District of Massachusetts IP Blog

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)

STRATUS Trademark Case Stays in Boston

In August 2010 Stratus Technologies sued enStratus Networks for trademark infringement.  Judge Zobel recently denied a motion to dismiss for lack of personal jurisdiction (finding sufficient contacts with the Commonwealth) and failure to state a claim (finding a colorable claim for trademark infringement.

Stratus Technologies, Inc. v. enStratus Networks, LLC, 10-11384-RWZ (D. Mass. July 7, 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:

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)

Neighborhood Talent Nastiness

In a case with a factual background worthy of a feature film, a group of musicians sued a group of music producers and companies for copyright infringement, breach of contract and intentional and negligent infliction of emotional distress.  The musicians allege that for seven to twelve months one of the defendants required them to live in one room of his house in Puerto Rico, without furniture, and sleep on a floor.  The claim for infliction of emotion distress was dismissed for all the other defendants. 

Claims for vicarious copyright infringement and breach of contract were allowed to stand for now, as the complaint included sufficient facts for the court to decline to dismiss at this time.  One of the defendants was allowed out of the case entirely for lack of personal jurisdiction.  

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

Mass. Trademark Case Stays in Mass.

Edvisors Network, Inc. had sued Educational Advisors, Inc. for trademark infringement, alleging that the defendant’s EDADVISORS mark and <edadvisors.com> domain infringed on the plaintiff’s EDVISORS® mark.  Defendant moved to dismiss for lack of personal jurisdiction. 

Despite few connections between the defendant and Massachusetts, Chief Magistrate Judge Dein recommended denying the motion and Judge Saris adopted that recommendation.  The decision turned on two points: 

Gertner Declines to Exercise Jurisdiction Over Moderately Interactive Website

In 2009 Sportschannel New England filed a declaratory judgment action against Fancaster, Inc. and its president related to Sportschannel’s use of the mark FANCASTER.  Fancaster and its president moved to dismiss or transfer for lack of subject matter and personal jurisdiction.  Judge Gertner granted the motion to dismiss for lack of personal jurisdiction and thus did not reach the other questions. 

The most interesting aspect of this case is the court’s decision that the defendant’s interactive website, accessible to Massachusetts residents, did not result in a purposeful availment of Mass. jurisdiction.   

The defendants should feel lucky that they drew Judge Gertner for this case.  Judge Gertner is known to be a technology savvy judge, not only for her understanding of tech related issues but also for her incorporation of new technologies into her daily life.  She was one of the first judges to incorporate permanent video technology into her courtroom, she favors simultaneous webcasting of courtroom activities (a point with which the First Circuit disagrees), and she received some publicity a number of years ago when she start openly blogging.  She could well be considered a “judicial early adopter.” 

Her technical understanding (which is correct in my opinion) allowed her to understand the difference between active commercial websites and more passive, but still somewhat interactive, websites. 

The opinion’s money quote (opinion at 13):

Exclusive Contract With Mass. Company Creates Specific Jurisdiction

Back in June Risktimetry had sued Altaira (Park City, UT) and Linedata (Boston, MA) for copyright infringement relating to financial services computer software.  Altaira filed a motion to dismiss for lack of personal jurisdiction, which Judge Gorton denied.  The motion turned on specific jurisdiction.  

The facts, murky as they were, were that Altaira and Linedata had at one point entered into an exclusive arrangement for Linedata to use Altaira’s software in the accused products and services in MA.  Altaira submitted evidence suggesting that nothing ever came of the agreement but Risktimetry submitted evidence suggesting that might not be the case.  The court held that the facts were sufficient to find that the contract was related to the claims, that Altaira had purposely availed itself of the laws of MA, and that the exercise of jurisdiction was reasonable.  Thus, the exercise of jurisdiction was statutorily and constitutionally permissible. 

Risktimetry Analytics, LLC v. Altaira, LLC, et. al., 10-10969-NMG (D. Mass. Nov. 3, 2010)

Out-of-State Accused Infringer Stuck in Massachusetts

Berklee College of Music alleged in a complaint against Music Industry Educators that MIE’s website used several paragraphs copied from Berklee’s online course descriptions along with marks that are similar to Berklee’s trademarks.  MIE’s motion to dismiss for lack of personal jurisdiction was denied by Judge Tauro.

 

MIE’s only connections to Massachusetts:

 

• The allegedly copied content came from Berklee’s servers in Mass.

• MIE’s website was available in Mass.

• Four individuals from Mass. had emailed MIE about taking courses, but MIE did not respond

 

Despite these somewhat tenuous connections to the state, Judge Tauro found that personal jurisdiction existed.  A variety of factors and many cases were discussed, but the decision seemed to boil down to the following logic:

 

litigation in a forum where Plaintiff may readily access resources necessary to efficiently conclude the matter and bring those who misuse intellectual property to justice serves the interest of the judicial system in obtaining the most effective resolution of the controversy…Requiring alleged infringers such as MIE to bear the burden of traveling to a forum in which their voluntary actions have caused foreseeable injury encourages them to consider this burden before they act.

 

(Decision at 10.)

 

The lesson to be learned from this, and other D. Mass. cases, is that disputes involving Massachusetts intellectual property will be decided in Massachusetts.

 

An additional motion to dismiss a 93A claim for preemption under the Copyright Act was denied since it relied on both copyright and trademark theories.

 

Berklee College of Music, Inc. v. Music Indus. Educators, Inc., 09-11627-JLT (D. Mass. August 4, 2010)