Smart Wearable Technologies Inc. v. Tomtom, Inc. (16-cv-00049, W.D. Virginia).

  • October 3, 2017

Plaintiffs Richard Goren, a Massachusetts attorney, his company Small Justice LLC, and Christian DuPont had sued defendants Xcentric Ventures, LLC and Ripoff for copyright infringement, libel, interference with a contract, and violation of Massachusetts 2019 unfair competition statute. Goren had represented DuPont in an unrelated matter; DuPont had subsequently authored two reports critical of Goren and posted them to Ripoff Report, a 201cconsumer protection 201d website owned by Xcentric that allows users to post complaints about companies or individuals. As part of the posting process, the user grants Ripoff Report an irrevocable exclusive license to the copyright, and further warns users that, once posted, the post will not be taken down even at the request of the poster. When DuPont failed to appear in the libel suit that resulted, Goren was granted an injunction prohibiting DuPont from publishing the reports, and was awarded ownership of the copyright of the reports. He then filed the suit that is the subject of this appeal, seeking the enjoin Ripoff Report from continuing to post the complaints and to require them to take all actions necessary to have cached versions and links removed from Bing, Google, and Yahoo.

Xcentric moved to dismiss the complaint, which Judge Casper granted in part. Specifically, Judge Casper dismissed the libel, tortious interference, and parts of the unfair competition counts as blocked by the Communications Decency Act, 47 U.S.C. 00a7 230, which shields interactive computer service providers from liability for information provided by another content provider. The court rejected Goren 2019s argument that, by holding itself out as the copyright holder and by having 201cdirected 201d internet search engines to list the postings, Ripoff Report itself became the information provider. Following discovery, Judge Casper granted Xcentric summary judgment on the remaining copyright and Ch. 93A claims, finding the 201cbrowsewrap 201d license conclusive on the copyright claims. Judge Casper modified the judgment to find that the browsewrap license failed to meet the requirements of transferring an exclusive copyright license, and that only an irrevocable non-exclusive license had been granted; this distinction did not, however, change the outcome. Finally, Judge Casper awarded $124,000 in fees and costs to Xcentric pursuant to 17 U.S.C. 00a7 505.

The First Circuit Court of Appeals reviewed the dismissal of the libel and tortious interference claims de novo and affirmed. The 00a7 230 immunity is to be liberally construed, to prevent deterrence of on-line speech; so construed, Xcentric could not be considered to be 201cresponsible 2026 for the creation 201d of the information, and immunity would apply. Continuing to apply de novo review, the Court affirmed the copyright decision, rejecting Goren 2019s argument that the license 201ccontract 201d failed because no consideration was given to DuPont 2013 while consideration is necessary to support an irrevocable license, actually posting the complaints was sufficient consideration under the circumstances. Notably, the Court determined that it need not decide whether a browsewrap agreement can satisfy the exclusive license writing requirement of 17 U.S.C. 00a7 204, leaving this issue open in the First Circuit.

The Court reviewed the fee award for abuse of discretion. After quickly dismissing Goren 2019s contentions that Xcentric was not a prevailing party or that its fee motion was untimely, the Court looked to the Supreme Court 2019s Fogerty factors in analyzing the decision to award fees 2013 201cfrivolousness, motivation, objective unreasonableness [both factual and legal] and the need in the particular circumstances to advance considerations of compensation and deterrence. 201d Characterizing review of the application of these factors as 201cextremely deferential, 201d

The Court found no fault with Judge Casper 2019s characterization of the legal and factual basis for plaintiffs 2019 claims as 201cat best questionable, 201d with its noting that Xcentric fought the case for more than two years without the prospect of a damage award, or with its determination that Xcentric prevailed on all counts. Finally, the Court noted that a showing of bad faith on the plaintiffs 2019 part is not a requirement for a fee award pursuant to the statute. The fee award was thus affirmed as well.

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