Here is the First Circuit’s recent decision upholding a preliminary injunction in a copyright case out of D. Puerto Rico. The sole issue on appeal was the holding on substantial similarity. The products were stuffed animals, specifically, frogs. Or, more specifically, the Puerto Rican tree frog, the Coqui. I’ve tried to find a picture of the defendant’s stuffed animal frog with no luck.
When I discussed the copyright case Gatehouse Media v. The New York Times over the weekend I hadn’t reviewed the court docket, and hadn’t been aware that Judge William Young had pulled the trick that he is famous for (at least locally): when a party requests a preliminary injunction, he responds by ordering an expedited trial. And I do mean expedited.
The case was filed on December 22, 2008.
Docket entry 13, issued the same day, states in relevant part (cleaned up a bit for readability):
Electronic Clerk’s Notes for proceedings held before Judge William G. Young: Motion Hearing held on 12/22/2008 re MOTION for Preliminary Injunction and MOTION for Temporary Restraining Order filed by Gatehouse Media Massachusetts, Inc.
The Court rules denying Motion for TRO; because the matter will be collapsed with a trial on the merits. The Court is reserving ruling on Motion for Preliminary Injunction; ( Jury Trial set for THE RUNNING TRIAL LIST AS OF 1/5/2009 09:00 AM before Judge William G. Young.); Counsel are to cooperate with one another re: discovery. Counsel are to contact the clerk as to the schedule. A 4 week jury trial is scheduled for Jan 5 at this time. If counsel settle the case, a phone call is all that is necessary.
Translation – be ready for trial at 9:00 a.m. Monday, January 5, 2009, nine business days after suit was filed. Maybe we’ll reach you, maybe we won’t (that four week case may settle), but you’d better be ready. Oh, and enjoy the two holiday weekends between now and then.
This is classic Judge Young, and he’s been doing it from the first day he was appointed to the federal bench over 20 years ago.
The moral: if you file a suit in federal court and you are seeking a preliminary injunction, be prepared for the risk that you might draw Judge Young, in which case, be very prepared. A super-expedited trial like this favors the defense, since the plaintiff will have great difficulty preparing for trial in two weeks. Assuming you don’t want to be prepared for trial on the day you file suit, the way to avoid this, in this district, is to file suit and see what judge you draw. If you draw Judge Young, you can decide whether you want to file for a PI and risk an immediate trial. There’s no law that states that you must file your PI motion simultaneous with the complaint, but filing the PI motion simultaneous with filing suit deprives the plaintiff of that choice.
In this case, Gatehouse Media could have adopted a different strategy, as follows:
- File suit and see what Judge is assigned to the case. If Judge Young is assigned, do not file a preliminary injunction motion, knowing that this risks an immediate trial.
- As you publish your local news each week, file copyright registrations for each issue. This is inexpensive, and so simple it could be done by an intern or paralegal. If Boston.com adds towns (beyond Newton, Needham and Waltham), register the weekly publications for those towns as well.
- By registering the copyrights within three months following publication, Gatehouse Media would be entitled to recover statutory damages for each publication, as well as attorney’s fees incurred in prosecuting that infringement. Statutory damages may be as great as $150,000 per infringement in cases of “willful” infringement – that is, $150,000 per publication. If Boston.com is aggregating and publishing the Gatehouse Media news for Newton, Needham and Waltham each week, Boston.com is looking at potential damages of as much as $450,000 per week. By the time the case goes to trial in the ordinary course (say a year), Boston.com is risking damages in the tens of millions of dollars. Would that financial risk be likely to lead to a settlement favorable to Gatehouse Media? You betcha!