Court Won't "Rubber Stamp" Request for Injunction

Broadcast Music, Inc. sued a bar (Evie's Tavern Ellenton) and its owner for copyright infringement.  The bar played a number of songs without license, and BMI sought to enforce its rights.  The bar defended by arguing that BMI didn't have proper title to the copyrights at issue.  At summary judgment, BMI proved otherwise (documenting the chain of title sufficiently to convince the Court that it owned the licenses for five of the works at issue).

Defendants' argument was an attempt to rely on 17 U.S.C. 204(a), which provides:

(a) A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent.

Defendants' argument was that, in the chain of transfers, there was a gap in an assignment, where the principal of one of the corporate owners of one of the copyrights drafted a letter assigning his rights, but that letter was not sufficient to transfer the interest his corporation had in the copyright.  [Notably, the Court was not persuaded with Defendant's evidence, and had this to say:

As an initial matter, and before reaching the merits of the dispute, the Court will pause to note that the documents submitted by the defendants that purport to be declarations are woefully inadequate.  The Court will, therefore strike all statements that are not facts based on Mr. Evanoff's personal knowledge.  In effect, that leaves only portions of [certain paragraphs of Defendants' motion and affidavit].  All other paragraphs are stricken, and the Court will consider the legal arguments contained within them to the extent they have merit.

] Ouch.  The Court did not spend much time addressing the 204(a) claim:

when (as in this case) there is no dispute between the copyright owner and the transferee about the status of the copyright, it would be unusual and unwarranted to permit a third-party infringer to invoke section 204(a) to avoid suit for copyright infringement.

Finding that the bar had infringed at least 5 works, the Court turned to BMI's request for an injunction.  No "rubber stamp" here:

There is no question that the entry of a permanent injunction seems entirely appropriate in this case.  In fact, it has been quite customary in these types of cases to permanently enjoin further acts of infringement simply as a matter of course.  But in light of the Supreme Court's admonition in eBay, that all four factors must be given thoughtful consideration prior to issuing permanent injunction, the Court is not willing to simply "rubber stamp" BMI's request.  See eBay, Inc. v. MercExchange, LLC, 547 U.S. 388 (2006).  ... A finding of liability of copyright infringement does not conclusively establish the remaining principles of equity that form the basis for injunctive relief.  

BMI's request for injunctive relief was denied without prejudice, so that the parties could meet and confer to determine if they could agree to appropriate relief.

Defendant's Motion for Summary Judgment, Denied; Plaintiff's Motion for Summary Judgment Granted in Part, Denied in Part.
Broadcast Music, Inc. v. Evie's Tavern Ellenton, Inc., Case No. 8:11-CV-2056 (Sept. 30, 2013) (J. Kovachevich)

Attorneys May Now Bring Cellphones, Laptops, and Tablets Into Middle District of Florida Courthouses

Lawyers have needed to stow their cellphones before bringing them into MDFLA courthouses and obtain Court order to bring in laptops.  As of September 26, 2013, that has now changed.  While the Court retains its general policy that no one may bring a personal electronic device past security, the following exception has been added:

2.4 Attorneys
Any attorney permitted to practice law in the Middle District of Florida may bring any personal electronic device beyond the courthouse's security checkpoint by presenting a valid Florida Bar identification card or pro hac vice order.  In addition to the restrictions set forth in paragraph 2, attorneys may not use personal electronic devices directly outside of any courtroom when court is in session.

"Personal electronic devices" are:

things like cellular telephones, "smart phones," laptop computers, and tablet computers.

So I can shelve my form motion for permission to bring in my computer.  Standard caveats still apply, which is to say they must be kept on silent, can't be shared with others, can't be used to disrupt any proceeding, and can't search for juror information.  And the security personnel may inspect them.  The full order is below.

13-Mc-94 Possession and Use of Personal Devices in All FLMD Courthouses

In re: Possession and Use of Personal Electronic Devices in Federal Courthouses in the Middle District of Florida, General Order 6:13-MC-94-ORL-22

Patent and Trademark Office Estimates It Can Run 4 Weeks During Shutdown

From the U.S. Patent and Trademark's website:

During the general government shutdown that began October 1, 2013, the United States Patent and Trademark Office will remain open, using prior year reserve fee collections to operate as usual for approximately four weeks. We continue to assess our fee collections compared to our operating requirements to determine how long we will be able to operate in this capacity during a general government shutdown. We will provide an update as more definitive information becomes available.

You can read the full post here.

Florida's Idea Statute of Frauds

Florida Statute § 501.972 is interesting, and to my knowledge has never before been cited by any court.  That has now changed.

Joseph Kaminski, an engineer whom I believe worked for Honeywell building technology for NASA (see here), wanted to help BP after the Deepwater explosion.  BP had set up a system for receiving proposed solutions for stopping the oil leak, and Kaminski submitted a couple of his ideas.  Included in one of his submissions was the following:

Please take this under advisement.  Especially when the new little top hat fails tomorrow for all the reasons I stated.  This will work and it is far easier than the 100 ton top hat.  It will also be great for your image in this whole thing.  When My son and I become paid hero's [sic] for the idea and helping you from here in tampabay [sic] florida.  I will say it was BP's willingness to work and find the right solution from anyone anywhere for this very unique problem.  You will also pay me and my son at least 2 million for the idea and my personal help to guarantee [sic] its succes [sic].

Kaminski believes BP used at least two of his ideas, so he sued for breach of an implied contract as well as unjust enrichment.  BP sought refuge under Florida's (unique?) Idea Protection Statute, which reads as follows:

501. 972   Actions based upon use of a creation that is not protected under federal copyright law.

(1) Except as provided in subsection (2), the use of an idea, procedure, process, system, method of operation, concept, principle, discovery, thought, or other creation that is not a work of authorship protected under federal copyright law does not give rise to a claim or cause of action, in law or in equity, unless the parties to the claim or cause of action have executed a writing sufficient to indicate that a contract has been made between them governing such use.

(2) Subsection (1) does not affect or limit:
     (a) Any cause of action based in copyright, trademark, patent, or trade secret; or
     (b) Any defense raised in connection with a cause of action described in paragraph (2).

Fla. Stat. § 501.972.  In other words, Florida has a statute of frauds for uses of ideas.  While this law was passed in 2006, it does not appear to have been used by a Court previously.

Here, the Court was convinced by BP's argument that this statute shielded BP from liability.  The Court analyzed the Copyright Act and noted the similarity in language between this statute's definition of what is not protected by Copyright and the Copyright Act's similar definitional language.  Recognizing that copyright does not protect ideas, but expressions of ideas, the Court found Kaminski's submissions to be ideas clearly governed by Florida's law:

Here, Plaintiff's ideas are not works of authorship and are expressly excluded from protection under the Copyright Act; Section 501.972 therefore applies to BP's use of Plaintiff's idea.

Because there was no writing between the parties executed by BP, Kaminski's claim fails.

Defendant's Motion for Summary Judgment, Granted.
Kaminski v. BP Exploration & Production, Inc., Case No. 8:12-cv-826 (M.D. Fla. Sept. 24, 2013) (J. Bucklew)

Can You Get Self-Help Relief Through A Default Judgment?

Not if you don't plead it in your complaint.   Sony sued Discount Cameras & Computers Inc. and Mauricio Martinez for trademark infringement and a handful of other causes related to Discount Camera's unauthorized usage of the SONY trademarks.  Defendants did not respond, so Sony sought and received a default.  After the Clerk entered Default, Sony moved for a Default Judgment, seeking an injunction.  So far, so good.  But the proposed judgment included the following language:

ORDERED and ADJUDGED that the Defendants ... shall, within fifteen (15) days of the date of entry of this Default Final Judgment and Permanent Injunction, remove [from their premises] all signage bearing one or more of the SONY Trademarks ...

ORDERED and ADJUDGED that, in the event that the Defendants ... fail to remove from the business premises ... all signage ... then the Court hereby authorizes the Plaintiffs and their representatives ... to enter the property ... and remove all signage...

(emphasis added).  The Court did not approve of this language, relying on Fed. R. Civ. P. 54(c) ("A default judgment must not differ in kind from, or exceed in amount, what is demanded in the pleadings."):

Plaintiffs are therefore entitled to default judgment on all of their claims, as well as a permanent injunction enjoining Defendants from further infringement and unlawful conduct -- but only as to the injunctive relief demanded in the Complaint (Doc. 1).  Plaintiffs are not entitled to self-help should Defendants continue to infringe Plaintiff's marks.  The Court declines to retain jurisdiction over this matter.

Motion for Default Judgment, Granted in Part, Denied in Part.
Sony Corp. v. Discount Cameras & Computers, Inc., Case No. 6:12-cv-1892 (M.D. Fla. Sept. 5, 2013) (J. Dalton) (adopting Report and Recommendation of Mag. Baker).

Agreeing To An Injunction Waives Personal Jurisdiction Challenge; But Alleging "Deliberate" Copyright Infringement Justifies Personal Jurisdiction?

Gainesville Coins operates a website for selling precious medals.  So does Vanguard Capital Group.  But Vanguard copied product descriptions and pictures off of Gainesville's website.  So Gainesville sued for copyright infringement.  First, Gainesville sought and obtained a temporary restraining order.  Next, the Court referred Gainesville's request for a preliminary injunction the Magistrate Judge, who extended the restraining order and set a hearing.   Three days before the hearing, Vanguard's attorney appeared, and the parties agreed to a stipulated preliminary injunction - presumably to obviate the need for the hearing.

Vanguard next moved the Court to dismiss the case for lack of personal jurisdiction, arguing that merely operating a website was insufficient contacts with Florida to justify a lawsuit here.  The Court was not persuaded:

As Gainesville Coins points out, Vanguard moved to dismiss the complaint for lack of personal jurisdiction after Vanguard stipulated to a preliminary injunction and participated in the case management conference.  Importantly, Vanguard did not reserve its right to contest the Court’s jurisdiction over it at any of these junctures. Under these facts, Vanguard waived the defense and its motion to dismiss is denied on this ground. See Aeration Solutions, Inc. v. Dickman, 85 Fed.Appx. 772, 774 (Fed. Cir. 2004) (finding defendants voluntarily acknowledged and acquiesced to the district court’s jurisdiction over them by stipulating to an injunction); Nat. Union Fire Ins. Co. of Pittsburgh, PA v. Beta Constr. LLC, 8:10-CV-1541-T-26TBM, 2010 WL 4316573, at *1 (M.D. Fla. Oct. 26, 2010) (finding defendant “waived his right to attack the personal jurisdiction of [the] Court by entering an appearance and participating in the case management conference without objecting to the Court’s personal jurisdiction”).

Turning next to the substance of Vanguard's argument, the Court also found personal jurisdiction proper under Florida's long-arm statute and the "effect's test."  As to Florida's long-arm statute:

Copyright infringement is a tortious act that satisfies Florida’s long-arm statute. See Smith v. Trans-Siberian Orchestra, 8:09-CV-1013-T-33EAJ, 2011 WL 824675, at *4 (M.D. Fla. Mar. 3, 2011); see also Cable/Home Commc’ns [v. Network Productions, Inc], 902 F.2d at 854 [(11th Cir. 1990)]. Also, the infringement occurred in Florida to the extent that Vanguard’s website is accessible in Florida and has been accessed by Florida residents.

The Court next turned to the "effects test" and relied on the Calder decision, which found personal jurisdiction appropriate for an intentional tort committed against a Florida resident.  Calder concerned a California plaintiff that sued a Florida newspapers for an alleged libelous article.  The Court held that such an intentional tort committed against a California resident justified jurisdiction over the Florida company in California.

But here, copyright infringement is a strict liability tort.  Intent is irrelevant for purposes of a direct infringement claim, although intent can increase a statutory damage award.  No matter.  The Court concluded because Gainseville alleged deliberate and willful infringement, the cause was akin to an intentional tort such as Calder justifying jurisdiction:

The Court concludes that Vanguard’s alleged actions of: deliberately and willfully infringing upon Gainesville Coins’ copyright by copying nearly the entire website for Gainesville Coins; and displaying the Work at its competing website, the Vanguard Website, for commercial gain because Vanguard is a competitor of Gainesville Coins, are sufficient to meet the “effects test”. In other words, Vanguard’s alleged acts purposefully availed itself of this forum. See Waterproof Gear, Inc. v. Leisure Pro, Ltd., 8:08-cv-2191-T-33MAP, 2009 WL 1066249, at *1 (M.D. Fla. Apr. 20, 2009) (finding that defendant purposefully availed itself of the forum when defendant copied and placed plaintiff’s copyrighted marketing materials on defendant’s website).

Motion to Dismiss for Lack of Personal Jurisdiction, Denied.
Gainesville Coins, LLC. v. VCG Ventures, Inc., Case No. 8:13-CV-1402 (M.D. Fla. Aug. 28, 2013) (J. Moody)

Your agreement to file under seal doesn't matter -- the public interest does

Parties regularly enter into protective orders or confidentiality agreements during litigation to be able to designate material confidential and/or attorneys-eyes-only.  This generally works well among litigants, but can be sticky when needing to file materials with the Court.  The Courts are public forums, theoretically open to all.

NXP, BV. has sued Research in Motion here in the Middle District for patent infringement.  (NOTE: GrayRobinson represents RIM as local counsel.)  The parties entered into such a confidentiality agreement, but a discovery dispute ensued.  To support their respective positions, each side needed to refer to information that had been designated confidential or attorneys-eyes-only.  So the parties filed redacted versions of their briefs, but jointly sought leave to file the confidential information under seal.

Generally, these motions are dispensed with quickly, which is why this decision caught my eye.  One of the first motions I ever filed was a motion to adopt the parties proposed protective order in a case here in the Middle District.  That joint motion was rejected by the Magistrate Judge because it did not specifically and explicitly follow the mandate of our Local Rule 1.09, which states that no document may be filed under seal without first seeking permission from the Court (unless there is some other law permitting such a filing).  (NOTE: In my defense, that joint motion that I filed years ago did indicate that filings under seal would only be done according to local rule, but we revised the motion when we refiled it to explicitly incorporate the provisions of L.R. 1.09.)

In the NXP decision, the Court wrote a detailed opinion explaining the reasoning behind this practice, and it's a short but worthwhile read:

In this Circuit, it is well settled that “[t]he operations of the courts and the judicial conduct of judges are matters of utmost public concern” and the integrity of the judiciary is maintained by the public's right of access to court proceedings. Romero v. Drummond Co., 480 F.3d 1234, 1245 (11th Cir.2007) (citing Landmark Commc'ns, Inc. v.Virginia, 435 U.S. 829, 839 (1978)). The public's right “includes the right to inspect and copy public records and documents.” Chicago Tribune, 263 F.3d at 1311. But, the public's right of access is not unfettered and does not apply to discovery. Romero, 480 F.3d at 1245. Indeed, “the need for public access to discovery is low because discovery is ‘essentially a private process ... the sole purpose [of which] is to assist trial preparation.’ “ Id. (quoting United States v. Anderson, 799 F.2d 1438, 1441 (11th cir.1986). And, “[t]he prospect of all discovery material being presumptively subject to the right of access would likely lead to an increased resistance to discovery requests.” Chicago Tribune, 263 F.3d at 1312 n. 10. 

Courts draw a distinction between documents filed with discovery motions and documents filed in connection with other types of motions. “ ‘[T]here is a presumptive right of public access to pretrial motions of a nondiscovery nature, whether preliminary or dispositive, and the material filed in connection therewith.’ “ Id. at 1246 (quoting Leucadia, Inc. v. Applied Extrusion Techs., Inc., 998 F.2d 157, 164 (3d Cir. 1993)). Material filed as part of a discovery motion is not subject to the common law right of access. Chicago Tribune, 263 F.3d at 1312. 

“The common law right of access may be overcome by a showing of good cause, which requires balancing the asserted right of access against the other party's interest in keeping the information confidential.” Romero, 480 F.3d at 1245 (quoting Chicago Tribune, 263 F.3d at 1313). In balancing these interests “courts consider, among other factors, whether allowing access would impair court functions or harm legitimate privacy interests, the degree of and likelihood of injury if made public, the reliability of the information, whether there will be an opportunity to respond to the information, whether the information concerns public officials or public concerns, and the availability of a less onerous alternative to sealing the documents.” Id. at 1246. “Good cause is established by the moving party when disclosure will cause the party to suffer a clearly defined and serious injury.” Vista India, Inc. v. Raaga, LLC, Case No. 07–1262, 2008 WL 834399 *2 (D.N.J. Mar. 27, 2009). The parties' agreement to seal court documents “is immaterial” to the public's right of access. Brown v. Advanatage Eng'g, 960 F.2d 1013, 1016 (11th Cir.1992).

The Court went on to explain that it needed the confidential information at issue to resolve the parties' discovery dispute, and that the confidential information indeed satisfied the tests described above.

Joint Motion to File Under Seal, Granted
NXP BV v. Research In Motion Ltd, Case No. 6:12-cv-498 (M.D. Fla. Aug. 15, 2013) (Mag. Smith)