A Quick Rundown of Recent Intellectual Property Decisions in the Eastern District of Virginia
It looks like summer is the time for Eastern District of Virginia judges to clear out their backlog. In addition to the recent decisions we’ve blogged about here, here and here, there have been several rulings in patent, trademark and copyright cases in the EDVA in the past ten days. Here’s a quick summary of several:
Magistrate Judge Stillman Disqualifies Defense Counsel in Trademark Case
In a case that is an object lesson for any litigator, Magistrate Judge Stillman disqualified the trial counsel for a defendant in a trademark infringement suit because the counsel’s concurrent representation of the defendant’s trademark attorney created an unwaivable conflict of interest. Wink, Inc. v. Wink Threading Studio, Inc., Case No. 2:10CV450, 2011 U.S. Dist. LEXIS 82379 (E.D.Va. July 26, 2011) (found here). In defense of a willful trademark infringement claim, the defendant relied on the advice of its trademark counsel. The defendant’s trial counsel represented the trademark attorney in the litigation for purposes of responding to a document subpoena and defending the trademark attorney's deposition. Problems arose when the trademark counsel gave deposition testimony which directly contradicted the defendant’s testimony. As the Court pointed out, the trial counsel could not fulfill his duty of loyalty to both clients without undermining the interests of the other. Further, the trial counsel had failed to have any meaningful consultation with either client regarding the conflict.
Judge Smith Declines Jurisdiction Over Counterclaim for Invalidity After Entering Summary Judgment of Non-Infringement
In The Fox Group, Inc. v. Cree, Inc., Case No. 2:10CV314, 2011 U.S. Dist. LEXIS 79019 (E.D.Va. July 20, 2011) (Smith, J.), found here, Fox conceded that it could not prove infringement under the Court’s claim construction and agreed to entry of summary judgment of non-infringement in order to pursue an appeal. Cree, however, refused to dismiss its counterclaims of invalidity and unenforceability, arguing that the possibility of reversal was enough to create a “definite and concrete dispute” which gave the Court declaratory judgment jurisdiction. Judge Smith disagreed, holding that to accept Cree’s position would require it “to find that its claim construction is likely erroneous, and, therefore, tacitly abandon that ruling” and that “a justiciable dispute cannot be predicated on the hypothetical results of a hypothetical appeal.”
Judge Brinkema Awards Damages for Willful Copyright Infringement
In Seoul Broadcasting Sys. Int’l., Inc. v. Ro, Case No. 1:09CV433, 2011 U.S. District LEXIS 82377 (E.D.Va. July 27, 2011) (found here), Judge Brinkema entered summary judgment of liability for copyright infringement for the unauthorized reproduction of Korean television shows by several Korean video rental stores in Northern Virginia. Judge Brinkema issued a permanent injunction against all of the defendants and awarded statutory damages for willful infringement against one defendant who had been found civilly liable for copyright infringement in the past and had been convicted of criminal copyright infringement. The Court found that it could have awarded a range of statutory damages between $750 and $150,000 per act of infringement but ultimately settled on an award of $15,000 per infringement.
