Justia Intellectual Property Opinion SummariesArticles Posted in U.S. 1st Circuit Court of Appeals
AngioDynamics, Inc. v. Biolitec AG
Biolitec, Inc. (BI), a U.S.-based subsidiary of Biolitec AG (BAG), sold medical equipment to Plaintiff AngioDynamics, Inc. (ADI) and agreed to indemnify ADI or any patent infringement claims. Patent infringement claims were subsequently brought against ADI, and ADI settled the claims. In a separate lawsuit, ADI obtained a $23 million judgment against BI under the indemnification clause. Attempting to secure payment on that judgment, ADI sued BAG, BI, and other related entities (collectively, Defendants) on claims including corporate veil-piercing and violation of the Massachusetts Uniform Fraudulent Transfers Act MUFTA), alleging that BAG looted more than $18 million from BI to move BI's assets beyond reach. The district court granted ADI a preliminary injunction barring Defendants from carrying out the proposed downstream merger of BAG with its Austrian subsidiary and from transferring any ownership interest the held in any other defendant. The First Circuit Court of Appeals affirmed, holding (1) as a matter of law, preliminary injunctive relief was not barred in this case; and (2) the district court did not err in finding that ADI had demonstrated likelihood of success on the merits and irreparable harm. View "AngioDynamics, Inc. v. Biolitec AG" on Justia Law
Swarovski Aktiengesellschaft v. Building #19, Inc.
Defendant, Building #19, Inc., was an off-price retail store that acquired products and resold them at discounted prices in stores in New England. Defendant advertised in newspapers around New England, and the ads often featured descriptions of the advertised goods. Plaintiff, Swarovski Aktiengesellschaft and Swarovski North American Limited (collectively, Swarovski), was a manufacturer and distributor of crystal and jewelry. It held several registered trademarks for the mark "Swarovski." After Defendant obtained several Swarovski crystal figurines it hoped to resell, Defendant designed a newspaper advertisement printed in a large font with the name "Swarovski." Plaintiffs sought a preliminary injunction barring Defendant from using the Swarovski name or mark in its advertising. The district court granted the injunction in part by limiting Defendant's use of the Swarovski name to a smaller font size. Defendant appealed. The First Circuit Court of Appeals reversed, holding that the district court erred by failing to include necessary findings on whether (1) Swarovski was likely to succeed in its infringement claim against Defendant by establishing that the proposed advertisement was likely to confuse customers, and (2) Swarovski would suffer irreparable harm as a result of the ad. Remanded. View "Swarovski Aktiengesellschaft v. Building #19, Inc." on Justia Law
Contour Design, Inc. v. Chance Mold Steel Co., Ltd.
in this trade secret misappropriation and breach of contract case, defendant Chance Mold Steel Co. (Chance) appealed from a permanent injunction and from a jury award of damages. The injunction, based on a finding of contract breach, prohibited Chance from selling, displaying, manufacturing, or assisting others in manufacturing a number of ergonomic computer mouse products. The injunction barred sale of specific products that were materially identical to products Chance had previously manufactured for Contour Design, Inc. (Contour) and a new product known as the ErgoRoller. Chance challenged the scope of the injunction and contended that the jury improperly awarded lost profits damages. The First Circuit Court of Appeals (1) reversed the injunction as applied to the ErgoRoller, holding that the record did not support the finding that Chance breached the contract in producing the ErgoRoller; (2) affirmed the scope of the injunction as applied to the other enjoined products; and (3) affirmed the damages award. View "Contour Design, Inc. v. Chance Mold Steel Co., Ltd." on Justia Law
Soc’y of the Holy Transfiguration Monastery, Inc. v. Archbishop Gregory of Denver
The Eastern Orthodox monastic order began a spiritual affiliation with the bishops of the Russian Orthodox Church Outside of Russia (ROCOR)in 1965. Although the Monastery concedes it commemorated the bishops of ROCOR until 1986, it considers itself an independent entity. The Monastery's 35 monks worked on translating religious texts from their original Greek into English. The works were in demand amongst parishes, but the Monastery obliged requests on a limited basis. One of the monks went to Colorado where he formed Dormition Skete, dedicated to painting traditional Orthodox icons. A Skete member, the Archbishop, created a website devoted to the Orthodox faith. Based on postings on that site, the Monastery sued the Archbishop, in state court, for copyright infringement. The parties settled with the Archbishop acknowledging the Monastery’s ownership of the works. The website continued to include its translations; the Monastery filed a federal suit, 17 U.S.C. 101. The district ruled in favor of the Monastery, rejecting claims or public domain, that ROCOR was the true owner of the copyrights, and of fair use. The First Circuit affirmed. The Archbishop offered identical or near-identical versions of the works on his website for the precise purpose for which the Monastery originally created them, harming their potential market value. View "Soc'y of the Holy Transfiguration Monastery, Inc. v. Archbishop Gregory of Denver" on Justia Law
Banco Popular de Puerto Rico v. Asociacion de Compositores
In 2001 BPPR sought a declaratory judgment under the Copyright Act, 17 U.S.C. 101 after several music publishing companies contacted BPPR claiming that they owned and were owed royalties on music compositions that BPPR had produced and distributed in a series of Christmas concerts. BPPR deposited royalties due on the compositions with the district court and asked the court to declare to whom the royalties were due and distribute them accordingly. LAMCO and others countersued for copyright infringement. The district court denied motions for summary judgment. Several co-defendants settled their claims among themselves and with BPPR. The jury found BPPR liable for infringement of two compositions owned by LAMCO and ACEMLA, and awarded $42,941.00 in compensatory damages. The court found ACEMLA liable for violating a GVLI copyright and ordered $43,405.35 in damages. The First Circuit affirmed, rejecting challenges to the sufficiency of the evidence. The district court properly found that the settlement agreement did not preclude future litigation of 12 undisputed LAMCO songs. View "Banco Popular de Puerto Rico v. Asociacion de Compositores" on Justia Law
T-Peg, Inc. v. VT Timber Works, Inc.
The owner consulted with two architectural firms, T-Peg and VTW. T-Peg drew up a preliminary design then worked with the owner to refine the design. In 2001, T-Peg registered its design with the Copyright Office. Meanwhile, in 2000, the owner showed T-Peg's unregistered preliminary design to VTW, which began working on its own design. VTW completed its plan in 2002 with significant, minutely detailed input from the owner. Completed construction apparently reflected T-Peg's registered design. In a suit for copyright infringement, the court granted summary judgment for VTW and the owner, concluding that no reasonable jury could find that T-Peg's and VTW's designs were substantially similar. The First Circuit reversed and, following trial, the jury found in VTW's favor and rejected T-Peg's infringement claims. VTW sought fees of more than $200,000 under 17 U.S.C. 505. The district court granted VTW a fee award of $35,000. The First Circuit affirmed, finding that the district court adequately elaborated its reasoning. View "T-Peg, Inc. v. VT Timber Works, Inc." on Justia Law
Mercado-Salinasl v. Bart Enter. Int’l, Ltd.
In 1995, plaintiff, a popular psychic and astrologer, and defendant entered into a contract for production and distribution of materials featuring plaintiff's psychic and astrological services. Plaintiff granted defendant the right to use his trademark, name, and likeness. After a 2006 dispute led to litigation; a jury rejected plaintiff's claim that he had validly terminated the agreement, found that he had violated the agreement, and found that defendant owed him no compensation. In 2009, both parties sought injunctive relief to prevent the other party from using the trademark. The district court entered a preliminary injunction in favor of defendant, finding that plaintiff had assigned the trademark in perpetuity. The First Circuit affirmed. The district court did not abuse its discretion in issuing a preliminary injunction, based on its interpretation of the agreement and application of collateral estoppel, based on the prior litigation. View "Mercado-Salinasl v. Bart Enter. Int'l, Ltd." on Justia Law
Airframe Sys., Inc. v. L-3 Commc’n Corp.
In 1979, plaintiff began developing proprietary aircraft maintenance tracking software; it has continually modified the source code for the software. Source code is the original version of a computer program that is written in human-readable words and symbols and must be compiled into machine-readable object code before a computer can read and execute the software. A program in source code format can be modified by a programmer, whereas a program in object code format cannot be easily modified. Plaintiff began licensing the software to defendant in 1986, limited to use in object code format, and registered four versions of the source code with the U.S. Copyright Office in 2003. After discovering unlicensed versions on defendant's computers, plaintiff brought an infringement action. The district court entered summary judgment for defendant. The First Circuit affirmed. Plaintiff, by comparing what was found on defendant's computers to the 2009 version of its source code, did not produce sufficient evidence of "substantial similarity" between the copyrighted material and the allegedly infringing material. View "Airframe Sys., Inc. v. L-3 Commc'n Corp." on Justia Law
Curet-Velazquez v. ACEMLA De Puerto Rico, Inc.
The heirs of a composer, who died in 2003, sued a music publisher and a performance rights society, with which the composer had contracted in 1995 with respect to four songs. The defendants failed to supply royalty reports as required by the contracts. The district court award the maximum statutory damages for the copyright infringements pursuant to 17 U.S.C. 504(c)(1). The First Circuit affirmed, rejecting many of the defendants' arguments as not properly raised and, therefore, waived. View "Curet-Velazquez v. ACEMLA De Puerto Rico, Inc." on Justia Law
Spooner v. EEN, INC.
In a suit under the Copyright Act, 17 U.S.C. 106, described by the court as the equivalent of hand-to-hand combat, the plaintiff settled with some defendants for $30,000. After trial plaintiff obtained injunctive relief and statutory damages in the amount of $40,000 against others, offset by the $30,000 settlement. The court awarded $98,745 in attorney fees; a motion for costs, initially denied, remained pending. The First Circuit affirmed, first noting that the district court had cured a jurisdictional defect by awarding $3,413.05 in costs. The district court correctly applied the lodestar method. Although the fees exceed the award, the violation was willful and the injunctive relief may be worth more that the award of damages. While a rejected Rule 68 offer, not improved upon at trial, obligates the plaintiff to pay the defense costs incurred subsequent to the rejection the offer plaintiff made before trial was not a Rule 68 offer. View "Spooner v. EEN, INC." on Justia Law