Maryland Intellectual Property Lawsuits Sharply Up In 2012, Led By Surge in Copyright Cases

          More than 150 intellectual property lawsuits were filed in Maryland's federal district court in 2012, a 45% increase over 2011 levels, 75% ahead of 2010.  If the individual number of actual plaintiffs and nominal counterclaim plaintiffs in cases with multiple parties are counted, 2012 will be remembered as a very litigious year for patent, trademark, and copyright owners.  Nationally, the number of new IP lawsuits may have increased as much as 30%, according to some sources.

          The first chart below shows a spike in patent litigation activity in Maryland in 2012 compared to the previous four years. According to records available from Justia.com and PACER, plaintiffs filed 45 patent lawsuits in the U.S. District Court for the District of Maryland (Greenbelt and Baltimore divisions combined) in 2012, compared to just 35 lawsuits in 2011 and 22 in 2010 (45% and 22% differences, respectively).

 

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Maryland Court Denies Electronic Arts' Fair Use Defense in Bouchat's Latest Copyright Infringement Case

           In Bouchat v. NFL et al., the U.S. District Court for the District of Maryland considered Defendants' respective motions for summary judgment based upon their copyright fair use defenses (17 U.S.C. Sec. 107).  In doing so, the Court granted Defendants NFL Enterprises LLC's and Baltimore Ravens L.P.'s motions, but denied Defendant Electronic Arts' (EA Arts) and NFL Properties LLC's motions.  On December 21, 2012, Judge Garbis referred the EA matter to Magistrate Judge Gesner for possible settlement/ADR resolution.

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Number of IP Lawsuits in Maryland Increases in 2011

           Patent litigation activity in Maryland increased in 2011 compared to the previous four years, as the chart at right shows. According to records available from Justia.com and PACER, plaintiffs filed 35 patent lawsuits in the U.S. District Court for the District of Maryland (Greenbelt and Baltimore divisions combined) last year, compared to just 22 lawsuits in 2010 and 31 in 2009 (59-percent and 13-percent differences, respectively).

           Plaintiffs filed 38 copyright lawsuits in the Maryland federal court in 2011, compared to 27 lawsuits in 2010 (a 41-percent difference) and 27 lawsuits in 2009 (a 12-percent difference).

          Bucking the upward trend, trademark plaintiffs brought 34 lawsuits in 2011 compared to 40 in 2010 (a 15-percent slide), but matched the number of lawsuits in 2009.

          All combined, plaintiffs brought 107 copyright, patent, and trademark lawsuits in Maryland's federal district court in 2011, a 20-percent increase over 2010, reversing a 10-percent drop in filings from 2009 to 2010 (note, these figures and those shown in the charts do not include cases with multiple plaintiffs or cases having multiple nominal counterclaim plaintiffs).

          Maryland's neighboring federal district courts saw significantly more IP litigation last year: Delaware, 499 combined cases (compared to 272 in 2010); Virginia, 204 cases (compared to 176 in 2010); Pennsylvania, 265 cases (compared to 255 in 2010).

 

"Madden NFL" Target of Bouchat Copyright Lawsuit

          The National Football League (NFL) Properties, Inc. and Electronic Arts (EA), maker of, among other computer video games, "Madden NFL 11," were sued by Frederick Bouchat for allegedly infringing his copyright in his "Flying B" artwork (pictured at right).  Filed in the U.S. District Court for the District of Maryland (No. 11-CV-02878, Oct. 7, 2011), Bouchat alleges in his complaint that the NFL licensed the infringing logo to EA and then EA reproduced and displayed it on "retro" uniforms worn by players depicted in its video game.

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Bill Would Strengthen Criminal Copyright Infringement Law

          The Senate Judiciary committee will hold a hearing this Thursday, May 26, 2011, to consider S.978  (a bill "To amend the criminal penalty provision for criminal infringement of a copyright, and for other purposes").  The bill, introduced May 12, 2011, by Judiciary Committee member Sen. Amy Klobuchar (D-MN), and co-sponsored by Sen. Chris Coons and Sen. John Cornyn, would amend the criminal copyright law, 18 USC 2319, by adding:

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Number of Maryland IP Lawsuits Drops in 2010

     Plaintiffs filed 27 copyright lawsuits in the U.S. District Court for the District of Maryland (Greenbelt and Baltimore divisions combined) in 2010, according to records available from Justia.com and PACER.  That level compares to 34 lawsuits in 2009 (a 21-percent difference) and 40 suits in 2008 (a 33-percent slide).

     Patent litigation activity also declined in 2010 compared to previous years.  Twenty-two patent lawsuits were filed last year, compared to 31 lawsuits in both 2009 and 2008, respectively (a 29-percent downward difference).

     Bucking the trend, trademark plaintiffs brought more lawsuits in 2010 compared to earlier years.  In 2010, 40 trademark lawsuits were filed, compared to just 34 in 2009 (an 18-percent difference) and 36 in 2008 (11-percent).

     All combined, plaintiffs brought 89 copyright, patent, and trademark lawsuits in Maryland in 2010, a 10-percent drop compared to 2009, and a 17-percent decrease in 2008 levels. 

     Maryland's neighboring districts saw a lot more IP litigation last year: Delaware: 272 combined cases; Virginia: 176 total; Pennsylvania: 255.

 

 

 

Clinic for Writers Planned

Are you an author with questions about finding a reputable literary agent?  Do you have concerns about protecting the copyrights created in conjunction with your written works?  Are you eager to get published but wary of the business decisions involved in protecting and exploiting your intellectual property?  Join the Maryland Lawyers for the Arts and CityLit Project, in partnership with Creative Alliance, for a "Legal Clinic for Writers," during which many of those and other questions may be addressed.  Speakers scheduled to attend include Cynthia Sanders, Esq. and agent Laura Strachan of the Strachan Literary Agency.

Saturday, August 21, 2010
1:30-3:30pm
Creative Alliance
3134 Eastern Avenue
Baltimore, MD 21224

Know Your (Copy) Rights

Today, too many creators take a passive attitude toward their copyrights.  So say the authors of Columbia University Law School's Keep Your Copyrights website. 

Geared toward artists, but also a good resource for publishers, agents, and distributors, the site is designed to help creators hold on to their copyrights, to license their rights on author-friendly terms, and in general to encourage creators to take a more active role in managing the life of their creative work.  The premise for the website is the assumption that publishers expect artists to be unfamiliar with their legal rights under copyright and contract law, and assume they wouldn't know a good copyright contract clause from a bad one, or that creators, eager to publish and make money, will be too intimidated to object to "form contracts" or other one-sided contracts pushed by publishers and distributors. 

One of the most useful parts of the website is the easy-to-read and understand sample contract provisions culled from example contracts, each "creator-friendly" contract clause labeled with a green THUMBS-UP!  while "creator-unfriendly" contract clauses are labeled with an orange THUMBS-DOWN!  Contract terms that ask the creator to give up too much of his or her rights for little in return are characterized as "incredibly overreaching" and shown with a red claw.

This website is an excellent resource for those looking for example/sample contracts, such as those involving rights of exclusive use, non-exclusive use, grant back, new media rights, changes to the work, geographic scope, duration of grant, general assignment of copyright, notice, works made for hire, reversion of rights.  The website includes content specific to writers, photographers, filmmakers, musician, visual artist, contest entry form creators, user-generated content submissions, commissioned works, literary authors, journalists, academic authors, and video game designers.

Related: for those looking to allow others to publish, copy, and distribute works on-line under a creative commons license should review the Creative Commons nonprofit corporation website.

Litigation Update: May 2010 District Court Filings

   The following cases are reported as being filed in the U.S. District Court for the District of Maryland in May 2010 (source: Justia.com):

  • Patent dockets:
    • Genzyme Corporation v. Watson Laboratories, Inc., No. 1:2010cv01323 (filed May 24, 2010); this Hatch-Waxman patent infringement lawsuit was brought by Genzyme after Watson sought Food and Drug Administration (FDA) approval to market in the US a generic version of the company's Renvela(R) drug product (sevelamer carbonate).  According to FDA information, Genzyme, based in Cambridge, MA, is the New Drug Applicant for this reference listed drug, which covers oral suspensions and tablet forms.  Renvela is indicated for "phosphate binding," and, according to Genzyme's website, is a "first-line monotherapy for controlling serum phosphorus in patients with Chronic Kidney Disease (CKD) — on dialysis without calcium or metal accumulation."  Genzyme's patent exclusivity reportedly extends until September 16, 2014.  
       
    • MIH International, LLC v. Weber Orthopedic, Inc., No. 8:2010cv01127 (filed May 5, 2010)

     
  • Trademark dockets:
    • Gifford's Dairy, Inc. v. Gifford's Holdings, LLC, Gifford's Ice Cream & Candy Company, Inc., and Deal Metrics, LLC., No. 1:2010cv01294 (filed May 20, 2010); Gifford's Ice Cream & Candy Co., based in Silver Spring, MD, calls itself Washington, DC's oldest ice cream company (with retail stores in Baltimore, Bethesda, Chevy Chase, and Rockville, MD, and downtown DC).  Gifford's Dairy, based in Skowhegan, ME, is the owner of the registered trademarks GIFFORD'S and GIFFORD'S ICE CREAM FAMILY OWNED THE ICE CREAM STAND ICE CREAM

  • Copyright dockets:
    • Advanced Education Systems, LLC d/b/a TrainingPro v. MTI Services Corporation d/b/a Mortgage Training Institute, No. 1:2010cv01253 (filed May 18, 2010)

Fourth Circuit: Turnitin's Anti-Plagiarism Service a Fair Use

  • A.V. (Minors) v. iParadigms, LLC, No. 08-1424 and 08-1480 (4th Cir. Apr. 16, 2009)

     Plaintiffs, four minors (who at the time of their complaint attended high schools in McLean, VA, and Tucson, AZ), brought a copyright infringement suit against iParadigms, LLC, based on the company's use of essays and other papers written by plaintiffs for submission to their high school teachers through an online service operated by iParadigms called "Turnitin Plagiarism Detection Service." 

     According to iParadigms, Turnitin offers high school and college educators an automated means of verifying whether works submitted by students are originals and not the products of plagiarism. When a school subscribes to iParadigms’ service, it typically requires its students to submit their written assignments "via a web-based system available at www.turnitin.com or via an integration between Turnitin and a school’s course management system."  The website uses a "click-wrap" agreement (outlining terms and conditions) for site use. Turnitin then compares the submitted paper and produces a report for teachers suggesting a percentage of the work, if any, that appears not to be original. 

     Three of the students submitted papers with a disclaimer objecting to the archiving of their works. Plaintiffs alleged that iParadigms infringed their copyright interests in their works by archiving them in the Turnitin database without their permission.

     The issue for the Fourth Circuit was whether the archiving of the students' works was a "fair use," one of the statutory exceptions to a copyright owner’s bundle of rights (17 U.S.C. § 107). In reaching its decision, the Fourth Circuit considered the four nonexclusive factors in making a "fair use" determination: 

 

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Number of Copyright Lawsuits in Maryland Increases

     Data available from Justia.com shows that the number of copyright lawsuits filed in the U.S. District Court for the District of Maryland (Greenbelt and Baltimore divisions combined) in 2008 (40; see table below comparing Districts) was higher than the number initiated in 2007 (30). The number of defendants named in those lawsuits was also higher year over year (about 120 defendants in 2008 compared to about 60 in 2007).

Copyright Reform?, House IP Committee Nixed, Patent Terms Extended

 

Calling for Copyright Reform

  • "Given where we are on the patent reform debate, is it time to move patent reform off the table and work on copyright reform?" That is the question posed by Kristie Prinz at the Silicon Valley IP Licensing Law Blog.

No More Committee on Intellectual Property

District Court Clarifies How PTO Should Compute Patent Terms

  • Wyeth v. Dudas, No. 07-1492 (D.D.C. 2008): on September 30, 2008, the U.S. District Court for the District of Columbia issued a decision concerning 35 U.S.C. § 154, the procedure the U.S. Patent and Trademark Office (PTO) uses to calculates a patent's term.  Sec. 154 states that a patent grant shall be for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States or, if the application contains certain specific references to an earlier filed application or applications, from the date on which the earliest such application was filed. The 20-year term may be adjusted by the PTO to account for certain delays during prosecution. The Wyeth decision means that the PTO must alter its methods for adjusting patent terms, especially where prosecution lasts longer than three years as measured from the filing date. For a detailed analysis of Wyeth, see Down a Rabbit Hole: Court Slaps Down Patent Office’s ‘Explanation’ of PTA Rules (Patent Baristas).

Copyright News: PRO-IP law, RIAA setback, DMCA rulemaking

Copyright

  • On October 13, 2008, President Bush signed into law P.L. 110-403, the Enforcement of Intellectual Property Rights Act of 2008 (also known as the Prioritizing Resources and Organization for Intellectual Property Act or PRO-IP Act). The law creates a cabinet-level position entitled “Intellectual Property Enforcement Coordinator”, a.k.a. the Copyright Czar, who will “report directly to the president and Congress regarding domestic international intellectual property enforcement programs.” The Czar will have the responsibility of implementing a nationwide plan to combat piracy (sources: Wired; Counterfeit Chic; GovTracks; Copyright Office)
     
  • For more information about the new enforcement law, visit these previous posts:  link1, link2, link3
     
  • Minnesota U.S. District Court Judge Michael Davis overturned a $222,000 judgment against Jammie Thomas, mother of three, after finding he erroneously instructed jurors prior to deliberations that they could find copyright infringement on the basis that Thomas made copyrighted music recordings available on a popular file sharing network.  Davis’ decision means that the Recording Industry Association of America’s (RIAA) copyright infringement litigation campaign, now totaling over 30,000 lawsuits, has never been successful at trial (source: Wired)
     
  • The RIAA reportedly labeled a Texas Tech college student "vexatious" after she refused to pay music record labels $7,400 for allegedly infringing 37 songs on a popular file sharing network (source: Wired)
     
  • The Copyright Office announced a new rulemaking under the provisions of the Digital Millennium Copyright Act (DMCA) concerning the authority of the Librarian of Congress to exempt certain classes of works from the prohibition against circumvention of technological measures that control access to copyrighted works (17 U.S.C. 1201(a)(1)(c)). The purpose of the rulemaking is to determine whether there are particular classes of works as to which users are, or are likely to be, adversely affected in their ability to make noninfringing uses due to the prohibition on circumvention (source: Copyright Office)

Copyright Workshop Series Announced; Information Theft on the Rise

  • Univ. of Maryland University Center's Center for Intellectual Property announces its 2008-2009 asynchronous online workshop series. Courses include "Copyright Law and Integrated Access to Digital Course Materials," "Section 108," and "Fair Use and Balance in Copyright: The Best Practices Model," among others.
     
  • KROLL's Global Fraud Report, release earlier this week, concludes that the average company loss due to fraud increased by 22%, based on input from 890 senior executives worldwide. The fastest growing type of fraud was information theft (27%: up from 22%), which KROLL attributes to, among other things, high staff turnover or weak internal controls.

 

 

Cardin Adds Support to Intellectual Property Enforcement Bill

     On September 10, 2008, Senator Ben Cardin (D-MD) added his support to S. 3325, the Enforcement of Intellectual Property Rights Act of 2008, one day before the Senate Judiciary ordered the bill "to be reported with amendments favorably." Cardin joins eight other co-sponsors of the legislation (Senators Leahy, Bayh, Cornyn, Hatch, Voinovich, Specter, Feinstein, and Whitehouse). Next stop for the bill in consideration by the entire Senate (once placed on the Senate Calendar).

  • Enforcement of copyright laws

     S.3325, introduced July 24, 2008, would authorize the U.S. Attorney General to commence a civil action against any person who engages in conduct constituting a criminal offense under the copyright laws, 17 U.S.C. § 506, upon proof of such conduct by a preponderance of the evidence (compared to the much high criminal standard, the preponderance standard is estimated to result in more enforcement of copyright laws). A person found liable may be subject to a civil penalty under section 504 which shall be in an amount equal to the amount which would be awarded under 18 U.S.C. 3663(a)(1)(B) (i.e., the amount of the loss sustained by each victim as a result of the offense, considering the financial resources of the defendant) and restitution to the copyright owner aggrieved by the conduct.

  • Enforcement of trademark laws

     S. 3325 would enhance remedies for trademark violations. Section 35(b) of the Trademark Act of 1946 (15 U.S.C. 1117(b)) would require a court, in assessing damages for any violation of section 32(1)(a) of the Act, or or in a case involving use of a counterfeit mark or designation, to enter judgment for three times profits or damages, whichever amount is greater, together with attorney’s fee, unless the court finds extenuating circumstances. Treble damages and attorney's fees are authorized where the violation consists of:

(1) intentionally using a mark or designation, knowing such mark or designation is a counterfeit mark in connection with the sale, offering for sale, or distribution of goods or services; or

(2) providing goods or services necessary to the commission of a violation specified in paragraph (1), with the intent that the recipient of the goods or services would put the goods or services to use in committing the violation.

     The court may also award prejudgment interest beginning on the date of the service of the claimant’s pleadings and ending on the date entry of judgment is made.

Maryland IP Law Blog Wordle

     Below is a Wordle based on the last several months worth of posts on this website.  A Wordle is a “word cloud” generated from text in which greater prominence is given to words that appear more frequently in the source text.  In the Wordle below, one can see that the words "patent," "Maryland," "district," "court," and "judge" have found their way into the posts on this website more frequently than other words.

     Jonathan Feinberg of IBM Research is credited for providing the on-line Wordle tool.

Senate Passes Legislation Impacting IP Laws

  • Senate Passes Bill to Fix Administrative Law Judge Status

Reacting to revelations that several PTO Administrative Law Judges may have been appointed to their positions without proper authority, the Senate introduced and then passed S.3295 on July 22, 2008. The legislation, if enacted, would allows the Secretary of Commerce, in his or her discretion, to deem the appointment of an administrative patent or trademark judge who, before the date of the enactment of the legislation, held office pursuant to an appointment by the Director, to take effect on the date on which the Director initially appointed the administrative patent or trademark judge.  The bill, introduced by Sen. Patrick Leahy, Chairman, Senate Judiciary Committee, would also provide those ALJs a statutory defense if someone were to challenge their initial appointment.

  • Enforcement of Intellectual Property Rights Act of 2008

On July 24, 2008, Senators Leahy, Specter, Bayh, Voinovich, Feinstein, and Cornyn introduced S. 3325 Enforcement of Intellectual Property Rights Act of 2008. Among other things, the legislation would authorize the U.S. Attorney General to commence a civil action against any person who engages in conduct constituting a criminal offense under the copyright laws, 17 U.S.C. § 506, upon proof of such conduct by a preponderance of the evidence (compared to the much high criminal standard, the preponderance standard is estimated to result in more enforcement of copyright laws). A person found liable may be subject to a civil penalty under section 504 which shall be in an amount equal to the amount which would be awarded under 18 U.S.C. 3663(a)(1)(B) (i.e., the amount of the loss sustained by each victim as a result of the offense, considering the financial resources of the defendant) and restitution to the copyright owner aggrieved by the conduct.

Number of IP Lawsuits Increases in Maryland

     Even in soft economic times, companies continue to protect their intellectual property assets. According to statistics available from Justia.com, 63 complaints alleging liability under patent, copyright, and/or trademark laws were filed in the U.S. District Court for the District of Maryland during the period January 1 through July 31, 2008 (those complaints named approximately 80 defendants, some several times).  For the same period in 2007, just 52 complaints were filed (but close to 100 named defendants). That's a 21% increase in the number of filings in 2008.

Copyright Office Announces Electronic Registration

     Last September, the Copyright Office issued an announcement that it had begun beta testing of its web-based registration system, which was part of a new "electronic Copyright Office" (eCO) program (see Copyright Office Announces Electronic Registration Testing). Beginning July 1, 2008, the Copyright Office will offer its online registration system to the public.  Instruction for making claims to copyrighted works may be found here.

     According to a recent Copyright Office announcement, online registration through the eCO is the preferred way to register basic claims for literary works; visual arts works; performing arts works, including motion pictures; sound recordings; and single serials. Advantages of online filing include a lower filing fee; the fastest processing time; online status tracking of your claim; secure payment by credit or debit card, electronic check, or Copyright Office deposit account; and the ability to upload certain categories of deposits directly into eCO as electronic files.

     To register a claim electronically, go to the Copyright Office website at www.copyright.gov and click on the eCO logo shown above.

Copyright: New Rules and Other News

  • 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".

PRO-IP Bill Passes in House of Representatives

     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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Maryland IP Litigation 2008: Lawsuit Summaries

     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.

District Court IP Litigation Trends 1Q 2008

    The table below identifies the top 10 states having the most copyright, trademark, and patent lawsuits filed in their respective U.S. district courts during the first quarter of 2008 (source Justia.com). The numbers show that California had the most filings, followed by, in order, Texas, New York, Illinois, Florida, Pennsylvania, North Carolina, New Jersey, Ohio, and Michigan.  The table shows Maryland's ranking: 24th overall, but 15th for trademark and copyright filings. 



 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Maryland IP Litigation 2008: Lawsuit Summary No. 20

  • #20: Staggs v. West, No. 8:2008cv00728; filed March 20, 2008; assigned to J. Messitte

     Dayna D. Staggs, III, a Prince Georges County, MD, resident and music recording artist who, as reported by On the Record, reportedly performs and produces under the alias D'Mystro, filed this copyright infringement lawsuit against singer Kanye West ("one of the worlds biggest Hip Hop Rap artist[s]") and co-defendants Roc-A-Fella Records, LLC, Good Music Carter Administration, Shawn Carter Records, LLC, and Broadcast Music Inc. (BMI) (representing individually several defendants), for allegedly using Staggs' 1984 sound recording and composition entitled "Volume of Good Life." In particular, Staggs alleges that,

"Kanye West didn't obtain a license to use 'Volume of Good life' which has repeated melody's and uncleared vocal samples and compositional parts of sound recording with drum elements, including (45) lyrics from the original volume of good life."

     According to the complaint, the Recording Industry Association of America (RIAA) "reports that the Kayne West 'Good Life' master with mixed parts of 'Volume of Good Life' was a tremendous success, selling millions. Attaining multi-platinum status selling more then [sic] 5 million units." The Complaint goes on to allege that,

"The vulgar, sexual and racially-charged nature of the infringing master work is directly counter to Dayna D. Staggs long established public persona, utterly inconsistent with the musician, artist clean image , [sic] And harms the reputation of the Dayna D. Staggs Copyrighted Rock/Pop master work clean titled 'Volume of Good Life.'"

     Count I of the Complaint alleges copyright infringement, contributory infringement, and unfair competition in violation of the Lanham Act.  Plaintiff is seeking monetary damages, "impoundments."

     The Complaint appears to have been filed by Mr. Staggs pro se as CEO of Dayna Paryss Entertainment.

Maryland IP Litigation 2008: Lawsuit Summary No. 19

  • #19: CoStar Realty Information, Inc. v. Field, No. 8:2008cv00663; filed March 13, 2008; assigned to J. Williams

     This copyright lawsuit involves Plaintiffs CoStar Realty Information, Inc., and CoStar Group, Inc., which are Delaware companies with their principal places of business in Bethesda, MD, and Defendants Mark Field (allegedly a California resident and sole proprietor d/b/a Alliance Valuation Group), Lawson Valuation Group, Inc. (allegedly a Florida entity), Russ Gressett (allegedly a Texas resident d/b/a TGC Realty Counselors), Gerald A. Teel Company, Inc. (allegedly a Texas entity), and John Does 1-5. 

     Plaintiffs assert that they provide users with access to one of the most comprehensive commercial real estate information databases available. Alliance reportedly entered into a Licensing Agreement with CoStar to access CoStar's databases, but allegedly breached the agreement by providing user names and passcodes to Defendants Lawson, Gressett, Gateel, and Does 1-5. CoStar asserts, against one or more defendants, copyright infringement, criminal copyright infringement, breach of contract, fraud, and tortious interference with contract and prospective business relationship. With regard to the copyright infringement allegation, CoStar is seeking an award of statutory damages, as well as attorney's fees and costs.

     Shari Ross Lahlou of Crowell & Moring (Washington, DC) filed the complaint on behalf of CoStar.


Copyright Primer and Tips for Authors

     Below are three interesting and useful blog posts and websites dealing with copyright issues.

     This blog provides legal primers on a variety of legal subjects, including the linked primer that provides an in-depth summary of United States copyright, fair use, and Digital Millenium Copyright Act (DMCA) issues. The primer concludes with some helpful hints concerning the oft-misunderstood fair use exceptions, and what individuals can do to minimize their risk of copyright liability:

"Use only as much of the copyrighted work as is necessary to accomplish your purpose or convey your message;

"Use the work in such a way that it is clear that your purpose is commentary, news reporting, or criticism;

"Add something new or beneficial (don't just copy it -- improve it!);

"If your source is nonfiction, limit your copying to the facts and data; and

"Seek out Creative Commons or other freely licensed works when such substitutions can be made and respect the attribution requests in those works."

  • Collectanea by the University of Maryland University College

     Pronounced kol-ek-tey-nee-uh, this blog is published by Georgia Harper, a scholar at UMUC's Center for Intellectual Property (CIP).  In it, Harper collects and discusses current copyright issues. Her latest post, Turnitin wins important victory in fight to combat plagiarism (and the bloat of copyright), is an excellent analysis of AV v. iParadigms, No. 07-0293, slip op. (E.D. Va Mar. 11, 2008), which involves the website Turnitin.com, which Harper says is "an application that teachers can use to compare their students' papers with Turnitin's database of previously compared papers and papers available from other sources to detect instances of suspicious similarity."

     This creative website, which is written by legal academics at Columbia Law School, is designed for authors and creators of works in the United States. It aims to provide individuals with information to help them retain their copyrights, or, in case they decide to license their rights to others, with information concerning how to obtain reasonable terms under that license. The website provides sample contracts for literary authors, photographers, journal manuscript authors, and others, and also useful information about royalty statements in author contracts. The website warns that it is specifically not intended for lawyers or other legal academics, and it should not be considered legal advice.  

What do the NFL, 55-Inch Televisions, and Prayer Have In Common?

     The National Football League (NFL) has campaigned against large-group events that show the Super Bowl on TVs wider than 55 inches, citing federal copyright laws. That policy impacts churches that hold Super Bowl parties (the NFL only makes an exception to its policy for large-scale viewings at sports bars).

     Currently, the copyright law makes exceptions to copyright exclusivity for certain types of "fair uses," reproduction by libraries and archives, transfers of particular copies or phonorecords, certain performances and displays, secondary transmissions, and ephemeral recordings. See 17 U.S.C. 107-112. However, broadcasts of the big game by churches are not exempted.

     Enter Arlen Specter (R-PA), who introduced S. 2591 on February 4, 2008 (the Super Bowl was February 3, 2008), in the Senate “to provide an exemption from exclusive rights in copyright for certain nonprofit organizations to display live football games, and for other purposes.” The bill is quite simple:

`(C) communication by an entity defined under section 3121(w)(3)(A) or (B) of the Internal Revenue Code of 1986 [i.e., church-controlled organization] of a transmission or retransmission embodying a performance of a professional football contest intended to be received by the general public, originated by a radio or television broadcast station licensed as such by the Federal Communications Commission, or if an audiovisual transmission, by a cable system or satellite radio, if--

`(i) no direct charge is made to see or hear the transmission or retransmission;

`(ii) during the communication no money is accepted or received by the organization; and

`(iii) the transmission or retransmission is not further retransmitted by the establishment where the transmission or retransmission is received.'."

The bill was referred to the Senate Judiciary Committee on February 4, 2008.


Bouchat Sues Ravens, NFL Over "Flying B" Design

Summary: The twelfth lawsuit filed in the U.S. District Court for the District of Maryland in 2008 involves a familiar name to some in Baltimore: Frederick Bouchat.   

     The Baltimore Ravens changed their logo in 1999 to the raven bird with a "B," but before that, they used a "B" on a shield with wings and the word "Ravens," which the U.S. District Court for the District of Maryland found infringed a design copyrighted by Frederick Bouchat in 1996 (see below). Bouchat, a Baltimore security guard in December 1995 when he drew his original "Flying B" design and sent it to the Baltimore Ravens, sued the Ravens and the National Football League Properties (NFLP) over their use and licensing of the "Shield B" logo, and won. The Court of Appeals for the Fourth Circuit affirmed the district court decision (see related post here). 

   On February 14, 2008, Bouchat sued the Ravens again, as well as the National Football League (NFL), NFL Films, Inc., and The Baltimore Sun Company, alleging that defendants have and continue to sell, distribute, and publicly display the old "Shield B" logo in connection with, for example, season highlight films, promotional films shown at Ravens games, team game films, memorabilia, photographs, and, in the case of the Baltimore Sun, websites. Bouchat is seeking destruction of infringing materials, an injunction, and unspecified damages.

     Bouchat is represented by Daniel Doty of Schulman & Kaufman LLC, a Baltimore law firm.

Maryland IP Litigation 2008: Lawsuit Summaries Nos. 1-4

     Below are summaries of the first four IP-related lawsuits filed in the the U.S. District Court for the District of Maryland in 2008 (source: Justia). These lawsuits involve allegations of patent, copyright, and trademark infringement, misappropriation of trade secrets, defamation, and a host of other state law claims. We begin with an interesting case involving Maryland's business trade/company name statute.

    This lawsuit pits two Maryland entities and their owners against each other. Plaintiff Nationwide Handyman, LLC alleges ownership of the federally-registered NATIONWIDE HANDYMAN trademark, the same being registered with the State of Maryland as a corporate name. Plaintiff contends that Defendant Nationwide Handyman & Remodeling, Inc., led by principal Joe Butts, violated Maryland Code Annotated § 1-504, which states the following (source: Michie's Legal Resources):

"An entity name must be distinguishable upon the records of the Department [of Assessments and Taxation] from:

(1) The entity name of an entity organized or authorized to transact business in the State;

(2) An entity name reserved or registered under this subtitle; and

(3) The disclosed assumed name adopted by a foreign entity authorized to transact business in this State."

     Plaintiff further alleges that Defendant violated Maryland Code Annotated § 13-301, which defines unfair or deceptive trade practices in Maryland as "false, falsely disparaging, or misleading oral or written statement, visual description, or other representation of any kind which has the capacity, tendency, or effect of deceiving or misleading consumers." Other allegations include violations of the Lanham Act. Plaintiff is seeking an injunction and monetary damages.

     This case highlights one advantage of registering a company name in Maryland: § 1-504 is available as a cause of action to those who register their business name. Thus, companies should register their business name in addition to registering their trademarks with the U.S. Patent & Trademark Office and the Maryland Secretary of State.

     Shawn Whittaker of The Law Offices of Shawn C. Whittaker PC filed the Complaint on behalf of the Plaintiff.

     Three more cases after the jump...

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Copyright Litigation in Maryland: 2007 Trends

     In 2007, the major music recording companies, led by the Recording Industry Association of America (RIAA), filed more copyright lawsuits in the U.S. District Court for the District of Maryland than any other group or individual. RIAA accounted for 16 of the 30 copyright lawsuits filed last year (53%). In 2006, RIAA accounted for an estimated 22 of 54 copyright lawsuits (41%). All of the RIAA lawsuits involved individual defendants accused of illegally downloading or sharing copyrighted music. The 30 copyright lawsuits involved a total of 168 plaintiffs (64 unique entities/individuals). Of those 168 plaintiffs, 85 were RIAA members, including the following:

  • Sony BMG Music Entertainment (plaintiff in all 16 of the RIAA lawsuits);
  • UMG Recordings (plaintiff in 14 of the RIAA lawsuits)
  • Arista Records (plaintiff in 12 lawsuits)
  • BMG Music (12 lawsuits)
  • Virgin Records America (9)
  • Capitol Records (9)
  • Warner Brothers Records (8)
  • Interscope Records (8)

     Twelve U.S. District Court Judges presided over the 30 copyright lawsuits in 2007: Bennett (3), Blake (2), Chasanow (1), Cullinane (1), Davis (4), Dorr (1), Garbis (2), Legg (2), Messitte (6), Quarles (2), Titus (3), and Williams (3). All 6 of Judge Messitte's cases involved RIAA lawsuits (in 2006, Judge Messitte presided over an estimated 21 of the 22 RIAA lawsuits).

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More Copyright Legislation Introduced in House

     A few weeks ago I posted "Congress and Copyrights: A Busy Legislative Year," in which I summarized three Congressional bills targeting copyright infringement/infringers:

  • The Intellectual Property Enhanced Criminal Enforcement Act of 2007 (H.R. 3155-IH),

  • The Intellectual Property Enforcement Act of 2007 (S.2317), and

  • The College Opportunity and Affordability Act of 2007 (H.R.4137). 

     Last week, Congress was at it again, with the introduction of yet more legislation amending the Copyright Act, as summarized below.

  • Prioritizing Resources and Organization for Intellectual Property ("PRO IP") Act of 2007

H.R.4279 was introduced in the House on December 5, 2007, by Rep. John Conyers (D-MI). The bill would, among other things, amend 17 U.S.C. § 410 by adding a new paragraph (c)(1): "A certificate of registration satisfies the requirements of section 411 and section 412 regardless of any inaccurate information contained in the certificate, unless (A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and (B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration." 

The bill would also amend § 504 as follows:

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Maryland IP Litigation Cases for the Week of Nov. 26, 2007

     Below is a summary of the four IP-related cases filed in the the U.S. District Court for the District of Maryland last week (source: Justia). They involve a patent infringement case involving prostate cancer, a trademark infringement case involving rock climbing walls, a copyright infringement case involving Bob Marley's music, and a franchisor-franchisee trademark dispute.

     Switzerland-based Lonza Group AG is reportedly the exclusive sub-licensee of U.S. Patent No. 5,122,464 ("Method for dominant selection in eucaryotic cells"), U.S. Patent No. 5,770,359 ("Recombinant DNA sequences, vectors containing them and method for the use thereof"), and U.S. Patent No. 5,827,739 ("Recombinant DNA sequences, vectors containing them and method for the use thereof"). It is reportedly the owner of U.S. Patent No. 5,591,639 ("Recombinant DNA expression vectors"), U.S. Patent No. 5,658,759 ("Recombinant DNA expression vectors"), U.S. Patent No. 5,879,936 ("Recombinant DNA methods, vectors and host cells"), U.S. Patent No. 5,891,693 ("Recombinant DNA methods vectors and host cells"), and U.S. Patent No. 5,981,216 ("Transformed myeloma cell-line and a process for the expression of a gene coding for a eukaryotic polypeptide employing same").

     Defendant Northwest Biotherapeutics is headquartered in Bethesda, MD. According to Lonza's complaint, Northwest has been conducting Phase II/III clinical trials involving its DCVax prostate product, which Lonza believes uses Lonza's patented GS expression technology. It is asserting patent infringement, conversion, and unjust enrichment.

     See previous post here concerning an injunction against Lonza recently issued by the District Court for the District of Maryland. 

     Nixon Peabody's (Washington, D.C.) Robert Fletcher and colleagues filed the complaint on behalf of Lonza.

     This case was brought by Frederick, MD-based Pyramide USA, Inc., which sells modular fiberglass climbing wall systems. In its complaint, Pyramide contends that it is the owner of the federally registered AQUACLIMB trademark, which it uses in connection with climbing walls installed poolside. Richard K. Meissner and HI5 Climb, LLC allegedly sell poolside climbing walls under the name AQUACLEAR. Mr. Meissner is apparently the owner of U.S. Patent No. 6,872,167, which is directed to "Artificial rock climbing arrangement adapted for water environment."

     Pyramide is alleging trademark and trade dress infringement, tortious interference with contractual and business relationships and prospective business relationships, unfair competition, and market endangerment. It is seeking a declaratory judgment of noninfringement and invalidity of the '168 patent. 

     Pyramide's "market endangerment" claim is particularly interesting. Pyramide contends that defendants' installation of poolside climbing walls creates a risk of injury (because defendants' products are allegedly "unsafe, untested, and unapproved") where none previously existed in the market, and thus creates the potential for foreclosure of the market to pool side climbing walls. This, in turn, according to Pyramide, endangers its reputation (by confusion of its products with defendants' products), and has allegedly exposed Pyramide to potential liability risks.

     Joseph Zito of ZITO TLP (Washington, D.C.) filed the complaint on behalf of Pyramide.

     This copyright infringement case was brought by Odnil Music and Fifty-Six Hope Road Music, alleged owners of rights in certain Bob Marley and Vincent Ford music compositions (e.g., "Is This Love," "No Woman, No Cry"), against 132 Dock Street, which owns Annapolis' Armadillo's, for alleged unauthorized public performances of the compositions. Plaintiffs are seeking statutory damages, costs, and legal fees.

     Plaintiff MTP is a Maryland corporation based in Hagerstown, which allegedly owns the MAID TO PERFECTION service mark. Defendant Vernet is allegedly a Maryland resident. Defendant Maid to Perfection of Washington, DC, is allegedly a DC corporation controller by Vernet. In its complaint, MTP contends that defendants entered into and then breached a franchise agreement, have infringed and diluted the aforementioned service mark, have unfairly competed against MTP, and have falsely advertised their association with MTP. Nixon Peabody's John Bramlette and Andrew Zappia filed the complaint on behalf of MTP.


Congress and Copyrights: A Busy Legislative Year

Summary:  Congress has been busy targeting copyright infringers this summer and fall, introducing three bills that would make prosecution of copyright law violators easier, make the attempt to infringe another's copyrighted work a criminal act, and place new burdens on colleges to police music file downloaders.

  • The Intellectual Property Enhanced Criminal Enforcement Act of 2007

H.R. 3155-IH was introduced to the House of Representatives on July 24, 2007, by Rep. Steve Chabot (R-OH) (see related post here). The bill would make the attempt to commit copyright infringement a crime, just as much as the actual completed crime itself. On Aug 10, 2007, the bill was referred to the House Judiciary Committee, Subcommittee on Crime, Terrorism, and Homeland Security.

  • The Intellectual Property Enforcement Act of 2007

S.2317 (also here) was introduced in the Senate on November 7, 2007, by Sen. Patrick Leahy (D-VT) (co-sponsored by Sen. John Cornyn (R-TX)). Sec. 2 of the Act would grant the Attorney General power to commence a civil action against any person who engages in conduct constituting an offense under section 506 of the Copyright Act (related to criminal copyright infringement). Sec. 506 currently requires a showing of willful copyright infringement. In contrast, the burden of proof in a civil action under the new law would be by a preponderance of the evidence, which presumably would make it easier to find liability.

Sec. 14 of the Act would add civil and criminal forfeiture, destruction, and restitution provisions to 18 U.S.C. 113.

In his statement about the so-called PIRATE ACT, Sen. Leahy said:

"This legislation is a simple bill that would give the Department of Justice the authority to prosecute copyright violations as civil wrongs. The PIRATE Act has passed the Senate on three separate occasions; this should be the Congress in which it becomes law."

Status: Senate Judiciary Committee hearing, November 7, 2007.

  • College Opportunity and Affordability Act of 2007

H.R.4137 was introduced in the House on November 9, 2007, by Rep. George Miller (D-CA) (co-sponsored by Ruben Hinojosa (D-TX)). Sec. 487 of the Act would amend 20 U.S.C. 1092(a)(1) to include a new provision entitled "Institutional Policies and Sanctions Related to Copyright Infringement," which would include an annual disclosure requirement by educational institutions that

    • Explicitly informs students that unauthorized distribution of copyrighted material, including unauthorized peer-to-peer file sharing, may subject the students to civil and criminal liabilities, 
    • Provides a summary of the penalties for violation of Federal copyright laws, 
    • Provides a description of the institution's policies with respect to unauthorized peer-to-peer file sharing, including disciplinary actions that are taken against students who engage in unauthorized distribution of copyrighted materials using the institution's information technology system, and 
    • Provides a description of actions that the institution takes to prevent and detect unauthorized distribution of copyrighted material on the institution's information technology system.

Sec. 494 of the Act, entitled "Campus-Based Digital Theft Prevention," would require colleges to:

    • Make publicly available to their students and employees, the policies and procedures related to the illegal downloading and distribution of copyrighted materials required to be disclosed under section 485(a)(1)(P); and
    • Develop a plan for offering alternatives to illegal downloading or peer-to-peer distribution of intellectual property as well as a plan to explore technology-based deterrents to prevent such illegal activity.

Status of bill: Nov 15, 2007: House Education and Labor: Ordered to be Reported (Amended) by the Yeas and Nays: 45 - 0 (GovTrack).

     Below is the University of Maryland's open letter to the University Community on illegal file sharing over University networks:

     "The university is greatly concerned about the potential effects of illegal file sharing on our information technology networking infrastructure and on the personal liability of our students. This letter summarizes actions the university will take over the next few days to protect our community.

     "Effective Monday, October 8, 2007, the university will block use of two peer-to-peer (P2P) file sharing programs on its network -- Ares and LimeWire. Recognizing the accelerating demands on bandwidth from educational commitments of greater priority, we are unable to justify supporting P2P programs that are instrumental in the sharing of music and movies in violation of copyright law. In the competitive allocation of computing resources, the university may not responsibly support activity that places students in serious legal and financial jeopardy. To do otherwise would also compromise a fundamental social value: respect and acknowledgment of the creative achievements of others.

     "In addition to blocking Ares and LimeWire, the university will expand enforcement of university network rules against facilitating illegal file sharing. One example is the campus DC++ hub, which has been featured recently in The Diamondback. The operators of DC++ hubs will be offered an opportunity to demonstrate that their network usage conforms to the University of Maryland Policy on Acceptable Use of Information Technology Resources and the Student Guidelines for Network Acceptable Use. Should a specific operator’s network usage not be shown to be in conformance, that operator will be asked to bring the usage into compliance. Failure to do so will subject the operator to administrative action, including revocation of access to Internet resources through the university network system and/or referral to the Office of Student Conduct.

     "We regret the inconvenience that these actions will cause for those using the university network services and file sharing software legally and responsibly. However, we must implement these measures to protect our community from the effects of illegal file sharing.

Jeffrey C. Huskamp
Vice President and CIO"

     Peggy Noon, scholarly communication librarian and special assistant to the provost for copyright administration at North Carolina State University, equates the College Opportunity and Affordability Act of 2007 to Shooting Fish in a Barrel, and questions why it has become higher education's role to correct student's illegal file sharing behavior:

     "Although it is inarguably part of the university's role to urge their students to comply with the law, behave in ethical manners, and teach that by example, we are only their teachers.

     "We are not their parents and we are not the police. We had no role in instilling or molding their characters or their ethical or religious belief system. In fact, we didn't even teach them the computer skills necessary to accomplish P2P sharing. They came to us with these behaviors and skills fully set and continually reinforced by their peers.

     "So when did we become responsible (in a legal and money sense) for the students P2P file sharing? If a student uses dormitory phones to conduct drug deals or extortion, is the university responsible? Should phone access be terminated? What if our students steal cable TV service" Should Congress pass a bill that withholds federal funding from our schools until the cable TV companies are financially satisfied? Since when did higher education become responsible for the profit margin of the entertainment industry?"

Louis Vuitton Malletier S.A. v. Haute Diggity Dog LLC

     In Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, __ F.3d ___ (4th Cir. Nov. 13, 2007), the Court of Appeals for the Fourth Circuit affirmed a district court judgment that Nevada-based Haute Diggity Dog, LLC did not infringe Paris-based Louis Vuitton Malletier S.A.'s famous LOUIS VUITTON trademark by selling small imitations of handbags labeled "Chewy Vuiton" and that mimic LVM's LOUIS VUITTON handbags. In doing so, the Court found that, while the "Chewy Vuiton" dog toys undisputedly evoke LVM handbags of similar shape, design, and color, and use "CV" in lieu of the LV mark, and use other symbols and colors imitating LVM's Multicolor and Cherry designs, the "Chewy Vuiton" dog toys are successful parodies of LVM handbags and the LVM marks and trade dress used in connection with the marketing and sale of those handbags.

     LVM commenced an action against Haute Diggity Dog in 2002, alleging trademark infringement under 15 U.S.C. § 1114(1)(a), trademark dilution under 15 U.S.C. § 1125(c), copyright infringement under 17 U.S.C. § 501, and related statutory and common law violations. To prove trademark infringement, LVM had to establish (1) that it owns a valid and protectable mark; (2) that Haute Diggity Dog used a "reproduction, counterfeit, copy, or colorable imitation" of that mark in commerce and without LVM’s consent; and (3) that Haute Diggity Dog’s use was likely to cause confusion. To determine whether the "Chewy Vuiton" product line created a likelihood of confusion, the Fourth Circuit considered the nonexclusive Pizzeria Uno factors (1) the strength or distinctiveness of the plaintiff’s mark; (2) the similarity of the two marks; (3) the similarity of the goods or services the marks identify; (4) the similarity of the facilities the two parties use in their businesses; (5) the similarity of the advertising used by the two parties; (6) the defendant’s intent; and (7) actual confusion.

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Copyright Office Issues Rules Governing Renewal Registration

     According to a Copyright Office statement, under the 1909 copyright law, works copyrighted in the United States before January 1, 1978, were subject to a renewal system in which the term of copyright was divided into two consecutive 28-year terms. To secure the renewal protection, the claimant had to file a renewal registration within strict time limits. However, since January 1, 2006, all applications for renewal have necessarily related to works which, due to automatic renewal, are already in their renewal terms, making impossible any renewal in the 28th year.

     Consequently, the Copyright Office issued a notice of proposed rulemaking to amend its regulations to account for these facts and to clarify certain renewal requirements (72 FR 16306). The Copyright Office received no opposition to its proposal, so it issued a final rule incorporating the proposed revisions to 37 CFR 202.17.

Comments:

  • Any applications for registration of claims to the renewal term must be filed using the newly revised forms. The previously used forms are obsolete, and the new forms must be used to file renewal claims (see Form RE, Form RE/CON, and Form RE/ADDENDUM). 

  • New rule: 72 FR 61801

Fourth Circuit Affirms Copyright Infringement Case Against NFL Licensees

Summary:  Seeking only minimal recognition for his Baltimore Ravens logo design, Baltimore amateur artist ends up seeking certiori from the Supreme Court in his copyright infringement case, winds up with no damages award


 

 

 

 

 

    

    

     So how much is an NFL franchise team logo worth? Just ask Frederick Bouchat, who sued the Baltimore Ravens and the National Football League Properties (NFLP) over their use and licensing of a logo that closely resembled a drawing Bouchat faxed the Ravens back in 1995. All Bouchat asked in return was a letter of recognition and an autographed helmet, a small reward from a team and League making millions in revenues at the time.

     After a lengthy bifurcated copyright infringement trial, the District Court for the District of Maryland found that the Ravens had infringed Bouchat's copyrighted work. The Court of Appeals for the Fourth Circuit affirmed the trial court decision. His damage award, however, was zero (and he's still waiting for his recognition letter and autographed helmet). Bouchat then sued the NFL's licensees, and won again. However, he was not so lucky when it came to seeking damages.

     Under 17 U.S.C. § 504(a)(1), a copyright owner may seek actual damages plus any additional profits of the infringer. Under 17 U.S.C. § 504(c)(1), an award of statutory damages may be made "in a sum of not less than $750 or more than $30,000."

     In this case, Bouchat had little actual damages (he was not making any products using the logo himself), so he sought profits from the Ravens and dozens of NFLP licensees who were selling myriad items containing the "Flying B" logo. The jury found that defendants' income from products containing the Flying B were attributed completely to factors other than the artwork itself, and therefore did not award Bouchat any damages. Moreover, Bouchat was not entitled to an award of statutory damages because he had not registered his copyrighted work before the Ravens' and licensees' infringing conduct began:

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Recording Industry Follows Through on Threats to Sue

Summary:  Maryland residents are latest targets of record industry lawsuits aimed at stopping digital music file sharing


     Last week, the Recording Industry Association of America (RIAA) sent 403 pre-litigation settlement letters to 22 universities, including the University of Maryland - College Park, alleging illegal copying and distribution of RIAA-member copyrighted sound (music) recordings. In addition to the letters, the RIAA filed 24 copyright infringement lawsuits against previous recipients of pre-litigation letters who allegedly ignored "settlement opportunities." According to an RIAA statement, the lawsuits were filed in federal courts against students, including students reportedly attending the University of Maryland. As shown below, two of the lawsuits were filed in the District Court for the District of Maryland by Matthew J. Oppenheim, Esq., RIAA's lawyer (and a Maryland resident himself, according to public property records).

     One of Mr. Oppenheim's lawsuits, BMG Music et al v. Norwood, 07cv02480 (D. Md. 2007), was served on Sarah Norwood, a St. Leonard, MD (Calvert County), resident (according to RIAA's complaint).  The suit is predicated solely on a claim that on April 28, 2007, Ms. Norwood distributed 377 audio files over the Gnutella peer-to-peer network from a computer having the IP address 69.251.74.83 (which is a Comcast.net IP address: click here to see for yourself).

     The Record Industry vs The People blog describes what happens during RIAA-initiated litigation, which could best be described as somewhat heavy handed. Here's how the authors of the blog describe the "settlement opportunities":

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Copyright Office Announces Electronic Registration Testing

     The Copyright Office issued an announcement that it is conducting beta testing of its web-based registration system, which will be part of the new "electronic Copyright Office" (eCO). According to the announcement, participants in eCO beta testing will file basic registration claims at a reduced fee established for electronic filings (i.e., $35, which is $10 less expensive than the current paper filing fee). Individuals prepared to register at least one basic claim that would like to be considered for participation in eCO beta testing can complete and submit a short request form available here. Reportedly, groups of beta testers will be selected from requests received periodically throughout the duration of the beta testing. The announcement does not state how long beta testing will last.

Comments:

Rankings Show Maryland Running Near Middle of Pack

     The table below shows how Maryland ranks among other states in terms of the number of lawsuits filed in federal district courts that raise patent, trademark, and/or copyright issues.  The table values are for the last twenty months.


Notes:

  • Rankings are based on number of complaints filed between January 1, 2006, and August 31, 2007, and include cases filed in the District of Columbia.  States with multiple jurisdictions/divisions are combined.  Complete table available (please email me a request).

  • Source: Justia.com.

Downloading Music Benefits Both Consumers and Artists, Study Finds

     Idling behind a yellow school bus early this morning, I spotted a continuing trend among the dozen teenagers waiting at my neighborhood bus stop:  about half were sporting those ubiquitous white earphone nibs attached to pocket-sized MP3 players. I couldn't help thinking of all of the other Maryland students who would be packing into dorm rooms, classrooms, and on-line chat rooms this week--the first week of school for many in Maryland--where they would reflect on a summer's worth of music downloads and new music sites discovered on the Internet. That thought peaked my curiosity, so I went in search of the latest information about music downloading to see what others are saying about how the music downloading phenomena has impacted copyright laws (and vice versa) in the U.S. 

     I found what I was looking for at Mark Cooper's blog at the Stanford Law School Center for Internet and Society.  Last week, Mark posted the following interesting summary about music downloading:

"Less than a decade after the advent of file sharing, sales figures indicate that the recording industry sold more singles than albums and unsigned artists sold more singles than record labels. Thus, the digital communications revolution has transformed the creation and distribution of music to the benefit of both consumers and artists."

Mark's entire research article can be found at "Digital Downloading of Music: A Big Pay-Off for Consumers and Artists in the Digital Broadband Era" (it's only 7 pages long, with several revealing historical time-series charts; definitely worth a closer read).

     So consumers and artist are benefiting from the availability of digital music on the Internet.  Not a big surprise.  To see what the record industry had to say about that, I visited the Recording Industry Association of America (RIAA) web site (the RIAA is the trade group that represents the U.S. recording industry).  RIAA has apparently kicked off the new school year by sending out its seventh round of pre-litigation letters to universities across the U.S. alleging unlawful music downloads on university networks (58 universities were targeted in this round of letters; click here to see if your university is among those reportedly receiving pre-litigation notice).  RIAA's web site states the following about the letters:

"Each pre-litigation settlement letter informs the school of a forthcoming copyright infringement suit against one of its students or personnel and requests that university administrators forward that letter to the appropriate network user."

     The reason for the letters?  According to RIAA's web site,

"[a] survey by Student Monitor from last year found that more than half of college students download music and movies illegally.  According to market research firm NPD, college students alone accounted for more than 1.3 billion illegal music downloads in 2006."  

     I wonder who sponsored the Student Monitor and NPD research firms to arrive at those figures?  In any case, to get a balanced perspective, I visited Eric Bangeman's blog post entitled "Digital Freedom Campaign to organize students against RIAA abuse," posted last April, which summarizes and frames the music downloading issues from another view point.

     Finally, I visited the University of Maryland web site to see what's happening at a local level.  On July 26, 2007, the University issued an announcement entitled Ruckus Digital Music and Entertainment Network Now Available at the University of Maryland.  The Ruckus arrangement is apparently Maryland's attempt to "address[] illegal peer-to-peer file sharing" by University students.  The service is not free, of course.  If you're a student at Maryland and have used the new music downloading service, send me your comments concerning whether your believe it has or will curtail illegal digital music sharing over campus networks.

     So there you have it:  a brief spattering of news about music downloading and copyright issues.  Note: in all fairness to students, who may begrudge being singled out in this post, they are obviously not the only group that downloads music and/or shares music files over the Internet.

Maryland Intellectual Property News

Below is a list of recent trade secret, patent, trademark, and copyright news, announcements, and other information of some interest:

Trade Secrets:

Patents:

  • The PTO has proposed new rules to improve patent quality and reduce pendency during prosecution:  see the Notice of Proposed Rulemaking in the Federal Register for details, or the PTO's announcement for a summary

Trademarks/Trade Names:

Copyrights:

  • The launch of a new Internet-based electronic search system for copyright registrations and recordations is still scheduled for roll-out in "Mid August" according to a Copyright Office announcement

General:

  • A newly-formed entity in Maryland called the Center for New Technology Enterprise will be opening its virtual doors soon.  Headed by veteran serial entrepreneur and CEO Fred Provorney, the Center will provide a comprehensive trans-disciplinary program for facilitating technology commercialization and fostering collaboration among universities, research institutions, governmental research facilities and other individuals and entities, whether public or private.  The Center should be well received, especially in Maryland, with its large number of start-up biotechnology and other high technology companies, major University research centers, and several Government laboratories and research organizations.  Check back here for more information about this venture. 

Reengineering the Copyright Office

The Register of Copyrights, Marybeth Peters, must have her hands full these days.  As the Office's fifteenth Register, and only the second woman to hold the position, she is overseeing a "reengineering" of many of the Copyright Office's electronic systems, including those that serve the public.  The stated goal of the reengineering program, which started under previous Registers, is to increase the availability of services online and make Office records more promptly available via the Internet.  Those objectives will be implemented by the program's two biggest changes:

  • A new copyright records search system, available this month, which will reportedly allow users to electronically access more than 20 million digital records of registrations and recorded documents from 1978 to the present; and
  • A new online copyright registration portal, available soon, which will provide an alternative to the current paper method of registering new works.

If any of the beta users of these computer systems would like to share their initial thoughts about the new systems, please send them to this author. 

Maryland IP Litigation Cases for the Week of July 30, 2007

The U.S. District Court for the District of Maryland was chosen as the forum for litigating the following case(s), as published by Justia:

  • Global Barbeque, LLC v. Rub, LLC, Case Number 1:2007cv02021, filed July 27, 2007

New York City-based Global Barbeque, LLC, and Rub BBQ Restaurant # 1 (the RUB BBQ restaurant) have sued Michael Marx (alleged owner of Baltimore's Rub Barbeque restaurant) and RUB, LLC, for alleged trademark infringement, dilution, and state law claims arising out of the use of the word RUB in connection with its retail food services.  Plaintiffs are seeking, among other relief, an injunction, an order barring use of the word RUB in connection with Defendants' web site URL, an accounting of profits, and compensatory and punitive damages.

  • Tarpo Music Publishing v. Lifestyle, LLC, Case Number 1:2007cv02029, filed July 30, 2007 

Plaintiffs Tarpo Music Publishing, EMI April Music Inc., Notting Dale Songs, Inc., Controversy Music, Basement Boys Music, Inc., C-Water Publishing, Inc., WB Music Corp., Webo Girl Publishing, Inc., EMI Waterford Music, Inc., Jobete Music Co., Inc. and Rodsongs have sued Defendants Lifestyle, LLC, Leonard Clarke and Gyeong M. Cho for alleged copyright infringement based on "public performances of copyrighted musical compositions" at Baltimore's Red Maple bar, which is reportedly operated and managed by Defendants (see complaint).  Listed compositions include Ain't No Mountain High Enough, among five others alleged to be infringed. 

  • Plastic Safety Systems, Inc. v. Road Safety, LLC, Case Number 1:2007cv02068, filed August 2, 2007

Cleveland, OH-based Plastic Safety Systems, Inc., has sued Glen Burnie, MD-based Road Safety, LLC and Millersville, MD-based Reliable Contracting Company, Inc., for allegedly infringing Plastic Safety's U.S. Patent No. 5,234,280, which is directed to traffic "channeling" devices in the form of large drums (see image).  According to its complaint, Defendants allegedly used or induced the use of infringing drums along Rt. 50 in Annapolis. 

  • Young Again Products, Inc. v. JMS Partners Enterprises, Ltd., Case Number 1:2007cv02072, filed August 3, 2007

Plaintiff Young Again Products, Inc., a Maryland company that describes itself as being "in the business of production and sale of health and nutritional supplements," has sued JMS Partners Enterprises, Ltd., for allegedly "engag[ing] in the unauthorized use of the Young Again™ Mark by selling products displaying the Mark and by using the Mark on its website to sell its products" in violation of 28 U.S.C. 1338.  Other claims include unfair competition under 15 U.S.C. 1125(a) (Lanham Act), and dilution of a famous mark under 15 U.S.C. 1125(c).  Young Again Products is seeking a declatory judgment enjoining JMS from using the Young Again mark, and other relief.


Intellectual Property Enhanced Criminal Enforcement Act of 2007

If, like 99.9 percent of the world, you eagerly fast-forward through the previews and warnings on your DVDs to get to the main feature, you may never have given much attention to the following criminal copyright infringement warning under the FBI’s anti-piracy logo:

"Warning: The unauthorized reproduction or distribution of this copyrighted work is illegal. Criminal copyright infringement, including infringement without monetary gain, is investigated by the FBI and is punishable by up to 5 years in federal prison and a fine of $250,000."

Despite those warnings, and similar warnings on other copyrighted works, it comes as no surprise that piracy of media and other commercial goods continues to cause significant losses to artists, corporations, and other parts of the U.S. economy each year, with consumers paying the price through higher retail sales prices. 

The Intellectual Property Enhanced Criminal Enforcement Act of 2007, H.R. 3155-IH, introduced to the House of Representatives on July 24, 2007, by Rep. Steve Chabot (R-OH), may cause many to rethink the criminal copyright infringement laws, because now, like many other criminal statutes, an attempt to commit copyright infringement will land you in just as much hot water as the actual completed crime itself: Continue Reading...

Maryland IP Litigation Cases for the Week of July 23, 2007

The U.S. District Court for the District of Maryland was chosen as the forum for litigating the following case(s), as published by Justia:

  • STX, L.L.C. v. J. deBeer & Son, Inc., Case Number 1:2007cv01939, filed July 20, 2007 (okay, this was overlooked last week).

Plaintiff STX, LLC, a Baltimore-based lacrosse equipment manufacturer, has sued Defendant J. deBeer & Son, Inc., for allegedly infringing STX's U.S. Patent No. 5,651,744 by selling lacrosse products through its catalog to Maryland residents.  According to its complaint, STX is seeking a preliminary injunction, damages, and other relief

  • Sandler Systems, Inc. v. Rothfeld, Case Number 1:2007cv02005 , filed July 27, 2007

Plaintiff Sandler Systems, Inc., a Stevenson, Maryland-based corporation, has sued Defendants David Rothfeld and Creative Sales + Management, Inc., for allegedly willfully infringing Plaintiff's copyrighted works under 17 U.S.C. 501 et seq. and for certain state law claims.  According to its complaint, Sandler Systems is seeking a permanent injunction and actual, statutory, and exemplary damages among other relief

Maryland IP Litigation Cases for the Week of July 9, 2007

The U.S. District Court for the District of Maryland was chosen as the forum for litigating the following case(s), as published by Justia:

  • Implusive Music et al v. Firehouse Barbeque, Inc., Case Number 8:2007cv01781, filed July 9, 2007.

Plaintiffs Impulsive Music, Alamo Music Corporation, Brio Blues Music, Universal Studios, Inc., Stage Three Songs, Silver Fiddle, Center City Music, PAL-Park Music and M.L.E. Music, have sued Defendants Firehouse Barbeque, Inc. and Un Lee for copyright infringement under 17 U.S.C. § 101 et seq. The specific damages that the Plaintiffs are seeking were not available.

Copyright Office: Online Registration of Works Coming Soon

          According to the Copyright Office web site, the Office is reengineering many of its internal systems, including the system for registration and recordation.  The implementation of an online registration system as part of the reengineering process reportedly requires that the Office amend its implementing regulations governing the procedures by which the public will be able to submit, and the Office process, copyright registrations and recordations. 

          The Office announced the availability of interim rules that identify the principal changes and upgrades to the registration system, and also announced the proposed amendments to the regulations to accommodate online registration.  The Office has commenced Beta testing of the electronic online registration system, which went on-line July 9, 2007.  According to the Office, the Beta testing will be limited to selected participants until system testing is complete, at which time the Office will open the electronic registration system to the public.

Comments

  • Once the Copyright Office's on-line registration and recordation system is fully operational, the government's three administrative bodies that govern IP--the U.S. Patent, Trademark, and Copyright Offices--will provide for further electronic filing of applications and forms over the Internet