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.

CardioNet, LLC et al. v. InfoBionic, Inc. (15-cv-11803).

In a long-running patent dispute concerning cardiac monitors, Judge Talwani denied in part CardioNet’s motion for summary judgment. CardioNet sought judgment that InfoBionic infringed four claims of one of the remaining patents, and that those claims, along with a claim from another of the remaining patents, were valid. Judge Talwani found, in a very short electronic order, that there were genuine issues of material fact with respect to validity and infringement on the four claims and denied the motion. With respect to the second patent, Judge Talwani set the validity for a February hearing.  She further instructed CardioNet to address why summary judgment of non-infringement should not be granted on the basis that the accused MoMe system lacks a frequency domain T wave filter as that term was construed.

Durant v. Coughlin & Co., Inc. et al. (20-cv-10123).

John Durant, a San Diego photographer, sued Richard Coughlin and his Weymouth-based real estate business, Coughlin & Co., accusing them of placing a Durant photograph on Coughlin & Co.’s website without license. Durant asserts that Coughlin was notified of the infringement in August, but has refused to remove the photograph from the website.

Plastipak Packaging, Inc. v. Ice River Springs Water Co. Inc. et al. (19-cv-11193).

In May of 2019, Plastipak sued Ice River Springs Water Co., accusing the Canadian company and its U.S. affiliate Ice River Springs USA of willfully infringing ten Plastipak patents related to “light-weighting,” a technique that allows for a neck of a plastic bottle that is lighter in weight and contains less material while retaining threads, tamper-evident formations and a support flange.  Plastipak had previously sued Niagara Bottling, LLC in the Eastern District of Virginia, which the parties settled in 2018. In the present litigation, Ice River sought production related to the prior litigation from Plastipak, including prior art, deposition transcripts, discovery requests and responses and the like. Judge Talwani granted Niagara Bottling’s motion for a protective order, preventing the disclosure of documents containing Niagara’s confidential information that were involved in the Niagara litigation. She found that Ice River failed to show why such confidential information is sufficiently relevant to justify the burden on Niagara of having its confidential information exposed to a competitor. Judge Talwani denied Plastipak’s motion with respect to Plastipak’s own documents from the prior litigation, with any Niagara confidential information redacted, and further ordered Plastipak to confirm the redactions with Niagara prior to producing them.

Cobb v. TripAdvisor LLC (20-cv-10111).

Maryland photographer William Cobb accuses TripAdvisor of misusing one of his photographs on its website. The complaint asserts that TripAdvisor stripped copyright management information from a Cobb photograph and then placed the photograph on TripAdvisor’s website in several places. The photograph, an aerial view of St. Petersburg, Florida, appeared on a “things to do” page, identified as https://www.thingstodo.avis.com, that appears to belong to Avis rather than TripAdvisor. No explanation is given as to why TripAdvisor is responsible for the placement of the photograph on this web page.

Big Beings USA Pty. Ltd. Et al. v. Nested Bean, Inc. (20-cv-10101).

Australian companies Big Beings and LB Online & Export Pty. Ltd., which does business as Love to Dream, accuse Massachusetts business Nested Bean of infringing U.S. 9,179,711, directed to infant swaddling suits. Big Beings asserts that Nested Bean’s “Zen One Convertible Swaddle” product infringes at least one claim of the ‘711 patent. Big Beings is the assignee of the ‘711 patent, while Love to Dream is the exclusive licensee of Big Beings “Swaddle” technology, which includes the ‘711 patent, in the United States. In addition to claiming infringement, Big Beings asserts unjust enrichment. Judge Talwani has the case.

Comerica Bank & Trust, NA as Personal Representative of the Estate of Prince Rogers Nelson et al v. Habib (17-cv-12418).

Comerica Bank, on behalf of the estate of musician Prince, filed suit against Kian Andrew Habib after Habib posted footage he had filmed of two Prince concerts to Habib’s “PersianCeltic” YouTube page. Comerica operates an official Prince YouTube channel, and utilizes MarkMonitor to actively monitors the internet for potential infringements. When Comerica discovered the Habib videos, which included portions of five different Prince-written songs, it sent takedown notices to YouTube, which removed the videos. Habib filed counter-notifications, asserting that his videos constituted “fair use,” and Comerica filed suit, asserting copyright infringement and violation of the civil anti-bootlegging statute, 17 U.S.C. §1101. Habib in turn asserted that the takedown notices were “knowingly, material misprepresent[ations]” in violation of 17 U.S.C. § 512(f). The parties each moved for summary judgment.

Judge Sorokin granted Comerica summary judgment on the copyright claim, rejecting Habib’s argument that Prince’s copyright did not extend to live performances. Judge Sorokin disagreed, noting that in addition to the copyright in the sound recording, which covers the studio recordings, Prince had copyright in the musical compositions themselves. He further noted that courts have consistently held that live performances that differ somewhat in lyrics, temp, or arrangement are still protected by the copyright in the musical composition. Judge Sorokin rejected Habib’s fair use defense, finding that Habib’s videos had no educational or historic, and were essentially verbatim copying that was not transformative. He further noted that, while Habib had not monetized his YouTube account, lack of monetization does not affect liability, and that Habib’s use of the videos to drive traffic to his channel provides sufficient benefit to weigh against a finding of fair use. Judge Sorokin agreed that Comerica would lose revenue when someone viewed the Prince videos on Habib’s site, as well as lose control over the ability to preserve the reputation for excellence that Prince himself had established in strictly controlling his output. Judge Sorokin further granted Comerica summary judgment that the infringement was willful, finding that Habib’s continued posting of concert videos (of Prince and others) despite receiving multiple takedown notices demonstrated an unreasonable disregard for the rights of the performers, and his custom of filing counter-notifications parroting the statutory fair use factors without factual basis likewise is unreasonable.

Judge Sorokin further found in Comerica’s favor on the elements of the anti-bootlegging statute. This statute protects performances that are not themselves “fixed” in a tangible medium and thus entitled to copyright protection. He rejected Habib’s sole defense of implied license, which Habib asserted from a 2014 BBC interview in which Prince stated “[n]obody sues their fans… fans sharing music with each other, that’s cool.” Judge Sorokin agreed with Comerica that such a broad statement to the general public does not set out any license terms, does not demonstrate an intent to contract with Habib and has no relation to Habib himself, and thus did not create an implied license. While Judge Sorokin agreed that the elements of the statute were met, he withheld summary judgment to allow further briefing on whether the protections under the statute are inheritable such that Comerica has standing, an issue not yet addressed by the courts.

Judge Sorokin denied Habib’s request for summary judgment on his assertion that the takedown notices contained material misrepresentations, noting that MarkMonitor had, on Comerica’s behalf, had established at least a good faith belief that the Habib videos were infringing, including performing a fair use analysis, before the notices were sent. Finally, Judge Sorokin granted Comerica’s request for a permanent injunction prohibiting the posting of any videos of Prince performances.

Congratulations to Craig Smith and Eric Carnevale of my firm, Lando &Anastasi, who represent Comerica in this case!