Intellectual Property — Cases of Note
Video Retransmission Copyright Infringement
Defended a telecommunications company in a copyright infringement action brought by the NFL arising from the retransmission of certain game telecasts by a major Canadian cable provider. After defeating a preliminary injunction motion and limiting discovery, we won summary judgment on a “passive carrier” defense and the case was dismissed. See National Football League v. InSight Telecommunications Corporation, 158 F. Supp. 2d 124 (D. Mass. 2001).
Software License Agreement
Represented a software design company in a federal diversity action to recover funds due under a software license agreement and related service agreements. After litigating motions for prejudgment security, we obtained a settlement.
Website Trademark Infringement
Represented a biotechnology company in two trademark infringement, false advertising and unfair competition matters relating to its direct competitor’s marketing activities, which resulted in documented customer confusion about whether the competitor was affiliated with the client’s domain name, website, trade name and advertising. In one matter, after receiving our demand letter, the infringing competitor agreed to refrain from using the mark in question to describe its products or services.
Breach of Term Sheet to Acquire Biotechnology License
Represented a public biotechnology company in a claim against a company which had signed a term sheet to assign a technology license from the National Institutes of Health and had accepted a $250,000 deposit for that assignment. The defendant had failed to disclose the existence of a third-party patent affecting the license, as well as its own counsel’s opinion regarding the validity of that patent. We obtained a preliminary injunction barring transfer of the license pending further proceedings.
Inventorship Rights
Represented a provider of photographic identification technology and software in a dispute regarding inventorship rights to facial recognition software and digital video recording products. After filing a lawsuit, we obtained a settlement.
Window Hardware Patent Infringement
Served as co-counsel to a window hardware manufacturer in defense of a patent infringement action by a competitor. After discovery and motions regarding claims construction, we obtained a settlement.
Misappropriation of Trade Secrets
Represented a software company claiming that a street furniture company and a venture capital firm obtained its trade secrets during discussions about entering into a joint venture on a government procurement, but then used those trade secrets to bid on the project with another company. After serving a demand letter under Mass. Gen. Laws Chapter 93A and extensive negotiations, we obtained a settlement.
Misappropriation of Web Site
Defended investor employees in an Internet company against claims by other private equity investors alleging misappropriation of intellectual property and corporate opportunity. After extensive negotiations, we obtained full releases for our clients and their new company’s acquisition of the disputed intellectual property.
Misappropriation of Restaurant Trademark
Defended a co-owner and president of a major Boston restaurant against claims that he had trademarked the name of the restaurant in his own name and therefore misappropriated a corporate opportunity. After discovery and extensive mediation of other disputes among the company and its owners, we obtained a buy-out of our client’s interests in the company in exchange for, among other things, assignment of the trademark and logo to the company.
Convenience Store Trademark Infringement
Represented a food market company with a distinctive trademark and logo in a claim against a gas station company using an infringing mark at its gas station food marts. After sending a demand letter under Mass. Gen. Laws Chapter 93A, we obtained an agreement that the other party would cease using the mark and would pay damages for past infringement.
Asset Management Trademark Infringement
Defended an asset management company in a federal trademark infringement lawsuit. We obtained a settlement where the plaintiff paid our client to cease using the disputed name and mark and to defray the expenses of transitioning to a new name and mark.
Airport Security Patent Infringement
Served as co-counsel to an engineering company in defense of a patent infringement lawsuit concerning airport security enhancement technology. The case settled after discovery concerning, among other things, the existence of prior art.
Breach of Software Development Agreement
Represented a staffing software company in litigation with a temporary physician staffing company regarding the performance of certain software and level of customization required by the license. After extensive discovery and a mediation, we obtained a favorable settlement for our client.
Electrical Component Patent Infringement
Served as co-counsel defending a manufacturer of electrical components against a patent infringement action by a competitor. After negotiations regarding reasonable royalties, we obtained a settlement.
Trade Dress Infringement
Defended a distributor of shoes and sneakers in an action by a manufacturer for trade dress infringement. After investigation into prior art and negotiations regarding reasonable royalties, we obtained a settlement.
Prior Art Research and Subpoena of Documents
Served as co-counsel to an explosive detection system technology company in defense of a patent infringement action by a competitor. We spearheaded the preparation and coordination of subpoena service upon several companies throughout a variety of industries. We subsequently negotiated the production of documents from these same companies to support the client’s affirmative defenses to infringement.
Breach of Software License Agreement
Defended digital sports technology company sued for alleged breach of software license agreement. Negotiated three-way settlement whereby co-defendant agreed to substantial contribution to settlement.
Patent Infringement – Subpoenas
Represented a private manufacturing company subpoenaed in a patent infringement case involving mobile computer workstations and an inventor subpoenaed in a patent infringement case involving mobile phone and text messaging technology.
Misappropriation of Trade Secrets
Represented a medical device company claiming that a competitor wrongfully obtained its company’s confidential customer list from their distributor and used the confidential customer list to market and sell a new competitive product. After filing a complaint and receiving a favorable ruling denying defendant’s motion to dismiss, we obtained a settlement.
Misappropriation of Confidential Information
Represented a start-up biotech company in defense of claims brought by alleged co-founder for breach of implied partnership agreement, breach of fiduciary duty, violation of Chapter 93A and defamation and in countersuit against alleged co-founder for breach of partnership agreement and breach of fiduciary duty based on alleged misappropriation of confidential information and other tortious acts. We obtained a favorable settlement after mediation.
Domain Name Dispute
Defended a start-up travel company in a Domain Name Dispute brought by an Australian food and wine company via the Uniform Domain-Name Dispute-Resolution Policy alleging that the disputed domain name was confusingly similar to the Australian company’s trademark and that the domain name was purchased in bad faith. After submitting a legal brief in response under the UDRP procedure, we obtained a ruling from the WIPO Arbitrator dismissing the complaint and finding no bad faith in the use and purchase of the domain name.