In a major victory for our client, Lewis & Lin LLC obtained a dismissal of a proposed class action lawsuit alleging violation of the federal Telephone Consumer Protection Act (“TCPA”). The TCPA, enacted in 1991, restricts telephone solicitations (i.e., telemarketing) and the use of automated telephone equipment. It also limits the use of automatic dialing systems, prerecorded voice messages, text messages, and faxes in consumer marketing.
The plaintiff’s complaint, filed in federal court in Florida, alleged that defendant violated the TCPA by faxing him an unsolicited advertisement without the required “opt-out” notice. Plaintiff sought statutory damages, plus attorney’s fees, costs, and injunctive relief, on behalf of himself and all others similarly situated.
Immediately upon notice of the case, Lewis & Lin made an offer of judgment in accordance with Rule 68 of the Federal Rules of Civil Procedure. We then filed a motion to dismiss the case based on the mootness of the named plaintiff’s claim. Plaintiff argued that the attempt to “pick off” the named plaintiff in a class action suit was inappropriate.
In its decision, the district court judge recognized the existence of a split of authority, both across federal circuits and within the 11th Circuit, about whether a defendant can moot a putative class action claim by making an offer that satisfies only the individual plaintiff’s entire claim. However, the court agreed with Lewis & Lin’s position, that “allowing a case, not certified as a class action and with no motion for class certification even pending, to continue in federal court when the sole plaintiff no longer maintains a personal stake defies the limits on federal jurisdiction.” Thus, the court concluded, Lewis & Lin’s offer of judgment mooted plaintiff’s claims “notwithstanding the fact that [plaintiff] has alleged a class action claim in his complaint. Accordingly, the complaint was dismissed with prejudice. The case is Barr v. International Dental Supply Co., No. 13-CIV-61981 (S.D. Fla.).
The Florida 4th District Court of Appeal has affirmed a lower court’s dismissal with prejudice of unfair trade practice claims against Lewis & Lin’s client, a leading digital marketing technology company.
The plaintiff had filed an action for violation of the Florida Deceptive and Unfair Trade Practices Act (“FDUTPA”), seeking unspecified damages as well as declaratory and injunctive relief.
In the trial court, Lewis & Lin filed a Motion to Dismiss, arguing that the case belonged in arbitration pursuant to a mandatory arbitration clause in an unsigned licensing agreement. The court agreed with Lewis & Lin’s position, ruling that under Florida precedent, arbitration clauses can be enforced even when they are part of an unsigned agreement if the parties performed under the terms of the contract.
On appeal, plaintiff argued that the trial court erred by not holding an evidentiary hearing, that the FDUPTA claim was not governed by the licensing agreement, and that the arbitration clause was unenforceable as to its claims. Lewis & Lin argued that the trial court did not commit error, that the plaintiff’s claims were properly within the scope of plaintiff’s obligation to arbitrate, and that plaintiff had waived any right it may have had to litigate.
In a one-word per curiam decision, Judges Stevenson, May and Gerber affirmed the decision of the trial court, setting in place Lewis & Lin’s victory for our client.
On the heels of New York Fashion Week (#NYFW), Lewis & Lin achieved a victory for our client, Kirat Anand, in a case involving a fashion designer’s liability for alleged copyright infringement. Lewis & Lin’s client, Mr. Anand is the founder and lead designer for the KAS NEW YORK™ fashion label, owned by Dani II, Inc.
Bonita Fabrics, Inc. obtained a default judgment in California against our client, and sought to enforce that judgment in New York. Lewis & Lin filed a motion to dismiss on the grounds that the original California court lacked personal jurisdiction over Mr. Anand because he did not personally conduct any business in California, nor did he or Dani II sell the allegedly infringing garments, or any garments, in California. Judge Robert Sweet of the Southern District of New York agreed with Lewis & Lin on all points and dismissed the case in its entirety.
Copyright litigation is an unfortunate cost of doing business in the fashion industry, as are the tactics employed by lawyers who make a living bringing dubious infringement suits. It is even more unfortunate when such lawyers contact or involve customers in their attempts to extract exorbitant settlement payments.
The decision in the case, Bonita Fabrics, Inc. v. Kirat Anand, an individual, dba KAS New York, 12 Misc. 408 (S.D.N.Y.), can be accessed here.
About Lewis & Lin, LLC:
Lewis & Lin, LLC is an Internet and Intellectual Property law firm based in Brooklyn, New York. The firm’s highly experienced legal team has helped clients worldwide secure their IP rights, as well as anticipate and resolve a diverse range of IP issues. Lewis & Lin’s particular expertise lies in Internet transactions and disputes, including domain name licensing and sale agreements, domain name hijacking claims, Uniform Domain Name Dispute Resolution Policy (UDRP) disputes, and Anti-Cybersquatting Consumer Protection Act (ACPA) litigation. The team also expertly handles licensing agreements, website user agreements, service agreements and privacy policies, as well as Internet-related trademark and copyright litigation. For further information, visit www.ilawco.com.
The U.S. District Court for the Eastern District of New York issued a judgment in favor of our client Millennium TGA, an award-winning producer of online media. Millennium operates 13 internet websites through which it releases entertainment content through subscription-based online services or video-on-demand.
The defendant, Joel Leon, spent several years stealing and redistributing Millennium’s copyrighted works. Mr. Leon used passwords that he hacked or stole from others, and then copied or posted Millennium’s content through blogs and one-click hosting sites. The material that defendant downloaded included full-length movies and photosets that Millennium made available only to paying subscribers.
Lewis & Lin commenced litigation against Leon, seeking damages for copyright infringement and violation of the Computer Fraud and Abuse Act. When defendant failed to answer or otherwise appear in the action, we sought entry of a default against him, and promptly appeared at an inquest hearing before a U.S. Magistrate Judge. Upon our motion, the court awarded both actual copyright damages and damages relating to our client’s investigation of Mr. Leon’s activities. The recommendation of the Magistrate Judge was adopted by U.S. District Judge Margo Brodie, and a judgment was issued. The case is Millennium TGA v. Leon, No. 12 CV 1360 (MKB) (EDNY).
Lewis & Lin obtained another UDRP victory this week, defending the domain name <palace.com> against a complaint filed by the owner of The Palace of Auburn Hills, home to the Detroit Pistons.
The complainant had argued that the domain name was confusingly similar to its registered trademark THE PALACE OF AUBURN HILLS, and its common law rights to the mark PALACE. Complainant further argued that our client lacked rights or legitimate interests to the domain name, and that our client registered and was using the domain name in bad faith.
Lewis & Lin defended the domain dispute on three grounds. First, the domain name <palace.com> was not identical or confusingly similar to a mark the complainant had rights to. Regarding complainant’s federally-registered trademark, its five-word mark combined the generic word “palace” with the geographic modifier “of Auburn Hills,” and therefore obtained distinctiveness only in the combination as registered. Regarding complainant’s allegation that it had common law rights to the term “Palace,” complainant had failed to offer any evidence in support of its claim.
Second, Lewis & Lin pointed out that our client had spent several years prior to learning of the UDRP to prepare to use the domain name in connection with an online gambling business that it was contemplating. Lewis & Lin submitted proof of our client’s actions in creating a website, executing an SEO and marketing strategy, obtaining required licenses, and entering into contracts to develop its business.
Finally, Lewis & Lin argued that the complainant failed to show that our client both registered and used the domain name in bad faith—a required element under the UDRP.
A three-member panel of the World Intellectual Property Organization (“WIPO”) agreed with Lewis & Lin on all three points, ruling for our client, and denying the complaint in its entirety. The full decision is available here.