District of Massachusetts IP Blog

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)

Steele Strikes Out

In four summary opinions, the First Circuit brought an end to a long standing dispute and ruled against an author who had sued John Bon Jovi, MLB, TBS, and eventually their attorneys, for copyright infringement and various other bad acts.  The First Circuit found that sufficient evidence supported all the lower court decisions ruling against Steele. 

Steele v. Turner Broadcasting System, Inc., 09-2571 (First Circuit, Feb. 10, 2012) (appended below)

Steele v. Vector Management, 10-2173 (First Circuit, Feb. 10, 2012)

Steele v. Bongiovi, 11-1674 (First Circuit, Feb. 10, 2012)

Steele v. Ricigliano, 11-1675 (First Circuit, Feb. 10, 2012)

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)

Celiac Disease Book Decision Affirmed

In 2009 pro se plaintiff Susan Hassett sued Elisabeth Hasselbeck, her publisher, and a John Doe ghostwriter, for copyright infringement stemming from Hassett’s book, Living with Celiac Disease, which she alleged she sent to Hasselbeck and was copied by Hasselbeck and the ghost writer when they wrote The G Free Diet.  In December 2010 Chief Judge Wolf granted summary judgment to the defendants noting that ny similarities between the books are those of ideas, facts, and other unprotectable elements.  

The First Circuit has affirmed that decision.  The First Circuit also dismissed two other claims on appeal, one that she was denied a full opportunity to present her case at summary judgment, the other that the court erred when it failed to appoint her counsel.  The latter was denied because she failed to show indigency or other exceptional circumstances. 

Hassett v. Hasselbeck, 11-1111 (First Circuit Nov. 7, 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)

Trademark Injunction Overturned Due To Delay

The First Circuit reversed a preliminary injunction granted by Judge O’Toole last February ordering Voice of the Arab World to cease using the mark MDTV in connection with medical related internet programming or services.  Reversal was ordered based on excessive delays, and the fact that VOAW’s use of the mark was known for 10 years prior to bringing suit. 

The injunction was originally based on use by VOAW that began in 2009 when the wording on its website changed.  The 1st Circuit held, however, that the course of dealings between the parties during the previous years (over several years they had tried to come to a resolution regarding VOAW’s use of the mark to no avail) outweighed the “minimal likelihood of qualitatively new harm arising from those revisions.”      

No Settlement In Class of 3000 Case

Following a remand from the First Circuit, a case between an artist and the Cartoon Network over the animated series “Class of 3000” was reassigned to Judge Saris.  Judge Harrington had originally granted a motion by the Cartoon Network to enforce a settlement agreement but the First Circuit reversed and sent it back for factual determinations regarding whether the plaintiff could be bound by the actions of his attorney during negotiations.

Judge Saris ruled no, and declined to order enforcement of the settlement.  In particular, Judge Saris found that a voicemail and emails between the artist and his lawyer were sufficiently ambiguous as to whether the artist intended to give the Cartoon Network a general release as part of the settlement.  The ambiguous written communications combined with the artist’s “emotional testimony” convinced the court that there was insufficient evidence evincing an intent to settle. 

So the beat goes on. 

McGee v. Cartoon Network, Inc., 08-11818-PBS (D. Mass. Feb. 22, 2011)

Order Enforcing Settlement Terms Reversed

The First Circuit reversed Senior Judge Harrington’s decision to enforce an agreement settling a copyright dispute over material in the animated television series “Class of 3000.” 

 

At a hearing Judge Harrington had determined that settlement had been reached, relying on an email sent from plaintiff’s counsel to defendant’s counsel agreeing on three main terms.  (Interestingly, neither plaintiff nor plaintiff’s counsel, who had withdrawn several weeks earlier, was at this hearing.)  The plaintiff, appearing pro se before the First Circuit, disputed that a settlement was reached and highlighted a number of terms (such as continuing rights) that were not resolved.

 

The First Circuit held that because there were disputed questions of fact, the District Court erred in not holding an evidentiary hearing regarding the plaintiff attorney’s authority to bind the client to the settlement.

 

Case remanded.

 

McGee v. Cartoon Network, Inc., 10-1070 (1st Cir. July 8, 2010)

Decedent’s Business Partner Held to Have Implied License to Copyrighted Designs

When Roberto Hevia-Acosta (RHA) passed away his estate and his long-time business partner engaged in a legal dispute regarding the copyrights in his architectural designs.  RHA and his partner had worked together to design and develop various real estate ventures including one which RHA had designed two years before his death.  The subject designs were created for the specific purpose of the project in question even though full rights to them had not been expressly conveyed to the business partner or subject project.  Given the detailed facts supporting RHA’s intent to convey a license in his works, the District Court in Puerto Rico found the existence of an unrevoked implied license and the First Circuit affirmed.

 

Strangely, the prevailing defendant sought attorneys fees under the District Court’s inherent power but not under the Copyright Act, which is much more favorable.  The District Court declined to award fees, which the First Circuit also affirmed.

 

http://www.ca1.uscourts.gov/cgi-bin/getopn.pl?OPINION=09-1096P.01A

 

Estate of Roberto Hevia, et. al. v. Portrio Corp., et. al., 09-1096, 09-1097 (1st Cir. Apr. 20, 2010)

Judge Young Dismissal of Copyright Claim Affirmed

The First Circuit affirmed Judge Young’s dismissal of a copyright action for claim preclusion resulting from a similar New York lawsuit.

 

Plaintiff Airframe Systems, Inc. was a software vendor who had provided software to Aircraft Integration Systems (AIS).  From 1995-2002 AIS was owned by Raytheon.  In 2002, L-3 purchased AIS.  In 2003 Airframe discovered that unauthorized versions of its source code were on AIS computers.  It further confirmed this in 2003 by using a subpoena in an unrelated case between Airframe and a former AIS employee to obtain documents from L-3.  Apparently some time in 1997-1998 this former AIS employee made unauthorized copies of the source code during a visit to Airframe and brought them back to AIS.

 

In 2005 Airframe sued AIS and L-3 in the S.D.N.Y. saying that the unauthorized copies constituted copyright infringement and that L-3 “could have” used the source code wrongfully.  In 2006 statements were made during a motion session that Airframe claimed to be an admission of use.  Airframe wrote a letter to the court asking to amend its complaint, but didn’t file a motion.  The court ultimately dismissed the complaint for failing to state a claim.  Airframe did not appeal. 

 

Instead, Airframe filed suit in D. Mass., this time adding Raytheon as a defendant since Raytheon owned AIS when the source code was taken.  Judge Young dismissed the case under claim preclusion. The First Circuit affirmed holding that (1) Airframe knew sufficient relevant facts when it brought the S.D.N.Y. action to have included the claim then, (2) the new D. Mass. action involves the same nucleus of facts as the S.D.N.Y. action, and (3) Raytheon is sufficiently related to L-3 in this context as one-time owners of the same division.

 

Retired Justice David Souter, sitting by designation, was part of the First Circuit panel.

 

http://www.ca1.uscourts.gov/cgi-bin/getopn.pl?OPINION=09-1624P.01A

 

Airframe Sys., Inc. v. Raytheon, Co., 09-1624 (1st Cir. Mar. 31, 2010)