoted for use in various applications, including reading.  RA has a pending federal application for the mark in connection with optical lenses including pinhole lenses to improve impaired vision; that application was filed in September 2009 (and amended in January 2010) but alleges use back to 2005.

 

Setting aside the allegations surrounding ABiSee’s potentially improper use of the registration symbol, this case is going to come down to how close the parties’ respective products are and whether RA can establish rights to the name that cover ABiSee’s present use.

 

Resident Artist Studio, LLC v. Abisee, Inc., 10-10268-DPW (D. Mass., Feb. 17, 2010)

Fabric Patent Asserted Against Taiwanese Company

Polartec LLC (Lawrence, MA) sued Kingwhale Indus., Inc. (Taipei, Taiwan / Red Bank, NJ) for infringement of Patent No. 6,927,182 directed to a composite sweatshirt fabric with knit constructed channels.  Polartec is the exclusive licensee of the patent, the patent owner is also a plaintiff in the suit.

The complaint is bare-bones.  It alleges infringement and willfulness and that’s it.  It does not specifically name any accused products.

Polartec LLC v. Kingwhale Indus., Inc., 10-10387-WGY (D. Mass., Mar. 4, 2010)

Trademark Rights To Be Determined In State Court

Sperian Metal Mesh Protection USA, Inc. (Attleboro Falls, MA) has sued Indolink Corp. (San Rafael, CA) for a declaratory judgment concerning certain rights in Sperian’s WHITING & DAVIS trademark.  The complaint alleges as follows. 

Sperian licensed its mark to Indolink for exclusive use with certain products.  The license agreement contains a clause which gives Indolink the option to purchase the mark in the event of a change of control of Sperian.  Sperian is planning on selling less than 50% of its assets to a third party and plans to give that party exclusive rights to use the mark with certain products which do not overlap with Indolink’s license.  Indolink was not ok with this arrangement and gave notice to Sperian that it intended to exercise its right to purchase the mark or sue for the right to do so.  Indolink’s threat is preventing Sperian from consummating the deal, hence the declaratory judgment suit.

As the rights in question do not touch federal registrations, and the license was “entered into” in Massachusetts, the case was brought in Mass. state court.

Sperian Metal Mesh Protection USA, Inc. v. Indolink Corp. (Mass. Superior Court,  Feb. 16, 2010)