Monsarrat v. Zaiger (17-cv-10356).

Jonathan Monsarrat filed suit in March 2017, alleging copyright infringement through Zaiger’s use of a photograph of Monsarrat that had been altered to suggest Monsarrat was a pedophile. The original claim was dismissed (twice)as time barred, as the complaint made clear that Monsarrat knew about the posting of the photograph as early as 2012. The proposed amended complaint sought to add defamation claims resulting from a republishing of the photograph along with a report that Monsarrat had been arrested for serving underage teens alcohol during a party at his apartment. Monsarrat alleged that this posting caused a potential investor in his video game company to withdraw. Unfortunately for Monsarrat, while no charges were ultimately filed, he actually had been arrested for serving alcohol minors, meaning that the statement was true. While a true statement can serve as the basis for a defamation claim if actual malice can be proven, if the maker of the statement subjectively believed the statement to be true, no claim can be had. Here, the story of Monsarrat’s arrest was published in the Boston Globe, providing reason for Zaiger to believe the story (which, of course, was technically true). Because of this, and because the proposed amended pleading did not resolve the statute of limitations issue, Magistrate Judge Bowler recommended that Monsarrat’s motion to amend his pleading be denied as futile. Judge Bowler granted Monsarrat’s motion for judgment on the pleadings and dismissed Zaiger’s counterclaim for misrepresentation of a copyright claim under 17 U.S.C. § 512(f). Zaiger’s counsel had previously withdrawn in light of Zaiger’s non-responsiveness to communications; Zaiger had since failed to show for a hearing or respond to an order to show cause why judgment on the pleadings should not be granted, which demonstrated a disregard of the court and the litigation.

Hillside Plastics, Inc. v. Dominion & Grimm USA, Inc. et al. (17-cv-30037).

Hillside owns a trademark registration for the design of its “Sugarhill Jug” plastic maple syrup jugs, and accuses Dominion of violating that trade dress. Dominion moved for judgment on the pleadings, on the grounds that the trade dress was invalid as functional.

Sugarhill Jug

The trademark application had, in fact, initially been refused because of functionality concerns, but Hillside was able to overcome the refusal with evidence of the many alternative designs for syrup jugs. Dominion, once a Hillside distributor, began offering the accused jugs in 2016. Magistrate Judge Robertson recommended denial of Dominion’s motion. She noted that, as the trade dress is registered and incontestable, Dominion bears the burden of demonstrating functionality. Further, functionality is a question of fact, and Dominion was unable to demonstrate through the pleadings that the designs were factually functional. Judge Robertson did grant Dominion’s motion to stay discovery pending appeal of her recommendation to the District Court judge.

Trust Safe Pay, LLC v. Dynamic Diet, LLC et al. (17-cv-10166).

Trust Safe alleges that the defendants misappropriated proprietary information relating to its diet product business and opened a competing company, Dynamic Diet, and that they copied portions of Trust Safe’s website without authorization. Trust Safe’s original complaint was dismissed without prejudice after Magistrate Judge Kelley determined that it failed to meet the Twombly pleading standards, laying out specific deficiencies in the pleadings and allowing Trust Safe the opportunity to amend its complaint. The new complaint again failed to properly plead ownership and pre-registration of a copyright registration as required by Federal copyright law. Instead, Trust Safe again failed to plead that it had submitted a complete application, along with the fees and deposit copy, to the Copyright Office, and failed to plead that it took any action prior to the filing of the lawsuit. While under First Circuit law an application is deemed to meet the preregistration requirement when it is received by the Copyright Office, an incomplete application cannot satisfy the preregistration requirement. Here, not only was the completeness of the deposit pled, the documents attached to the complaint suggested that the deposit was not complete as of the filing of the original complaint. I would note without comment that among the documents submitted there was reference to submitting the copyright applications via Legal Zoom, a dubious proposition where litigation is anticipated. Judge Kelley also found that the complaint failed to allege which elements of the website were actually subject to copyright protection, making it impossible to analyze whether the defendants copied protected material. Given that this was the second failed attempt to properly plead infringement, Judge Kelley dismissed the copyright claim with prejudice. She further dismissed the claims for trade secret misappropriation, fraud, and unfair and deceptive business practices without prejudice, declining to exercise supplemental jurisdiction over the state law claims with the sole federal claim having been dismissed.

Stross v. IvyMedia Corporation et al. (18-cv-10240).

Judge Sorokin denied IvyMedia’s motion to dismiss the amended complaint, asserting that it is not responsible for the conduct alleged in the complaint. At the pleadings stage, where all factual allegations must be accepted as true, the Court cannot make the determination that IvyMedia is the improper party. He also denied both defendants’ motions to dismiss for failure to state a claim, finding the arguments to be factual in nature rather than a legal assertion that the alleged conduct fails to violate any of the cited copyright statutes.

Monsarrat v. Zaiger (17-10356).

Judge Saris denied Jonathan Monsarrat’s motion for reconsideration of her grant of Zaiger’s motion to dismiss.  Monsarrat became aware of Zaiger’s publication of an alteration of a copyrighted photograph of Monsarrat, dressed in an MIT mascot costume, at least as early as 2013, yet did not file suit until 2017, beyond the three-year statute of limitaitons.  Monsarrat argued that the “discovery rule,” whereby the statute of limitations does not begin to run until the plaintiff knows or should reasonably know of the claim, keeps the statute of limitations from starting until after the identity of the infringer is known.  Judge Saris rejected this proposition, noting that First Circuit law clearly states that a copyright claim accrues when the plaintiff knows or should reasonably know about the conduct on which the claim is based.  She also noted that complaints are often filed against unknown defendants.  In a separate ruling, Judge Saris rejected Zaiger’s motion for attorney’s fees, finding that Monsarrat had objectively reasonable infringement and timeliness arguments and that Zaiger’s motion was untimely, coming beyond the two-week period of time laid out in FRCP 54.  Finally, Judge Saris noted that Zaiger’s conduct had been “unduly nasty.”  Zaiger, who was accused of altering the photograph to associate Monsarrat with pedophilia, indicated his intention to repost the offensive photograph, and had filed the photograph to the public record before the Court could rule on Monsarrat’s known objections.

Fischer v. Stiglitz et al. (16-cv-40076).

Judge Hillman dismissed all counts of James Fischer’s amended complaint with prejudice for failure to state a claim.  Fischer, acting pro se, brought claims of false association, false advertising, violation of rights of publicity, unfair competition, and tortious interference with prospective economic advantage in connection with online communications criticizing his theories relating to beekeeping made between the defendants and the Organic Beekeepers Discussion Group and BeeSource Forum.  The gist of the complaint is that defendants Dean Stiglitz and Laurie Anne Herboldsheimer fabricated and published negative reviews, which they attributed to Fischer, of their book “The Complete Idiots Guide to Beekeeping” in an attempt to gain attention and notoriety within the beekeeping community for the book – Fischer himself being an oft-published beekeeper.  Fischer had previously been allowed to amend his complaint to add additional factual pleadings relating to damages and supporting the elements of his claims, but Judge Hillman found (in fairly summary fashion) that the amended complaint failed to factually assert all of the elements of any of the asserted claims; there was no likelihood that the public would perceive Fischer as sponsoring or endorsing the book, no discussion of Fischer’s commercial activity in anything other than a satirical way, no allegations that the defendants sought to exploit Fischer’s name to exploit its value for advertising or trade purposes, no indication of any actual or prospective actual customer that was lost by Fischer, and with respect to the unfair competition claim, no allegation that Fischer is located in Massachusetts or claims an injury occurring in Massachusetts.

LovePop, Inc. v. PaperPopCards Inc. (17-cv-11017).

Judge Saris denied in part and granted in part PaperPop’s motion to dismiss copyright claims relating to three-dimensional pop-up cards. PaperPop contended that the card designs consisted largely of unprotectable elements under the merger and/or scènes à faire doctrines.  Judge Saris had previously denied the motion with respect to three card designs; she here rejected these arguments with respect to cards depicting a French flower cart and a bouquet of balloons extending from a decorative box to have ample room for interpretation, and that the accused designs were similar enough to merit trial.  She determined that a nativity design was a closer question, as such a design is virtually certain to contain elements such as a manger, a Baby Jesus, Mary, Joseph, the three Wise Men, and livestock in a barn; however, there are many different ways to present these elements, and enough similarities existed in the presentations to survive a 12(b)(6) challenge.  Judge Saris granted the motion with respect to a Menorah design, finding all of the similar elements to be substantially dictated by the indispensable elements of a menorah and the remaining elements so dissimilar as to preclude a finding of copying of protectable elements.  With respect to several cards depicting willow trees or the like, Judge Saris noted that reproduction of natural phenomena such as a tree can enjoy copyright protection, but that proof of copying is difficult, as the alleged copier may well have drawn inspiration from the natural phenomenon itself rather than the copyrighted work.  She determined that these cards presented a close call better resolved by the trier of fact, and denied the motion to dismiss as to these designs.  Finally, LovePop challenged six promotional videos depicting PaperPop cards being slowly opened to reveal the pop-up design.  PaperPop asserted that the cards being opened were its own, and that the videos differed in lighting, camera angle, etc., so as not to be copies of LovePop’s videos.  At oral argument, LovePop shifted its argument to derivation, arguing that the similarity of the cards depicted rendered the PaperPop videos unauthorized derivative works.  Judge Saris found that this reframing raised issues not adequately briefed, and denied the motion to dismiss without prejudice.