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

     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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• #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.

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• #18: Sunoco, Inc. (R&M) v. IDK, Inc., No. 8:2008cv00605; filed March 6, 2008; assigned to J. Titus 

     Pennsylvania-based Sunoco, Inc., markets and distributes petroleum products, including motor fuels, to distributors and service stations in Maryland. According to its complaint, Defendants IDK, Inc., and IDK Properties are Maryland entities, and Defendant Kogod is a Maryland resident. Reportedly, Sunoco's predecessor in interest and one or more of the Defendants entered into a reseller agreement that permitted IDK to use certain of Plaintiffs' trade names, trademarks, and trade dress in connection with the sale of motor fuel at Defendants' premises. Plaintiff is alleging, among other things, infringement of the SUNOCO and SUN trademark, and deceptive trade practice in violation of Md. Code Ann., Com. Law §13-301(2)(i):

"Unfair or deceptive trade practices include any: (2) Representation that:
(i) Consumer goods, consumer realty, or consumer services have a sponsorship, approval, accessory, characteristic, ingredient, use, benefit, or quantity which they do not have."  

     Charles Carpenter of Pepper Hamilton LLP (Washington, DC) filed the complaint on behalf of Sunoco.

 

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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). The first summary involves a discovery matter relating to a patent lawsuit filed in the E.D. Texas.

• #8:  Candela Corporation v. Palomar Medical Technologies, Inc., No. 8:2008cv00268, filed January 31, 2008; assigned to J. Williams

     This lawsuit was filed in and is pending in the U.S. District Court for the Eastern District of Texas (No. 9-06-cv-277RHC). It involves patents covering treatment of wrinkles in the skin using radiation-emitting devices (U.S. 5,810,801; 6,120,497; and 6,659,999). 

     The case is before the U.S. District Court for the District of Maryland to enforce a subpoena duces tecum issued from the Maryland court to Dr. Hema Sundaram, ordering her to permit production, inspection, and copying of specified documents sought by patentee Candela. Candela's theory of infringement is that Palomar has induced physicians and others to use the accused devices, and it now seeks information from 16 physicians about how they operated the accused devices, and whether communications from Palomar to those physicians indicated how the accused devices should be operated for wrinkle treatment. That type of evidence is classic inducement evidence that patentees typically seek. 

     Candela's motion recognizes a number of privacy issues involved in seeking production of medical-related documents from physicians in patent infringement cases. Objecting to the subpoena, Dr. Sundaram's counsel stated that the protective order in place was insufficient to protect medical records or patient information in view of the Health Insurance Portability and Accountability Act (HIPAA). Patent counsel need to be aware of HIPAA's requirements because redactions alone may not be in compliance unless they remove all "individually identifiable health information."

• #9:  Green v. Conagra Foods, Inc., No. 1:2008cv00296, filed February 4, 2008, assigned to J. Quarles

     Green, a Michigan resident, alleges ownership of U.S. Patent No. 5,315,083, which is directed to a microwave cooking utensil as shown in the patent (see below). Green sued ConAgra, which is reportedly a Nebraska company, in Maryland because ConAgra sold infringing utensils in Maryland, according to the complaint.

• #10:  The Lindy Bowman Company v. Jeanmarie Creations, LLC, No. 1:2008cv00313, filed February 5, 2008, assigned to J. Quarles

      This trademark infringement, false designation of origin, unfair competition, and passing off case involves Elkridge, MD-based The Lindy Bowman Company, and defendants Jeanmarie Creations and Walgreens. Plaintiff alleges ownership and use of GIFT WRAP IN A SNAP mark for pre-packaged gift wrap kits. Plaintiff is seeking an injunction, an accounting, and unspecified monetary relief.

• #11:  EO Mfg., Inc. v. Ridge Tool Co., No. 1:2008cv00311, filed February 5, 2008; assigned to J. Bennett

     This patent infringement case involves EO Mfg., an Illinois company and the assignee of U.S. Patent No. 7,096,764, which is directed to a pipe wrench. Defendant Ridge Tool is an Ohio company. Jurisdiction is predicated on allegations of defendant's sale of allegedly infringing products in Maryland.

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     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.

• #1:  Nationwide Handyman, LLC v. Nationwide Handyman & Remodeling, Inc., No. 1:2008cv00019, filed Jan. 3, 2008

    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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     Last week, there was one IP-related case filed in the the U.S. District Court for the District of Maryland (source: Justia), this one captioned Union of Orthodox Jewish Congregations of America v. The Wilder Spice Company, No. 1:2007cv03122 (D. Md. 2007) (filed Nov. 21, 2007).

     Plaintiff Union of Orthodox Jewish Congregations of America is a New York not-for-profit corporation with its principal place of business in New York City. The Orthodox Union provides kosher product certifications for products prepared according to special Jewish dietary laws. On its website, Orthodox Union states that the word kosher means "proper or acceptable," and the term originates from "kosher laws [that] have their origin in the Bible, and are detailed in the Talmud and the other codes of Jewish traditions. They have been applied through the centuries to ever-changing situations, and these rulings, both ancient and modern, govern OU Kosher certification." The Orthodox Union is the alleged owner of the OU mark, which has reportedly been used in commerce since 1925 on food-related products as an indicator that such products have been certified as kosher.

     Defendant Wilder Spice Company is a Baltimore, Maryland-based company that, according to court papers, sells spice products in the U.S. under branded and private labels through retail, foodservice, and industrial channels. Orthodox Union alleges that Wilder forged a Letter of Certification that falsely represented that the Orthodox Union had certified Wilder products as kosher, and that several of Wilder's products have been sold bearing the OU mark. It is claiming federal and state trademark infringement under the Lanham Act (15 U.S.C. § 1114(1)), false designation of origin (15 U.S.C. § 1125(a)), dilution of its allegedly famous mark (11 U.S.C. § 1125(c)), and common law unfair competition and trademark infringement. Orthodox Union is seeking a preliminary and permanent injunction, an accounting, and monetary damages.

     David Butler and Jason Scherr of Bingham McCutchen LLP (Washington, DC) filed the complaint on behalf of Orthodox Union.

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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:

• Thirty Eight Street, Inc. v. State Line LC, Case Number 1:2007cv02210, filed August 20, 2007

According to court papers filed August 20, Plaintiffs Thirty Eight Street, Inc., and Vantage Hospitality Group, Inc. (formerly Best Value Inn Brand Membership, Inc.) are Florida entities that  allegedly own the marks BEST VALUE INN, BEST VALUE (right), and AMERICAS BEST VALUE INN BY VANTAGE.  Defendant State Line, LC, is reportedly a Hagerstown, Maryland-based entity.  Defendant Bharat Patel is allegedly a Maryland resident and owns State Line LC.  The filed Complaint alleges that Defendants infringed the asserted marks under 15 U.S.C. § 1114; violated the false advertising provisions of the Lanham Act, 15 U.S.C. § 1125(a); contributorily and/or vicariously infringed the marks; and violated several Maryland state statutes and common laws (e.g., Maryland Unfair or Deceptive Trade Practices Statute, unfair competition).  Plaintiffs are seeking an injunction, destruction of advertising materials, and an award of monetary damages, among other requested relief. 

• Young Again Products, Inc. v. Young Again Rejuvenation Clinic, LLC, Case Number 8:2007cv02254, filed August 24, 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 Young Again Rejuvenation Clinic, LLC, which is reportedly a New Jersey company operating the site youngagainclinic.com, for allegedly "engaged in the unauthorized use of the Young Again™ Mark by utilizing the Mark in its company name, in its website’s uniform resource locator (“URL”) (also referred to as the domain name) and/or on its website to offer its services and sell related supplement products, including hormone therapies" in violation of 15 U.S.C. §1125(a) (Lanham Act), dilution of a famous mark in violation of 15 U.S.C. §1125(c), and unfair competition in violation of Maryland's common law.  Young Again Products is seeking a declatory judgment enjoining Young Again Rejuvenation Clinic, LLC, from using the Young Again mark, monetary damages, and other relief.

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