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

Court Declines to Dismiss Patent Infringement Claim on Grounds of Laches and Equitable Estoppel

In a June 18, 2014 ruling, Judge P. Kevin Castel denied defendant's motion to dismiss this patent infringement action on the grounds of laches and equitable estoppel.  With regard to laches, the defendant argued that some discussions between the parties before the patents-in-suit triggered the period for measuring laches, but Judge Castel ruled that the period ran from the issuance of the patents.  The Court also noted that "[f]acts concerning factors, such as the unreasonableness of the delay or the lack of excuse do not appear" in the amended complaint, precluding dismissal.  Judge Keenan likewise rejected the equitable estoppel defense, finding that "facts necessary to establish the affirmative defense of equitable estoppel do not appear on the face of the" amended complaint.

Court Denies Reconsideration of Copyright Infringement Summary Judgment Ruling

In a June 12, 2014 ruling, Judge John F. Keenan denied reconsideration of his March 24, 2014 ruling granting plaintiffs partial summary judgment on their copyright infringement claims.  Defendants argued that the Court's original rulings that substantial similarity only need be shown in the absence of evidence of direct copying and that the Court in any event applied the wrong standard for substantial similarity were erroneous because they "overlooked binding Second Circuit authority."  In rejecting these arguments, the Court wrote:
Even if a substantial similarity analysis is still required when actual direct copying is already established, that would not affect Defendants' liability because the Court went on to engage in this analysis.  As Defendants acknowledge, the Court compared the images on the website to the copyrighted photographs and determined that "the images on the masthead are substantially similar because they are exact copies."
Judge Keenan rejected defendants' argued that one of the photographs at issue was not substantially similar because it was "flipped" in orientation, noting that this "new argument is belied by their concession that the image was actually copied from the photograph registered with on of Plaintiffs' copyrighted albums."
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