UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MASSACHUSETTS

EMC CORPORATION, )
)
)
and ) Civil Action No. ________________
)
)
RSA SECURITY LLC,
)
Plaintiffs, )
)
v. )
)
TECHNOLOGY TRANSFER INC., )
D/B/A RSA CORP., )
)
Defendant. )

COMPLAINT FOR TRADEMARK INFRINGEMENT,

UNFAIR COMPETITION AND TRADEMARK DILUTION
EMC Corporation (“EMC”) and RSA Security LLC, for their Complaint against

Technology Transfer Inc., d/b/a RSA Corp. (“Technology Transfer”), allege as follows:

Parties and Jurisdiction

1. EMC is a Massachusetts corporation with its principal place of business at 176

South Street, Hopkinton, Massachusetts 01748.

2. RSA Security LLC (a wholly owned subsidiary of EMC) is a Delaware

corporation with its principal place of business at 174 Middlesex Turnpike, Bedford,

Massachusetts 01730.

3. EMC’s data security division is known as RSA, which was formerly operated as

RSA Security Inc. EMC and its RSA business are collectively referred to herein as “RSA.”
 4. Defendant, Technology Transfer Inc., is a Texas company with its principal place

of business at 16969 Texas Avenue, Suite 400, Webster, Texas 77598.

5. This Court’s jurisdiction arises from the fact that: (i) this is an action brought

under the Trademark Laws of the United States, 15 U.S.C. §§ 1051 et seq., jurisdiction being

conferred by 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338; (ii) this is a civil action in

which RSA and Technology Transfer are citizens of different states and the value of the matter in

controversy exceeds seventy-five thousand dollars ($75,000) exclusive of interest and costs,

jurisdiction being conferred under 28 U.S.C. § 1332(a); and (iii) RSA’s state and common law

claims are joined and related pursuant to 28 U.S.C. §§ 1367(a) and 1338(b).

6. This Court has personal jurisdiction over Technology Transfer because it transacts

business in this judicial district and Technology Transfer’s unlawful activities have occurred and

caused injury in this judicial district.

7. Technology Transfer is a corporation doing business in this judicial district.

Therefore, venue is proper pursuant to 28 U.S.C. § 1391(b).

RSA

8. RSA helps organizations of all sizes, in virtually every industry, solve data

security, risk, and compliance challenges. RSA’s services include identity verification and

authorization, eCommerce consulting, data security, standards and compliance analysis, network

and digital forensics, managing organizational risk, safeguarding mobile access and

collaboration, providing compliance and authentication, and securing virtual and cloud

environments through encryption, tokenization, and key management.

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 9. RSA further provides data loss prevention services, as well as data and network

security consulting, fraud assessment, operations review and custom software applications

development.

10. EMC acquired RSA Security LLC in September 2006; it previously was an

independent company known as RSA Security, Inc., or RSA Data Security. RSA has done

business under an RSA name and used an RSA mark (the “RSA Name and Mark”) continuously

since at least as early as 1982, and it has sold billions of dollars worth of goods and services

under its RSA Name and Mark.

11. EMC owns several valid and subsisting federal trademark registrations in the

United States Patent and Trademark Office (“USPTO”), including the following:

MARK REG. DATE REG. NO.

RSA April 25, 2000 2,345,277
RSA June 26, 2001 2,464,394
RSA March 28, 2000 2,335,885
November 13, 2001 2,507,742

RSA SECURITY September 11, 2001 2,488,876

RSA SECURED July 16, 2002 2,594,941

All of these registrations have become incontestable under 15 U.S.C. §§ 1065 and 1115, and the

certificates of registration constitute conclusive evidence of the validity of the registered marks,

of RSA’s ownership of the marks, and of RSA’s exclusive right to use each mark in connection

with the goods or services specified in those registrations. 15 U.S.C. § 1115.

12. RSA demonstrates its leadership position in the information technology industry

by arranging and conducting the annual RSA Conference in the U.S., Europe, and China. This

conference gives information-security professionals around the world opportunities for

networking and learning of state-of-the-art advancements in their field.

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 13. RSA uses the RSA Name and Mark on a worldwide basis and has registered RSA

marks in numerous foreign jurisdictions.

14. RSA has registered the internet domain name <rsa.com> and operates a website at

that address where it offers and promotes its information technology goods and services. RSA

also owns the internet domain name <rsaconference.com> and operates a website at that address

where it promotes its business and educational conferences.

15. RSA enjoys an extremely valuable reputation and goodwill among information

technology professionals and corporations as a provider of high-quality data-security products

and services. The RSA Name and Mark has come to be recognized and associated by consumers

exclusively with the high-quality products and services that RSA provides. RSA’s data-security

products and services are widely sought by information-technology professionals and

corporations across the country and around the world for their excellent reputation.

16. The RSA Name and Mark is a valuable business and marketing asset and

indicates to consumers the high-quality goods and services originating only from RSA. RSA has

expended substantial time, effort and money in advertising, promoting, and marketing its RSA

goods and services throughout the United States for nearly 30 years. As a result, the RSA Name

and Mark has become famous.

Technology Transfer and Its Infringing Activities

17. Upon information and belief, Technology Transfer is a company located in

Webster, Texas, that offers information technology services that include data and network

security, network monitoring, and backup/disaster recover services, as well as information-

technology staffing and employment-agency services.

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 18. Long after the RSA Name and Mark became distinctive and famous, Technology

Transfer began offering data and network-security services, as well as other information

technology services, under the assumed name RSA Corp. Technology Transfer currently

promotes these services on its website at http://www.rsacorp.com.

19. Technology Transfer also offers technology employment opportunities throughout

the United States, including currently over two dozen positions in Massachusetts. Many of the

advertised positions are in the information technology field.

20. On July 24, 2009, RSA wrote to Technology Transfer to demand that it stop using

an RSA trade name and RSA service marks. On August 4, 2009, Technology Transfer

responded, refusing to cease its use. Despite further correspondence, the parties have not been

able to settle their differences.

21. The assumed business name and service mark “RSA Corp” are confusingly

similar to the RSA Name and Mark.

22. Technology Transfer is making commercial use of an imitation of the RSA Name

and Mark in U.S. interstate commerce, and is doing so without RSA’s authorization or consent.

23. On information and belief, Technology Transfer began to market its services with

knowledge of RSA’s rights in the RSA Name and Mark.

24. Technology Transfer’s unauthorized use of an imitation of the RSA Name and

Mark irreparably injures RSA by depriving RSA of the right to control its marks.

25. Technology Transfer’s unauthorized use of the RSA Name and Mark has caused,

and is likely to cause further, confusion, deception, and mistake by creating the erroneous

impression that the Technology Transfer’s products and services have been manufactured,

approved, sponsored, endorsed or guaranteed by, or are in some way affiliated with RSA.

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 COUNT I
FEDERAL TRADEMARK INFRINGEMENT

26. RSA repeats and re-alleges each and every allegation of Paragraphs 1 through 25

as though fully set forth herein.

27. Technology Transfer’s aforesaid activities have caused or are likely to cause

confusion, mistake or deception with RSA or its products and services offered under the RSA

Name and Mark, or to result in the belief by purchasers and others that Technology Transfer or

its services are connected with, or sponsored or approved by RSA.

28. Technology Transfer’s use of designations identical or virtually identical with the

RSA Name and Mark constitutes infringement of registered trademarks in violation of Section

32 of the Lanham Act, 15 U.S.C. § 1114.

29. On information and belief, Technology Transfer’s activities have been willful,

intentional, and in reckless disregard of RSA’s aforesaid rights.

30. By reason of Technology Transfer’s acts as alleged above, RSA has suffered and

will continue to suffer damage and injury to its business and reputation, and will sustain serious

losses of revenues and profits.

31. Technology Transfer’s aforesaid acts are greatly and irreparably damaging to

RSA and will continue to damage RSA unless enjoined by this Court; wherefore, RSA is without

an adequate remedy at law.

COUNT II
FEDERAL UNFAIR COMPETITION

32. RSA repeats and re-alleges each and every allegation of Paragraphs 1 through 31

as though fully set forth herein.

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 33. Technology Transfer’s aforesaid acts tend falsely to represent Technology

Transfer and its services as being affiliated, connected or associated with, or sponsored or

approved by, RSA in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).

34. Technology Transfer’s aforesaid activities have caused or are likely to cause

confusion, mistake or deception with RSA, or its products and services offered under the RSA

Name and Mark, or to result in the belief by purchasers and others that Technology Transfer or

its services are connected with, or sponsored or approved by RSA.

35. Technology Transfer’s aforesaid acts constitute unfair competition with RSA.

36. On information and belief, Technology Transfer’s aforesaid acts have been

willful, intentional, and in reckless disregard of RSA’s aforesaid rights.

37. By reason of Technology Transfer’s acts as alleged above, RSA has suffered and

will continue to suffer damage and injury to its business and reputation, and will sustain serious

losses of revenues and profits. RSA has already suffered monetary damages in an indeterminate

amount.

38. Technology Transfer’s aforesaid acts are greatly and irreparably damaging to

RSA and will continue to damage RSA unless enjoined by this Court; wherefore, RSA is without

an adequate remedy at law.

COUNT III
FEDERAL TRADEMARK DILUTION

39. RSA repeats and re-alleges each and every allegation of Paragraphs 1 through 38

as though fully set forth herein.

40. Technology Transfer’s aforesaid acts are likely to dilute the distinctive quality of

the famous RSA Name and Mark.

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 41. Technology Transfer’s acts began long after the RSA Name and Mark became

distinctive and famous and are in violation of Section 43(c) of the Lanham Act, 15 U.S.C.

§ 1125(c).

42. By reason of Technology Transfer’s acts as alleged above, RSA has suffered and

will continue to suffer damage and injury to its business and reputation, and will sustain serious

losses of revenues and profits. RSA has already suffered monetary damages in an indeterminate

amount.

43. Technology Transfer’s aforesaid acts are greatly and irreparably damaging to

RSA and will continue to damage RSA unless enjoined by this Court; wherefore, RSA is without

an adequate remedy at law.

COUNT IV
TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
UNDER THE COMMON LAW OF MASSACHUSETTS

44. RSA repeats and re-alleges each and every allegation of Paragraphs 1 through 43

as though fully set forth herein.

45. Technology Transfer’s unauthorized use of the assumed business name and

service mark “RSA Corp” is likely to cause confusion, mistake or deception with RSA, or its

products and services offered under the RSA Name and Mark, or result in the mistaken belief by

purchasers and others that Technology Transfer or its services are sponsored, approved or

licensed by RSA, or are otherwise connected with RSA.

46. Technology Transfer’s unauthorized use of the RSA Name and Mark constitutes

trademark infringement and unfair competition in violation of the common law of the

Commonwealth of Massachusetts.

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 47. On information and belief, Technology Transfer’s unauthorized use of the RSA

Name and Mark in connection with its services has been willful, intentional and in reckless

disregard of RSA’s aforesaid rights.

48. By reason of Technology Transfer’s acts as alleged above, RSA has suffered and

will continue to suffer damage and injury to its business and reputation, and will sustain serious

losses of revenues and profits. RSA has already suffered monetary damages in an indeterminate

amount.

49. Technology Transfer’s aforesaid acts are greatly and irreparably damaging to

RSA and will continue to damage RSA unless enjoined by this Court; wherefore, RSA is without

adequate remedy at law.

COUNT V
TRADEMARK DILUTION UNDER THE LAW OF MASSACHUSETTS

50. RSA repeats and re-alleges each and every allegation of Paragraphs 1 through 49

as though fully set forth herein.

51. Technology Transfer’s aforesaid acts are likely to cause injury to RSA’s business

reputation or to dilute the distinctive quality of the famous RSA Name and Mark.

52. Technology Transfer’s acts began long after the RSA Name and Mark became

distinctive and famous and are in violation of Massachusetts General Laws, Chapter 110H,

Section 13.

53. By reason of Technology Transfer’s acts as alleged above, RSA has suffered and

will continue to suffer damage and injury to its business and reputation, and will sustain serious

losses of revenues and profits. RSA has already suffered monetary damages in an indeterminate

amount.

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 54. Technology Transfer’s aforesaid acts are greatly and irreparably damaging to

RSA and will continue to damage RSA unless enjoined by this Court; wherefore, RSA is without

adequate remedy at law.

WHEREFORE, RSA prays that:

1. Technology Transfer and its officers, agents, servants, employees, attorneys, and

all others in active concert and participation with any of them, individually and collectively, be

preliminarily and permanently enjoined from:

a) using the RSA Name and Mark, or any name, mark, or trade dress, that

includes the RSA Name and Mark, or is otherwise likely to cause

confusion with the RSA Name and Mark, including, but not limited to,

“RSA Corp;”

b) doing any other act or thing likely to confuse, mislead or deceive others

into believing that Technology Transfer or its services emanate from, or

are connected with, sponsored by or approved by RSA;

c) doing any other act or thing which is likely to dilute the distinctive quality

of the RSA Name and Mark;

d) doing any other act or thing likely to tarnish or injure RSA’s business

reputation; and

e) assisting, aiding, or abetting any other person or entity in engaging in any

of the activities prohibited in paragraphs (a) through (d).

2. That Technology Transfer be required to pay to RSA:

a) in accordance with 15 U.S.C. § 1117(a), an award of treble the actual

damages suffered by RSA, and the wrongful profits enjoyed by

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 Technology Transfer, enhanced as the Court deems appropriate, as well as

RSA’s costs and attorneys’ fees;

b) in accordance with the common law of unfair competition of the

Commonwealth of Massachusetts, RSA’s actual damages or Technology

Transfer’s profits; and

c) in accordance with 15 U.S.C. 1117, prejudgment interest.

3. That Technology Transfer deliver up for destruction all products and any other

material of an infringing or unfair nature in Technology Transfer’s possession or control, as well

as all means of making the same. (15 U.S.C. § 1118).

4. That Technology Transfer be required to file with this Court and serve on RSA a

report in writing under oath setting forth in detail the manner and form in which it has complied

with the terms of any injunction entered by this Court, in accordance with 15 U.S.C. § 1116(a).

5. RSA be granted such other and further relief as the Court deems just.

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 EMC CORPORATION

and

RSA SECURITY LLC,

By their attorneys,

/s/Christa von der Luft

Christa von der Luft (BBO#600362)
Heather B. Repicky (BBO# 663347)
Nutter, McClennen & Fish, LLP
Seaport West
155 Seaport Boulevard
Boston, MA 02210
(617) 439-2000

Of counsel: Brett A. August

Krishnendu Gupta, Esq.
Scott Ouellette, Esq.
EMC Corporation
176 South Street
Hopkinton, Massachusetts 01748
Pattishall, McAuliffe, Newbury,
Hilliard & Geraldson LLP
311 South Wacker Drive, Suite 5000
Chicago, Illinois 60606
(312)554-8000

2013677.2

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