Recently in Intellectual Property Law Category

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.

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.

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.

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?

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. 

Related Resources:

• Full text of Estate of Hevia v. Portrio Corp
• Full text of Haddad Motor Group, Inc. v. Karp Ackerman Skabowski & Hogan, PC

The First Circuit decided a copyright infringement action barred under the claim preclusion doctrine, a contract case, and a criminal matter involving a protracted delay in a defendant's revocation hearing following a drug offense. 

Airframe Sys. Inc. v. Raytheon Co., No. 09-1624, involved a district court's dismissal of plaintiff's copyright infringement action of a software source code under the doctrine of claim preclusion.  In affirming the dismissal, the court held that the plaintiff was or should have been well aware of the fact that the defendant named in the later suit filed in Massachusetts owned the business unit at issue when it filed the earlier suit in New York and should have amended it there. 

Adams v. Adams, No. 09-1443, involved a plaintiff-father's suit seeking enforcement of the terms of a promissory note executed by his son in connection with funds given by the father to help his son purchase a home in Texas.  In reversing the district court's denial of the son's motion to dismiss, the court held that the father has not demonstrated by a preponderance of the evidence that the son's action related to the note constitute sufficient purposeful availment to allow for the exercise of personal jurisdiction in Massachusetts.

In US v. Pagan-Rodriguez, No. 08-1516, the court faced a challenge to the district court's denial of defendant's motion to dismiss the revocation hearing claiming that the indefinite postponment of his final revocation hearing infringed his right to have the hearing held within a reasonable period of time.  In affirming the denial of the motion, the court held that although the district court unreasonably delayed the holding of a supervised release revocation hearing, the error was harmless because it caused no prejudice to the defendant. 

Related Resources:

• Full text of Airframe Sys. Inc. v. Raytheon Co
• Full text of Adams v. Adams
• Full text of US v. Pagan-Rodriguez

In parties' dispute over the rights to a song, jury verdict in favor of the defendants is affirmed where: 1) district court did not err in instructing the jury with respect to the 1982 contract; 2) district court did not err in refusing to give missing witness instruction; and 3) plaintiff's remaining claims are rejected.   

Read Latin American Music Co. v. American Soc'y of Composers Authors & Publishers, No. 08-1498

Appellate Information

Appeal from the United States District Court for the District of Puerto Rico

Decided January 29, 2010

Judges

Before:  Baldock, Howard, and Torrella, Circuit Judges

Opinion by  Circuit Judge Hoawrd

Counsel

For Appellant:  Mauricio Hernandez Arroyo

For Appellee:       Richard H. Reimer, Diego A. Ramos, Fiddler Gonzáles & Rodriguez, PSC, Stephen S. Young, and Holland & Knight LLP

In a dispute between an artist and a museum over the implementation and installation of a football-field sized artwork, judgment of the district court in favor of the museum is affirmed in part, vacated in part and remanded where: 1) the Visual Artists Rights Act (VARA) applies to unfinished works, and as such, genuine issues of material fact forecloses summary judgment on one of the artist's VARA claims - that the museum violated his right of artistic integrity by modifying the installation; and 2) the artist asserted a viable claim under the Copyright Act that the museum violated his exclusive right to display his work publicly.     

Read Massachusetts Museum of Contemporary Art Found., Inc. v. Buchel, No. 08-2199

Appellate Information

On Appeal from the United States District Court for the District of Massachusetts

Decided January 27, 2010

Judges

Before:  Lipez and Howard, Circuit Judges, and Woodcock, District Judge

Opinion by  Circuit Judge Lipez

Counsel

For Appellant:  George T. Conway III, Elaine P. Golin, Wachtell, Lipton, Rosen & Katz, John C. Blessington, Sara E. Yevics, K&L Gates LLP, Elena M. Paul, Sergio Muñoz Sarmiento, and Volunteer Lawyers for the Arts

For Appellee:    John L. Gardiner, Elizabeth A. Hellmann, Kurt Wm. Hmr, Lindsay R. Dickerson, and Skadden, Arps, Slate, Meagher & Flom LLP

In a trademark dispute between companies in the hair care industry involving a settlement agreement entered into nineteen years ago in which their predecessors stipulated to the withdrawal of the parties' respective claims and to not object further to the registration of the others' trademark, district court's grant of plaintiff's request for declaratory judgment is affirmed as, notwithstanding possible arguments on each side about potential confusion between their respective phrases, "Great Cuts" and "Great Clips", no evidence is offered that the parties sought only to allow each to register its mark but to reserve for future litigation the practical consequences of registration. 

Read Great Clips, Inc. v. Hair Cuttery of Greater Boston, LLC, No. 09-1376

Appellate Information

Appeal from the United States District Court for the District of Massachusetts

Decided January 5, 2010

Judges

Before: Boudin and Seyla, Circuit Judges, and Laplante, District Judge

Opinion by  Boudin, Circuit Judge

Counsel

For Appellant:  Jonathan D. Frieden (pro hac vice), Odin, Feldman & Pittleman, P.C.,    Bruce E. Falby and DLA Piper LLP

For Appellee:     Jan M. Conlin, Christopher K. Larus, Jonathan D. Mutch and Robins, Kaplan, Miller & Ciresi L.L.P.