Maryland Intellectual Property Law Blog : Maryland Intellectual Property Lawyer & Attorney : Brian Wm. Higgins : Serving Baltimore, Columbia, Frederick

     Hat tip to the Womble Carlyle Trade Secret Blog for publishing interesting statistics about trade secret lawsuits filed in the US. In its post a few weeks ago, the Womble bloggers reported the results of their search of the Westlaw federal database (federal district, appeals and Supreme Court cases) for the term "trade secrets," which returned 905 cases for 2007. That was a 20% increase over the number of published cases in 2006 (754 cases), and a 231% increase since 1997 (273 cases). Check out their post for cautionary notes relating to the results. The bloggers' conclusion: "it would be hard to deny that something's going on."

     Womble's research also found that there were 79 cases reported in 2007 relating to the federal Computer Fraud & Abuse Act, which was a 46% increase over 2006 (54 cases), and a 780% increase over 1997 (1 case).

     Out of curiosity, I searched Lexis' "MD Federal & State Cases, Combined" database for "trade secrets" and found 7 reported cases in 2007, compared to 14 in 2006 (not all of which are actual trade secret cases):

• Phoenix Renovation Corp. v. Rodriguez, 2007 U.S. App. LEXIS 29253 (4th Cir. 2007) (unpublished)
  
  
• GO Computer, Inc. v. Microsoft Corp., 508 F.3d 170; 2007 U.S. App. LEXIS 26722 (4th Cir. 2007)
  
  
• Darden v. Peters, 488 F.3d 277; 2007 U.S. App. LEXIS 12115 (4th Cir. 2007), cert. denied, 2008 U.S. LEXIS 2125 (2008)
  
  
• DRC, Inc. v. Custer Battles, LLC, 2007 U.S. App. LEXIS 11518 (4th Cir. 2007) (unpublished)
  
  
• NaturaLawn of Am., Inc. v. West Group, LLC, 484 F. Supp. 2d 392; 2007 U.S. Dist. LEXIS 29774 (4th Cir. 2007)
  
  
• Tobacco Tech., Inc. v. Taiga Int'l N.V., 2007 U.S. Dist. LEXIS 13083 (D. Md. 2007)
  
  
• Conaway v. Deane, 401 Md. 219; 2007 Md. LEXIS 575 (Md. 2007)

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• Copyright Office Publishes Notice of Proposed Rulemaking to Amend Current Regulations Governing Group Registrations

In its Notice of Proposed Rulemaking, the Copyright Office is proposing to amend 37 CFR Part 202, the current regulations governing group registrations, to allow the grouping of individual works on one registration application. Under the proposal, applicants who take advantage of the group registration option would be required to file their claims electronically. Comments are due on or before May 30, 2008. The stated purpose of the amended regulations is to increase online registrations (link to Copyright Office).

• RIAA Lawsuit Victory Against Individual Getting a Second Look

William Patry at The Patry Copyright Blog posted an interesting article recently concerning one of the most watched music industry lawsuits (see "Breaking Development in Thomas Making Available Case"). As Patry notes, the case of Capitol v. Thomas in Minnesota "has been watched worldwide," due primarily to the large amount of the jury verdict awarded against Ms. Thomas (who, by the way, has moved for a new trial on the basis that the amount awarded was unconstitutionally excessive). As discussed by Patry and reported by the Recording Industry v. The People Blog, attention given the jury award has now shifted after the District Court "adjourned the briefing schedules for the determination of whether it had committed a 'manifest error of law' when it accepted the RIAA's proposed jury instruction that merely 'making available' [a music file] constituted an infringement of the distribution right and overlooked the controlling Eighth Circuit case, National Car Rental System v. Computer Associates, which had held that there can be no infringement of the 17 USC 106(3) 'distribution right' without actual dissemination of copies or phonorecords."

For other RIAA posts on this website, see "Recording Industry Follows Through on Threats to Sue" and "Downloading Music Benefits Both Consumers and Artists, Study Finds".

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     The Maryland State Bar Association - Intellectual Property Section is co-sponsoring a rountable discussion this Wednesday concerning IP licensing issues. The "IP Licensing Issues from an In-House Perspective: A Roundtable Discussion" event is being presented shortly after registration beginning at 8:00 AM. The event is being co-hosted by Offit Kurman, in their Maple Lawn, MD, office, which is not too far from I-95 and even closer to MD-29.

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     Below are summaries of recent IP-related lawsuits filed in the the U.S. District Court for the District of Maryland in 2008 (source: Justia).

• Magnus v. Association of Pet Dog Trainers, No. 8:2008cv00850; filed April 4, 2008; assigned to J. Williams

   Plaintiff Vicki Lynn Magnus, a Waldorf, MD, resident, filed this declaratory judgment action against the Association of Pet Dog Trainers (APDT), a New Jersey company based in Greenville, SC. APDT allegedly owns the registered mark for its acronym name. According to her complaint, Magnus, a former member of APDT, created an Internet message board on December 1, 2003, "for discussion of issues of common interest" among other APDT members. Claiming the board was protected under the doctrine of fair use (copyright), the Lanham Act (trademark), and free speech under the First Amendment, Magnus received a cease and desist letter from APDT in 2006. When she objected, her membership was allegedly terminated "without cause." About the same time, APDT sent a "take down" letter to the Internet Service Provider and host of the message board, which complied with the request. Magnus is seeking relief in the form of a declaration that her use of the APDT acronym is lawful, noninfringing, and qualifies as a fair use.

• Nutramax Laboratories, Inc. v. Theodosakis, No. 1:2008cv00879, filed April 7, 2008; assigned to J. Blake

     Nutramax is a Maryland company based in Edgewood, MD. Defendants are Jason Theodosakis, M.D., and Supplement Testing Institute, Inc. (STI), which allegedly sell nutritional supplements, including those allegedly covered by U.S. Patent No. 6,797,289, for “Use of anabolic agents, anti-catabolic agents, antioxidant agents, and analgesics for protection, treatment and repair of connective tissues in humans and animals.” Claim 1 of the ‘289 patent covers a “synergistic combination of an aminosugar and avocado/soybean unsponifiables [ASU].” Nutramax sells Cosamin® ASU and Avoca ASU® under the '289 patent. This is the second lawsuit filed this year by Nutramax in which it asserts the '289 patent (see here).

• National Fallen Firefighters Foundation v. TWL Corp., No. 1:2008cv00896, April 9, 2008; assigned to J. Davis

      This trademark infringement lawsuit involves the mark EVERYONE GOES HOME owned by NFFF, and defendants use of EVERYBODY GOES HOME in connection with a training simulation program.

• Bill Me Later, Inc. v. MODASolutions Corp., No. 1:2008cv00897, filed April 9, 2008; assigned to J. Blake

     This trademark infringement, trademark dilution, and unfair competition lawsuit involves the mark BILL ME LATER, allegedly owned by plaintiff, who is seeking monetary damages, and attorney's fee, among other relief, from Canada-based MODASolutions.

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     Employees of Maryland companies with R&D, manufacturing, and other  capabilities located outside the US may be tempted to collaborate with their counterparts located abroad. It's important to remember, however, that exporting technology information outside the US is highly regulated by several US agencies.

     If the exportation of technology information to overseas colleagues (or to anyone else) is for the sole purpose of filing a patent application outside the US, a license to export that information must first be obtained from the U.S. Patent & Trademark Office (PTO). 35 U.S.C. § 184 provides the legal basis for that requirement:

"Except when authorized by a license obtained from the Commissioner of Patents a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country. A license shall not be granted with respect to an invention subject to an order issued by the Commissioner of Patents pursuant to section 181 of this title [Patent Secrecy Act] without the concurrence of the head of the departments and the chief officers of the agencies who caused the order to be issued. The license may be granted retroactively where an application has been filed abroad through error and without deceptive intent and the application does not disclose an invention within the scope of section 181 [i.e, secrecy] of this title."

     The term "application" includes patent applications and any modifications, amendments, or supplements thereto, or divisions thereof.

     For information concerning the consequences of failing to comply with the requirements set forth above, continue reading...

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     By an overwhelming majority, the House of Representatives on May 8, 2008, passed, by roll call vote, H.R. 4279, the "Prioritizing Resources and Organization for Intellectual Property (Pro-IP) Act of 2008." According to govtracks, the vote was held under a suspension of the rules to cut debate short and pass the bill (a move that needed a two-thirds majority). The totals were 408 Ayes, 11 Nays, 12 Present/Not Voting. The Pro-IP Act has the stated purpose "To enhance remedies for violations of intellectual property laws."

          Here's how Maryland's delegation voted:

• MD-1      Gilchrest, Wayne [R]:  No Vote     
• MD-2      Ruppersberger, C.A. [D]:  Aye
• MD-3      Sarbanes, John [D]:  Aye 
• MD-4      Wynn, Albert [D]:  Aye      
• MD-5      Hoyer, Steny [D]:  Aye
• MD-6      Bartlett, Roscoe [R]:  Aye
• MD-7      Cummings, Elijah [D]:  Aye 
• MD-8      Van Hollen, Christopher [D]:  Aye

     For more coverage of the legislation discussed previously on this website, click here. For coverage by others, see, for example, Counterfeit Chic ("Name is Destiny: Thumbs Up on Pro-IP Act"). 

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     Below are summaries of recent IP-related lawsuits filed in the the U.S. District Court for the District of Maryland in 2008 (source: Justia).

• Emerson Electric Co. v. John Does 1-10, No. 1:2008cv00734; filed March 20, 2008; assigned to J. Blake

     Plaintiff Emerson Electric, a Missouri company, states "This is a Complaint for an injunction, damages, and other appropriate relief to prevent unknown Defendants from engaging in a widespread fraudulent internet scheme that involves the infringement and misappropriation of Plaintiff’s trademarks. In this scheme, Defendants have impersonated Emerson and its chairman David N. Farr in emails and on internet job boards to trick unsuspecting internet users into believing they have obtained jobs with Emerson. In their supposed capacity as Emerson employees, these victims have – on instruction from Defendants – unwittingly cashed fraudulent United States Postal Service money orders or certified checks on behalf of Defendants. Defendants’ scam has caused Emerson irreparable harm, damaged its reputation, damaged its [EMERSON] mark, caused confusion in the marketplace as to the origin of the job offers and Emerson’s role in the scam, and caused Emerson to incur significant expenses and utilize significant resources in an effort to halt the scammers and stop the fraud."

     Plaintiff alleges trademark infringement under the Lanham Act (15 U.S.C. § 1114), false designation of origin under the Lanham Act (15 U.S.C. § 1125(a)), unfair competition/false advertising under the Lanham Act (15 U.S.C. § 1125(a)), Maryland common law unfair competition against all defendants.

• VTran Media Technologies, LLC v. Antietam Cable Television, Inc., No. 1:2008cv00739; filed March 21, 2008; assigned to J. Garbis

• Almo Music Corporation et al v. Three Pols, LLC, No. 1:2008cv00747; filed March 25, 2008; assigned to J. Motz 

     This copyright infringement case was filed by plaintiffs Almo Music Corporation, Mighty Underdog Music, Sony/ATV Tunes LLC, Odnil Music Limited, Fifty-Six Hope Road Music Limited, Get Jet Music, Inc., Cherry Lane Music Publishing Co., Inc. and Dimensional Music of 1091 against defendants Three Pols, LLC, Joshua E. Gursky and Grant R. Gursky.  

• Broadcast Music, Inc. et al v. Carullo Steele, Inc., No. 1:2008cv00824; filed April 2, 2008; assigned to J. Bennett

     This copyright infringement case was brought by plaintiff Broadcast Music, Inc. (BMI), the licensee of copyrighted works owned by co-plaintiffs EMI Blackwood Music, Inc., House of Cash, Inc., Songs of Universal, Inc., EMI Virgin Songs, Inc., Elijah Blue Music, Unichappell Music, Inc., ABKCO Music, Inc., EMI Algree Music Corp., Wayne Hodge, Sony/ATV Songs, LLC, Leon E. Brooks, III and Ronnie Gene Dunn.

     Plaintiffs allege that defendants Carullo Steele, Inc., owner/operator of Freddies Bel Air (Bel Air, MD), and Stephen J. Carullo, Jr., an alleged officer of Carullo Steele, Inc., publicly performed copyrighted works owned/licensed by plaintiffs.

     Max Stadfeld of Offit Kurman, P.A. (Owings Mills, MD) filed the complaint on behalf of the plaintiffs.

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