Hytera Communications seeks an order allowing it to file under seal its motion to dismiss the government’s criminal indictment for failure to present evidence of trade secrets to the grand jury. Hytera filed its motion Thursday (docket 1:20-cr-00688) in U.S. District Court for Northern Illinois in Chicago. A grand jury in May 2021 returned indictments listing 22 counts of trade secret theft against the company and seven of its engineers who developed digital mobile radios for Motorola in Malaysia beginning in 2004 (see 2301260060). The engineers quit Motorola in 2008 and 2009 to go to work for Hytera in Shenzhen, and the government alleges they took Motorola’s DMR trade secrets with them when they left. Hytera’s motion to dismiss contains citations to and excerpts of transcripts of the secret grand jury proceedings held in fall 2020 and spring 2021, plus grand jury exhibits that have been designated as sealed under the court’s Feb. 28 protective order, said the motion to file under seal. Under that protective order, five business days after service of unredacted copies of the motion to dismiss, Hytera will file the redacted papers publicly, unless it receives an application in opposition from another party within those five business days, it said.

Despite “diligent efforts” to serve two Mexican robocall defendants through the Mexican Central Authority under the Hague Convention, Marriott International “has been unable to confirm service,” said the company’s memorandum Friday (docket 1:21-cv-00610) in U.S. District Court for Eastern Virginia in Alexandria in support of its motion for service by publication and email. Marriott filed suit in May 2021 against multiple defendants alleging unauthorized use of the its trademark in international robocall scams and asserting claims of trademark counterfeiting, trademark infringement, false designation of origin and false advertising under the Lanham Act (see 2210070013). To promote prompt service of the Mexican defendants under the Hague Convention, Marriott paid its translation and service vendor to request status updates from the Mexican Ministry of Foreign Affairs at “regular intervals,” said the memorandum. The company also hired Mexican counsel, and that counsel “agreed to serve as Marriott’s representative before the Mexican district courts to further facilitate completion of Hague service,” it said. That counsel “contacted each court to ensure that service attempts were made in a timely fashion,” it said. Before filing its motion, Marriott “pressed” the ministry “for a status update on service but received no assurances,” said the memorandum. The company is unable to confirm Hague service on the Mexican defendants “for various reasons,” it said. On occasion, the ministry responded that an address for the Mexican defendants was either incorrect or that the individuals at the location claimed that another business operates there, it said. When the ministry deemed that multiple addresses were incorrect, Marriott confirmed that it had obtained those service addresses from corporate records the Mexican defendants filed with the Mexican government, which Marriott secured from a vendor, it said. The company worries that the Mexican defendants are running a “shell game,” it said. “Marriott understands that a frequent method of attempting to avoid service of process in Mexico is to claim that multiple businesses operate at an address,” it said. When process arrives for one entity, the occupants “present a license for another business purportedly operating at that location without disclosing that the named entity also operates there,” it said. To avoid further efforts “that are likely to result in the same inconclusive results,” Marriott files this motion for alternate service, said the memorandum.

Gray Media and KSDK St. Louis seek a protective order under Rule 26(c) “to protect the confidentiality of certain documents and information that may be produced by the parties to this action,” plus that of third parties, said their joint motion Thursday (docket 4:23-cv-01163) in U.S. District Court for Eastern Missouri in St. Louis. Gray Media alleges that KSDK (Channel 5) infringed its First Alert Weather trademark (see 2309180002), but the station denies the allegations (see 2311030050). Under the proposed protective order, a non-designating party or parties may challenge the confidentiality designation of a document “under a procedure that first involves the parties informally discussing the designation and then raising the issue” with the court, said the joint motion. The party seeking the confidentiality designation will have the burden “to establish the document’s confidential designation,” it said. By protecting the confidentiality of documents and information designated as confidential, the proposed protective order “will promote the interests of the parties and any third party producing discovery in this case,” it said. The motion won’t “prejudice any party to the case,” it said.

The New York Times Co.’s copyright infringement lawsuit against Microsoft and OpenAI (see 2312270044) was assigned Tuesday to U.S. District Judge Sidney Stein for Southern New York in Manhattan, said a text-only docket entry (docket 1:23-cv-11195). Stein presided over the suit brought in the fall against OpenAI by the Authors Guild and 17 authors (docket 1:23-cv-08292), including John Grisham and Scott Turow (see 2312060054). The suit was amended later to include Microsoft. Stein received the newspaper's suit after the judge deemed the two cases related, said a separate docket entry Tuesday. Both cases allege that OpenAI and Microsoft copied the rights owners’ protected works to train their large language models as generative AI tools, and did so without compensating the rights owners or seeking their consent.

Amazon moved for an entry of default Tuesday (docket 2:23-cv-01060) in a trademark infringement lawsuit vs. Li Qiang and Shenzhen Yinxi Electronic Commerce and “John Doe” defendants in U.S. District Court for Western Washington in Seattle. Amazon filed the complaint in July (see 2307180019), alleging the defendants sold counterfeit Amazon Fire TV remotes through their Amazon selling accounts. The retailer filed a motion for alternate service Oct. 26, seeking an order allowing service upon the defendants through the email address used to register their selling account; the court granted the motion, and Amazon served defendants via email Nov. 1, said the motion. The defendants didn’t respond, “have not since appeared” in the action personally or through counsel, haven’t filed or served an answer in the action and haven’t “otherwise indicated any intent to participate in this litigation,” Amazon said.

A jury trial is set for March 2025 on Gray Media’s allegations that KSDK St. Louis infringed its First Alert Weather trademark (see 2309180002), said a case management order signed Tuesday (docket 4:23-cv-01163) by U.S. Magistrate Judge Noelle Collins for Eastern Missouri in St. Louis. All disclosures required by Rule 26(a)(1) are due Dec. 29, and all discovery will be complete by Sept. 5, said the order. Oct. 10 is the deadline for any motions to dismiss, motions for summary judgment or motions for judgment on the pleadings, it said. KSDK Channel 5 denies it stole Gray Media’s trademark (see 2311030050).

The November 2022 ruling in the U.S. District Court for Eastern Virginia granting T-Mobile summary judgment over its rights to use the Simply Prepaid trademark in commercial activity on grounds that Simply Wireless had abandoned it (see 2211250016) was “unprecedented,” Simply Wireless’ counsel, Robert Litowitz of Kelly IP, told the 4th U.S. Circuit Court of Appeals in oral argument Wednesday. Simply Wireless is asking the 4th Circuit to reverse the summary judgment decision and remand the case to the district court for a jury trial to win back its rights to Simply Prepaid as an “established common law” trademark, said Litowitz. “We’ve looked for a case finding summary judgment on these facts” but were unable to find one, said Litowitz. “Simply Wireless should be permitted to have a jury decide whether this valuable trademark, which it had used successfully,” belongs to Simply Wireless, he said. “Simply Wireless used Simply Prepaid very effectively, and it was known in the industry,” said Litowitz. When T-Mobile announced it was opening 500 Simply Prepaid retail stores, the then-CEO of Simply Wireless got calls from Sprint, falsely congratulating him for having sold the Simply Prepaid trademark to T-Mobile, he said. The owners of Simply Wireless “are shrewd, they’re savvy, they’re sophisticated,” but in 2012, “they were not clairvoyant,” he said. “They could not have dreamed that their former partner, T-Mobile, would take a Simply brand and use it,” he said. The district court's decision “should be affirmed on either of two grounds,” that Simply Wireless abandoned use of Simply Prepaid, a the lower court found, or that it was guilty of “no continuous use” of the trademark, countered T-Mobile attorney Joseph Mueller of WilmerHale. “The issue with abandonment is actually quite narrow,” said Mueller. “There’s no challenge to the district court findings” that Simply Wireless’ activities that began in July 2012 to rejuvenate its use of Simply Prepaid “were insufficient to create a new protectable interest in the Simply Prepaid mark,” he said. If the 4th Circuit were to uphold the district court’s analysis, and conclude that there was “no intent” by Simply Wireless to renew use of Simply Prepaid during the three-year “gap period” between 2009 and 2011 in which Simply Prepaid was dormant, “the case would end,” said Mueller.

BMI has reached out to Solace Outpost, a brewery-restaurant in Falls Church, Virginia, and its owner Ian Hilton more than 30 times since January 2022 to educate them about their obligations under the Copyright Act to buy a license for the public performance of musical compositions in the BMI repertoire, yet they continue to commit further acts of copyright infringment, alleged BMI and six music publishers in a complaint Friday (docket 1:23-cv-01572) in U.S. District Court for Eastern Virginia in Alexandria. Included in BMI’s correspondence were cease and desist letters giving the defendants “formal notice that they must immediately cease all use of BMI-licensed music” in the establishment, said the complaint. It alleges four claims of willful copyright infringement, based on the unauthorized public performance of musical compositions from the BMI repertoire. “The specific acts of copyright infringement,” plus the defendants’ “entire course of conduct,” are causing the plaintiffs “great and incalculable damage,” it said. Unless the court restrains the defendants from committing further acts of copyright infringement, the plaintiffs “will suffer irreparable injury for which they have no adequate remedy at law,” it said.

BMI and eight music publishers seek a clerk’s entry of default against the Whiskey Stop Bar & Grill in Louisville, Ohio, and owners Scott and Kathryn Kelly for “failure to plead or otherwise defend” their Sept. 28 copyright infringement complaint (see 2309290002), said their application/request Thursday (docket 5:23-cv-01889) in U.S. District Court for Eastern Ohio in Akron. The plaintiffs allege six claims of willful copyright infringement, based on the defendants' unauthorized public performance of musical compositions from the BMI repertoire.

U.S. District Judge Omar Williams for Connecticut in New Haven granted plaintiff Charter Communications and defendant Bridger Mahlum, Charter’s former director-state government affairs, an additional 14 days, to Nov. 21, to finalize their settlement agreement and to voluntarily dismiss the case, said the judge’s text-only order Tuesday (docket 3:23-cv-01106). Williams also granted the parties’ request that they be allowed to file a notice of dismissal rather than a copy of the settlement agreement, “given the confidential nature of the terms of the agreement,” said the order. Charter had sought injunctive relief against Mahlum to prevent him from going to work for BroadbandMT, a direct competitor, and from spilling Charter’s state broadband, equity, access and deployment program trade secrets with his new employer (see 2308210001).