Bassett v. Jensen et al. (18-cv-10576).

Judge Saris denied Bassett’s motion for a preliminary injunction seeking to prevent the release of the accused films. The case was brought by Leah Bassett, a Martha’s Vineyard artist who rented her home to the defendants, who used the home as the setting for pornographic films. Bassett asserted copyright infringement, base don her original artworks in the house being displayed in the films. She filed suit nearly three years after discovering that the defendants were filming at her house, and first sought preliminary injunctive relief nearly eighteen months after filing suit. Judge Saris determined that Bassett could not make the requisite element of irreparable harm. She cited several reasons – Bassett had disavowed claims for actual damages and sought only statutory damages; all of the copyrighted articles were personal belongings not for sale, eliminating many of the categories of irreparable harm (reputational harm, tarnishment, dilution) that might exist for items that were the subject of commerce; the minimal use of the copyrighted material in the films; and Bassett’s delays in filing suit and then seeking the injunction, which undercuts the notion of irreparable harm. Judge Saris further noted that the Defendants had agreed to voluntarily remove all the films and photographs shot in Bassett’s home from distribution, leaving only bootleg copies that an injunction would not address in distribution.

Boston Heart Diagnostics Corp. v. GeneAlign, LLC (17-cv-11412).

Judge Talwani found GeneAlign in default after it failed to respond to Boston Heart Diagnostic’s patent infringement complaint and entered an injunction barring GeneAlign from making, using, selling or offering for sale any SLCO1B1 test. She further awarded BHD costs and fees totaling $15,641.49 after determining, taking the allegations of the complaint as true, that the case was exceptional under 35 U.S.C. § 285.

Crane Security Technologies, Inc. et al. v. Rolling Optics AB (14-cv-12428).

Following a trial in which Rolling Optics was found to have willfully induced infringement of several Crane patents, Judge Sorokin ruled on a number of post-trial motions. He denied Rolling Optics’ motion for judgment of no inducement and lack of notice as a matter of law, finding the motion a mere rehashing of the motion for summary judgment that was previously denied. He likewise denied Rolling Optics’ motion for JMOL that certain claims were anticipated, finding the jury’s determination on the credibility of the parties’ experts dispositive. Judge Sorokin denied Crane’s motion for attorneys fees under 35 USC 285, finding that Rolling Optics’ litigation conduct was not exceptional, particularly given that the injunction that would likely result from losing would jeopardize Rolling Optics’ very existence. He awarded Crane treble damages, finding that Crane had demonstrated that Rolling Optics had copied their products with extensive knowledge of Crane’s patent portfolio and that Rolling Optics took no steps to ensure that they were not infringing valid patent claims – indeed, Rolling Optics continued shipping products into the United States seven months after it had been advised by its legal team to cease doing so. Finally, Judge Sorokin entered a permanent injunction, finding that Rolling Optics was directly competitive to Crane such that continued infringement would result in harms that could not be adequately remedied at law.

The Atomic Café et al. v. Roy et al. (17-cv-11927).

Following up on Friday’s post, Judge Talwani’s Order enjoined the use of The Atomic Café’s trademarks in written and electronic material, but denied the injunction without prejudice with respect to retail sales of Plaintiff’s prepackaged coffee beans, based on Plaintiff’s assertion at argument that it was not seeking to enjoin this use of the mark.

Ethicon Endo-Surgery, Inc. at al. v. Covidien LP et al. (16-cv-12556).

Judge Sorokin denied Covidien’s motion for a preliminary injunction that sought to bar sales of Ethicon’s Enseal® X1 Large Jaw Device, a surgical tool that allows a surgeon to grasp a vessel between two jaws, apply energy to the jaws to for a seal, and cut the now-sealed vessel. Prior to the introduction of this device, Covidien was the market leader in such instruments that used bipolar (or radiofrequency) energy to seal the vessel.  Since its introduction in March 2017, the X1 Large Jaw has generated $7.8 million in revenue.  Covidien contends that the X1 Large Jaw infringes U.S. Patent No. 8,241,284, which claims vessel sealing devices having non-conductive stop members that maintain a constant distance between the jaw surfaces along the length of the jaws.

Because Ethicon raised a substantial question of non-infringement, Covidien was unable to demonstrate a likelihood of success on the merits. Of interest, while both parties sought to have the claim terms given their plain and ordinary meaning, the parties disagreed as to what that meaning was, with Ethicon urging a meaning that took its product out of infringement.  Judge Sorokin determined that “Ethicon’s proposed meanings are at least sufficiently persuasive to raise a substantial question regarding the ‘plain and ordinary’ meanings of the relevant terms.”  In addition, Judge Sorokin found that Covidien failed to show a nexus between the claimed elements of the device and the success of the X1 Large Jaw.  Ethicon provided evidence that sales of the X1 device were driven by factors, such as better ergonomics, ease of use, availability of sealing separately from cutting, and price, that were unrelated to the claimed elements.   Accordingly, Covidien did not show irreparable harm “resulting from the alleged infringement.”

The Life Is Good Company v. MyLocker.com, LLC et al. (17-cv-11911).

The Life Is Good Company sued MyLocker.com, Namecheap, Inc., and RamNode LLC for infringing its LIFE IS GOOD trademark, as well as trademark registrations on the “Jake” and “Jackie” symbols that cover the cartoon male and female figures that appear on Life Is Good clothing and merchandise.

LIG alleges that the defendants provide services to the website www.lifeisgoodshirt.com that utilizes LIG’s trademarks and through which counterfeit LIG merchandise can be purchased.  Specifically, LIG alleges that MyLocker provides the software that allowed the LIFEISGOODSHIRT operator to set up the website, process payments, and fulfill orders; Namecheap provides website/server management services; and RamNode hosts the website. (Notably, LIG is not suing the actual operator of the website/maker of the counterfeit goods, and does not identify such entity in its complaint).  LIG further alleges that the latter two defendants failed to respond to complaints from LIG and thus cannot show that they have complaint procedures that meet the requirements of the Digital Millenium Copyright Act’s “safe harbor” provisions.  LIG also brings counts for unfair competition and passing off, contributory trademark infringement, and counterfeiting, the last of which provides for statutory damages.  In addition to the complaint, LIG moved for a preliminary injunction.  Note – as of this morning, the LIFEISGOODSHIRT website appears to have been taken down.