District of Massachusetts IP Blog

Some Costs, No Fees, Awarded to Prevailing Patent Defendant

Following a drawn out patent dispute (the history of which can be found in the decision) Judge Gorton denied a motion of attorneys’ fees to a successful defendant after ruling the case was not exceptional.  Costs were awarded, but many categories of costs were disallowed for various failings.  The ruling is a good review of what you can and can’t recover as costs, and how to properly go about requesting the same. 

Haemonetics Corp. v. Fenwal, Inc., 05-12572-NMG, 09-12107-NMG (D. Mass. May 10, 2012)

Software Copyright Decision Affirmed Without Fees

Following a series of copyright infringement cases regarding software for aircraft companies, the suit of Airframe against L-3 was decided by Judge Young on summary judgment in favor of accused infringer L-3.  The First Circuit affirmed the summary judgment, noting that the single declaration to support infringement compared improper versions of the subject source code.  The First Circuit also affirmed Judge Young’s denial of attorneys fees to L-3. 

Airframe Sys., Inc. v. L-3 Communications Corp. and Raytheon, Co., 10-2001, 11-1169 (1st Cir. Sep. 14, 2011)

Judge Saris and First Circuit Affirm Fee Award

In a case stemming from the District of New Hampshire, the First Circuit affirmed an award of attorneys fees to a prevailing defendant in a copyright case.  The defendant had sought an award of over $200,000 but the district court awarded $35,000.  The First Circuit noted the district court’s broad discretion and affirmed the award despite the district court’s break from the traditional Lodestart method of computing fees.  The panel found the district court’s reasoning in its fifteen page opinion compelling, and affirmed the award.

Judge Saris of D. Mass. sat by designation on the panel.

T-Peg, Inc. v. Vermont Timber Works, Inc., 10-2234 (First Circuit, Feb. 16, 2012)

Cambridge Law Firm Sues Client To Recover Unpaid Fees

Lando & Anastasi, LLP (a Cambridge, MA IP law firm) has sued Innovention Toys, LLC (Covington, LA) for breach of contract and quantum meruit for failing to pay legal fees associated with patent and trademark matters, including litigation against Walmart and Toys “R” Us.  The complaint alleges non-payment of over $500k. 

Lando & Anastasi, LLP v. Innovention Toys, LLC, 11-12103-PBS (D. Mass. Nov. 29, 2011)

Copyright Fee Award 10x Damages Affirmed

In a case originating in D. Maine, an individual songwriter successfully sued a number of defendants for using his song in commercials without his consent.  Against a set of defendants who did not settle, the plaintiff was awarded $10,000 in damages and approximately $100,000 in attorneys fees.  Defendant appealed the fees.  After staying the case to quickly deal with a jurisdictional issue (attorneys fees in copyright cases may be awarded as part of costs, which in turn may cause issues with appellate jurisdiction prior to a final order) the First Circuit upheld the award.  It rejected arguments that the award was unreasonable (citing the lower court’s methodical following of the Lodestar method) and that the fee award was disproportionate from the damages (citing the purpose of the Copyright Act to encourage artistic expression).  It didn’t hurt the plaintiff’s cause that the defendant had engaged in “quixotic” tactics and the case was “the litigation equivalent of hand-to-hand combat.”  For a good read of how overly aggressive litigation tactics can lead to a large fee award in a copyright case, I commend this to your reading. 

Spooner v. Een, Inc., 10-2393 (1st Cir. July 5, 2011)

Fees and Costs Awarded In Long Running Copyright Dispute

The end of the line appears to have been reached in a dispute between a publisher of corporate training materials and a competitor founded by its former employees.  Plaintiff SMS accused original defendant ASP Consulting of infringing SMS’s copyrights in training materials.  In an entertaining 2008 opinion Judge Young originally found the material uncopyrightable (as well as “aggressively vapid”), but that decision was vacated by the First Circuit.  Perhaps due to Judge Young’s reaction to the material, upon remand the case made its way to Judge Stearns and the plaintiff ultimately prevailed. 

Jurisdiction Affidavit Results In $23M Damages Award

In an unsuccessful bid to get a trademark case dismissed for lack of personal jurisdiction, a defendant listed its total sales as just over $23M.  That motion was denied.  Later the defendant’s counsel withdrew, follow by a default judgment against the defendant.  A damages proceeding was held with no appearance by said defendant.  During this proceeding, the sales number was used by the plaintiff, who, absent evidence of defendant’s costs, could rely on the sales figures as evidence of profits.  Magistrate Judge Neiman agreed and recommended an award of $23 million in damages along with $24,000 in attorneys fees.  Judge Ponsor adopted that recommendation without objection from the defendant (who, as Judge Ponsor noted, “lacks either the means or inclination to participate in this litigation, or both.”). 

Two takeaways:

Small Bar Hit With Damages And Fees In ASCAP Dispute

As is its way, ASCAP (along with several copyright owning entities) brought suit against the owner of a bar in Agawam, Mass. for copyright infringement.  The bar in question operated a jukebox on premises but didn’t pay the appropriate tithe license fee to ASCAP for rights to its catalog.  ASCAP had apparently contacted the defendant more than forty times since 2002 (!) to no avail.  Eventually in 2008 ASCAP sent an investigator who remained for four hours during which forty-nine songs were played, four of which were subject to copyright protection by ASCAP. 

Artist Ordered to Pay Attorneys Fees in Marley Image Suit

In 2008 an artist filed suit against Bob Marley’s estate alleging ownership of certain images of Marley and copyright infringement in those images.  Back in June Magistrate Judge Neiman dismissed the infringement claims as time-barred.  A jury in a November trial determined that the Marley estate was the proper owner of the disputed images. 

In this most recent order, Judge Neiman awards the Marley defendants attorneys fees as the prevailing party in the copyright action.  The plaintiff argued that fees should not have been awarded as the works were not registered by the defendants.  That argument failed.  The plaintiff also argued that fees shouldn’t be awarded against an individual that might not be able to afford them.  That argument also failed as the judge effectively said the artist should have thought of that before bringing such a weak case. 

The plaintiff also argued that because the defendants did not prevail on all claims, and because multiple non-copyright claims were included in the case, the defendants shouldn’t receive all their requested fees.  This argument fared better, and the court ultimately reduced the requested fee award by over 50% to compensate.  

Still, the artist was ordered to pay over $90k in fees and costs. 

Zamoyski v. Fifty-Six Hope Road Music Ltd., 08-30125-KPN (D. Mass. Feb. 4, 2011)

Church Copyright Case Laid to Rest

Following two separate summary judgment rulings on the merits of a copyright dispute between two churches, Judge Stearns has now concluded the case with this order on attorneys' fees and a permanent injunction. 

In the 70s / 80s the plaintiff monastery translated a number of Eastern Orthodox texts from the original Greek into English.  The defendant, formerly with the monastery, took copies of the translations with him when he left and put excerpts on his website without permission.  Summary judgment entered for the plaintiff, though with little actual damages Judge Stearns offered a choice between the minimum award of statutory damages or a damages trial.  The plaintiff chose the minimum award but also moved for attorneys' fees and costs. 

Fees and costs were awarded, in an amount nearing $60,000 to go with the statutory damages award of $5,250.  The award covers fees of counsel through the first six months, after which the case was pro bono.  A permanent injunction was also entered prohibiting the defendant from copying or displaying on a website the works in question. 

Society of the Holy Transfiguration Monastery, Inc. v. Archbishop Gregory of Denver, Colorado, 07-12387-RGS (D. Mass. Feb. 8, 2011)