A blog about patent, copyright and trademark law in the U.S. District Court
for the Southern District of New York

Court Finds No Trademark Infringement in Kate Spade's Use of "Saturday" in a Mark

In a June 17, 2013 ruling, Judge Miriam Goldman Cedarbaum entered judgment of non-infringement after a five day bench trial on the trademark and related counterclaims that Saturdays Surf LLC had asserted against Kate Spade LLC over Kate Spade’s use of the mark “Kate Spade Saturday.” Kate Spade had begun the lawsuit seeking a declaratory judgment that its mark did not infringe Saturdays Surf’s “Saturdays Surf NYC” mark and its other “Saturday”-formative marks. Judge Cedarbaum first considered whether Saturdays Surf’s marks were in fact protectable as marks “because a trademark’s distinctiveness is both the key consideration in assessing its protectability and a factor in determining the likelihood of confusion.” The Court held that the “Saturdays Surf NYC” mark was protectable, but rejected “Saturdays” and “Saturdays Surf” as marks.

Copyright Reasonable Royalty Damages Not Available for Breach of Contract Claim

In a June 17, 2013 ruling, Judge Katherine B. Forrest dismissed plaintiff Jill Stuart (Asia) LLC’s remaining breach of contract claim against Sanei International Co., Ltd., finding that the plaintiff had not suffered any damages as a matter of law. The plaintiff had originally asserted claims for trademark infringement and dilution, unfair competition, copyright infringement and breach of contract. Judge Forrest dismissed all the claims except the breach of contract claim. The plaintiff then asserted that it had suffered two types of damages on the breach of contract claim, damages to its brand from the defendant’s use of the plaintiff’s copyrighted pattern, and for a reasonable royalty for the unauthorized use. In response to the defendant’s motion for summary judgment because of no compensable damages, Judge Forrest dismissed the claim. The Court ruled that the plaintiff had failed to raise a triable fact that it had been harmed because of the defendant’s unauthorized use. Judge Forrest also rejected the reasonable royalty claim, holding that the plaintiffs “point to no legal authority for their theory of ‘contractual copyright infringement’; rather, plaintiffs appear to attempt an end run around the Court’s . . . Order dismissing their copyright claims.”

Court Refuses to Vacate Default Judgment in Copyright Infringement Action

In a June 14, 2013 ruling, Judge P. Kevin Castel denied a motion to set aside a default judgment of copyright infringement against Anthony Defries, Mainman Ltd. and MMRX (collectively referred to by the Court as Defries) in favor of Capitol Records, LLC and related plaintiffs. Capitol had alleged that Defries had irrevocably sold to it “certain musical compositions and sound recordings embodying the works of David Bowie, Mick Ronson, Iggy Pop and John Mellencamp. Capitol sued Defries in 2011, alleging copyright infringement because Defries had authorized online retailers to sell the works at issue. Capitol tried to serve Defries at what he claimed was an outdated address, although Defries admitted that he actually received electronic copies of the lawsuit and he returned executed waivers of service. Judge Castel entered a default judgment on Capitol’s motion, finding that “the default was willful because Defries evaded or challenged service for months and failed to comply with multiple scheduling orders.” After an inquest, the Court entered final judgment for $9,350,000 in statutory damages in Capitol’s favor, as well as attorneys’ fees. Defries did not appeal the judgment, but later moved to set the judgment aside under Fed. R. Civ. P. 54(c), 55(c) and 60(b).

Pre-Discovery Dismissal of Willfulness Claim in Trademark Action Denied

In a June 13, 2013 ruling, Judge Alvin K. Hellerstein denied a defendant’s pre-discovery motion for summary judgment dismissing the plaintiff’s claim for profits in a trademark infringement action. The defendant argued that recovery requires a finding of willfulness, for which there are no facts in this case. Judge Hellerstein ruled that “it would not take [the plaintiff] 14 pages to explain their position,” if there were truly an absence of willfulness facts, and denied the motion as premature. The Court also denied bifurcation of the liability and damages issues, finding that “bifurcation at this point will tend to add proceedings, motions and arguments.”

Second Circuit Reverses Judge Forrest's Dismissal of Copyright Infringement Action Over Ghost Rider Comic Book Character

In a June 11, 2013 decision, the Second Circuit reversed Judge Katherine B. Forrest’s decision dismissing the plaintiff’s copyright infringement action over the comic book character Ghost Rider. Judge Forrest had held as a matter of law that the plaintiff had assigned any rights he retained in the renewal term of the Ghost Rider copyrights to the predecessor of a defendant. The Second Circuit disagreed, finding the relevant contract language to be ambiguous, thus precluding judgment as a matter of law. On appeal, the defendant argued that the Second Circuit could affirm Judge Forrest’s decision on the ground of the assignment of the renewal rights, but also argued that the plaintiff’s claim was barred by the three year copyright statute of limitations. As to the assignment of renewal rights, the Second Circuit applied “the ‘strong presumption against the conveyance of renewal rights,’” and concluded that “the district court erred in holding as a matter of law that” the plaintiff “had assigned his renewal rights . . . by signing the” agreement at issue. Regarding the statute of limitations defense, the Second Circuit held that an ownership claim accrues when there has been an “express repudiation” of ownership, and found that there are material issues of disputed fact as to when the defendant repudiated the plaintiff’s ownership claim, thus precluding summary judgment. The Second Circuit remanded the case for trial.

Preliminary Injunction Vacated after Plaintiff Fails to Show Continuing Likely Success on the Merits

In a June 11, 2013 ruling, Judge J. Paul Oetken vacated a preliminary injunction after denying the plaintiff’s motion for judgment on the pleadings on its Anti-Cybersquatting Consumer Protection Act (ACPA). The Court found that although the plaintiff “has shown irreparable harm, it cannot demonstrate a likelihood of success merits or sufficiently serious questions going to the merits to make them a fair ground for litigation.” Judge Oetken noted that the “Court maintains an ongoing duty to ascertain whether preliminary injunctive relief is warranted,” and vacated the injunction without prejudice in light of the plaintiff’s inability to show likely success on the merits.

Copyright Infringement Action Dismissed for Lack of Subject Matter Jurisdiction after Judgment on the Merits

In a June 10, 2013 ruling, Judge Loretta A. Preska dismissed a copyright infringement action on the ground that the Court lacked subject matter jurisdiction after the plaintiff had already been awarded $100,000 for the defendants’ willful copyright infringement. The defendants moved to set aside the judgment under Fed. R. Civ. P. 60(b), contending “that newly discovered evidence shows that Plaintiff has no direct ownership interest in the copyrights over which it has sued because those rights are owned by subsidiaries of the Plaintiff who were never joined to the action.” The plaintiff conceded that it did not directly own the copyrights at issue, but that its wholly-owned subsidiaries did, which, the plaintiff argued was sufficient. Noting that lack “of standing of the party bringing suit would result in a lack of jurisdiction of the Court to hear the matter and would require a dismissal of the action,” Judge Preska found that there “is support from decisions in this circuit for the holding that a parent company lacks standing to bring claims on behalf of its subsidiary,” and dismissed the action.

Federal Circuit Affirms Judge Buchwald's Dismissal of Patent DJ Action for Lack of Controversy

In a June 10, 2013 decision, the Federal Circuit affirmed Judge Naomi Reice Buchwald’s dismissal of a patent non-infringement and invalidity declaratory judgment action because there was not justiciable controversy.  At issue in the action were twenty-three of Monsanto’s patents for “Roundup Ready” genetically modified seeds (that were also the subject of a recent Supreme Court decision).  A “coalition of farmers, seed sellers, and agricultural organizations” had sued Monsanto out of a concern that their crops or seeds could inadvertently become contaminated with Monsanto’s genetically modified seeds, and that they could therefore be accused of infringement.  As a result of this concern, some of the plaintiff’s used costly “buffer zones” to protect their crops from contamination and others refrained from planting certain crops altogether.  After the lawsuit was started, the plaintiffs asked Monsanto to “‘expressly waive any claim for patent infringement [Monsanto] may ever have against [the plaintiffs] and memorialize that waiver by providing a written covenant not to sue.’”  Monsanto declined to provide a formal covenant not to sue, but it did point the plaintiffs toward a statement on its website that it has never been Monsanto’s intention to sue over trace amounts of seeds that are present through inadvertent means.  Monsanto’s counsel also assured the plaintiffs’ counsel that “Monsanto is unaware of any circumstances that would give rise to any claim for patent infringement or any lawsuit against your clients.  Monsanto therefore does not assert and has no intention of asserting patent-infringement claims against your clients.”  Judge Buchwald dismissed the action, holding that “these circumstances do not amount to a substantial controversy and . . . there has been no injury traceable to defendants.”

Motion for Reconsideration on Attorneys' Fees Denied

In a June 4, 2013 ruling, Judge Richard Sullivan denied reconsideration of a $10,000 award of attorneys’ fees against a pro se copyright plaintiff.  The plaintiff had argued that reconsideration was warranted because the Court incorrectly applied the Visual Artists Rights Act (VARA) to the works at issue, and that the Court had erred in concluding that the plaintiff had intentionally manipulated certain images to make them appear more similar to images made by the defendant.  In denying reconsideration, Judge Sullivan noted “the upshot of the Court’s analysis of VARA was to reject one of Defendants’ arguments in favor of fees,” and that “there can be no question that Plaintiff did intentionally manipulate images to enhance alleged similarities between her work” and that of the defendant.
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