Court Denies Application for Attorneys’ Fees after Voluntary Dismissal of Copyright Action

In an August 17, 2015 ruling, Judge John F. Keenan denied attorneys’ fees to the defendant after the plaintiff voluntarily dismissed a copyright infringement action without prejudice. Judge Duffy, acting in Judge Keenan’s absence, had previously denied the plaintiff’s motion for a preliminary injunction. Since the defendant had moved to dismiss, but had not answered, the plaintiff retained the right to unilaterally discontinue the action, and did so. The Court ruled that the defendant was not the prevailing party, and thus not entitled to a fee award, because the plaintiff’s unilateral voluntary dismissal without prejudice “is not ‘judicially sanctioned’ since no court action is required.” Judge Keenan also found that “a dismissal without prejudice is not a change in the legal relationship between the parties because plaintiff can still bring the claim again.” Without reaching the merits of the defendant’s application for fees, the Court did note, though, that the application was untimely, and could have been denied on that ground as well.

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."

Court Invalidates Two Patents and Awards Summary Judge to Defendant

In an October 25, 2013 ruling, Judge John F. Keenan granted IBM's motion for summary judgment dismissing plaintiff Alexander Orenshteyn's long-running patent infringement action.  The plaintiff asserted two patents, the '569 patent and the '942 patent, against IBM in this action, which was then stayed pending the outcome of litigation on the same two patents against Citrix Systems, Inc. in the Southern District of Florida.  The Florida district court granted summary judgment of non-infringement, but the Federal Circuit overturned the decision for the '942 patent.  The parties lifted the stay in the action before Judge Keenan, and the Florida district court then almost immediately invalided the asserted claim, claim 1, of the '942 patent.  IBM then moved for summary judgment, arguing that the same reasoning used to invalidate claim 1 of the '942 patent applied equally to all the asserted claims in the '569 and '942 patent.

Judge Keenan first noted that under Federal Circuit law as applied in the district, "'collateral estoppel may apply to patent claims that were not previously adjudicated, because the "issues" litigated, not the specific claims around which the issues were framed" are determinative,'" and that "collateral estoppel 'forecloses patent claims that are "patentably indistinct" from rejected claims.'"  The plaintiff argued against the application of collateral estoppel by contending that his counsel's failure to fully oppose the summary judgment motion in the Florida district court amounted to a "default."  The Court rejected this argument, ruling that a "default" is narrowly defined under Fed. R. Civ. P. 55(a), and noting that in his appeal to the Federal Circuit of the Florida district court's decision, the plaintiff was represented by the same counsel as has appeared in this action.