District of Massachusetts IP Blog

Jurisdiction Lacking In Music Case

A copyright case with a curious factual background was dismissed for lack of jurisdiction following Judge Ponsor’s approval of Magistrate Judge Neiman’s report and recommendations.  The case stemmed from a group of musicians who alleged that defendant producers purloined subject works and failed to pay promised royalties.  Because much of the action happened in Puerto Rico, and there were limited contacts to Mass., the case was dismissed. 

Alicea, et al. v. LT’s Benjamin Records, et al., 11-30002-MAP (D. Mass. Oct. 6, 2011)

Educational Materials On the Wrong Path

Channing Bete Co. (South Deerfield, MA) has sued SELmedia, Inc. (Cary, NC) for trademark infringement.  Plaintiff has a registered mark for PATHS for emotional learning materials.  The defendant sells similar materials under the mark PARENTPATHS. 

Channing Bete Co. v. SELmedia, Inc., 11-30251-MAP (D. Mass. Nov. 9, 2011)

Famous Brand Seeks to Cool Off Click Through Use of Its Mark

Carrier Corp. (Farmington, CT) has sued Reply! Inc. (San Ramon, CA) for infringing the trademark CARRIER.  The complaint alleges that Reply! purchased the name “carrier” from a number of search engines to promote visitors to its site, who were then redirected to contractors who paid a fee to Reply!.  Reply! also registered <carrier.reply.com>. 

Carrier Corp. v. Reply! Inc., 11-30189-MAP (D. Mass. July 1, 2011)

Dogfight Over Wing Franchise

Matcal, Inc. (Hadley, MA) sued former franchisee Wings Over Providence, LLC (Providence, RI) and its principles for trademark infringement and other violations stemming from the breakdown of an agreement relating to a “Wings Over” franchise.  Matcal runs the franchise and owns a variety of aviation themed marks for fast food.  The complaint alleges WOP defaulted on its franchise payments, that Matcal terminated the franchise, and that WOP continued to operate the franchise in violation of the agreement and Matcal’s rights in its trademarks and confidential information.  Matcal sought a TRO / preliminary injunction ordering WOP to discontinue use of the franchise materials and to enter arbitration called for in the agreement to resolve the payment issues. 

Matcal, Inc. v. Wings Over Providence, LLC, 11-30014-MAP (D. Mass. Apr. 28, 2011)

Jurisdiction Affidavit Results In $23M Damages Award

In an unsuccessful bid to get a trademark case dismissed for lack of personal jurisdiction, a defendant listed its total sales as just over $23M.  That motion was denied.  Later the defendant’s counsel withdrew, follow by a default judgment against the defendant.  A damages proceeding was held with no appearance by said defendant.  During this proceeding, the sales number was used by the plaintiff, who, absent evidence of defendant’s costs, could rely on the sales figures as evidence of profits.  Magistrate Judge Neiman agreed and recommended an award of $23 million in damages along with $24,000 in attorneys fees.  Judge Ponsor adopted that recommendation without objection from the defendant (who, as Judge Ponsor noted, “lacks either the means or inclination to participate in this litigation, or both.”). 

Two takeaways:

Small Bar Hit With Damages And Fees In ASCAP Dispute

As is its way, ASCAP (along with several copyright owning entities) brought suit against the owner of a bar in Agawam, Mass. for copyright infringement.  The bar in question operated a jukebox on premises but didn’t pay the appropriate tithe license fee to ASCAP for rights to its catalog.  ASCAP had apparently contacted the defendant more than forty times since 2002 (!) to no avail.  Eventually in 2008 ASCAP sent an investigator who remained for four hours during which forty-nine songs were played, four of which were subject to copyright protection by ASCAP. 

Defendant Deflects Liability In Laser Treatment Patent Case

In one of a series of patent suits involving energy treatment (ablation) of internal organs (such as prostate tissue, veins, etc.), Judge Ponsor disposed of all claims in a case before him on summary judgment.  While asserted Patent No. 5,428,699 was declared valid, the defendant escaped liability on patent infringement and other secondary claims. 

Opening his 40 page decision, Judge Ponsor eloquently (and with a certain amount of resignation) asked: 

This intricate and lavishly briefed piece of patent litigation turns on the proper construction of a single two-letter word: “on.”  One may say that a dictionary rests “on” a table but, if an apple is then placed on the dictionary, is it, too, “on” the table? 

For purposes of this case, the answer was no. 

Hasbro Sues Buzz Bee Again

Last summer Hasbro sued Buzz Bee for infringement of two patents relating to disc shooting guns and one patent relating to a water gun.  That case settled in the fall. 

Hasbro has launched another suit against Buzz Bee with regard to the disc gun patents, this time alleging infringement of a different line of toys.

Hasbro, Inc. v. Buzz Bee Toys, Inc., 11-30087-MAP (D. Mass. Apr. 1, 2011)

Pro Se Copyright Claim Filed Against Producer and Comcast

A local musician residing in Springfield, MA has sued a music producer, also from Springfield and Comcast, Inc. for improper recording and distribution of one of her musical sets which included several copyrighted (and possibly registered, the complaint is unclear) songs. 

The musician performed unpaid at a live event and learned afterwards that it was video recorded by the organizers of the event.  She asked for, and received, a copy of the recording.  She later learned that it had been broadcast over the local cable access show without her permission.  She is seeking payment as well as appropriate credit for her ASCAP membership. 

Daggs v. Bass, 11-30070-MAP (D. Mass. Mar. 18, 2011)

Changes Coming to D. Mass.

As noted previously, Judge Gertner has announced her intention to retire on September 1.  When Judge Gertner's successor is confirmed Judge Saylor will move to Boston and the new judge will sit in Worcester.

Judge Ponsor has announced that he will take senior status in August, creating a vacancy in Springfield.

Denise J. Casper will be joining the bench shortly, succeeding Judge Reginald C. Lindsay who passed away in 2009.