God’s Era v. New Era Cap Company, Inc. (18-cv-11065).

God’s Era brought claims of false designation of origin and unfair competition under the Lanham Act as well as common law trademark infringement and unfair competition in connection with New Era’s 2016 collaboration with Jerry Lorenzo, owner of fashion brand Fear of God that resulted in a hat with a New Era design directly above the FEAR OF GOD mark. God’s Era, which formed in 2015, sought in October 2016 to register GOD’S ERA as a trademark, which New Era opposed. New Era first used the combined mark in commerce at the Major League Baseball All-Star Game in July 2017. God’s Era was only able to produce receipts totaling $235 in sales of t-shirts, hoodies and sweatshirts prior to that time, and none in interstate commerce. Judge Talwani granted New Era’s motion for summary judgment on the trademark claims, finding that the God’s Era mark was not entitled to common law trademark protection outside of the Boston area as of mid-2017. All of God’s Era’s sales prior to then had been made in person by God’s Era’s founder and sole employee to people in the greater Boston area. Any common law rights that had arisen as a result of these sales would not extend to Miami, the site of the All-Star Game and the sales of New Era’s products. Judge Talwani specifically noted that the website that God’s Era ran did not establish trademark rights because as of mid-2017 no actual sales had been made through the website. As no common law trademark rights were established, the false designation of origin and unfair competition claims likewise failed.

Intellectual Ventures I, LLC et al. v. Netapp, Inc. (16-cv-10860/10868).

Intellectual Ventures accused NettApp’s MetroCluster Fabric Attached systems of infringing U.S. Patent No. 6,516,442, which covers aspects of symmetric multi-processor types of computer architecture by which multiple processors share a common operating system and memory. Each asserted claim required certain components of the system to “perform error correction of the data in the packets exchanged over the channels.” NettApp asserted that the MetroCluster products, which allow for continuous back-up of data to separate locations, do not satisfy this “error correction” limitation, as the term had been construed. Judge Saris granted NettApp’s motion for summary judgment of non-infringement. She had construed the term to mean “correcting errors in data by at least reconstructing erroneous data,” rejecting Intellectual Ventures proposal that the term be construed broadly enough to encompass the correction of errors using a retry request. The MetroCluster systems break down data packets into sub-packets, to which an error detection code is appended. The system discards data in which an error is detected and then retransmits the data. Once the correct data has been received, the system puts the sub-packets back together into a complete packet. Intellectual Ventures asserts that this re-assembly of the sub-packets into full packets satisfies the “reconstruction” aspect of the limitation; Judge Saris disagreed, however, finding that her construction of the “error correction” limitation unambiguously excluded a system that exclusively addressed errors through a retry procedure. She also noted that the reassembly process utilized by the MetroCluster systems was not a part of handling errors, as such reassembly occurs whether an error is detected or not.

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.

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.

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!

MedIdea, LLC v. DePuy Orthopaedics, Inc. (17-cv-11172).

MedIdea accused DePuy of infringing four patents related to knee replacements in Illinois, with the case transferred to Massachusetts in light of the TC Heartland decision. MedIdea conceded non-infringement on all but one claim following claim construction. In November, Judge Sorokin granted DePuy summary judgment of non-infringement on the sole remaining claim, finding that the claims as construed required multiple cam surfaces that were absent in the accused knee prosthetics. Judge Sorokin further construed the claim over MedIdea’s objection, finding that MedIdea’s post-construction amended contentions created issues that required further construction of the claim, and that in any event if the infringement issue related to a claim construction issue that the court had not yet resolved, the court was duty-bound to construe the term. He then determined that, while the claim itself did not so require, the intrinsic evidence taken as a whole required the claimed “points of cam action” to mean “convex surfaces,” in part because every embodiment of the specification showed convex cam surfaces. He acknowledged that this, standing alone, is not sufficient to so limit the claims, but found this fact to still have a bearing on the construction of the term, and that, combined with statements made by MedIdea in both the prosecution of the patents and in their initial complaint and contentions filed in the litigation (and since abandoned for MedIdea’s current theory of infringement), the claims should be so construed. In particular, in an IPR proceeding on the patents-in-suit. MedIdea characterized the “disclosed and claimed invention” as having points of cam action with convex surfaces – the use of “disclosed and claimed invention” estopped any argument that MedIdea was discussing only non-limiting examples. Notably, Judge Sorokin did not place any estoppel on DePuy based on their statements made in the IPR, because as the non-patentee, their statements did not become a part of the prosecution history of the patents and because their positions were not adopted by the Board and thus did not create a judicial estoppel situation.

MedIdea conceded that, under this claim construction, the accused prosthesis lacks multiple convex cam surfaces and thus does not infringe, resulting in summary judgment in favor of DePuy. Judge Sorokin subsequently entered final judgment of non-infringement and dismissed DePuy’s counterclaims without prejudice.

Getty Images (US), Inc. v. Her Campus Media, LLC (19-cv-11084).

Judge Sorokin denied Her Campus Media’s motion to dismiss for failure to state a claim or, in the alternative, for summary judgment. Getty asserts that Her Campus Media has republished without authorization hundreds of Getty-owned photographs, and continued to do so after Getty notified Her Campus Media of their infringements. Her Campus Media asserted that it was entitled to the safe harbor provision of the Digital Millennium Copyright Act, and that its use of Getty-owned photographs constituted fair use under the copyright laws. Judge Sorokin denied dismissal because Getty, in its complaint, did not admit to all of the components of the safe harbor defense that would permit dismissal on the pleadings, and because the facts as alleged in the complaint were insufficient to analyze the fair use issue. Her Campus Media submitted affidavits in support of summary judgment, but failed to include a statement of material facts as required by Local Rule 56.1, which alone is sufficient to deny the motion. Judge Sorokin further noted, however, that much of the information necessary to evaluate the affirmative defenses on which the motion was based (for example, the relationship between Her Campus Media and its student contributors) was entirely within the control of Her Campus Media but were either absent from the record or disputed by the parties and would require. He therefore denied summary judgment as premature.

Chatham v. Canterbury Ventures, LLC (17-cv-11473).

Ex-Patriot Matt Chatham and his wife sued their former builder Daniel Lewis and his company, Canterbury Ventures in 2017, accusing Lewis of seeking to sell a house built using Chatham’s copyrighted custom architectural plans to a third party after failing to complete construction for the Chathams and then unilaterally terminating their agreement. Prior to the close of discovery, the Defendants moved for summary judgment on the copyright, breach of contract, and breach of the implied covenant of good faith and fair dealing claims, and further that specific performance was not available. The motion was argued before Magistrate Judge Cabell, who yesterday recommended denial the Defendants’ motion in its entirety. Defendants had argued that the copyright claim should fail because Chatham never reserved his copyrights when giving the plans to Lewis, and therefore could no longer claim copyright protection. Judge Cabell, noting that copyright vests at the time of creation, found this argument to have no legal consequences, because silence does not affect the validity of an existing copyright. He found that the First Sale Doctrine does not apply, because while the Chathams may have provided a copy of the plans and authorized the use to build the Chatham’s home, they did not sell the copyrighted article. Finally he determined that, while the Chathams’ Purchase and Sale Agreement licensed Canterbury to use the plans to construct the house, there was a factual dispute as to whether the scope of the license permitted construction of the house for sale to anyone other than the Chathams. On the contract issue, Judge Cabell determined that there was a factual dispute as to whether the P&S Agreement terminated as of the last closing date identified in the Agreement or whether there was an oral agreement to extend the Agreement to allow the home to be completed and sold to the Chathams. He noted that correspondence from counsel for the Defendants following the purported termination stating that “Canterbury continues to perform construction on the Property in good faith and in accordance with the P&S” and the fact that Canterbury continued working on the house in consultation with the Chathams following the purported termination date provided “strong if not dispositive evidence” that the parties had agreed to extend. Finally, he denied the motion with respect to the covenant of good faith and fair dealing and specific performance as they were reliant on success in the copyright and contract parts of the motion.

I and others at my firm, along with Paul Mordarski and Jordan Carroll of Morrissey, Hawkins & Lynch, represent the Chathams in this matter, and naturally, we are quite pleased with the result.

Egenera, Inc. v. Cisco Systems, Inc. (16-cv-11613).

Judge Stearns denied Cisco’s motion for attorneys’ fees under § 285. Cisco asserted that the case became exceptional on August 17, 2016, when Egenera, in a parallel IPR proceeding, submitted a declaration from one of its employees stating that he had been erroneously named as an inventor. Egenera removed him as an inventor so that it could rely on an internal document that pre-dated his employment to swear behind a reference. The patent was subsequently invalidated for failure to name all inventors when Judge Stearns construed the claims and determined that the employee had made an inventive contribution. According to Cisco, Egenera at that point had thoroughly reviewed the inventorship issue and should have realized, at least as of the claim construction order, that the employee was improperly removed. While agreeing that Egenera’s investigation was “wanting,” Judge Stearns found that the survival of the inventorship dispute through summary judgment meant that the case did not rise to exceptional.

Cisco’s Bill of Costs was denied in part. He allowed costs related to professionally produced video deposition clips and trial demonstratives, noting that the prevalence of witness credibility issues necessitated their use, but found the requested amount of $60,341 for a three-day trial excessive by half. He further cut summons and subpoena costs to eliminate the excess fees charged for emergency or urgent service.

This is the second case I have seen in recent days in which exceptionality was tied to amenability to summary judgment – Judge Saylor denied a request for fees because the plaintiff had not sought summary judgment. I do not that the grant of summary judgment does not automatically result in a finding of exceptionality, however, and hope that this recent small trend does not become a de facto precedent for the award of attorneys’ fees, as I can envision cases that, while having issues of fact in dispute, still rise to the level of exceptionality, and would hate to see arguments to that effect precluded.

ACQIS, LLC v. EMC Corp. (14-cv-13560).

ACQIS accused EMC of infringing eleven patents relating to consoles containing computer peripherals, such as a keyboard, mouse, display and disk drive, into which a core computer module having the CPU, memory, I/O and hard drive) can be inserted to form a complete PC. EMC filed a number of affirmative defenses, including alleging that the complaint failed to state a claim on which relief could be granted. In July 2018, ACQIS moved for summary judgment on that defense, asserting that failure to state a claim is not a proper affirmative defense under the Federal Rules of Civil Procedure as well as EMC’s purported failure to identify a factual or legal basis for the defense when the parties met and conferred on the issue. Judge Burroughs denied that motion, finding that the viability of pleading failure to state a claim as an affirmative defense was, in the circumstances of the case, “purely academic” and that resolution of the question would not impact the litigation or entitle either party to judgment as a matter of law on any issue.