District of Massachusetts IP Blog

Publisher Sued for Using Pics Beyond License Terms

An individual photographer from Stony Brook, NY has sued Houghton Mifflin Harcourt Publishing Co. (Boston, MA) and several John Doe publishers for copyright infringement stemming from alleged unauthorized inclusion of several photographs in various educational publications overstepping the terms of the license between the parties. 

Lefkowitz v. Houghton Mifflin Harcourt Publishing Co., 12-10614-MLW (Apr. 5, 2012)

LAND ROVER Sues Boston Auto Shop

Land Rover (Warwickshire, UK) has sued Boston Roverland Company, Inc. (Boston, MA) and affiliates for trademark infringement and related claims.  Plaintiff owns the mark LAND ROVER for automobiles and related services.  The complaint alleges that defendants have begun using BOSTON ROVERLAND and plaintiff’s logos without permission to advertise automobile related services. 

Land Rover v. Boston Roverland Company, Inc., 11-12088-MLW (D. Mass. Nov. 23, 2011)

Celiac Disease Book Decision Affirmed

In 2009 pro se plaintiff Susan Hassett sued Elisabeth Hasselbeck, her publisher, and a John Doe ghostwriter, for copyright infringement stemming from Hassett’s book, Living with Celiac Disease, which she alleged she sent to Hasselbeck and was copied by Hasselbeck and the ghost writer when they wrote The G Free Diet.  In December 2010 Chief Judge Wolf granted summary judgment to the defendants noting that ny similarities between the books are those of ideas, facts, and other unprotectable elements.  

The First Circuit has affirmed that decision.  The First Circuit also dismissed two other claims on appeal, one that she was denied a full opportunity to present her case at summary judgment, the other that the court erred when it failed to appoint her counsel.  The latter was denied because she failed to show indigency or other exceptional circumstances. 

Hassett v. Hasselbeck, 11-1111 (First Circuit Nov. 7, 2011)

D. Mass. To Allow Cameras In Courtroom

As reported in the Boston Globe, Judge Wolf announced today that D. Mass. will participate in a three-year pilot program allowing civil cases to be recorded for Internet and news broadcasts.

While practitioners and the odd client may want to see a patent case recorded, my over/under on the length of time before portions of a patent case are broadcast is never.

Spinal Stabilization Devices Accused

Rachiotek, LLC (Wellesley, MA) has sued Globus Medical, LLC (Audubon, PA) for infringement of Patent No. 7,931,675 directed to a spinal stabilization device.  Globus’ TRANSITION products are accused of infringement. 

Rachiotek, LLC v. Globus Medical, LLC, 11-11481-MLW (D. Mass. Aug. 22, 2011)

High Noon On THE OREGON TRAIL

The Learning Company (Boston, MA) has sued Zynga, Inc. (San Francisco, CA) for infringement of the trademark THE OREGON TRAIL for video games.  The Learning Company, a division of Houghton Mifflin, have used the mark for The Oregon Trail education video game since the 70s.  The Learning Company originally approached Zynga (makers of Mafia Wars, FarmVille, etc.) regarding making a Facebook version of The Oregon Trail but The Learning Company partnered with someone else instead.  In connection with the game FrontierVille, Zynga began using the name OREGON TRAIL.  Not surprisingly, The Learning Company did not approve.  The Learning Company defriended Zynga and filed lawsuit.

The Learning Company v. Zynga, Inc., 11-10894-MLW (D. Mass. May 18, 2011)

Judge Wolf Vacates Markman Decision to Facilitate Settlement

Some judges, when faced with a motion to vacate a decision in view of a pending settlement, do so without comment.  Other judges balk at such requests.  If the parties have relied on (and the court has expended) judicial resources to get to judgment, why should the court vacate once a winner and loser have been declared?

When faced with such a request back in June 2010 Judge Wolf ordered the parties to brief the issue.  (I’m sure that made them happy.)

Download Wolf ordering briefing of vacatur request

After reviewing those briefs, Judge Wolf did agree to vacate an order of summary judgment / claim construction, as a precondition to a settlement agreement.  The detailed decision explains how, with non-final judgments and other interlocutory orders, the district court maintains broad discretion to vacate.  The decision also notes how the policy reasons for not vacating are very different before final judgment has entered.

In this case, the vacated order came early in the case, the parties had been actively pursuing settlement, and vacatur was necessary to bring the case to a close.  So Judge Wolf determined that the public was better served by permitting settlement rather than requiring that the early order stand.

Download Lycos settlement decision

Lycos, Inc. v. Blockbuster, Inc., 07-11469-MLW (D. Mass. Dec. 23, 2010)

WOW Trademark Case Makes Brief Stop in State Court Before Going Federal

At the end of 2010 Wow What Savings, LLC (Waltham, MA) (d/b/a Wow) sued America Online, Inc. (Dulles, VA) in Mass. Superior Court asserting a number of claims related to the parties’ competing services under the trademark WOW.  

Plaintiff Wow is an online consolidator, offering special business terms to consumers that Wow negotiates in bulk with retailers and distributors.  The complaint alleges that the principal of Wow met with a representative of AOL to explain his business model and propose a commercial relationship only to be rejected by AOL.  Several months later AOL launched a competing business also called Wow using the URL <wow.com> (which until that point had been used for World of Warcraft) and contacted businesses who had previously had relationships with the plaintiff. 

The verified complaint filed in Superior Court was accompanied by several declarations and a motion for preliminary injunction.  For reasons which are not clear, however, the state court complaint (which included tort claims of unjust enrichment, tortious interference, and MA trademark infringement) also included federal trademark infringement and Lanham Act claims.  So the defendant did what any defendant would do in this situation, it removed to Federal Court. 

If preliminary injunctive relief is important, timing must be important.  So why file in state court?  Why not file directly in Federal Court and avoid the removal process?  Or, if you want to be in state court, why include Federal claims in your complaint?  Absent further information, this is not a strategy I would recommend. 

Wow What Savings, LLC v. America Online, Inc., (Mass. Superior Court, Middlesex County, Dec. 30, 2010, removed to 11-10050-DPW, D. Mass. Jan. 10, 2011)

Bandage Makers Fight Over Latex

Andover Healthcare, Inc. (Salisbury, MA) has sued Tempo Medical Prods., LLC (Chapin, SC) for false advertising and trademark infringement related to bandages advertised as “latex-free.”  Andover sells latex free bandages and uses the mark GIVE BLOOD (registered on the supplemental register) in a repeating design on bandages.  According to the complaint, Tempo sells competing bandages labeled as “latex-free” but which Andover alleges actually contain latex.  Tempo bandages are also sold with a repeating pattern of GIVE BLOOD printed on them. 

Andover Healthcare, Inc. v. Tempo Medical Prods., LLC, 11-10019-MLW (D. Mass. Jan. 5, 2011)

Medical Industry Consulting Companies Trademark Duel

Clinquest, Inc. (Hudson, MA) has sued CliniQuest, Inc. (Westford, MA) for trademark infringement and related claims.  The plaintiff uses the mark CLINQUEST and the design: 

  
for consulting relating to the pharmaceutical, biotech, medical device, and other industries.

The defendant uses the mark CLINIQUEST and the design:

 

 
for assisting medical device companies with clinical trials.  The plaintiff alleges that defendant’s services compete with its own and that there is a likelihood of confusion.  Particularly with any alphabetical industry listings (do people still use those?).

A fairly straightforward complaint, save for this sentence:  “Upon information and belief, CliniQuest commenced use of the service marks CLINIQUEST...no earlier than 2006.” 

Really?  Four years?  The complaint doesn’t mention why suit is being brought now (i.e. expansion of defendant’s business, new customer complaints, etc.).  The plaintiff better be able to dig up some good instances of actual confusion (none are mentioned in the complaint) or else the defendant is going to have a pretty good argument that if after four years nobody is confused, there probably isn’t any real likelihood of confusion.

Clinquest, Inc. v. Cliniquest, Inc., 10-12112-MLW (D. Mass. Dec. 7, 2010)