District of Massachusetts IP Blog

EFF Serves Rule 11 Motion In Borderline Copyright Case

In late September Astrolabe sued two researchers claiming that their use of time zone data infringed Astrolabe’s copyright in its atlas software.  This blog pondered whether such a use was really infringing.  It appears the folks at the EFF have pondered the same thing and have teamed up with Fish & Richardson to serve a potential Rule 11 motion against Astrolabe.  The suit apparently scared one of the rearchers into disabling his database (it has since been restored by ICANN).  As of the date of the Rule 11 letter the complaint had not yet been served, but the gauntlet has certainly been thrown. 

Astrolabe, Inc. v. Olson, 11-11725-GAO (D. Mass.), letter served on Jan. 12, 2012 

Latest Steele Case Dismissed, Severe Sanctions Warned

In an ongoing copyright dispute between Bart Steele and seemingly everyone involved with Major League Baseball and Red Sox marketing (including Bon Jovi), Steele has filed four cases (three of them in federal court) alleging that the defendants infringed his rights to a song he wrote about the Red Sox and used it in a promo aired on TBS. 

The Court held that this most recent case was barred by res judicata as duplicative of the first case, which Judge Gorton disposed of on summary judgment (a ruling on appeal to the First Circuit).  Accordingly, all claims in this case were dismissed.  A motion for sanctions was granted to deter Steele’s repeated filings, but the sanction was limited to an admonition to Steele that any future frivolous or vexatious cases will result in future sanctions including an order enjoining future filings as well as an award of costs and fees. 

Steele v. Ricigliano, 10-11458-NMG (D. Mass. May 18, 2011)

Contempt Appeal Dismissed As Premature

Following a judgment of patent infringement before Judge Young in 2007, patentee Proveris returned to District Court in 2010 with a motion for contempt arguing that infringer Innovasystems had violated the injunction.  Judge Young found Innovasystems to be in contempt and was considering sanctions.  Prior to a ruling on sanctions, Innovasystems appealed the contempt decision to the Federal Circuit.  The Federal Circuit dismissed the appeal as premature because no “final decision” had entered due to the District Court’s ongoing consideration of sanctions.

Judge Stearns Does Not Like Motions for Sanctions

Although not specifically IP related, I felt this short decision by Judge Stearns was worth posting.  Practitioners have to know that motions for sanctions really irritate judges, but for some reason these motions keep getting filed.  I know dealing with obstreperous counsel can be frustrating, but when you file a motion for sanctions because the other side is being annoying, you become the annoying one to the judge. 

Some attorneys file motions for sanctions as a matter of course to get a judge to pay attention to the behavior of the other side.  If this is typically in your practice, I’d read the attached decision before doing so in Judge Stearns’ court.  If the complained of behavior doesn’t involve “witness intimidation, deliberate spoilation of evidence, the filing of perjurious pleadings, [or] instances of abusive and churlish behavior,” don’t bother. 

Download Stearns sanctions

Orbusneich Medical Co. v. Boston Scientific Corp., 09-10962-RGS (D. Mass. Mar. 7, 2011)

Motion for Default 18 Months Later Denied

As noted in previous entries in this blog, Bart Steele has waged an ongoing campaign against Bon Jovi, the Red Sox, and others regarding purported copyright infringement of Steele’s song “Man I Really Love This Team.”  Judge Gorton’s 2009 entry of summary judgment of no substantial similarity between the songs is pending an appeal to the First Circuit.  

At the outset of the cases Steele was acting pro se, and thus was given some latitude by the court with regard to early pleadings, particularly relating to his Complaint and Amended Complaint, which the court ruled were to be taken together as one pleading.  When Steele finally found a lawyer, the lawyer noticed that two defendants named in the original complaint had never filed answers.  The lawyer then moved for entry of default judgment against them.  

In this latest decision, Judge Gorton declines to enter default judgment against them (18 months after filing of the amended complaint) for various reasons including the complicated procedural history, the good faith of the defendants, the futility of any default entry, and the court’s existing ruling on the merits of the case.  Judge Gorton also declined to order sanctions against Steele and his attorney noting that while Steele’s motion may have been “ill-advised and perhaps unnecessary,” they were not frivolous. 

Steele v. Bongiovi, 08-11727-NMG (D. Mass. Sep. 27, 2010)

Counterclaims Dismissed and Sanctions Granted in Counterfeit Suit

Judge O’Toole entered separate orders against a defendant in a counterfeit goods case.  In the first order Judge O’Toole dismisses three counterclaims.  The first counterclaim, for tortious interference based on improper filing of the lawsuit, was dismissed because the defendant admits in the answer facts sufficient to support the initial claim.  The second counterclaim, for conversion, was dismissed because of insufficient pleading and because plaintiff did not take any action to possess the goods in question, save for seeking an impoundment order from the court, which was granted.  The third counterclaim, for unfair competition under M.G.L. ch. 93A for improper filing of the suit, was dismissed on the same grounds as the tortious interfence claim.

 

The court declined to enter Rule 11 sanctions for filing of the counterclaims.  But in the second order the court entered Rule 37 sanctions against the defendant for failure to comply with discovery (following at least four motions to compel) including failure to answer interrogatories, failure to attend a noticed deposition (in Tijuana), and other failures.  The sanctions included an order to produce documents and responses to interrogatories within 14 days, an order that the deposition be held in Boston, and an award of fees and costs of just under $15,000, and a stay of all defendant’s discovery requests until the sanctions were met.

 

Bose BV v. Zavala, 09-11360-GAO (D. Mass. July 8, 2010)