Civil Procedure I

Music Makers Holdings, LLC v. Sarro

United States District Court, District of Maryland, July 15, 2010

Facts:

Defendant has run a summer music camp called "Bach to Rock" in Garden City, New York, since 2004. Defendant also runs bachtorock.com. In February of 2007, defendant sent plaintiff a warning that the defendant would "protect the integrity of [their] name and reputation with any means necessary" in response to plaintiff's plan to open a series of rock schools also named "Back to Rock." In response, plaintiff's parent company CIG send defendant a letter saying that they were known by a "unique mark" that wouldn't adversely affect defendant, that they were in very different geographic areas, and that the names did not jeopardize their businesses. In July 2007, plaintiff opened it's first rock school in Bethesda, Maryland. Since then, plaintiff has opened four more schools. In March 2008, defendant sent another cease and desist to plaintiff. Plaintiff then sued alleging that defendant's use of the name was causing irreparable harm to plaintiff. Defendant filed a motion to dismiss for lack of personal jurisdiction.

Issue:

Does a state have jurisdiction over this out-of-state person who infringed upon a trademark in that state?

Plaintiff's Argument:

Court has jurisdiction through the Maryland long-arm statute which says a court may exercise personal jurisdiction over a person who transacts any business in the state, commits a tort in the state while the defendant is in the state, or causes a tort in the state while an out-of-state defendant regularly does business or engages in "persistent course of conduct" to profit from goods in the state. This statute applies to computer-related services the same as physical goods.

Defendant fulfilled this contact with five activities:

  1. Sending cease-and-desist letters to the Maryland plaintiff
  2. Corresponding with Maryland residents via email and telephone
    • Actually showed declination to do business
  3. Website
  4. The Effects Test: Intentional Infringement of Maryland Consumers

Rules:

  • For a trademark infringement committed out-of-state against a resident, the defendant must have had "persistent course of conduct" in the state.

  • "Business" supporting in personam jurisdiction does not have to be commercial, merely purposeful.

  • Trademark infringement occurs either where the infringer commits the acts of infringement or where the customers are likely to be deceived.

  • "Persistent course of conduct" requires greater contacts than those normally needed to establish jurisdiction.

Reasoning:

Mail and communication are not enough alone. A website must be targetted and interactive, which defendant's was not. Defendant did not expressly aim her tort at Maryland.

Holding:

No, defendant's activities are insufficient to establish personal jurisdiction.

Judgments:

  • Dismissed for lack of personal jurisdiction.

  • Case dismissed.

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