Chatham v. Canterbury Ventures et al. (17-cv-11473).

Judge Talwani on Thursday adopted Magistrate Judge Cabell’s Report and Recommendation that Canterbury’s motion for summary judgment be denied. Canterbury had moved for summary judgment on Chatham’s copyright, breach of contract, and breach of the covenant of good faith and fair dealing, as well as on the availability of specific performance (effectively, forcing transfer of the property to the Chathams) as a measure of damages. Judge Cabell for a variety of reasons had earlier recommended denial of all elements of Canterbury’s motion for the reasons laid out here. Canterbury subsequently switched counsel, and new counsel objected to Judge Cabell’s recommendation. Judge Talwani, however, rejected Canterbury’s objections. She first determined that Canterbury had not raised a specific objection to the recommendation on the copyright claim be denied, and accordingly adopted Judge Cabell’s recommendation that Canterbury’s attempt to scrap the copyright claim be denied. Judge Talwani further found that a reasonable jury could determine that the purchase and sales agreement had been extended as a result of Canterbury’s representations that it continued to operate in accordance with the agreement following the putative termination, and subsequently threatening to terminate, and ultimately unilaterally terminating the agreement when the Chathams refused to pay additional monies not called for by the agreement. She determined that Canterbury’s argument regarding specific performance – that it was unavailable because the Chathams had never proffered payment – was waived for failure to have raised it before. She further noted that, even if the argument hadn’t been waived, Canterbury could not object to any perceived failure of Chatham to proffer payment because a condition of closing was that Canterbury would have a certificate of occupancy, which Canterbury undisputably did not have a certificate of occupancy, rendering any failure to tender the purchase price moot. Judge Talwani finally noted that Canterbury had not disputed that a failure to attempt, in good faith, to construct the house in the time frame set forth by the agreement could result in a breach of duty of good faith and fair dealings. Accordingly, the report and recommendation of Judge Cabell was upheld in its entirety.

I represent the Chathams, along with Nate Harris and John Anastasi of my firm, Lando & Anastasi, along with Paul Mordarski and Jordan Carroll of Morrissey, Hawkins & Lynch. Needless to say, we are very happy with this decision, and look forward to trial.

Broadcast Music, Inc. et al. v. ADE Enterprises, Inc. d/b/a Kaptain Jimmy’s Restaurant & Distillery et al. (20-cv-30019).

Music licensing behemoth BMI sued Agawam’s Kaptain Jimmy’s, as well as the officers of the ADE, the corporation that owns and operates Kaptain Jimmy’s, accusing the establishment of hosting unlicensed public performances of BMI-controlled copyrighted music. BMI asserts that it communicated by mail, e-mail and phone with Kaptain Jimmy’s over 50 times since 2018, but Kaptain Jimmy’s refused to cease the performances or pay the license fee. BMI seeks an injunction as well as statutory damages and attorneys’ fees.

Duffy Archive Limited v. 379 Somerville Avenue LLC (20-cv-10202).

Duffy Archive, a British company that owns and manages the photographs of fashion and celebrity photographer Brian Duffy, accuses 379 Somerville, which owns and operates a live music venue called “Thunder Road” at the 379 Somerville Ave. address, of willful copyright infringement. Duffy asserts copyright in a photograph of a shirtless David Bowie with a blue and red lightning bolt running across one eye, which appears to have been taken during the session that led to the album cover for Bowie’s 1973 “Aladdin Sane” album. He says that 379 Somerville used this photograph as the basis for promotions for a “Bowie Celebration” night at the venue. Duffy asserts that a number of cease and desist letters were sent but that “the infringement brazenly continues’” although I note that the date of the event has passed. The case is before Judge Saris.

Laddawn, Inc. et al. v. Bolduc (17-cv-11044).

In 2017, plastic bag and packaging maker Laddawn and its owner Ladd Lavallee sued former Laddawn employee Marc Bolduc for cybersquatting and defamation. Bolduc had been Laddawn’s network administrator since 1999, and is alleged to have kept information pertaining to Laddawn’s network secret from Laddawn personnel. His performance allegedly devolved over the years to the point that he was terminated in 2015. Laddawn asserts that Bolduc has password-protected its data backup and refused to turn over the passwords, and that following his termination he began a pattern of harassment of Laddawn and its employees. As a part of this, Laddawn asserts that Bolduc registered a number of domain names utilizing the federally-registered “LADDAWN” mark and made them available for sale “to the highest bidder.”

In the ensuing litigation, Bolduc repeatedly failed to comply with deadlines and discovery orders, resulting in the entry of default judgment against him. Judge Hillman has now awarded damages and costs and entered a permanent injunction. He found that Laddawn had demonstrated bad faith in Bolduc’s registration of the domain names – Bolduc testified at deposition that he had no intellectual property rights in the names registered, did not use the sites to offer goods or services, and registered the names solely to sell them for financial gain. He awarded $3000 per name in statutory damages, for a total of $24,000. He also awarded $100,000 in damages for defamation, and enjoined Bolduc from further acts of defamation or cybersquatting.

Night and Day Furniture, LLC v. Atlantic Furniture, Inc. (18-cv-30104).

After the parties to this patent litigation reached a settlement just before the scheduled Markman hearing, the parties sought to have the case dismissed. Judge Mastroianni granted the motion to dismiss with prejudice, but denied the parties’ request that the court retain jurisdiction and incorporate the settlement agreement into the dismissal order, citing the general policy of the court not to adopt or endorse settlement agreements between private parties.

2019 – Looking Back.

Intellectual property filings in the District of Massachusetts remained high in 2019. Of the 94 total district courts in the United States, the District of Massachusetts ranked 11th for new patent filings, 14th for trademark filings, 20th for copyright filings and 18th for trade secret filings. Presently, there are 61 open patent cases, 82 open trademark cases, 39 open copyright cases and 31 open trade secret cases in this District. New patent cases covered a wide range of technologies, including medical devices, robotics, and communications. A long-running dispute between SiOnyx and Hamamatsu Photonics went to trial, with SiOnyx prevailing on infringement, contract and unjust enrichment claims as well as correction of inventorship and injunctive relief. A significant number of 2019’s copyright litigation revolves around allegations that a business took a copyrighted photograph from the internet without license and placed it on their website, often further alleging the removal of copyright management information. This stems from the rise of reverse image search software that can continuously scour the internet for copies or derivative works, allowing much easier discovery of potential infringements. In the trademark realm, Massachusetts was home to several infringement suits against resellers such as Amazon stores who were (or at least may have been) selling products actually made by the trademark holder but not obtained as authorized resellers. Smart home control product maker ecobee was one of the leaders in this area, filing four such suits after having filed three in November 2018.

Minden Pictures Inc. v. Expressway Motors Inc. (20-cv-10179).

Minden Pictures, a California-based stock photo provider that specializes in nature and wildlife photographs, accuses Dorchester’s Expressway Motors of copyright infringement. Minden offers rights to photographs from a number of different photographers, including Tim Fitzharris, and displays the photographs it displays with watermarks containing copyright management information. Minden asserts itself to be the exclusive licensee of a particular Fitzharris photograph of fall foliage in Acadia, Maine that appears on Expressway Motors’ website. Minden asserts that the infringement was willful, and that Expressway Motors willfully removed the copyright management information. The case has been assigned to Magistrate Judge Kelley.