District of Massachusetts IP Blog

Federal Case Initiated to Prevent Domain Transfer

Rare Names, Inc. (Waltham, MA) has sued Foster, Andrew & Co. (Bolingbrook, IL) for a declaration that a domain name registered by the plaintiffs, <faci.com>, does not violate defendant’s rights.  Defendant was successful in a UDRP action to have the domain transferred.  Plaintiffs initiated this action to prevent the transfer. 

Rare Names, Inc. v. Foster, Andrew & Co., 12-10800-DJC (D. Mass. May 3, 2012)

Boarding Helmet Designs Accused

Bern Unlimited, Inc. (Kingston, MA) has sued The Burton Corp. (Burlington, VT), Vans, Inc. (Cypress, CA), and Easton-Bell, Sports, Inc. (Van Nuys, CA) for infringement of design patent D572,865 related to an ornamental helmet.  Easton-Bell is also accused of infringement of design patent D572,880 related to a summer liner. 

         

D572,865                                            D572,880

Bern Unlimited, Inc. v. Vans, Inc., 11-12278-DJC (D. Mass. Dec. 20, 2011)

Bern Unlimited, Inc. v. The Burton Corp., 11-12280-JLT (D. Mass. Dec. 20, 2011)

Bern Unlimited, Inc. v. Easton-Bell, Sports, Inc., 11-12281-DPW (D. Mass. Dec. 20, 2011)

Financial Institutions Fight for the SUN

Sun Life Assurance Company of Canada (Toronto, CA) has sued Sun Bancorp, Inc. (Vineland, NJ) for trademark infringement and related claims.  Plaintiff uses the marks SUN LIFE and SUN LIFE FINANCIAL (and other SUN related marks) for insurance and financial services.  Defendant uses SUN FINANCIAL SERVICES and SUN WEALTH MANAGEMENT and has applied to register the latter. 

Sun Life Assurance Company of Canada v. Sun Bancorp, Inc., 11-12013-DJC (D. Mass. Nov. 14, 2011)

Training Material Copyrights Asserted Again

Situation Management Systems, Inc. (Nashua, NH) has sued Kogan Page Limited (Philadelphia, PA) for copyright infringement related to behavioral questionnaires and materials.  A previous case (with a colorful procedural history) by SMS asserting its copyright in similar materials was before by Judge Young who was reversed by the First Circuit. 

Situation Management Systems, Inc. v. Kogan Page Limited, 11-11509-DJC (D. Mass. Aug. 25, 2011)

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)

SUPREME Oil Dispute

Catania-Spagna Corp. (Ayer, MA) has sued Supreme Oil Co. (Englewood, NJ) for infringement of the trademark SUPREME for olive oil.  According to the complaint Supreme Oil never used SUPREME as a trademark until 2010. 

Catania-Spagna Corp. v. Supreme Oil Co., 11-10967-DJC (D. Mass. June 1, 2011)

No Joint Inventorship for Parallel Researchers

Two doctors sued The General Hospital Corp. seeking under 35 U.S.C. § 256 to be added to two patents related to the discovery of a particular genetic mutation associated with Familial Dysautonomia.  Judge Casper granted summary judgment for the defendants because § 256 was inappropriate to grant the remedy sought by the plaintiffs.  The plaintiffs could not be added as co-inventors because they fell short of meeting the clear and convincing burden to prove their co-inventorship.  Specifically, there was no proof that the plaintiffs collaborated with the named inventors, a requirement of joint inventors.  The proper action was a determination of priority in an interference proceeding pursuant to 35 U.S.C. § 135 and thus the claim under § 256 was dismissed.

This case has a nice rundown of how different cases have used § 256 to deal with inventorship issues, both with collaboration, and without.

Rubin v. The General Hospital Corp., 09-10040-DJC (D. Mass. Apr. 28, 2011)

Dunkin’ Donuts Ices Copyright Claims

Dunkin’ Brands, Inc. (Canton, MA) has sued VBConversions (Santa Monica, CA) for a declaratory judgment that Dunkin’ has not violated the DMCA and is not violating VBC’s copyrights in its software.  

In a series of correspondence between Dunkin’ and VBC from January through May 2011, the parties argued over whether a user named “Dan” had downloaded, from a Dunkin’ IP address, an unauthorized copy of VBC’s $199 code conversion software and used it to convert 125,000 lines of code.  VBC demanded $130,000 in compensation.  Dunkin’ said “Dan” was an independent contractor in Canada, not a Dunkin’ employee, and VBC’s monetary demands were “outrageous”.  VBC’s counsel continued to send threatening letters (apparently not an idle threat since Dunkin’ alleges VBC sued 21 other companies since 2006).  Dunkin’ finally threw up its hands and filed for a declaratory judgment.  Query whether there is DJ standing here since there is no allegation of ongoing activity on the part of Dunkin’. 

Dunkin’ Brands, Inc. v. VBConversions LLC, 11-11020-DJC (D. Mass. June 7, 2011)

Knee Treatments Accused. Again.

For the second time in two weeks, Genzyme Corp. (Cambridge, MA) has sued Seikagaku Corp. (Tokyo, Japan) and its affiliates.  Last time it was for a declaratory judgment that the defendants’ Gel-One® product recently approved by the FDA will infringe Genzyme’s Patent No. 5,399,351 relating to biocompatible viscoelastic gel slurries.  This time it’s for a declaratory judgment that the same product will infringe Genzyme’s Patent No. 7,931,030 (issued on the same day as the complaint).  This new case was assigned to Judge Woodlock, who took over the previous case from Judge Casper. 

Genzyme also sued Anika Therapeutics, Inc. (Bedford, MA) for a declaratory judgment that Anika’s Monovisc® product (FDA approval pending) will infringe the ‘030 patent.  Genzyme had also previously sued Anika for infringement of the ‘351 patent and for infringement of Patent No. 5,143,724.  Judge Casper got the new Anika case.  Maybe it will find its way to Judge Woodlock.  The previous Anika case is assigned to Judge Gertner, who is leaving the bench in a few months. 

Genzyme Corp. v. Seikagaku Corp., 11-10704-DPW (D. Mass. Apr. 26, 2011)

Genzyme Corp. v. Anika Therapeutics, Inc., 11-10705-DJC (D. Mass. Apr. 26, 2011)

Defendant Enjoined From Using Competitor’s Customer Lists

Cheaters never prosper.  Particularly when caught red-handed and hauled into federal court. 

In this decision by Judge Casper (her first noted by this blog), Topcon Medical, an optical device company, was enjoined from using plaintiff Optos’ customer list, surreptitiously supplied by a former Optos employee who was hired, then fired (post-lawsuit) by Topcon.  Optos accused the employee of breach of his employment agreement and accused both the employee and Topcon of trade secret misappropriation.  Optos had been clued in to the shenanigans by a former Topcon employee who leaked several damning emails.  (Oops.) 

The defendants moved to dismiss for lack of personal jurisdiction, but that motion was denied.  Most of the requested injunction was granted but the court refused to enjoin Topcon from contacting all the Optos customers on the list in question because some were customers of other Topcon products which did not compete with Optos’ products. 

Optos v. Topcon Medical Sys., Inc., 10-12016-DJC (D. Mass. Mar. 7, 2011)