District of Massachusetts IP Blog

Home Manufacturer Suit Against Architect Stays in MA

In a dispute of intellectual property related to prefabricated homes, Judge Casper denied a motion by a defendant individual artist to dismiss for lack of personal jurisdiction / improper venue, finding sufficient contacts with the Commonwealth and proper venue.  In the same order Judge Casper granted a motion to amend the complaint and denied a motion to strike portions of a filed Declaration. 

Blu Homes, Inc. v. Kaufmann, 10-11418-DJC (D. Mass. July 29, 2011)

Amazon Awakens Angry Author

An individual from Roxbury, MA has sued Amazon, Inc. (Seattle, WA) for copyright infringement alleging that Amazon sold copies of his books (a three-part series entitled A 21st Century Spiritual Awakening) without paying him.  He fired his previous counsel, is now acting pro se, and is seeking $50 million in damages. 

Ingraham v. Amazon, Inc., 11-11357-DPW (D. Mass. July 29, 2011)

Tourist Passes Flagged

Smart Destinations, Inc. (Boston, MA) has sued Leisure Pass North America LLC (New York, NY) and others for infringement of Patent No. 7,765,128 directed to a programmable ticketing system.  The defendants’ “smartcard based attraction passes marketed as the New York Pass and the Philadelphia Pass” are accused.  

Smart Destinations, Inc. v. Leisure Pass North America LLC, 11-11351-JLT (D. Mass. July 28, 2011)

Stylish Trademark Infringement

An individual from Boston, MA and her company StyleMint, LLC have sued BeachMint, Inc. (Santa Monica, CA) and Mary-Kate and Ashley Olsen for infringement of the trademark STYLEMINT for women’s fashion and accessories.  Plaintiff alleges that she operated under the mark STYLEMINT for several years (including through <stylemint.net> and <stylemint.com>) before the defendants came onto the scene.  She also alleges that she inadvertently let her registration in <stylemint.com> lapse before it was snapped up by BeachMint.  According to the complaint BeachMint then launched a full campaign to co-opt the STYLEMINT mark when plaintiff refused to sell.  

Gardner v. BeachMint, Inc., 11-11307-DPW (D. Mass. July 22, 2011)

Internal Disciplinary Documents Must Be Produced In Malpractice Case

Cold Spring Harbor Laboratory is suing Ropes & Gray, LLP and one of its former attorneys for malpractice related to the prosecution of several CSHL patent applications before the Patent Office.  Ropes refused to produce documents related to investigation and termination of the employee, claiming privilege / work product.  Judge Stearns partially disagreed, and ordered production of the materials generated between the date the potential malpractice was raised and the date Ropes discontinued representation of CSHL. 

Cold Spring Harbor Lab. v. Ropes & Gray, LLP, 11-10128-RGS (D. Mass. July 19, 2011)

STRATUS Trademark Case Stays in Boston

In August 2010 Stratus Technologies sued enStratus Networks for trademark infringement.  Judge Zobel recently denied a motion to dismiss for lack of personal jurisdiction (finding sufficient contacts with the Commonwealth) and failure to state a claim (finding a colorable claim for trademark infringement.

Stratus Technologies, Inc. v. enStratus Networks, LLC, 10-11384-RWZ (D. Mass. July 7, 2011)

Sandal Soles Subject of Design Suit

Acushnet Co. (Fairhaven, MA) has sued RJ Sports USA (Pomona, CA) for infringement of Acushnet’s trade dress and Design Patent No. D466,272 for a sandal sole.  A picture being worth a thousand words:

Copyright Fee Award 10x Damages Affirmed

In a case originating in D. Maine, an individual songwriter successfully sued a number of defendants for using his song in commercials without his consent.  Against a set of defendants who did not settle, the plaintiff was awarded $10,000 in damages and approximately $100,000 in attorneys fees.  Defendant appealed the fees.  After staying the case to quickly deal with a jurisdictional issue (attorneys fees in copyright cases may be awarded as part of costs, which in turn may cause issues with appellate jurisdiction prior to a final order) the First Circuit upheld the award.  It rejected arguments that the award was unreasonable (citing the lower court’s methodical following of the Lodestar method) and that the fee award was disproportionate from the damages (citing the purpose of the Copyright Act to encourage artistic expression).  It didn’t hurt the plaintiff’s cause that the defendant had engaged in “quixotic” tactics and the case was “the litigation equivalent of hand-to-hand combat.”  For a good read of how overly aggressive litigation tactics can lead to a large fee award in a copyright case, I commend this to your reading. 

Spooner v. Een, Inc., 10-2393 (1st Cir. July 5, 2011)

Infringer Not Permitted to Challenge Rights Transfer

In October 2010 Judge Gorton ruled that reverse mortgage forms used by Brookline Bancorp infringed copyrights owned by Homeowner Options for Massachusetts Elders when Brookline used the forms after its license expired.  Judge Gorton granted a motion for reconsideration, but came to the same conclusion.  Specifically Judge Gorton ruled, among other things, that technical errors with the copyright registration and assignment were insufficient to avoid liability for infringement. 

Homeowner Options for Massachusetts Elders, Inc. v. Brookline Bancorp, Inc., 09-11790-NMG (D. Mass. May 12, 2011)

Clark Rockefeller Image Not Infringing

Last year a photographer sued Sony Pictures and A&E accused them of infringing his copyright in a photograph of Clark and Reigh Rockefeller in a made for TV movie.  The subject image appeared in 42 seconds of screen time.  Judge Zobel compared the two images and found that they shared factual content, but not expressive elements.  She then entered summary judgment of non-infringement for the defendants.  

Harney v. Sony Pictures Television, Inc., 10-11181-RWZ (D. Mass. May 12, 2011)