MJ Hoffman and Associates, LLC v. Communication Sales Techniques, LLC
1:15-cv-10447
| D. Mass. | Jun 17, 2015Background
- Plaintiff MJ Hoffman & Associates, LLC (owner: Morton J. Hoffman) alleges copyright infringement of two sales-training works (Basho Strategies Marketing Presentation; Basho Strategies Sales Training Program Intro) and trademark infringement of the registered mark “WHY YOU? WHY YOU NOW?” against Communication Sales Techniques, LLC and its manager Timothy Haller.
- Complaint filed Feb 18, 2015 asserting: two copyright claims (Counts I–II) seeking statutory damages, fees, and injunctive relief; one trademark claim (Count III) seeking injunctive relief and monetary relief.
- Defendants moved to dismiss, arguing (1) copyright claims are time-barred by the 3‑year statute of limitations; (2) Plaintiff lacks ownership/standing to sue on the copyrights; (3) Plaintiff cannot prove copyright damages; and (4) the trademark is not protectable and there is no likelihood of confusion.
- Court found the complaint alleges some infringing acts within three years (e.g., April 2014 LinkedIn posting and materials currently on defendants’ website), so copyright claims survive the statute‑of‑limitations challenge.
- Court denied without prejudice the standing/ownership challenge pending document exchange and left damages questions for later factual development.
- Court dismissed the trademark claim for failure to plead likelihood of confusion; the court declined to invalidate the registered mark at pleading stage but found the marks not plausibly similar on the facts alleged.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Copyright statute of limitations | Infringements include recent acts within 3 years (e.g., 2014 LinkedIn posting, current website materials) | Most alleged conduct occurred in 2010 and is time-barred | Denied dismissal: complaint pleads some timely acts so claims survive |
| Copyright ownership/standing | Plaintiff owns the registrations and has authority to sue | Plaintiff does not own the registrations and lacks standing | Denied without prejudice: parties will exchange documents; issue reserved for summary judgment/trial |
| Copyright damages | Seeks statutory damages and fees under Copyright Act | Defendants contend damages cannot be proven | Dismissal denied: damages are factual issues for later proceedings |
| Trademark protectability & likelihood of confusion | Registered mark presumed valid; alleges similarity between marks | Mark is merely a slogan (not protectable) and Defendants’ mark is dissimilar (no confusion) | Trademark claim dismissed: registration preserves presumption of validity at pleading stage, but plaintiff failed to plead plausible likelihood of confusion based on dissimilarity of marks |
Key Cases Cited
- Santa-Rosa v. Combo Records, 471 F.3d 224 (1st Cir.) (accrual for copyright statute of limitations when plaintiff discovers or reasonably should discover infringement)
- Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1 (1st Cir.) (trademark distinctiveness spectrum and likelihood-of-confusion standard)
- Peoples Fed. Sav. Bank v. People’s United Bank, 672 F.3d 1 (1st Cir.) (plaintiff must plead more than theoretical possibility of confusion)
- Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482 (1st Cir.) (Polaroid factors for assessing likelihood of confusion)
- Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812 (1st Cir.) (compare marks by sound, appearance, and meaning)