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

Court Rules Question of Copyright Infringement Statutory Damages Is for the Jury

In a September 28, 2015 ruling, Judge Gregory H. Woods held, after granting summary judgment of copyright infringement, that the amount of statutory damages was a question for the jury. Given the particular facts of this case, Judge Woods noted the open legal question of whether statutory damages are recoverable for infringement of both a musical composition and of a sound recording of that composition. The Court discussed a split in the District on that question, but suggested that it would adopt the view that a sound recording is a derivative work of a musical composition, precluding the separate recovery of statutory damages. Judge Woods also noted the legal uncertainty about whether a copyright holder can recover actual damages of a copyrighted “work,” and then recover statutory damages for the same “work” (albeit of a derivative work). Because of factual issues as to both of these legal questions, Judge Woods did not need to reach a definitive conclusion about them.

Court Refuses to Preliminarily Enjoin Defendants' Participation in IPR

In a September 16, 2015 ruling, Judge Vernon S. Broderick denied the plaintiffs’ motion for a preliminary injunction to enjoin the defendants from participating in a Patent Office Inter Partes Review proceeding because the participation supposedly violated a forum selection clause in the contract between the plaintiffs and the defendants. In denying the injunction, Judge Broderick ruled that the plaintiffs would not be irreparably harmed by being forced to proceed with the IPR because the cost of the proceeding, although costing in the hundreds of thousands of dollars, was nevertheless not an unquantifiable amount constituting irreparable injury. The Court further ruled that the plaintiffs had failed to show a likelihood of success on the merits because the IPR proceeding did not arise out of or relate to the parties’ contract containing the forum selection clause, and thus was not covered by the forum selection clause. Judge Broderick reasoned that the issues in the IPR – the validity of the patents-in-suit – were unrelated to the parties’ contract, and in fact could have been raised essentially by any third party not at all involved in the contract.

The plaintiffs had also contended that the defendants were equitably estopped from challenging the validity of the patents because the defendants had previously assigned the patents at issue. The Court disposed of this contention by noting that the Patent Trial and Appeal Board “has held that the defense of assignor estoppel does not apply in IPR proceedings” so “if the IPR is initiated, [the plaintiffs] will be unable to raise assignor estoppel unless and until the outcome of the IPR is appealed to the Federal Circuit.”

Court Denies Summary Judgment on Trademark Infringement Claim Because of Dispute about Genuineness of Goods

In a September 11, 2015 ruling, Judge Vernon S. Broderick denied the parties’ cross motions for summary judgment on the plaintiffs’ trademark-related claims, finding issues of disputed fact about the genuineness of the goods at issue, and thus whether the sale of such goods could constitute trademark infringement. Judge Broderick noted that courts “in this district have characterized this principle – that the unauthorized resale of genuine goods, by itself, is not actionable under the trademark laws – as the ‘exhaustion doctrine’ or, by analogy to copyright law, the ‘first sale doctrine.’” The Court further noted that both he and the parties “have not identified any controlling Second Circuit authority that allocates the burden of proof on this issue,” but ruled that the burden was irrelevant to the parties’ motion because regardless of which party had the burden, the presence of disputed issues of fact about the genuineness of the goods at issue would defeat summary judgment.
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