Pierce & Mandell, P.C.

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Boston, Massachusetts 02108-3002

Phone: (617) 720-2444
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Tom Kenney Comments on the Supreme Court’s Recent Decision to Trim Remedies for Copyright Owners

Joseph Coupal - Friday, August 26, 2016

by Thomas E. Kenney

For copyright owners, a copyright registration provides substantial benefits.  A copyright registration grants the owner the right to collect “statutory damages” against the infringer – ranging from $750 to $30,000 per violation.  Additionally, a registrant may recover from the infringer the attorneys fees it incurred in prosecuting litigation against the infringer.  Traditionally, copyright owners have been able to use the threat of statutory damages and attorneys fees to quickly and efficiently stop infringers and effectuate beneficial settlements.

However, the copyright landscape is changing.  Recently, in Kirtsaeng v. John Wiley & Sons, Inc., the United States Supreme Court made it more difficult for copyright owners to recover their attorneys fees from infringers.  Previously, many courts awarded attorneys fees to the prevailing party in copyright cases as a matter of course – declining to award attorneys fees in only the rarest of cases.  The Kirtsaeng Court rejected that practice, ruling that a Court should award attorneys fees to the prevailing party only where the losing party’s position was “objectively unreasonable” – meaning that the party did not have a good faith basis to deny that it infringed or to vigorously defend against the lawsuit.

The impact of this shift is unclear.  Will infringers resist monetary settlements – knowing that copyright owners are less likely to recover attorneys fees and thus less likely to pursue litigation once the infringer ceases its infringing activities?  Will copyright owners need to consider accepting a prompt cessation of infringing activities and forego insistence on a monetary recovery?  Only time and experience will tell.

A company’s brand and goodwill, represented by its intellectual property, often are its most valuable assets. Pierce & Mandell counsels clients on all aspects of intellectual property law, including registration of copyrights and trademarks, as well as intellectual property disputes and litigation.Contact Tom Kenney at 617-720-2444 or tom@piercemandell.com to discuss protection of these vital business assets.

Tom Kenney quoted in Boston Globe article regarding Commonwealth School trademark litigation

Joseph Coupal - Friday, June 17, 2016

Pierce & Mandell partner Tom Kenney, who chairs our Trademark and Copyright Practice Area, was recently quoted in a Boston Globe article on pending litigation between Boston’s The Commonwealth School and Springfield’s Commonwealth Academy. Tom discussed one of the cardinal principles of trademark protection and trademark litigation: who prevails is often determined by the extent to which the parties market to the same or a similar customer base. Read Tom’s comments and the full article here.

Redskins’ Trademark Registrations May Survive

Joseph Coupal - Tuesday, January 19, 2016
By Thomas E. Kenney

There is an old adage in sports that sometimes a team wins even when it doesn't play. While the Redskins lost in the opening round of the playoffs, they recently scored a victory in their fight to retain their REDSKINS registered trademarks - in a court case in which they are not even a party.

In late December, the Federal Circuit Court of Appeals ruled on the trademark application filed by "The Slants" - a rock band whose members are Asian-Americans. The United States Patent and Trademark Office (“USPTO”) refused to register THE SLANTS trademark because it determined that the mark was disparaging to a substantial composite of Asian-Americans.  

However, the appeals court overruled the USPTO, holding that the statutory provision prohibiting registration of disparaging trademarks was an unconstitutional infringement of the applicants' first amendment rights.

Although the Redskins were not a party to The Slants' appeal, the decision could greatly assist the Redskins in their quest to salvage their own eponymous trademark registrations. The Redskins' marks were canceled by the USPTO pursuant to the same statutory provision invalidated by the appeals court in The Slants' case. Even though the Redskins' appeal is pending in a different appeals court - The Fourth Circuit - that court may well follow the ruling of Federal Circuit and determine that the USPTO’s cancellation of the REDSKINS trademark registrations was unconstitutional. Unquestionably the issue ultimately will be decided by the United States Supreme Court.  We will blog further updates when developments warrant.

The lawyers at Pierce & Mandell routinely represent clients seeking to secure trademark registration for themselves or to deny such protection to their competitors and potential competitors. We offer a free consultation to anyone interested in learning more about their trademark rights.

The Trademark Owner’s Dilemma - Vigorous Enforcement of Rights or Bullying by Thomas E. Kenney

Joseph Coupal - Friday, July 17, 2015

by Thomas E. Kenney

U.S. trademark law is deeply rooted in Common law, but even after Congress enacted federal law prescribing trademark rights in 1870, those rights have been repeatedly tested and redefined. But trademark protection is a door that swings both ways, writes Pierce & Mandell attorney Thomas Kenney  in a recent article which appeared in the July 2015 edition of Massachusetts Lawyers Journal.  “The trademark owner’s dilemma — vigorous enforcement of rights or bullying?”“The trademark owner’s dilemma — vigorous enforcement of rights or bullying?”

“A trademark owner not only enjoys the exclusive right to use its marks in commerce, but also has the right (and in fact the obligation) to stop others from using similar marks in a manner that causes consumer confusion,” Kenney writes. “However, a trademark owner is not permitted to misuse its trademark rights so as to intimidate another business into abandoning a mark that does not conflict with the trademark owner’s mark.  As a result of these competing principles of trademark law — a trademark owner is obligated to vigorously enforce its rights but at the same time must respect the fact that those rights are limited and not monopolistic — a trademark owner frequently is left in a quandary. What measure of enforcement is sufficient to protect its rights without crossing the line? Adding to that tension is the developing concept of ‘trademark bullying.’”

The Trademark Owner’s Dilemma - Vigorous Enforcement of Rights or Bullying by Thomas E. Kenney

Joseph Coupal - Wednesday, May 27, 2015

An article entitled “The Trademark Owner’s Dilemma - Vigorous Enforcement of Rights or Bullying” by Thomas E. Kenney recently appeared in the Spring 2015 edition of Massachusetts Bar Association’s Complex Commercial Litigation Section Newsletter.

 

 

 

 

Medical Marijuana Gets a “Top to Bottom” Review Under New Public Health Commissioner - Boston

Joseph Coupal - Thursday, April 09, 2015

By: Curtis B. Dooling

On April 8th, the Massachusetts Department of Public Health (“DPH”) announced extensive changes to the Medical Marijuana Dispensary Program, according to The Boston Globe and other media accounts. The changes, announced by DPH Commissioner Dr. Monica Bharel, follow what she described as a “top to bottom” review of an application process that has been plagued with difficulties since the program was authorized in 2012. DPH’s revisions shift the focus of the application process from its current form, which has followed a competitive procurement model, to a licensure based analysis similar to other health care facilities. The revised application process will launch on May 15, 2015 and will process applications on a rolling basis.

The application review will focus on security issues and the background of those involved in the proposed dispensary. Dr. Bharel noted that this shift will result in a more efficient, straightforward application process which DPH will strive to make more transparent.

Starting immediately, DPH will post and update the status of dispensaries in the approval and development pipeline and the number of registered and certified patients on its website. Those applicants with pending applications will not need to reapply. DPH will clarify the process to resubmit applications that were previously rejected.

In light of the fact that marijuana is legal in four states and the District of Columbia, Public Health Council member Harold Cox addressed ongoing legalization efforts and suggested that DPH should be proactive in understanding what is happening in the states with legalized marijuana and how potential legalization would affect Massachusetts’s program.

Further complicating the DPH effort to rehabilitate the licensing process is a growing movement to legalize marijuana in Massachusetts, either through legislation or a ballot referendum in 2016. Legislation has been filed to legalize marijuana and to regulate it in the same fashion as alcohol. The legalization effort has been gaining ground since last year, although many public officials have publicly opposed legalization.

The implementation of medical marijuana accessibility in Massachusetts is likely to have a broad impact on a variety of businesses involved in healthcare, real estate and administrative licensing. Attorneys at Pierce & Mandell follow this shifting landscape assiduously, and are poised to assist any of our clients with questions regarding business opportunities or legal obligations arising out of the implementation of and access to medical marijuana in Massachusetts.

The DPH press release is available here.

Hall and Oates Say “No Can Do” To Use of “Haulin’ Oats” For Granola

Joseph Coupal - Friday, March 06, 2015

By Thomas E. Kenney

Enjoying a rather modest return to the spotlight after spending years in the “where are they now” category, aging pop/soul duo Daryl Hall and John Oates is back to doing what famous people do – suing others.  On Wednesday, Hall and Oates’ partnership, Whole Oats Enterprises, sued a Brooklyn based company, Early Bird Foods & Co., LLC, for trademark infringement based on Early Bird’s use of the name “Haulin’ Oats” in connection with the sale of granola.

While at first blush the lawsuit appears to be another example of a celebrity’s over-inflated ego getting the best of sound legal reasoning – similar to Chubby Checker’s preposterous lawsuit against HP and Palm over the “Chubby Checker” anatomical measuring app. – there is a twist (no pun intended) to the Hall and Oates lawsuit that may add some teeth to the case.

Another party, a woman in Tennessee named Tracey S. Levine, has been using the mark “Haulin’ Oats” since 2012 in connection with the sale and delivery of oatmeal.  Ms. Levine was granted a U.S. Trademark registration for the mark in June of 2013.  In February of 2015, after Early Bird declined Whole Oats’ demand that it cease use of the “Haulin’Oats” name, Whole Oats wisely entered into an agreement with Ms. Levine by which Ms. Levine assigned her “Haulin’ Oats” trademark to Whole Oats, and agreed to pay a royalty to Whole Oats for her continued sale of oatmeal under that mark.  It is not clear whether this arrangement has made Ms. Levine a “Rich Girl.”

Thus, while Whole Oats’ assertion that Early Bird’s use of “Haulin’ Oats” in connection with the sale of granola infringes the DARYL HALL JOHN OATES and HALL & OATES trademarks is spurious at best, Whole Oats does have what appears to be a viable claim that Early Bird is infringing the “Haulin’ Oats” trademark for oatmeal – now owned by Whole Oats.  Assuming the assignment is valid, Whole Oats has a legitimate shot at prevailing in this litigation on that basis.

The moral of this story? Fame fades, but trademark rights don’t have to.  The lawyers at Pierce & Mandell have many years of experience protecting and enforcing trademark rights, and have the skills necessary to help you develop a strategy for maximizing the value of your brand.

Pierce & Mandell Prevails in Federal Trademark Infringement Case - Boston

Joseph Coupal - Wednesday, March 26, 2014

By: Scott M. Zanolli

Pierce & Mandell, P.C. recently obtained a dismissal of a Massachusetts federal court trademark infringement case filed against Pierce & Mandell’s out-of-state client. The complaint alleged that CableSouth of Tennessee used plaintiff Media3 Technologies’ trademark on its website in violation of federal, state, and common-law. CableSouth, a cable and internet provider operating in a limited number of southern states, maintained a website viewable to the public at large that included the alleged use of Media3’s protected mark. However, CableSouth’s website was limited in its interactive capacity, the company did not target Massachusetts customers in any fashion, and CableSouth generally lacked any contact with the Commonwealth of Massachusetts.

Attorneys Robert Pierce, Thomas Kenney, and Scott Zanolli argued that because the website did not target Massachusetts customers, the United States District Court for the District of Massachusetts lacked personal jurisdiction over CableSouth. The Court agreed with the argument and dismissed the case. In its opinion, the Court stated that the operation of a website located outside of the state and viewable by residents of every state is, by itself, insufficient to evidence the contact with Massachusetts necessary to subject the operator of the site to personal jurisdiction here.

Sales Rep can Sue for Commissions Despite Expiration of Written Contract

Joseph Coupal - Tuesday, March 18, 2014

Michael C. Fee was quoted in the March 12 Lawyers Weekly article entitled: “Sales rep can sue for commissions despite expiration of written contract”.


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Storm-Related Business Loss - What to do When Your Insurer Denies Your Claim, Boston, MA

Joseph Coupal - Thursday, March 14, 2013
By: Dennis M. Lindgren

In an attempt to insulate themselves from the vagaries of unpredictable weather, companies typically (and wisely) carry various types of insurance, including but not limited to, polices to protect against property/building damage, inventory damage, equipment/vehicle damage,  and business interruption. Nevertheless, the best laid plans of even the most prudent company can easily be thwarted by adjusters and carriers that deny claims that pursuant to the terms of the policy, should have been allowed (at least in part).
 
If your company has incurred damages, and had to pay remediation and repair costs as the result of a severe weather event, or severe weather has caused damages which have resulted in the  interruption of the regular operations of your business, the denial of the business insurance claim can be almost as destructive  as the underlying damage itself.  When this happens, it is important to remember that your insurer does not get the last word on whether a loss is ultimately covered or not.  Your insurance policy is nothing more or less than a contract, and like any contract, its interpretation is a question of law that can be challenged before, and ultimately decided by, a Court of law.  In Massachusetts, Courts often take a pro-insured view of coverage, and in light of M.G.L. 93A (commonly referred to as "the Consumer Protection Act"), insurance carriers can be subject to awards of multiple damages and attorney's fees if they have engaged in unreasonable settlement practices.  In short, carriers can sometimes be persuaded (or forced) to reverse insurance decisions.   An initial consultation with experienced legal counsel is therefore often time and money well spent for an insured.

If you have questions regarding the material discussed above, please contact Dennis Lindgren at (617) 240-0208, or via email at dennis@piercemandell.com.


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