Intellectual Property Law

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

By Brian Wm. Higgin

     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...

• #2:  W.L. Gore & Associates, Inc. v. Saint-Gobain Performance Plastics Corporation (note: 7 MB file!), No. 1:2008cv00054, filed Jan. 7, 2008

     This Declaratory Judgment action was initiated by W.L. Gore & Associates against Saint-Gobain Performance Plastics Corporation concerning Saint-Gobain's U.S. Patents 6,290,265 and 7,093,859 (a divisional of the '265). W.L. Gore is a Delaware company with a significant presence in Elkton, MD. Saint-Gobain is a California corporation with a principal place of business in Valley Forge, PA.., and it allegedly sells products in Maryland. The patents involve connectors and tubing assemblies for transporting health care fluids.

     The Complaint contains detailed allegations of inequitable conduct, as well as bare allegations of unfair competition, false and defamatory statements, and injurious falsehood under Maryland law.

     According to the Complaint, the defamation count is based on Defendant's alleged November 2007 press release, which W.L. Gore contends included a statement that Defendant owns exclusive rights to the devices claimed in the patents-at-suit, which W.L. Gore says was false and defamatory when written because Defendant asserted that it holds exclusive rights to manifolds covered by one or both of the patents-in-suit when Defendant knew its patents were invalid and unenforceable as a result of the inequitable conduct described above (I'm summarizing; read the Complaint to see the details). W.L. Gore claims the press release was issued with malice. Hinging a defamation count to an inequitable conduct count is rather unusual, I would say. It doesn't make a lot of sense that someone should be liable for defamation by publishing a statement that it owns exclusive rights to products covered by presumptively valid patents.

     Mark Koehn, Lawrence Gotts, and Brandon White of Paul, Hastings, Janofsky & Walker (Washington, DC), filed the lawsuit on behalf of W.L. Gore.

• #3:  Gruppo Essenziero Italiano, S.p.A. v. Aromi D'Italia Inc., No. 1:2008cv00065, filed Jan. 8, 2008  

     This case involves Turin, Italy's Gruppo Essenziero  Italiano, which alleges to be the owner of the trademark AROMITALIA, and Maryland's Aromi D'Italia, Inc., the previous exclusive distributor of AROMITALIA gelato products in the U.S. The relationship between the parties deteriorated, according to the Complaint, after the Defendant failed to pay money owed the Plaintiff. Baltimore's Gordon, Feinblatt, Rothman, Hoffberger & Hollander, LLC, filed the Complaint.

• #4:  Reeves v. The Boeing Company, No. 8:2008cv00100, filed Jan. 14, 2008

     Reeves, a Montgomery County, MD resident, brought this copyright infringement, breach of contract, and misappropriation of trade secrets action against Delaware entities The Boeing Company (based in Seattle) and BAE Systems, Inc. (based in Rockville, MD). Mr. Reeves alleges unauthorized use, copying, disclosure and/or distribution of certain software developed by LEXICO Enterprises, Inc. for use in Boeing airline test systems (Reeves states that he acquired all rights to the software from LEXICO, for which he was its Vice President). BAE acquired Boeing's airline test business operations, which brought it into the case. Mark Freeman, of Freeman & Freeman PC, filed the Complaint for Mr. Reeves.

Full post as published by Maryland Intellectual Property Law Blog on January 20, 2008 (boomark / email).