District of Massachusetts IP Blog

MIT Sues Licensee for Failing to Pay

MIT (Cambridge, MA) has sued Capire, Inc. (Durham, NC) for failing to pay MIT for its licensing fees and cost reimbursements. 

Massachusetts Institute of Technology v. Capire, Inc., 11-3870 (Mass. Superior Court, Middlesex County, Oct. 31, 2011)

Trademark Dispute Goes to the Cloud

Ramp Holdings, Inc. (Woburn, MA) has sued Rovi Corp. (Santa Clara, CA) over the use of the mark MEDIACLOUD for speech and recognition services.  Ramp has a federal registration in the mark, which Rovi has been using for similar services.  The complaint alleges both federal and common law trademark infringement, yet for some reason was filed in Mass. state court. 

Ramp Holdings, Inc. v. Rovi Corp., 11-0383 (Mass. Superior Court, Middlesex County, Feb. 4, 2011)

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)

Texas Company Sued in Mass. State Court for Breach of Patent License

Agion Technologies, Inc. (Wakefield, MA) sued DiFusion, Inc. (Austin, TX) in state court for breach of a license agreement for Agion’s Patent No. 6,582,715.  The complaint alleges that the defendant failed to make $100,000 worth of payments required at the onset of the license, failed to return confidential files once put on notice of the breach, and failed to obtain required product liability insurance.

 

I see this one getting removed to federal court.

 

Agion Technologies, Inc. v. DiFusion, Inc., 10-0995 (Mass. Superior Court, Mar. 10, 2010)

Asset Purchaser Demands Transfer of Patents

In this state court case Magmotor Technologies, Inc. (West Boylston, MA) sued SatCon Power Systems, Inc. and SatCon Tech. Corp., Inc. (Boston, MA) demanding transfer of two patents (5,818,137 and 6,049,148).  The complaint alleges that when defendants sold their magmotor business they represented they had no patents in the relevant area.  Plaintiff later discovered the two patents and demanded their transfer; defendants refused.  The complaint also asserts that defendants continue to operate their magmotor business in violation of non-competition clauses in the asset purchase agreement.

 

Magmotor Technologies, Inc. v. SatCon Power Systems, Inc., 10-0895 (Mass. Superior Court, Mar. 4, 2010)

Trademark Rights To Be Determined In State Court

Sperian Metal Mesh Protection USA, Inc. (Attleboro Falls, MA) has sued Indolink Corp. (San Rafael, CA) for a declaratory judgment concerning certain rights in Sperian’s WHITING & DAVIS trademark.  The complaint alleges as follows. 

Sperian licensed its mark to Indolink for exclusive use with certain products.  The license agreement contains a clause which gives Indolink the option to purchase the mark in the event of a change of control of Sperian.  Sperian is planning on selling less than 50% of its assets to a third party and plans to give that party exclusive rights to use the mark with certain products which do not overlap with Indolink’s license.  Indolink was not ok with this arrangement and gave notice to Sperian that it intended to exercise its right to purchase the mark or sue for the right to do so.  Indolink’s threat is preventing Sperian from consummating the deal, hence the declaratory judgment suit.

As the rights in question do not touch federal registrations, and the license was “entered into” in Massachusetts, the case was brought in Mass. state court.

Sperian Metal Mesh Protection USA, Inc. v. Indolink Corp. (Mass. Superior Court,  Feb. 16, 2010)