Justia U.S. 1st Circuit Court of Appeals Opinion Summaries

The parties agree that defendant has used the mark continuously since 1998, Plaintiff claims, and defendant disputes, use since 1989. The defendant applied for registration of the mark in 1998 and the USPTO issued registration in 2002. The plaintiff applied for registration in 2000. The USPTO initially denied, but in 2008 granted, registration. The defendant sent a cease-and-desist letter in 2000, but plaintiff continued to use the mark. The parties negotiated and, in 2005, entered an agreement under which defendant would advertise on plaintiff's website. The relationship broke down and, in 2008 defendant petitioned the USPTO to cancel plaintiff's registration; the petition is still pending. Plaintiff sought declaratory judgment and defendant counterclaimed. The district court entered a preliminary injunction in favor of defendant. The First Circuit vacated and remanded. The district court erred in presuming irreparable harm upon finding a likelihood of success on the merits, in a case where there has been an excessive delay in seeking relief.

After successfully defending an appeal from a verdict that it had not infringed a song copyright, ASCAP obtained an award of about $62,000 in attorney fees. The First Circuit affirmed. The song copyright was timely registered and, in any case, failure to timely register would not bar an award of fees to a party successfully defending an infringement claim. ASCAP was a prevailing party under 17 U.S.C. 505 and the award was reasonable.