Justia U.S. 1st Circuit Court of Appeals Opinion SummariesArticles Posted in Trademark
Motus, LLC v. CarData Consultants, Inc.
Motus and CarData both provide tools for managing businesses' reimbursement of employee expenses. Motus is a Delaware limited liability company with its principal place of business in Boston.. CarData is a Toronto-based Canadian corporation. Motus sued CarData for trademark infringement and related wrongs for its use of a particular phrase in the meta title of its website, Lanham Act, 15 U.S.C. 1051-1129. Motus argued CarData had "purposefully availed itself of the privilege of conducting activities within the U.S. and Massachusetts" by maintaining numerous offices in the U.S. and marketing itself to and interacting with U.S. and Massachusetts customers through its website.The First Circuit affirmed the dismissal of Motus's suit without prejudice, for lack of personal jurisdiction, and denial of its request for jurisdictional discovery. The purposeful availment requirement was not met because there was not “something more” connecting CarData to the forum state beyond its website which is available to anyone with internet access, in any state. Motus did not act diligently to present facts to the court to show why jurisdiction would be found if discovery were permitted. Motus left the court to guess whether CarData has any Massachusetts customers, receives any revenue from Massachusetts, or has any other business connection with Massachusetts. Jurisdiction cannot be premised on guesswork; the record does not support a finding that the operation of CarData's website and/or its commercial contacts elsewhere in the country constitute purposeful availment with respect to Massachusetts. View "Motus, LLC v. CarData Consultants, Inc." on Justia Law
Commonwealth School, Inc. v. Commonwealth Academy Holdings LLC
The First Circuit reversed the order of the district court dismissing this appeal, holding that the district court erred both in refusing to enforce the contested agreement and in dismissing the case after effectively declaring the agreement null and void.The Commonwealth School, Inc. brought suit against Commonwealth Academy Holdings, LLC under the Lanham Act, 15 U.S.C. 1114(A) and 1125(a), alleging that the School had trademarked the name "Commonwealth School" and that the Academy's name, "Commonwealth Academy," infringed that trademark. The parties achieved a settlement agreement, and the district court conditionally dismissed the case. When the parties failed to memorialize the agreement the School moved to reopen the case. The Academy, in response, moved for enforcement of the settlement agreement. The district court refused to enforce the settlement, finding that there had not been a meeting of the minds, and then dismissed the case. The First Circuit reversed, holding (1) this Court had jurisdiction to hear and determine this appeal; (2) enforcement of the settlement agreement was within the district court's jurisdictional orbit; and (3) the settlement agreement was valid and enforceable, and therefore, the district court erred in refusing to enforce the agreement and in dismissing the case. View "Commonwealth School, Inc. v. Commonwealth Academy Holdings LLC" on Justia Law
Posted in: Trademark
Plixer International, Inc. v. Scrutinizer GMBH
The First Circuit affirmed the decision of the district court that the exercise of specific personal jurisdiction against a German corporation did not offend the Fifth Amendment’s Due Process Clause, holding that on the facts of this case the exercise of jurisdiction would not violate due process.Plaintiff, a Maine corporation, sued Defendant, a German corporation, in federal district court in Maine for trademark infringement. As a basis for personal jurisdiction over Defendant, Plaintiff said that Defendant’s nationwide contacts with the United States supported specific jurisdiction under Fed. R. Civ. P. 4(k)(2). On prima facie review, the district court concluded that it could constitutionally exercise specific personal jurisdiction over Defendant under Rule 4(k)(2). The First Circuit affirmed, holding that Plaintiff met all three requirements to establish personal jurisdiction. View "Plixer International, Inc. v. Scrutinizer GMBH" on Justia Law
Scholz v. Goudreau
The First Circuit affirmed the district court’s summary judgment findings, evidentiary rulings, and denials of various motions on claims brought by a member of the rock band BOSTON against a former BOSTON guitarist alleging trademark infringement and breach of contract and on the guitarist’s counterclaims alleging breach of contract and abuse of process.Donald Thomas Scholz sued Barry Goudreau alleging claims related to impermissible inferences that Goudreau had allegedly made regarding his former association with BOSTON. Goudreau counterclaimed. After the district court granted in part the parties’ respective motions for summary judgment, the remaining claims proceeded to trial. The jury found in favor of the respective defendants on the remaining claims. The parties cross-appealed. The First Circuit affirmed the district court and denied the appeals, holding that there was no error or abuse of discretion requiring reversal. View "Scholz v. Goudreau" on Justia Law
Cortes-Ramos v. Martin-Morales
The district court erred in granting Defendant’s motion to dismiss, based on an arbitration provision, Plaintiff’s claims that Defendant violated various articles of the Puerto Rico Civil Code and federal copyright and trademark laws.This suit stemmed from a songwriting contest held in Puerto Rico in 2014. As a contestant, Plaintiff agreed to the terms of the contest’s rules, which included an arbitration provision. The provision compelled the submission to arbitration of those claims that “aris[e] in connection with, touch upon or relat[e] to” those rules. The district court granted Defendant’s motion to dismiss pursuant to Fed. R. Civ. P. 12(b)(6) based on that arbitration provision. The First Circuit reversed, holding that the arbitration provision did not reveal that the parties to it intended for Defendant, a third party, to benefit from it with the requisite clarity. View "Cortes-Ramos v. Martin-Morales" on Justia Law
Oriental Fin. Group, Inc. v. Cooperativa de Ahorro y Credito Oriental
Four years ago, the First Circuit affirmed a judgment that Defendant, a Puerto Rico credit union, infringed on the trademark rights of Plaintiff, a competing bank, by adopting a confusingly similar logo and trade dress. After the First Circuit remanded the case, the district court found no likelihood of confusion with respect to whether the credit union also infringed the bank’s word mark and trade name ORIENTAL with its competing marks COOP ORIENTAL, COOPERATIVA ORIENTAL, ORIENTAL POP, and CLUB DE ORIENTALITO. On appeal, the First Circuit affirmed in part, reversed in part, and remanded, holding (1) there is no clear error in the district court’s conclusion that the CLUB DE ORIENTALITO mark was unlikely to cause consumer confusion; but (2) as to the COOP ORIENTAL, COOPERATIVA ORIENTAL, and ORIENTAL POP marks, the district court’s determination of non-infringement was clearly erroneous. View "Oriental Fin. Group, Inc. v. Cooperativa de Ahorro y Credito Oriental" on Justia Law
Posted in: Trademark
A Corp. v. All American Plumbing, Inc.
A Corp., a Massachusetts plumbing corporation and franchisor, brought a trademark infringement action against All American Plumbing, Inc., an Arizona corporation with its principal place of business in Arizona, alleging that All American was improperly using A Corp.’s “Rooter Man” mark, or one confusingly similar, to advertise its plumbing business on its website. The district court dismissed the complaint, concluding that A Corp. failed to meet its burden to establish either general or specific jurisdiction. A Corp. appealed, challenging the district court’s conclusion as to the exercise of specific jurisdiction. The First Circuit affirmed, holding that A Corp.’s argument for specific jurisdiction failed. View "A Corp. v. All American Plumbing, Inc." on Justia Law
Colon-Lorenzana v. South American Restaurants Corp.
Norbero Colon Lorenzana (Colon) was working for South American Restaurant Corporation (SARCO), a franchisee and operator of Church’s Chicken locations in Puerto Rico, when he suggested to his superiors the concept for a new chicken sandwich that could be included on Church’s menu. Church’s subsequently began selling the item, which it called the “Pechu Sandwich.” SARCO subsequently received a certificate of registration from the Puerto Rico Department of State trademarking the name “Pechu Sandwich” and also received a federal trademark registration for the name “Pechusandwich.” Colon brought suit alleging violations of the Lanham Act and Copyright Act. SARCO filed a motion to dismiss under Fed. R. Civ. P. 12(b)(6), which the district court granted. The First Circuit affirmed, holding (1) the district court properly determined that neither the name “Pechu Sandwich” nor the recipe are eligible for copyright protection; and (2) that Colon failed to sufficiently plead that SARCO committed fraud in the procurement of a federal trademark for the Pechu Sandwich. View "Colon-Lorenzana v. South American Restaurants Corp." on Justia Law
Arborjet, Inc. v. Rainbow Treecare Scientific Advancements, Inc.
Arborjet, Inc. (Plaintiff), which manufactures and sells an emamectin benzoate solution used to protect trees from pests called TREE-age, granted Rainbow Treecare Scientific Advancements, Inc. (Defendant) an exclusive right to distribute TREE-age pursuant to a sales agency contract. After termination of this agreement, Defendant began marketing and distributing ArborMectin, another emamectin benzoate combination meant to compete directly with TREE-age. Plaintiff sued Defendant seeking to enjoin Defendant’s sales of ArborMectin and alleging several claims. The district court granted Plaintiff a preliminary injunction to run during the litigation that was meant to enforce the contractual agreement and prohibit a trademark violation. The First Circuit affirmed in part and reversed in part the order comprising the preliminary injunction, holding (1) it was not clear error to find a likely showing that Defendant contributed to the creation of ArborMectin; (2) the district court did not err in entering the portion of the preliminary injunction based on Arborjet’s contract claim; but (3) ordering proper attribution of “Arborjet” and “TREE-age” was improper given the district court’s rulings on the Lanham Act claims. View "Arborjet, Inc. v. Rainbow Treecare Scientific Advancements, Inc." on Justia Law
Greene v. General Hosp. Corp.
Dr. Ross Greene developed a method of treating children with explosive behaviors known as the Collaborative Problem Solving (CPS) approach and advanced this method through his work at the Massachusetts General Hospital (MGH) and through his publications, The Explosive Child, a book he wrote himself, and Treating Explosive Kids, a book he co-authored with Dr. J. Stuart Ablon. Greene alleged that MGH had infringed his CPS-related trademarks and that Ablon had infringed his CPS-related copyrights. MGH counterclaimed for ownership of the marks. The district court granted summary judgment in favor of MGH. After a trial, the jury awarded $19,000 on Greene’s claim that Ablon infringed on The Explosive Child. The First Circuit affirmed, holding (1) the district court correctly concluded that none of Greene’s defenses to the enforcement of his employment contracts with MGH succeeded; (2) the district court erred in ruling that Treating Explosive Kids could not be both joint and derivative as a matter of law, but the error did not improperly circumscribe the evidence Greene could present on his copyright claim; (3) the district court properly determined that Greene was not entitled to an accounting or an injunction; and (4) the district court properly denied Ablon’s motion for judgment as a matter of law. View "Greene v. General Hosp. Corp." on Justia Law