A Corp. d/b/a Rooter Man v. Palmetto Group Investment, LLC et al. (D. Mass. 20-cv-11901).

Magistrate Judge Boal granted Palmetto’s motion for a more definite statement in this breach of a franchise agreement and trademark litigation.  The original complaint was a bit of a jumble, with twelve defendants identified in the caption, only nine in the introductory paragraph, and just seven identified in the “Parties” section of the complaint.  The franchise agreement was with Kenny Hart, who signed a personal guaranty.  At some point following the alleged breach of the franchise agreement but before the filing of the lawsuit, Kenny Hart passed away.  Kenny Hart is one of the individual defendants named in the “Parties” section of the original complaint, along with his wife and son, Paige and Hunter Hart. 

Palmetto moved to dismiss the complaint or for a more definite statement, and Rooter Man moved for leave to file a proposed amended complaint in response.  The proposed amended complaint kept the seven defendants identified in the “Parties” section of the original complaint, and sought to clarify that the breach of contract and breach of the implied covenant of good faith and fair dealing counts were against Kenny Hart and Palmetto, Inc. only.  It also sought to add a copyright infringement count.

Judge Boal found both the complaint and the proposed amended complaint lumped all of the defendants together and failed to provide fair notice of the factual and legal allegations being levied against each defendant.  The complaints therefore lacked sufficient factual allegations as to why each defendant was being tied to the various counts.  Accordingly, the proposed amended complaint did not cure the problems with the original complaint, and would not be permitted.  Instead, Judge Boal granted the motion for a more definite statement and ordered Rooter Man to provide an amended complaint that identified the alleged acts committed by the defendants on an individual basis.

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Davalos et al. v. Bay Watch, Inc. et al. (D. Mass. 21-cv-11075); Bernstein et al. v. Mardi Gras Entertainment Inc. et al. (D. Mass. 21-cv-30078); Van Derham et al. v. Speakeasy Group, Inc. et al. (D. Mass. 21-cv-11092); Tara Leigh Patrick a/k/a Carmen Electra et al. v. 15 LaGrange Street Corporation et a. (D. Mass. 21-cv-11093); Moreland et al. v. Father & Son Enterprises, Inc. et al. (D. Mass. 21-cv-11096); Canas et al. v. Dartmouth Clubs, Inc. et al. (D. Mass. 21-cv-11097).

Another series of lawsuits was filed by various models and celebrities against a set of Massachusetts strip clubs, asserting that the clubs were using photographs of the plaintiff models in their advertisements and falsely suggesting that the models would be appearing at the clubs.  There have been a stream of such lawsuits over the past year, with the suits naming the organization that owns the club as well as the owners and/or directors of the clubs individually.  The complaints assert false advertising and false association under the Lanham Act, violation of the statutory (M.G.L. c. 214, Section 1B) and common law rights to privacy, statutory unauthorized use of an individual’s name, portrait or picture under M.G.L. c. 214 Section 3A, violation of common law rights to publicity, violation of C. 93A, defamation, negligence and Respondeat Superior, conversion, unjust enrichment and quantum meruit.

These cases are becoming more common, with increasingly more sophisticated image detection software scouring the internet, including social media such as Facebook, Twitter, and the like.  The individual plaintiffs, while not always together on every case, are parties to a significant number of cases nationwide, with some named as plaintiffs in thirty or more cases.  Some significant successes hav been reported, including a $1.9 million settlement between 28 models and Providence, Rhode Island club Wonderland, with the payment coming from Wonderland’s insurer – likely covered by an advertising injury policy.  Others have not been so fortunate, with some states (such as New York) requiring a certain level of fame before a person’s image becomes protectible under trademark law.  I note that some of the individually-named defendants in Massachusetts have successfully moved to dismiss the claims against them for failing to meet the Twombly/Iqbal pleading standard, which requires sufficient factual allegations to state a claim on which relief could be granted, with courts requiring more than simple ownership and general control to hold the individuals liable.

Secret Boston LLC v. Fever Labs, Inc. (D. Mass. 21-cv-11087).

Secret Boston organizes and promotes events and provides information on shopping, restaurants, entertainment, sporting events and the like about the Greater Boston area through its website, www.secrestboston.net.  It has used the mark in commerce since 2010, and says that its “SECRET BOSTON” mark is either inherently distinctive or has acquired secondary meaning through this use.  Secret Boston asserts that Fever Labs engages in similar business activities utilizing “SECRET [CITY]” as marks for various cities.  Secret Boston says that Fever Labs began using these marks in or around 2016, well after Secret Boston’s adoption of its mark.  It further asserts that Fever Labs began using “SECRET BOSTON” and “SECRET MEDIA BOSTON” on or around June 2020, including via a website at www.secretboston.com.  Secret Boston indicates that actual confusion has occurred, citing complaints it received from customers concerning competing exhibits set by the two organizations when Fever Labs cancelled their event and refused to refund the ticket price.  Secret Boston brings claims of trademark infringement, unfair competition, false designation of origin, cybersquatting, and violation of c. 93A.

ecobee, Inc. v. Lei (D. Mass. 21-cv-11070).

Ecobee filed another trademark infringement suit, this one against Zhou Lei, the alleged registrant of the domain ecobeesmartthermostat.com.  The site appears to be, but is not, a legitimate ecobee site that uses ecobee’s “ECOBEE” and “ECOBEE SMART THERMOSTAT” marks to direct viewers to third-party Amazon sites.  The offending site utilizes the same copy as ecobee’s legitimate site (ecobee.com) to further deceive potential customers.  Ecobee brings counts under the Anticybersquatting Consumer Protection Act as well as under the Lanham Act for false designation of origin and unfair competition.

Ocean Spray Cranberries, Inc. v. Wedge Water, LLC (21-cv-10669).

In April, Wedge Water sent a cease and desist letter to Ocean Spray, asserting that Ocean Spray’s “Ocean Spray Wave” branded sparkling, lightly-caffeinated beverages infringed Wedge Water’s “New Wave” trademark and trade dress involving a white can with a wave motif and pictures of fruit and threatening to sue if Ocean Spray did not stop selling under the name and trade dress.  In response, Ocean Spray filed suit in Massachusetts, seeking a declaration that it did not infringe Wedge Water’s trademark or trade dress, did not engage in unfair competition, and seeking to cancel Wedge Water’s “New Wave” trademark as likely to cause confusion and as having been obtained through fraud on the Trademark Office.  Wedge Water filed suit in California a day later, and moved to transfer the Massachusetts case to Southern District of California.  Judge Wolf noted that Ocean Spray’s choice of forum was not entitled to any significant weight, given that Wedge Water had held off on filing suit in an attempt to negotiate a settlement and Ocean Spray had merely won the race to the courthouse.  He determined, however, that Ocean Spray’s actions were not so egregious to deny it its choice of forum.  Ocean Spray had not affirmatively misled Wedge Water, and instead had merely not indicated its intention to bring a DJ action prior to filing suit.  In considering the other factors relating to a motion to transfer, Judge Wolf determined that the case should remain in Massachusetts.  The convenience of the witnesses, which is the most important factor, weighed in favor of the Commonwealth, as Ocean State employees would have the most relevant testimony on whether Ocean State intentionally poached on the New Wave marketing campaign.  Wedge Water’s proposed retailer witnesses, moreover, were not necessarily be located in either Massachusetts or Southern California, thus not suggesting either forum.  Interestingly, Judge Wolf discounted arguments regarding personal jurisdiction raised by Wedge Water in a footnote, determining that First Circuit law holds that arguments raised only in a footnote or in a perfunctory manner are waived. 

Duffy Archive Limited v. Gilt Groupe, LP (D. Mass. 21-cv-10997).

Celebrity photographer Brian Duffy registered the copyright in a photograph of musician David Bowie with a blue and red lightning bolt painted on his face.  The photograph appears on the cover of Bowie’s 1973 “Aladdin Sane” album.  Duffy Archive says that Duffy transferred the rights in the photograph to it in May 2010, shortly before Duffy’s death.  Duffy Archive says that Gilt Groupe displayed a “substantially similar copy” of the photograph on its website, www.gilt.com. Gilt is a members-only website that offers for sale different products for limited periods of time.  The work in question, offered for sale by Gilt in September 2020, is a canvas print of the “Aladdin Sane” album cover reworked into a graphic form with different colors.  Jurisdiction is asserted to be proper in Massachusetts because Gilt is alleged to have offices in Boston, although it is unclear whether Gilt is actually in Massachusetts or whether its corporate parent, Ru La La, whose corporate headquarters is at the address listed for Gilt.

Bowers v. Marriott International Hotels, Inc. (D. Mass. 21-cv-10977).

Kansas photographer Eric Bowers accuses Marriott of placing one of his photographs on its website without authorization. Bowers asserts that the infringement was willful, based on Marriott being a sophisticated corporation that is or should be well aware of copyright law.  It is not immediately clear why this case was brought in Massachusetts; while personal jurisdiction is alleged to exist because Marriott’s 46 hotel properties located in Massachusetts subject it to general personal jurisdiction and/or because the website on which the photograph appears is accessible in Massachusetts, the subject photograph is a city scape of Kansas City, and it appears on the Kansas City portion of the Marriott site.  Judge Stearns has the case.

Mizuho Orthopedic Systems, Inc. d/b/a Mizuho OSI v. Allen Medical Systems, Inc. et al. (D. Mass. 21-cv-10979).

Mizuho accuses Allen Medical and Hill-Rom, Inc. of infringing U.S. Patent No. 10,888,48, which covers certain adjustable surgical tables.  Mizuho says that the Allen® Advance Table, marketed and sold by the defendants, infringes at least one claim of the patent  because it offers radiolucency throughout the working length of the table, rotates through 360 degrees, and includes a number of safety features called out in the claim.  Mizuho also accuses the Advance Table Pinless H-Bracket that is designed for use with the Allen table.  The case is before Judge Gorton.   

Pure Pest Management, LLC v. Hobby et al. (D. Mass. 21-cv-10924).

Pure Pest filed suit against Tick Pro MV, LLC and Troy Hobby, Tick Pro’s controlling member and a former Pure Pest employee.  Pure Pest was formed in 2005 with the goal of creating more environmentally sustainable tick and mosquito treatments.  The company created a proprietary tick prevention product, known as PROGAEA.  Pure Pest obtained federal trademark registrations to PROGAEA, as well as to PURE and PURE SOLUTIONS.  Troy Hobby was employed by Pure in 2017 to run its field operations on Martha’s Vineyard.  He executed a non-compete agreement with Pure upon his hiring, that prevented him from directly competing in Massachusetts and prohibited him from soliciting Pure customers through April 28, 2022.  The agreement further included confidentiality provisions to run for a period of ten years.  Notably, the agreement was entered into before the 2018 enactment of limitations on employee noncompete agreements, and thus is not subject to these limitations.

Pure entered into a license agreement with Hobby’s business, Tick Pro MV, in 2018 that likewise contained confidentiality provisions to protect Pure’s confidential and trade secret information, including customer lists.  These provision survived Pure’s termination of the license in October 2020.  Pure asserts that, rather than cease using the marks, Hobby and Tick Pro MV continued to compete with and solicit clients of Pure, utilizing the Pure marks and trade secret information.  Pure brings counts for trademark infringement, unfair competition, trade secret misappropriation, breach of contract and violation of c. 93A.  The case is before Judge Talwani.

Moreland et al. v. Bongo’s Bar & Grill, LLC et al. (21-cv-10919); Sampedro et al. v. Fifth Alarm, Inc. et al. (21-cv-30066); Rosario et al. v. Fiesta Café LLC et al. (21-cv-30065); Sampedro et al. v. City Lounge, LLC et al. (21-cv-30064); Cerny et al. v. Costa Verde Corp. et al. (21-cv-10927); Ruiz v. Boston Leco Corp. et al. (21-cv-10923); Sampedro et al. v. P&M Corporation et al. (21-cv-10935); Sampedro et al. v. 240 Chestnut Street, Inc. et al. (21-cv-30067).

A number of different lawsuits were filed against a variety of Massachusetts bars, nightclubs and establishments, as well as their owners and operators, accusing them of violating Section 43 of the Lanham Act by misappropriating the images of the plaintiff models without permission to falsely suggest that the plaintiffs were associated with the establishments – in many instances, suggesting that the plaintiffs were appearing at the establishments as strippers.  According to the complaints, such acts constitute false and misleading representations of fact in commercial advertising and false or misleading use of a person’s image for commercial practices in violation of the Act.  The complaints further assert that this use of the images constitutes a violation of each plaintiff’s statutory and common law rights of privacy, defamation, conversion, and violation of c. 93A.