Intellectual Property Law News - U.S. First Circuit
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Circuits with interesting cities within their jurisdiction always churn out interesting cases -- and with Boston in its purview, the First Circuit is an example of that.

With Boston making the news quite a bit this year, the First Circuit had its fair share of headlines. Not limited to newsy pieces, we also saw some law coming out of the First that is currently under review by the Supreme Court.

As we reflect on 2013, here's a quick rundown of the big issues of the past year, as we move forward into 2014:

Travel-Related Trademarks Extend Beyond Physical Region: 1st Cir.

For trademark attorneys with clients in the travel industry, life is good. Last month, we discussed the First Circuit Court of Appeals' recent ruling in Dorpan, S.L. v. Hotel Melià.

But let's take a look at another major takeaway of the case: That a senior trademark user of a mark related to travel is entitled to trademark protection that goes beyond its immediate geographic region.

The Hotel Meliá ("HMI") has been in business since the 1890s, in the same location in Ponce, Puerto Rico, and hosted the likes of President Theodore Roosevelt. It never registered its mark with the USPTO, or with the Puerto Rico Department of State.

Dorpan, a subsidiary of Sol Meliá, a Spanish company that owns hotels around the world, owns the rights to several marks including the word "Meliá" (referenced together as "Dorpan"). In 2007, Dorpan opened the Gran Meliá, a luxury resort in Coco Beach, Puerto Rico.

HMI sued Dorpan in Puerto Rico Superior Court, Dorpan sued HMI in federal court and removed the state claim to federal court, where both cases were consolidated. The district court granted Dorpan's motion for summary judgment on its declaratory judgment claim that, under the Lanham Act, Dorpan had the right to use the Gran Meliá mark in Puerto Rico, except in Ponce where HMI was located. HMI appealed.

Is it a violation of due process when a jury issues a judgment against you for more than half a million dollars, all for illegally downloading thirty songs?

This is the question Joel Tenenbaum put before the First Circuit, but his hopes were dashed when the Court affirmed that this monetary award was not excessive in light of his conduct in its Sony BMG Music Entertainment v. Tenenbaum decision on Tuesday.

Illegal downloaders beware, the Tenenbaum Court has some scolding words for those who take advantage of the Internet's bevy of pirated music.

In the penultimate episode of Breaking Bad's third season, Mike warns the chemistry teacher turned meth-cooker protagonist, "No more half-measures, Walter." Half-measures leave behind loose ends and can lead to confusion or worse.

Though we're certain that the judges of the First Circuit have very demanding schedules, they ought to take a day off and watch a few episodes. In a per curium decision released last week, they passed when given a chance to clear up confusion regarding the proper test for nominal use of a trademark. While some might laud them for exercising judicial restraint, others will wonder if it would have been more prudent to clarify the law once and for all.

Supreme Court Won't Hear Joel Tenenbaum's Music Downloading Case

The First Circuit Court of Appeals takes a firm stance on illegal downloads.

Or at least it seems that way in light of the Tenenbaum ruling. Now, the Supreme Court has denied certiorari in his case, and it looks like the $675,000 penalty against the former Boston University graduate student will stand.

Play it Again: Court Upholds $675K Judgment Against Joel Tenenbaum

Joel Tenenbaum should resume penny-pinching.

The First Circuit Court of Appeals reinstated a $675,000 judgment against Tenenbaum in an illegal downloading case last week, after District Court Judge Nancy Gertner reduced the sentence to $67,500.

Sony sued Tenenbaum in 2007 for willful infringement of copyright laws after Tenenbaum downloaded and distributed copyrighted music. Sony sought statutory, rather than actual damages. The jury found that Tenenbaum had willfully infringed each of Sony's 30 copyrighted works at issue in the case, and returned a damage award, within the statutory range, of $22,500 per infringement, totaling $675,000.

Work-for-Hire and Copyright Lawsuits: 1st Circuit Sheds Light

The First Circuit Court of Appeals issued a case earlier this week involving a copyright lawsuit between two Puerto-Rican television producers. The case is a typical "he-said/he-said" case centered around two very similar television shows about the antics and adventures of characters living within a condominium complex.

But who was the real author of the show? And to whom did the copyright belong? When two shows are that similar but still have a few minor differences, is there copyright infringement?

Challenge to award of attorneys' fees for defendant in copyright infringement action

Latin Am. Music Co. v. Am. Soc'y of Composers Authors & Publishers, 08-1498, concerned a plaintiff's second motion for reconsideration of the district court's grant of defendant's motion for attorneys' fees incurred on appeal for successfully defending a favorable jury verdict in a copyright infringement action.


Estate of Hevia v. Portrio Corp., No. 09-1096, involved a plaintiffs' suit alleging that defendants infringed a copyright on architectural plans created by the deceased.  Because the district court did not err in granting summary judgment in favor of the defendants on the copyright claim, the judgment is affirmed.  However, defendants' argument that the district court should have exercised its inherent powers to assess attorneys' fees and costs against the plaintiffs is rejected. 

In Haddad Motor Group, Inc. v. Karp Ackerman Skabowski & Hogan, PC, No. 06-2206, the First Circuit dealt with a car dealership's suit against its former accounting firm and one of its partners alleging that the firm's negligent tax advice caused plaintiff to incur unnecessary penalties and interest.  In rejecting defendant's various claims, the district court's judgment was affirmed in its entirety, including its fact-finding underlying the Chapter 93A verdict and the treble damage award. 

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