District of Massachusetts IP Blog

Facebook Complaint Dismissed

After suing a host of defendants, a pro se plaintiff’s case against the chroniclers of Facebook has come to an end. The plaintiff, who was a student at Harvard at the same time as Mark Zuckerberg, alleged copyright infringement, defamation, and a variety of other wrongs. Magistrate Judge Collings, in an expansive opinion, analyzes each of them and orders them dismissed with prejudice.

Greenspan v. Random House, Inc., 11-12000-RBC (D. Mass. May 9, 2012)

Author Defriends Facebook Storytellers

An individual author from Palo Alto, CA has sued a variety of defendants including several publishers, movie studios and author Ben Mezrich for copyright infringement, defamation, and other claims.  The complaint alleges that the many popular tales of the founding of Facebook infringe plaintiff’s rights in his book Authoritas:  One Student’s Harvard Admissions and the Founding of the Facebook Era.  The defamation claims (directed at Mezrich) stem from statements purportedly made by Mezrich that the plaintiff’s work was “irrelevant and of poor quality”, by Mezrich’s “selective omission” of the plaintiff’s contributions to the “verbal narrative concerning Facebook’s origins”, and by other unkind things said by Mezrich. 

Greenspan v. Random House, Inc., 11-12000-RBC (D. Mass. Nov. 18, 2011)

Common Law Mark Alleged Against In-State Competitor

Por-Shun, Inc. (Wilmington, MA) has sued an individual d/b/a Maple Valley Creamery (Hadley, MA).  The complaint alleges that the defendant’s use of the mark MAPLE VALLEY CREAMERY infringes plaintiff’s rights in the common law trademark SUGAR VALLEY CREAMERY.  The complaint alleges interstate use of its mark as well as an application for federal registration.  A Lanham Act violation is alleged, but I wouldn’t be surprised if this case found its way back to state court. 

Por-Shun, Inc. v. Jenks, 11-11763-RBC (D. Mass. Oct. 5, 2011)

Skincare Physicians Sue Other Skincare Physicians

SkinCare Physicians, Inc. (Chestnut Hill, MA) has sued Arizona SkinCare Physicians, PLC (Paradise Valley, AZ) for, you guessed it, infringement of the trademark SKINCARE PHYSICIANS®.  Let’s see, both parties are physicians that care for skin, only one of them is in Arizona right?  How a registration for this mark ever issued is beyond me. 

SkinCare Physicians, Inc. v. Arizona SkinCare Physicians, PLC, 11-11296-RBC (D. Mass. July 21, 2011)

Subject Matter Waiver Found In Disclosure of Investigator’s Findings

Over a year ago Bear Republic Brewing sued Central City Brewing in a dispute over beers featuring RACER formative marks.  A motion for a preliminary injunction was denied, and discovery ensued. 

Ten days before the close of discovery Central City disclosed the existence of a private investigator who had done some “market research” about the subject beers as sold.  Century City also produced photographs and video taken by him.  Based on this discovery, Bear Republic issued subpoenas to the investigator and his company.  Following the subpoenas, Central City tried to take it all back by amending its disclosures to remove his name and following up with an email between counsel saying that the investigator actually did not have discoverable information.  Not surprisingly, Bear Republic refused to withdraw its subpoenas and Central City moved to quash claiming lack of timeliness and work product.  Based on a detailed analysis of new Rule of Civ. Procedure 502, Magistrate Judge Collings allowed the deposition, with certain guidelines as to what could be covered. 

Honey Dew Donuts Sues Franchisee

Honey Dew Associates, Inc. (Plainville, MA) has sued JSJE, LLC (Seabrook, NH), a franchisee of Plaintiff’s Honey Dew Donuts shops for trademark infringement, breach of contract, and real estate claims stemming from alleged failures to make payments and otherwise abide by the terms of the franchise agreement. 

The verified complaint alleges that the franchisee failed to make required payments, failed to respond to a notice of default, and failed to terminate operations following a notice of termination.  Honey Dew alleges that these failures resulted in unlicensed use of the Honey Dew marks and activated clauses which permit Honey Dew to take over the leases for the Honey Dew locations operated by JSJE. 

Honey Dew Associates, Inc. v. JSJE, LLC, 11-10453-RBC (D. Mass. Mar. 16, 2011)

Pharmaceutical Company Seeks Declaration of Infringement

Momenta Pharm. (Cambridge, MA) and its exclusive licensee Sandoz, Inc. (Princeton, NJ) have sued Teva Pharm. Indus. Ltd. (Petach Tikva, Israel) and Teva Pharm. USA (North Wales, PA) for infringement of Patent Nos. 7,575,886 and 7,790,466 directed to ways of manufacturing generic enoxaparin.  

The complaint is based on a series of actions and statements on the part of Teva that suggest it has either infringed or is about to start infringing.  To cover their bases, the plaintiffs include in the complaint not only counts for infringement but also counts for declarations of infringement. 

Momenta Pharm., Inc. v. Teva Pharm. Indus. Ltd., 10-12079-RBC (D. Mass. Dec. 2, 2010)

Action to Correct Inventorship Need Not Invoke 102(f)

In an action pitting two doctors against The General Hospital Corp. (TGH) the doctors sought to correct inventorship of a patent under 35 U.S.C. § 256. They also sought to have the patent invalidated under 35 U.S.C. § 102(f). TGH sought to dismiss the § 102(f) action on the grounds that § 102(f) only provides a defense to patent infringement, not an affirmative cause of action. The plaintiffs opposed, but only because they were under the misunderstanding that they needed to plead § 102(f) in order to seek correction of the patent.

After a hearing where it was determined that inventorship was all that was at stake, Magistrate Judge Collings recommended dismissing the § 102(f) count because it was duplicative of the § 256 action, citing several Federal Circuit cases.

Rubin v. The General Hospital Corp., 09-10040-PBS (D. Mass. Nov. 1, 2010)

Photoshop Accused of Patent Infringement

EveryScape, Inc. (Newton, MA) has sued Adobe Systems Inc. (San Jose, CA) for infringement of Patent Nos. 7,327,374 and 7,593,022 directed to digital photography editing tools.  Various versions of Photoshop are accused.  

EveryScape, Inc. v. Adobe Systems Inc., 10-11597-RBC (D. Mass. Sep. 20, 2010)

RED RACER Beer Escapes Injunction

As previously discussed in this blog here, Bear Republic Brewing Co. sued Central City Brewing Co. for trademark infringement claims related to Central City’s use of the mark RED RACER which Bear Republic claimed was similar to its own RACER 5 and RED ROCKET marks.  A motion for preliminary injunction was filed but denied by Magistrate Judge Collings in a detailed opinion found here.

 

Judge Collings’ decision walks through the preliminary injunction factors but rightly focuses on the likelihood of confusion between the marks at issue, which ultimately determines likelihood of success on the merits and also affects irreparable harm, public interest, etc.  The court analyzed a number of confusion factors, some which favored Bear Republic and some which favored Central City, but the decision was mainly based on comparisons of the marks in use.  In determining that no likelihood of confusion exists the court noted that:

 

• The overall commercial impression of the marks is so different as to sufficiently distinguish the products;
• RACER 5 was not sufficiently distinctive such that the term “RACER” alone had any secondary meaning and RED RACER was never marketed as just “RACER” anyway;
• RED RACER is sold in cans, RACER 5 and RED ROCKET are sold in bottles; and
• RED RACER is sold only in liquor stores in MA, not in bars; RACER 5 and RED ROCKET are sold in both stores and bars.

Bear Republic Brewing Co. v. Central City Brewing Co., 10-10118-RBC (D. Mass. June 7, 2010)