Court Denies Summary Judgment Because of Factual Dispute Between Experts

In a January 14, 2015 ruling, Judge Coleen McMahon denied summary judgment in this patent infringement action because of the parties’ experts’ conflicting testimony. The Court wrote:

In sum, the two sides’ experts differ on two critical points: whether [the prior art] and the [patent-in-suit] disclose the same elements and limitations, and whether one acknowledged difference between them (the plurality of numbers) would have been “obvious” to one skilled in the art. Each side has presented testimony from a purported expert to support its point of view. The experts do not agree. That precludes summary judgment.

In commenting on the experts’ disagreement about the qualifications for a person skilled in the art concerning the patent-in-suit, Judge McMahon wrote:

Two more disparate descriptions of what constitutes a “person having ordinary skill in the art” I cannot imagine. . . . The Court has no idea who is correct, or for that matter how to resolve the issue; this is the first case I can recall in which the parties did not agree on the qualifications of the hypothetical “person having ordinary skill in the art.” . . . If the parties cannot agree on who qualifies as a person skilled in the art, then there is a question of fact to be resolved. This precludes summary judgment as well.

Court Denies Summary Judgment of Invalidity Based on Indefiniteness after Having Denied Summary Judgment on Non-Infringement

In an April 7, 2014 ruling, Judge Jed S. Rakoff denied the defendants’ motion to invalidate two claims in the patent-in-suit in the plaintiffs’ infringement action. Judge Rakoff had earlier denied the defendants’ motion for summary judgment of non-infringement. The defendants argued in the current motion that because the Court had construed the pertinent claim terms but had been unable to reach a conclusion as to non-infringement, the claims are indefinite as lacking a “‘discernible boundary.’” Judge Rakoff rejected this argument, writing:

it would be unusual if a claim that can be construed definitely could suddenly become indefinite because an accused product came close to infringing but left the possibility of its noninfringement. A party should not be able to invalidate another’s patent solely by coming close enough to infringing that a Court cannot determine infringement, a question of fact, as a matter of law on a motion for summary judgment.

Court Grants Summary Judgment Dismissing Design Patent Case

In a March 26, 2014 ruling by Judge Katherine B. Forrest, summary judgment was granted to High Point Design LLC and third-party defendants Meijer, Inc., Sears Holdings Corporation, and Wal-Mart Stores, Inc. dismissing defendant Buyer’s Direct Inc.’s design patent infringement counterclaims, based on the ordinary observer standard, holding the patent claims to be invalid due to anticipation, and also finding non-infringement.  Judge Forrest declined, however, to rule on the question of obviousness, as "the first two rulings are sufficient to dispose of the patent claims in this case."  The dismissal of defendant's patent claims also resulted in the related denial of defendant's motion for discovery in connection with those patent claims.  Judge Forrest also denied defendant's motion to amend its trade dress claim due to its untimeliness and as a result, granted plaintiff and third-party defendants' motion to dismiss defendant's trade dress claim, whic
h was deficiently pleaded.

Court Declines to Dismiss Claim to Declare “Tiffany Setting” Generic for Rings

In a January 17, 2014 ruling, Judge Laura Taylor Swain denied Tiffany and Company’s motion to dismiss Costco Wholesale Corporation’s counterclaim to declare the term “Tiffany setting” to be generic for a ring “‘setting comprising multiple slender prongs extending upward from a base to hold a single gemstone.’” Costco advertised two rings it sold at one of its stores as having a “Tiffany setting,” and Tiffany sued for statutory and common law trademark infringement. Costco counterclaimed for declaratory relief to declare the term “Tiffany setting” generic as applied to rings, and Tiffany then moved for summary judgment or judgment on the pleadings.

The Court first noted that although the “Tiffany” mark had first been applied to jewelry in 1868 and the registered mark had long since become “incontestable,” “[e]ven an incontestable or famous mark can become generic and lose protection.” Judge Swain further wrote that a “court may partially cancel or limit a registered trademark if only one use of the trademarked term has become generic.”

In deciding the motion, the Court observed that only “‘in the rarest of cases may summary judgment be granted against a plaintiff who has not been afforded the opportunity to conduct discovery.’” Judge Swain also noted that the “question of whether a mark is, or has become, generic is generally one of fact.” Judge Swain then denied summary judgment, writing that in “support of its argument that ‘Tiffany’ has acquired a generic meaning when used to refer to a type or style of ring setting, Costco offers excerpts from dictionary definitions of ‘tiffany’ and ‘Tiffany setting,’ a preliminary report by a lexicographer, evidence of generic use of the term ‘Tiffany setting’ by jewelry manufacturers, retailers and consumers, and examples of the generic use of the term ‘tiffany setting’ in publications.” The Court cautioned that “none of this evidence is by any means conclusive of the proposition” of genericness “advanced by Costco,” but that it is sufficient at the “pre-discovery” phase to defeat summary judgment.

Court Denies Summary Judgment in Copyright Infringement Claim Despite Conflicting Evidence About Authorship

In a January 16, 2014 ruling, Judge Alvin K. Hellerstein denied plaintiff Mayimba Music, Inc’s summary judgment motion against Sony Corporation and others in Mayimba’s copyright infringement action. Mayimba alleged that well-known Dominican Republican singer-songwriter El Cata, in collaboration with the performer Shakira, included an adapted version of Mayimba’s song Loca con su Tiguere in an album issued by Sony.

The Court wrote that to “successfully prove copyright infringement, plaintiff must show ownership of a valid copyright and unauthorized copying of constituent, original elements,” and that to “prove actual copying, plaintiff may present actual evidence of copying or indirect evidence that demonstrates proof of access.” Mayimba alleged that El Cata has access to the song because El Cata met with the song’s author “informally outside of a production studio where [the author] sang El Cata several of his songs.” El Cata then supposedly recorded the author singing Loca con su Tiguere. The song’s author later signed documents disclaiming authorship of the song and acknowledging El Cata’s ownership. Judge Hellerstein, however, found that although the evidence was questionable, “[b]arely, the issue is one for the jury to
decide,” and denied summary judgment.

Court Converts Defendants’ Motion to Dismiss Copyright Infringement Claims into a Motion for Summary Judgment in Order to Consider Requisite Evidence Outside of the Pleadings.

In a January 6, 2014 ruling, Judge Colleen McMahon converted the defendants’ Penguin/Berkley Publishing US A and others’ Rule 12(b)(6) motion to dismiss plaintiff Charles Newton’s copyright infringement claims into a Rule 12(d) motion for summary judgment, based on defendants’ arguments which required the consideration of evidence not included in the pleadings.

Plaintiff, acting pro se, claimed that defendants infringed upon his copywrited material by defendants’ reprinting portions of plaintiff’s book in a book published by defendants covering the same subject matter. Defendants presented the following arguments in support of their motion to dismiss: (1) plaintiff failed to satisfy the copyright registration precondition to suit, see 17 U.S.C. § 411, (2) the copying of plaintiff’s work was de minimis, and (3) the copying of plaintiff’s work constituted “fair use.”

Court Denies Cross-Motions for Summary Judgment in Copyright Infringement Claim and Dismisses Fair Use Defense

In a September 26, 2013 ruling, Judge Cathy Seibel denied the parties' cross-motions for summary judgment in Firesabre Consulting LLC's copyright infringement claim against educator Peggy Sheehy and the board of the Ramapo Central School District.  The "copyright case arises from a dispute over payment for computer programming and digital design services rendered in connection with the virtual world Second Life.  Second Life is an internet-based simulation in which users appear via digital characters called 'avatars' and interact with a computer-generated environment."  Sheehy and others in the school district created three "islands" in Second Life for educational use with her students.  After meeting the principal of Firesabre Consulting, Frederick Fuchs, at a conference, Sheey had him to do some development work on the islands.  Fuchs also later developed three additional islands for Sheey's Second Life project.  There was never any written contract between Firesabre Consulting and the school district, but the district did pay Firesabre Consulting $5,000 for some of the work.  After a falling out, Firesabre Consulting demanded that the school district stop using its work.  Also after that, the school district migrated its "islands" from the Second Lfe platform to SIMS, copying some of plaintiff's work in the process.

Firesabre Consulting sued for copyright infringement, alleging that the defendants' continued to use his work after the relationship soured (and thus ended any license to the work), and that the migration from Second Life to SIMS involved unauthorized copying.  Defendants defended by arguing that the plaintiff's work was ineligible for copyright protection because it was not "fixed," and that the plaintiff's copyright deposit was insufficient to bring defendants' copying within its scope.  Judge Seibel rejected both these defenses, ruling that "[d]igital images in a video game are 'fixed' within the meaning of the Act" when they are stored in memory, and that although plaintiff's deposit could have been more complete, the overall design of Firesabre Consulting's work was sufficiently visible in the deposit.  The Court denied plaintiff's motion for summary judgment, though, finding issues of disputed fact about whether the defendants' work was substantially similar to the copyrighted work, and about the scope of defendants' authority to use plaintiff's work.

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.