United States District Court, D. Massachusetts
MEMORANDUM AND ORDER ON MOTIONS FOR SUMMARY
ALLISON D. BURROUGHS U.S. DISTRICT JUDGE
Smartling, Inc. (“Smartling”) and Defendant Skawa
Innovation Ltd. (“Skawa”) are both translation
technology companies that provide language translation
services for mobile and internet-based clients. On November 4,
2015, Smartling filed its First Amended Complaint asserting
six causes of action against Skawa for alleged acts of
trademark and trade dress infringement, unfair competition,
and violations of Massachusetts General Laws Chapter 93A,
§§ 2 and 11. [ECF No. 25] (the “Amended
Complaint” or “Am. Compl.”). Skawa
responded with a one-count counterclaim that accused
Smartling of filing this lawsuit in bad faith and committing
their own violations of Chapter 93A. [ECF No. 33] (the
“Counterclaim”). Currently pending before the
Court are Skawa's motion for summary judgment or judgment
on the pleadings on all claims asserted in the Amended
Complaint [ECF No. 77], and Smartling's motion for
summary judgment on the Counterclaim. [ECF No. 74]. For the
reasons stated herein, Skawa's motion is granted
in part and denied in part, and Smartling's
motion is granted.
as otherwise noted, the following facts are not in dispute.
Smartling is a Delaware corporation with its principal place
of business in New York. Am. Compl. ¶ 1. It was founded
in 2009 as a provider of website internalization and
localization services. [ECF No. 79 at ¶ 1] (“Skawa
Facts”); [ECF No. 90 at ¶ 1] (“Smartling
Response”). Generally speaking, Smartling's
software platform connects users to computers or
professionals that translate mobile applications, web pages,
videogames, and other media into different languages. [ECF
No. 25-1 at 2].
is a Hungarian company with its principal place of business
in Budapest, Hungary. Am. Compl. ¶ 2. Since late 2011
when it launched its website, Skawa has marketed a web-based
translation tool under the name “Easyling” that
directly competes with Smartling. [ECF No. 76 at ¶¶
2, 6] (“Smartling Facts”); [ECF No. 87 at
¶¶ 2, 3, 6] (“Skawa Response”). Both
parties worked directly with website owners to market and
advertise their products through websites, magazine
advertisements, conference program pages, and conference
exhibits. Smartling Facts ¶¶ 7-8; Skawa Response
¶¶ 7-8. They both contracted with translation
agencies or language service providers, including Lionbridge
Technologies, Inc. (“Lionbridge”). Smartling
Facts ¶ 10; Skawa Response ¶ 10. Lionbridge
originally contracted with Smartling for its services but
also entered into a contract to resell Smartling's
product and services to other customers. Skawa Facts ¶
36. At some point, Lionbridge, and several of
Lionbridge's clients who had been using Smartling
software, ended their relationship with Smartling.
Id. Smartling's CEO, Jack Welde, believed that
Lionbridge had begun contracting with Skawa as a new partner
to replace Smartling. Id. Lionbridge, however, is
not a party to this litigation, and there are no allegations
in the Amended Complaint or in the summary judgment record
that Lionbridge acted at the direction of Skawa or otherwise
committed any wrongful conduct.
March 18, 2011, Skawa's CEO, Peter Farago, created an
online account with Smartling's website. Smartling Facts
¶ 4. The next day, on March 19, 2011, Skawa registered
the web domain name “easyling.com, ” and launched
the Easyling website in September or November 2011. Smartling
Facts ¶¶ 2, 6; Skawa Response ¶¶ 2, 3, 6;
see also Skawa Facts ¶ 11; Smartling Response
¶¶ 9, 11. Skawa appears to have registered the
Easyling mark with the United States Patent and Trademark
Office sometime in 2014. [ECF No. 78 at 36].
showing the Smartling and Easyling marks on the parties'
respective websites have been submitted into the record.
Smartling has produced nine representative samples showing
the different versions of its website between January 2010
and late 2015. [ECF No. 78-4 at 4-5]; [ECF No. 78-5]. The
February 2011 version of its website, see [ECF No.
25-1 at 6]; [ECF No. 78-5 at 5], was active for approximately
eight months until it launched a new iteration of its website
in October 2011. Easyling Facts ¶ 9; Smartling Response
¶ 9. Smartling asserts that Skawa copied its
February 2011 website when it created the original Easyling
website, which launched in September or November 2011 and
remained in use until at least mid-2012. Smartling Facts
¶ 3; Skawa Facts ¶ 11; Smartling Response
¶¶ 9, 11. As discussed further below, Smartling
claims that the Easyling website mimicked the orange and blue
color scheme used for Smartling's website, displayed the
Easyling mark in the same color and similar font as
Smartling's mark, and used a speech bubble as part of the
Easyling logo which was also part of Smartling's logo.
Smartling Facts ¶ 11-12. Moreover, Smartling asserts
that Skawa displayed buttons on the Easyling website in a
layout similar to that used by Smartling, copied aspects of
Smartling's promotional video which was displayed on its
website, and copied verbatim the terms and conditions
language from Smartling's website. Id.
judgment is appropriate where the moving party can show that
“there is no genuine dispute as to any material fact
and the movant is entitled to judgment as a matter of
law.” Fed.R.Civ.P. 56(a). “[A]n issue is
‘genuine' if it ‘may reasonably be resolved
in favor of either party.'” Robinson v.
Cook, 863 F.Supp.2d 49, 60 (D. Mass. 2012) (quoting
Vineberg v. Bissonnette, 548 F.3d 50, 56 (1st Cir.
2008)). “A fact is material if its resolution might
affect the outcome of the case under the controlling
law.” Cochran v. Quest Software, Inc., 328
F.3d 1, 6 (1st Cir. 2003) (citation omitted). Thus,
“[a] genuine issue exists as to such a fact if there is
evidence from which a reasonable trier could decide the fact
either way.” Id. (citation omitted). By
invoking summary judgment, “the moving party in effect
declares that the evidence is insufficient to support the
nonmoving party's case.” United States v. One
Parcel of Real Prop. (Great Harbor Neck, New Shoreham,
R.I.), 960 F.2d 200, 204 (1st Cir. 1992) (citing
Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986)).
“To succeed in showing that there is no genuine dispute
of material fact, ” the moving party must
“‘affirmatively produce evidence that negates an
essential element of the non-moving party's claim,'
or, using ‘evidentiary materials already on file . . .
demonstrate that the non-moving party will be unable to carry
its burden of persuasion at trial.'”
Ocasio-Hernández v. Fortuño-Burset,
777 F.3d 1, 4-5 (1st Cir. 2015) (quoting Carmona v.
Toledo, 215 F.3d 124, 132 (1st Cir. 2000)).
“[t]o defeat a properly supported motion for summary
judgment, the nonmoving party must establish a trial-worthy
issue by presenting enough competent evidence to enable a
finding favorable to the nonmoving party.” ATC
Realty, LLC v. Town of Kingston, N.H., 303 F.3d 91, 94
(1st Cir. 2002) (internal quotations and citation omitted).
That is, the nonmoving party must set forth specific,
material facts showing that there is a genuine disagreement
as to some material fact. One Parcel of Real Prop.,
960 F.2d at 204 (citing Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 256-57 (1986)).
reviewing the record, the Court “must take the evidence
in the light most flattering to the party opposing summary
judgment, indulging all reasonable inferences in that
party's favor.” Cochran, 328 F.3d at 6
(citation omitted). The First Circuit has noted that this
review “is favorable to the nonmoving party, but it
does not give him a free pass to trial.” Hannon v.
Beard, 645 F.3d 45, 48 (1st Cir. 2011). “The
factual conflicts upon which he relies must be both genuine
and material[, ]” Gomez v. Stop & Shop
Supermarket Co., 670 F.3d 395, 396-97 (1st Cir. 2012),
and the Court may discount “conclusory allegations,
improbable inferences, and unsupported speculation.”
Cochran, 328 F.3d at 6 (quoting
Medina-Muñoz v. R.J. Reynolds Tobacco Co.,
896 F.2d 5, 8 (1st Cir. 1990)).
SKAWA'S MOTION FOR SUMMARY JUDGMENT
moves for summary judgment on all counts asserted in the
Amended Complaint including: “Federal Unfair
Competition, False Designation of Origin and Passing
Off” (Count I); “Trade Dress Infringement”
(Count II); “Infringement of the Smartling Mark”
(Count III); “Cancellation of the Easyling Mark”
(Count IV); “Violation of [Chapter 93A]” (Count
V); and “Common Law Unfair Competition” (Count
Trademark Infringement, Cancellation, and Unfair
I and III of the Amended Complaint are based on the following
language in the Lanham Act:
Any person who, on or in connection with any goods or
services . . . uses in commerce any word, term, name, symbol,
or device . . . which . . . is likely to cause confusion, or
to cause mistake, or to deceive as to the affiliation,
connection, or association of such person with another
person, or as to the origin, sponsorship, or approval of his
or her goods, services, or commercial activities by another
person . . . shall be liable in a civil action by any person
who believes that he or she is or is likely to be damaged by
15 U.S.C. § 1125(a)(1)(A). This section of the Lanham Act,
“prong (A), ” prohibits “[f]alse
designations of origin.” Int'l Ass'n of
Machinists & Aerospace Workers, AFL-CIO v. Winship Green
Nursing Ctr., 103 F.3d 196, 208 (1st Cir. 1996).
“Typical claims under prong (A) would involve a new
trademark that was confusingly similar to an already
established one, or an attempt by a defendant to
‘palm-off its goods as those of a competitor by use of
the competitor's mark.” Id (citing 3 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 27.02  (3d ed. 1996) (describing
these claims as “trademark infringement”)).
where Counts I and III arise solely under prong (A), each
count has “likelihood of confusion” as an
essential element. “To succeed on a claim of trademark
infringement, a plaintiff must establish . . . that the
allegedly infringing use is likely to cause consumer
confusion.”Boston Duck Tours, LP v. Super Duck
Tours, LLC, 531 F.3d 1, 12 (1st Cir. 2008). “The
same likelihood of confusion standard applies to the unfair
competition and false designation of origin claims.”
Santander Consumer USA Inc. v. Walsh, 762 F.Supp.2d
217, 225 (D. Mass. 2010); see Venture Tape Corp. v.
McGills Glass Warehouse, 540 F.3d 56, 61 n. 6 (1st Cir.
2008) (“Venture's unfair competition claim (Count
2) and false designation claim (Count 3) are subject to the
same legal standard-namely, ‘likelihood of
confusion'-as its Count 1 infringement
First Circuit has interpreted “likely to cause consumer
confusion” to mean “more than the theoretical
possibility of confusion.” Boston Duck Tours,
LP, 531 F.3d at 12 (quoting Winship Green Nursing
Ctr., 103 F.3d at 200); see Peoples Fed. Sav. Bank
v. People's United Bank, 672 F.3d 1, 9-10 (1st Cir.
2012) (same). “In other words, allegedly infringing
conduct must create ‘a likelihood of confounding an
appreciable number of reasonably prudent purchasers
exercising ordinary care.'” Boston Duck Tours,
LP, 531 F.3d at 12 (quoting Winship Green Nursing
Ctr., 103 F.3d at 201). The reasonably prudent purchaser
is not limited to the actual or potential buyer of the
product, but also includes “persons in a position to
influence the purchasing decision or persons whose confusion
presents a significant risk to the sales, goodwill, or
reputation of the trademark owner.” Beacon Mut.
Ins. Co. v. OneBeacon Ins. Grp., 376 F.3d 8, 10, 16 (1st
Cir. 2004) (“[L]ikelihood of confusion inquiry . . .
includes others whose confusion threatens the trademark
owner's commercial interest in its mark.”). Courts
in this circuit consider the following non-exhaustive list of
factors, known as the “Pignons” factors,
when assessing the likelihood of confusion:
(1) the similarity of the marks; (2) the similarity of the
goods (or, in a service mark case, the services); (3) the
relationship between the parties' channels of trade; (4)
the juxtaposition of their advertising; (5) the classes of
prospective purchasers; (6) the evidence of actual confusion;
(7) the defendant's intent in adopting its allegedly
infringing mark; and (8) the strength of the plaintiff's
The Shell Co. (Puerto Rico) Ltd. v. Los Frailes Service
Station, Inc., 605 F.3d 10, 22 & n.9 (1st Cir. 2010)
(quoting Int'l Ass'n of Machinists, 103 F.3d
at 201); see Pignons S. A. de Mecanique v. Polaroid
Corp., 657 F.2d 482 (1st Cir. 1981) (same). The inquiry
is “highly fact-intensive.” The Shell
Co., 605 F.3d at 22.
Similarity of the Marks
degree of similarity between the marks is the ‘single
most important factor in determining likelihood of
confusion.'” Solmetex, LLC v. Dentalez,
Inc., 150 F.Supp.3d 100, 111-12 (D. Mass. 2015) (quoting
McNeil Nutritionals, LLC v. Heartland Sweeteners,
LLC, 511 F.3d 350, 367 (3d Cir. 2007)). “[T]he
similarity of the marks takes prominence when, as is the
situation here, the goods are direct competitors in the
marketplace.” Id. (citing Boston Duck
Tours, LP, 531 F.3d at 30). “[W]hen the goods or
services are virtually identical, the marks need not be as
similar for there to be a likelihood of confusion.”
Veve v. Corporan, 977 F.Supp.2d 93, 101 (D.P.R.
2013) (citing Bridgestone Am. Tire Operations, LLC v.
Fed. Corp., 673 F.3d 1330, 1337 (Fed. Cir. 2012)
(likelihood of confusion between “Potenza” and
“Turanza” marks was greater because both referred
is determined on the basis of the total effect of the
designation, rather than a comparison of individual
features.” Boston Duck Tours, LP, 531 F.3d at
29 (quoting Pignons, 657 F.2d at 487); see Copy
Cop, Inc. v. Task Printing, Inc., 908 F.Supp. 37, 44 (D.
Mass. 1995) (“[T]he relevant standard is the
‘total effect' of the mark, considering sight,
sound, and meaning.” (citing Volkswagenwerk
Aktiengesellschaft v. Wheeler, 814 F.2d 812, 817 (1st
Cir. 1987))). “Marks should not be simply compared
side-by-side, but ‘in light of what occurs in the
marketplace, taking into account the circumstances
surrounding the purchase of the goods . . . .'”
Anheuser-Busch, Inc. v. Caught-on-Bleu, Inc., 288
F.Supp.2d 105, 114-15 (D.N.H. 2003), aff'd, 105
Fed. App'x 285 (1st Cir. 2004) (quoting Copy
Cop, 908 F.Supp. 37, 44 (D. Mass. 1995)).
although the marks contain different words
(“smart” vs. “easy”) and a different
number of syllables, both marks are one-word, invented terms
composed of an adjective preceding the “ling” at
the end of the mark. The manner in which these marks are
displayed on each company's respective website also share
similarities. Using Smartling's February 2011 website as
the relevant point of reference, both marks are shown at the
top left-hand corner of the webpage. Both marks are written
in white, sans-serif font and in all lower-case lettering.
The word Easyling is displayed inside of a blue speech
bubble; Smartling's website displays a speech bubble that
reads “Hi” next to the word mark. Moreover,
although not identical, both websites use a similar orange
and blue color scheme against which the marks are shown.
Compare [ECF No. 78-5 at 5], with [ECF No.
25-1 at 11]; see Veve v. Corporan, 977 F.Supp.2d 93,
100-01 (D.P.R. 2013) (“Batey” and
“Atabey” marks were similar where both
companies' websites had “similar dark-colored
backgrounds and are covered with pictures of groups of
tourists on various stages of hikes through forested areas
and caves” so that “[t]he websites, when taken as
a whole, create the same general overall impression.”).
Although the marks are not identical, considering the manner
in which they are displayed, and the fact that Smartling and
Skawa market the same services in direct competition with one
another, this factor weighs in favor of Smartling at this
Similarity of the Goods
does not dispute that both parties sell the same type of
product-a translation proxy software application.
Accordingly, this factor favors Smartling. See Solmetex,
LLC v. Dentalez, Inc., 150 F.Supp.3d 100, 113 (D. Mass.
2015) (“The parties do not dispute that [their
respective products] are substantially similar pieces of
equipment. Both are amalgam separators used to filter dental
wastewater streams . . . . This factor weighs in favor of
Plaintiff.”); Dorpan, S.L. v. Hotel Melia,
Inc., 728 F.3d 55, 66 (1st Cir. 2013) (finding
similarity of goods where “there is substantial overlap
in the core services offered by each hotel”).
Relationship between the Parties Advertising, Channels of
Trade, and Classes of Prospective Purchasers
three (channels of trade), four (advertising), and five
(classes of prospective purchasers) are often considered
together because they tend to be interrelated.”
Beacon Mut. Ins. Co., 376 F.3d at 19; see
Peoples Fed. Sav. Bank, 672 F.3d at 14 (describing these
factors as “interrelated”). Skawa does not
dispute that the parties use the same trade channels and
forms of advertising. They both market their products online
through their websites, have advertised in the same
publications, and attend the same trade shows. Smartling
Facts ¶ 7; see Dorpan, 728 F.3d at 66-67
(finding that parties advertised and solicited customers in
substantially similar manners where parties were both hotels
that “attend trade shows, develop relationships with
travel agents, advertise directly to consumers, and accept
reservations through Internet booking sites”).
also does not dispute that the parties compete for the same
customer base but argues that the likelihood of confusion is
minimal given that the prospective purchasers of online
translation services are sophisticated, professional buyers.
See Pub. Impact, LLC v. Bos. Consulting Grp., Inc.,
169 F.Supp.3d 278, 294 (D. Mass. 2016) (“The likelihood
of confusion may be substantially reduced when the relevant
buyer class is composed of sophisticated professional or
commercial purchasers of goods and services.”);
Astra Pharm. Prod., Inc. v. Beckman Instruments,
Inc., 718 F.2d 1201, 1206 (1st Cir. 1983) (“And
there is always less likelihood of confusion where goods are
expensive and purchased after careful consideration.”).
Skawa's evidence that the “reasonable prudent
purchaser is the professional buyer of translation services
for websites and other content, ” however, is
apparently contained in an affidavit that does not appear to
be in the summary judgment record. See [ECF No. 78
at 30]. Thus, when the parties use the same
channels of trade and forms of advertising, directed toward
the same class of purchasers, and given that Skawa has failed
to provide sufficient evidence regarding the level of
sophistication of internet translation purchasers as a class,
the Court finds that, at this stage, this set of factors
has not attempted to present any evidence of actual
confusion. “[E]vidence of actual confusion is
oftentimes ‘considered the most persuasive evidence of
likelihood of confusion because past confusion is frequently
a strong indicator of future confusion.'”
Santander Consumer USA Inc., 762 F.Supp.2d at 227
(quoting Beacon Mut. Ins. Co., 376 F.3d at 18).
Nonetheless, “[a]ctual confusion is not a prerequisite
to a finding of likelihood of confusion.” Visible
Systems Corp. v. Unisys Corp., 551 F.3d 65, 74 (1st Cir.
2008). “[A] trademark holder's burden is to show
likelihood of confusion, not actual confusion.”
BorinquenBiscuit Corp. v. M.V. Trading
Corp., 443 F.3d 112, 120 (1st Cir. 2006) (citations
omitted). “Historically, [the First Circuit has]
attached substantial weight to a trademark holder's
failure to prove actual confusion only in instances in which
the relevant products have coexisted on the market for a long
period of time.” Id. at 121. “[A]bsent
evidence of actual confusion, when the marks have been in the
same market, side by side, for a substantial period of time,
there is a strong presumption that there is little likelihood
of confusion.” Oriental Fin. Grp., Inc. v.
Cooperativa de Ahorro y Crédito Oriental, 832
F.3d 15, 30-31 (1st Cir. 2016) (quoting Pignons, 657
F.2d at 490). “Applying this principle, the First
Circuit has found that little or no evidence of actual