District of Massachusetts IP Blog

Jurisdiction Lacking In Music Case

A copyright case with a curious factual background was dismissed for lack of jurisdiction following Judge Ponsor’s approval of Magistrate Judge Neiman’s report and recommendations.  The case stemmed from a group of musicians who alleged that defendant producers purloined subject works and failed to pay promised royalties.  Because much of the action happened in Puerto Rico, and there were limited contacts to Mass., the case was dismissed. 

Alicea, et al. v. LT’s Benjamin Records, et al., 11-30002-MAP (D. Mass. Oct. 6, 2011)

Smith & Wesson Fires At Competitors

Thompson / Center Arms Company, Inc. and Smith & Wesson, Corp. (Springfield, MA) have sued a number of defendants for 93A violations and for infringement of Patent Nos. 7,908,781; 7,814,694; 7,140,138; 6,604,311; 5,782,030; and 5,639,981 related to firearms and firearm components. 

Thompson / Center Arms Company, Inc. v. Dikar Sociedad Cooperativa Limitada, 11-30131-KPN (D. Mass. May 11, 2011)

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:

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)

Neighborhood Talent Nastiness

In a case with a factual background worthy of a feature film, a group of musicians sued a group of music producers and companies for copyright infringement, breach of contract and intentional and negligent infliction of emotional distress.  The musicians allege that for seven to twelve months one of the defendants required them to live in one room of his house in Puerto Rico, without furniture, and sleep on a floor.  The claim for infliction of emotion distress was dismissed for all the other defendants. 

Claims for vicarious copyright infringement and breach of contract were allowed to stand for now, as the complaint included sufficient facts for the court to decline to dismiss at this time.  One of the defendants was allowed out of the case entirely for lack of personal jurisdiction.  

Alicea, et al. v. LT’s Benjamin Records, et al., 11-30002-MAP (D. Mass. Jan. 11, 2011)

Exhausted Tool Company DJs Aggressive Inventor

Irwin Industrial Tool Co. d/b/a Lenox (NC, but with operations in East Longmeadow, MA) has sued Bibow Indus., Inc. (NY) and its owner for declaratory judgment of validity of three Lenox patents (7,373,947; 7,415,988; and 7,195,031) directed to storage systems / protective devices for air acetylene gas tanks and declaratory judgment of non-infringement of two Bibow patents (6,976,502 and 7,588,276). 

The complaint arises from what it complains are Bibow’s attempts to “extract money from Lenox for years.”  A previous suit between the two companies, originally filed by Bibow in Florida but transferred to Mass. was resolved in Lenox’s favor on summary judgment when the court ruled that Lenox did not infringe Bibow’s patents.  (D. Mass. 06-30136-MAP.)  Since that case, Lenox alleges that Bibow refuses to leave Lenox alone and has repeatedly pestered Lenox and its parent company, asserting that Lenox’s patents are based on his work (making him an owner of their patents), and even applying to work at Lenox(!). 

Lenox seeks a declaration that Bibow is not an inventor of their patents as well as a declaration that Lenox does not infringe Bibow’s patents.

One side thought. 

Designer Alleges Infringement of Linen Designs

Pine Cone Hill, Inc. (Pittsfield, MA) has sued Indigo Home, Inc. (New York, NY) and TJX Companies, Inc. (Framingham, MA) for copyright infringement, misappropriation and other claims related to design elements from a linen collection.  PCH alleges that Indigo Home’s “Serendipity” line of linens, sold at TJX’s stores, “contains substantial similarities” to PCH’s “Monique, Genevieve and Ruched” line of linens.

Unless I missed something, this case appears to be entirely about copyrights.  In my view the other claims should all be dismissed as preempted or adding nothing beyond the copyright claim.

Pine Cone Hill, Inc. v. Indigo Home, Inc., 10-30226-KPN (D. Mass. Dec. 1, 2010)

Blast Email Leads to Trademark and Breach of Contract Suit

Hyman Enterprises, LLC (Lenox, MA) and its founder have sued Natural Sherpa LLC (Wilmington, NC) and its owners for trademark infringement, publicity rights violations, and breach of contract stemming from an apparent separation agreement between Hyman and its UltraWellness companies and the founders of Natural Sherpa.

The complaint is vague on details since it calls the terms of the agreement confidential, but it does allege, pursuant to an agreement signed in June 2010, that the founders of Natural Sherpa agreed to various non-compete terms as well as to a confidentiality clause.

The complaint alleges that Natural Sherpa then emailed close to 300,000 people with a subject line of “A Special Note to UltraWellness Customers.” The complaint alleges that the email improperly referred to trademarks, services, and products of the plaintiff as well as disclosed purportedly confidential terms of the June 2010 agreement. The complaint does not mention specifically what else the email said, nor does it allege any further use of plaintiff’s marks by the defendants.

Perhaps by contacting plaintiff’s customers the defendants breached their non-compete obligations, but on its face the complaint doesn’t make much of a case for trademark infringement.

Hyman Enterprises, LLC v. Natural Sherpa LLC, 10-30210-KPN (D. Mass. Nov. 4, 2010)

Hand Dryers Blown Into Court. Again.

Excel Dryer, Inc. (Longmeadow, MA) has sued AAA Kitchen & Bath Distributor, Inc. (Philadelphia, PA) for infringement of Patent No. 7,039,301 directed to a method and apparatus for hand drying.

 

This same case was filed on December 7, 2009.  See here.  I wonder what happened with the last round.  Perhaps it never was served and the complaint expired.  Maybe we’ll see another complaint this December.

 

Excel Dryer, Inc. v. AAA Kitchen & Bath Distributor, Inc., 10-30159-KPN (D. Mass. July 27, 2010)

Bob Marley Estate and Artist Stir It Up

In this copyright dispute involving ownership of images of Bob Marley, Bob Marley’s estate and the artist filed cross-motions for summary judgment on various claims and counterclaims.  Judge Neiman’s order disposing of the motions can be found here.

 

The Estate’s Motions

 

The court dismissed the artist’s claims for copyright infringement as time-barred since the artist waited more than three years from when he knew of the dispute before bringing claims against the estate.  The court also dismissed the artist’s unjust enrichment claim as preempted by the Copyright Act.  Judge Neiman refused to grant summary judgment for the estate on the declaration of copyright ownership since there are material facts in dispute with regard to ownership of the images.

 

The Artist’s Motions

 

Plaintiff’s summary judgment motions for breach of contract, unfair competition, and a declaration of copyright ownership were also denied due to disputes of material fact.

 

Plaintiff’s motion to dismiss the counterclaim asserting that the artist brought a frivolous claim was granted.

 

Zamoyski v. Fifty-Six Hope Road Music Ltd., 08-30125-KPN (D. Mass. June 2, 2010)