Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA361542
`ESTTA Tracking number:
`08/04/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91183227
`Defendant
`Music Makers Holdings LLC
`ALLISON RAPP
`LUTZKER & LUTZKER
`1233 20TH ST NW STE 703
`WASHINGTON, DC 20036-2304
`UNITED STATES
`allison@lutzker.com, arnie@lutzker.com, jeannette@lutzker.com,
`joanna@lutzker.com
`Other Motions/Papers
`Jeannette Maurer Carmadella
`jeannette@lutzker.com, allison@lutzker.com, joanna@lutzker.com
`/jeannettemaurercarmadella/
`08/04/2010
`TTAB Notice re Final Disposition of Civil Action.pdf ( 3 pages )(9296 bytes )
`Doc 35 Memorandum Opinion.pdf ( 19 pages )(75108 bytes )
`Doc 36 Order granting Motion to Dismiss.pdf ( 1 page )(8102 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.: 91183227
`
`Serial No.: 77/055,523
`
`---------------------------------------------------------------x
`MARIA SARRO
`
`::
`
`::
`
`:
`:
`
`::
`
`Opposer,
`
`v.
`
`MUSIC MAKERS HOLDINGS, LLC
`
`:
`Applicant.
`---------------------------------------------------------------x
`
`NOTICE OF FINAL DISPOSITION
`OF THE CIVIL ACTION BETWEEN PARTIES
`
`Applicant, Music Makers Holdings, LLC, by and through its Attorneys, hereby notifies
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`the Board that a final determination of the civil action between the parties has been entered by
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`the United States District Court for the District of Maryland.
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`On September 1, 2009, the Board entered an Order suspending the above-referenced
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`proceeding pending final disposition of the civil action between the parties pursuant to
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`Trademark Rule 2.117(a). On July 15, 2010, the District Court issued an Order granting
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`Defendant’s Motion to Dismiss for Lack of Personal Jurisdiction. A copy of the court’s final
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`decision is attached hereto. The decision of the District Court is not dispositive of the issues
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`involved in this opposition proceeding.
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`Based on the foregoing, Applicant respectfully requests that this case be called up and the
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`discovery dates be reset as follow:
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`All responses to outstanding discovery requests due 30 days from the date of issuance of
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`an Order and close of Discovery reset by 90 days from date of issuance of an Order.
`
`

`
`Respectfully submitted,
`
`_/s/ Jeannette Maurer Carmadella_
`Jeannette M. Carmadella
`Arnold P. Lutzker
`Allison L. Rapp
`Lutzker & Lutzker LLP
`1233 20th St., NW, Suite 703
`Washington, D.C. 20036
`Phone: (202) 408-7600
`Fax: (202) 408-7677
`
`Date: August 4, 2010
`
`Attorneys for Music Makers Holdings, LLC
`
`2
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on August 4, 2010, a copy of the foregoing
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`document was deposited in the U.S. mail, first class, postage prepaid, addressed to the following
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`counsel of record:
`
`Stephen J. Coates
`Kilpatrick Stockton LLP
`31 West 52nd Street, 14th Floor
`New York, NY 10019
`
`By:
`
`_/s/ Jeannette Maurer Carmadella__
`
`3
`
`

`
`Case 8:09-cv-01836-RWT Document 35 Filed 07/15/10 Page 1 of 19
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MARYLAND
`
`*
`*
`*
`*
`*
`* Case No.: RWT 09cv1836
`*
`*
`*
`*
`*
`
`
`
`Plaintiff
`
`MUSIC MAKERS HOLDINGS, LLC,
`
`
`
`v.
`
`MARIA SARRO,
`
`
`
`Defendant.
`
`
`
`MEMORANDUM OPINION
`
`Plaintiff Music Makers Holdings, LLC (“Music Makers”), a Maryland entity, Compl. ¶ 9,
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`brought this action for injunctive and monetary damages against Defendant Maria Sarro, a
`
`citizen of New York, id. ¶ 10, for her alleged tortious use of the trademark “Bach to Rock.” For
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`the reasons set forth below, the Complaint is dismissed for lack of personal jurisdiction.
`
`BACKGROUND
`
`Since 2004, Defendant Maria Sarro has operated a two week summer music camp in
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`Garden City, New York, under the name “Bach to Rock.” Id. ¶ 40. Defendant also maintains the
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`website bachtorock.com. Id. ¶ 41.
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`On February 6, 2007, Defendant, knowing that Music Makers planned “to open a series
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`of rock music schools under the name ‘Bach to Rock,’” sent a letter to Plaintiff warning that “we
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`will protect the integrity of our name and reputation with any means necessary.” Sarro Suppl.
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`Decl. Ex. A. In the letter, Plaintiff further stated “[w]e advise you to choose a different name at
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`this early juncture in the launch of your new business or to contact us for licensing/franchise
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`agreement.” Id.
`
`

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`Case 8:09-cv-01836-RWT Document 35 Filed 07/15/10 Page 2 of 19
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`In response, Plaintiff’s parent company, Cambridge Information Group (“CIG”), sent a
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`letter to Defendant on February 22, 2007. Id. CIG explained that “we are known by a unique
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`mark that does not adversely affect any use you may have,” that “we each conduct business in
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`very different geographic areas,” and that “such descriptors do not jeopardize our independent
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`identities.” Id. (emphasis in original). CIG further observed that “a cursory review of the
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`Internet” reveals that the phrase ‘Bach to Rock’ “has entered music’s common vernacular.” Id.
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`Nevertheless, CIG expressed its desire to “explore ways in which we might constructively
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`collaborate.” Id.
`
`Four months later, in July 2007, Plaintiff opened its first Bach to Rock music school in
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`Bethesda, Maryland. Compl. ¶ 17. Since then, Plaintiff has opened four additional music school
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`locations in the Washington, D.C. metropolitan area, attracting students from Maryland,
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`Washington, D.C., and Virginia. Id.
`
`On March 25, 2008, Defendant, through counsel, sent a second letter to Plaintiff. Lutzker
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`Decl. Ex. 1. In this letter, Defendant stated that Plaintiff’s mark is likely to cause “confusion,
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`mistake, and deception,” and demanded that Plaintiff “immediately and permanently cease all
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`use of the names and marks[,] . . . transition your company name to another name[,] . . . [and]
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`voluntarily cancel your existing application for the mark BACH TO ROCK.” Id. Defendant
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`further warned that “[s]hould you fail to cooperate, our client shall proceed to take such actions
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`as are necessary to protect its rights, including any and all appropriate legal and equitable
`
`remedies to prevent the infringement of its trademarks and other valuable property.” Id.
`
`On July 27, 2009, Plaintiff acquired, from the Trustee in Bankruptcy of a New Jersey
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`company called Bach To Rock, Inc., all common law rights, title, and interest to the trademark
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`Bach to Rock. Compl. ¶¶ 2, 24. Bach To Rock, Inc. allegedly had used the name and trademark
`
`
`
`2
`
`

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`Case 8:09-cv-01836-RWT Document 35 Filed 07/15/10 Page 3 of 19
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`beginning at least as early as 1990, id. ¶¶ 2, 23, and advertized in New York, Massachusetts,
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`Connecticut, New Jersey, Pennsylvania, Maryland, and Washington, D.C. Id. ¶ 27.
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`During the relevant time period, both Plaintiff and Defendant applied to the United States
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`Patent and Trademark Office (“PTO”) for federal registration of various trademarks, including:
`
`Date
`
`Applicant Serial No.
`
`Mark
`
`Dec. 1, 2006
`
`Plaintiff
`
`77/055523 B2R BACH TO
`ROCK
`AMERICA’S
`MUSIC SCHOOL
`& design
`
`Dec. 1, 2006
`
`Plaintiff
`
`77/055493 B2R & design
`
`Dec. 1, 2006
`
`Plaintiff
`
`77/976410 B2R & design
`
`Current Status1
`Pending. On March 25, 2008,
`Defendant filed Notice of Opposition
`No. 91183227 with the Trademark Trial
`and Appeal Board, opposing Plaintiff’s
`application for this mark.
`
`Abandoned on January 11, 2010 for
`failure to file a statement of use.
`
`Matured into Registration No. 3584462
`on March 3, 2009.
`
`Jan. 15, 2008 Defendant 77/372672 BACH TO ROCK Suspended pending disposition of
`Application Serial No. 77/055523.
`
`June 12, 2009 Plaintiff
`
`77/758590 BACH TO ROCK Suspended pending disposition of
`Application Serial No. 77/372672.
`
`June 18, 2009 Plaintiff
`
`77/763307 BACH TO ROCK Suspended. PTO refused registration
`because of (i) likelihood of confusion
`with registered mark No. 3368755
`“BACH ROXXX” and (ii) Defendant’s
`prior pending Application Serial No.
`77/372672.
`
`June 18, 2009 Plaintiff
`
`77/763291 BACH TO ROCK Suspended pending disposition of
`Application Serial No. 77/372672.
`
`
`Compl. ¶¶ 30-44.
`
`PROCEDURAL HISTORY
`
`On July 14, 2009, Plaintiff commenced this action alleging that Defendant’s use of the
`
`mark Bach to Rock and Notice of Opposition No. 91183227 are causing irreparable harm to
`
`
`1
`and Trademark Office Trademark Electronic Search System,
`See United States Patent
`http://www.uspto.gov/trademarks/index.jsp (follow “SEARCH MARKS” hyperlink; then follow “New User Form
`Search (Basic)” hyperlink; then enter Application Serial No.) (last visited July 14, 2010). The Court may take
`judicial notice of matters of public record from sources – such as the PTO – whose accuracy cannot be reasonably
`questioned. Fed. R. Civ. P. 201(b); see also Hall v. Virginia, 385 F.3d 421, 424 n.3 (4th Cir. Va. 2004); Colonial
`Penn Ins. Co. v. Coil, 887 F.2d 1236, 1239-40 (4th Cir. 1989).
`
`
`
`3
`
`

`
`Case 8:09-cv-01836-RWT Document 35 Filed 07/15/10 Page 4 of 19
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`Plaintiff. Id. ¶ 44. The Complaint contains five counts: (i) common law trademark infringement;
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`(ii) false designation of origin and false or misleading description of facts, in violation of the
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`Lanham Act, 15 U.S.C. § 1125(a) (2006); (iii) unfair trade practices, in violation of the Maryland
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`Consumer Protection Act, Md. Code Ann., Com. Law § 13-303 (LexisNexis 2010); (iv) common
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`law unfair competition; and (v) unjust enrichment. Id. ¶¶ 57-96.
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`Defendant filed a motion to dismiss the Complaint for lack of personal jurisdiction on
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`September 23, 2009, Paper No. 9, and the Court conducted a hearing on the dispositive motion
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`on March 22, 2010, Paper No. 33.
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`STANDARD OF REVIEW
`
`Under Federal Rule of Civil Procedure 12(b)(2), a civil action is subject to dismissal if
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`the forum court lacks the requisite personal jurisdiction. Fed. R. Civ. P. 12(b)(2). Once a
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`defendant challenges a court’s power to exercise personal jurisdiction over the defendant under
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`Rule 12(b)(2), “the jurisdictional question is to be resolved by the judge, with the burden on the
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`plaintiff ultimately to prove grounds for jurisdiction by a preponderance of the evidence.”
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`Carefirst of Md., Inc. v. Carefirst Pregnancy Ctrs., Inc., 334 F.3d 390, 396 (4th Cir. 2003).
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`When a district court addresses the question of personal jurisdiction on the basis of
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`motion papers and legal memoranda, without an evidentiary hearing, a plaintiff need only make a
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`prima facie showing of “a sufficient jurisdictional basis.” Consulting Eng’rs Corp. v. Geometric
`
`Ltd., 561 F.3d 273, 276 (4th Cir. 2009); see also Combs v. Bakker, 886 F.2d 673, 676 (4th Cir.
`
`1989). The court “must draw all reasonable inferences arising from the proof, and resolve all
`
`factual disputes, in the plaintiff’s favor.” Mylan Labs., Inc. v. Akzo, N.V., 2 F.3d 56, 60 (4th Cir.
`
`1993).
`
`
`
`4
`
`

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`Case 8:09-cv-01836-RWT Document 35 Filed 07/15/10 Page 5 of 19
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`I.
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`Personal Jurisdiction
`
`ANALYSIS
`
`A federal court may exercise specific personal jurisdiction2 over a non-resident defendant
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`if (1) the requirements of the forum state’s long-arm statute are satisfied and (2) the exercise of
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`jurisdiction comports with the Due Process Clause of the Fourteenth Amendment, U.S. Const.
`
`amend. XIV, § 1. See Consulting Eng’rs, 561 F.3d at 277. Maryland has construed its long-arm
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`statute to authorize the exercise of personal jurisdiction to the full extent allowable under the
`
`Due Process Clause. See Base Metal Trading, Ltd. v. OJSC “Novokuznetsky Aluminum
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`Factory”, 283 F.3d 208, 213 (4th Cir. 2002). Even though the Maryland long-arm statute
`
`reaches the outer limits of due process, a court must nevertheless consider the express provisions
`
`of the statute because it continues to limit the exercise of specific personal jurisdiction to actions
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`arising from any act enumerated in the statute. See Johansson Corp. v. Bowness Constr. Co.,
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`304 F. Supp. 2d 701, 704 (D. Md. 2004).
`
`A. Maryland Long-Arm Statute
`
`Plaintiff argues that the Court has specific personal jurisdiction over Defendant pursuant
`
`to section 6-103(b)(1), (3), and (4) of the Maryland long-arm statute. Md. Code Ann., Cts. &
`
`Jud. Proc. § 6-103(b)(1), (3), (4) (LexisNexis 2010). The Maryland long-arm statute provides, in
`
`relevant part, that:
`
`A court may exercise personal jurisdiction over a person, who
`directly or by an agent:
`
`(1) Transacts any business or performs any character of work
`or service in the State; . . .
`
`
`2 Plaintiff does not – and cannot based on the evidence before the Court – argue that Defendant has maintained
`continuous and systematic contacts with Maryland sufficient to establish general personal jurisdiction. See CFA
`Inst. v. Inst. of Chartered Fin. Analysts of India, 551 F.3d 285, 292 n.15 (4th Cir. 2009) (comparing general and
`specific personal jurisdiction).
`
`
`
`5
`
`

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`Case 8:09-cv-01836-RWT Document 35 Filed 07/15/10 Page 6 of 19
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`(3) Causes tortious injury in the State by an act or omission
`in the State;
`
`(4) Causes tortious injury in the State or outside of the State
`by an act or omission outside the State if he regularly does or
`solicits business, engages in any other persistent course of
`conduct in the State or derives substantial revenue from
`goods, food, services, or manufactured products used or
`consumed in the State . . . .
`
`Id. “The provisions of this section apply to computer information and computer programs in the
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`same manner as they apply to goods and services.” Id. § 6-103(c)(2).
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`Interpreting section 6-103(b)(1), the Court of Appeals of Maryland has held that “the acts
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`done within a State which will support in personam jurisdiction as transacting ‘any business’ are
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`not necessarily limited to acts which are a part of commerce or of transactions for profit, but
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`include acts which constitute a purposeful activity within the State.” Novack v. Nat’l Hot Rod
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`Ass’n, 231 A.2d 22, 26 (Md. 1967) (emphasis added); see also Layton v. Aamco Transmissions,
`
`Inc., 717 F. Supp. 368, 370 (D. Md. 1989) (underscoring that the act must be performed within
`
`Maryland). Although the defendant does not have to be physically present in Maryland under
`
`section 6-103(b)(1), CoStar Realty Info., Inc. v. Field, 612 F. Supp. 2d 660, 671 (D. Md. 2009),
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`Maryland courts have construed the phrase “transacting business” narrowly, requiring, for
`
`example, significant negotiations or intentional advertising and selling in the forum state, see
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`Am. Ass’n of Blood Banks v. Boston Paternity, LLC, No. DKC 2008-2046, 2009 U.S. Dist.
`
`LEXIS 65184, at *15-16 (D. Md. July 28, 2009) (discussing Maryland state cases).
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`Under section 6-103(b)(3), both the tortious conduct and injury must occur in Maryland.
`
`See Craig v. Gen. Finance Corp., 504 F. Supp. 1033, 1036 (D. Md. 1980). “Traditionally, ‘the
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`tortious wrong of trademark infringement takes place in either the place where the infringer
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`commits acts of infringement or in the place where customers are likely to be deceived and
`
`
`
`6
`
`

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`Case 8:09-cv-01836-RWT Document 35 Filed 07/15/10 Page 7 of 19
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`confused.’” Am. Ass’n of Blood Banks, 2009 U.S. Dist. LEXIS 65184, at *20 (emphasis in
`
`original) (quoting 6 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition
`
`§ 32.38 (4th ed. 2008)).
`
`In order to engage in a “persistent course of conduct” under section 6-103(b)(4), a
`
`defendant must have greater contacts than those necessary to establish jurisdiction under
`
`section 6-103(b)(1). See id. at *23. Unlike subsection (b)(1), “the reach of subsection (b)(4)
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`does not extend to the limits of the due process clause.” Craig, 504 F. Supp. at 1037.
`
`B.
`
`Due Process Clause of the Fourteenth Amendment
`
`“Due process requires that personal jurisdiction over a non-resident defendant only be
`
`exercised where the defendant has certain minimum contacts with Maryland, such that the
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`maintenance of the suit does not offend traditional notions of fair play and substantial justice.”
`
`Young Again Prods., Inc. v. Acord, 307 F. Supp. 2d 713, 715 (D. Md. 2004) (quotation marks
`
`omitted); see also Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945). In evaluating
`
`whether specific jurisdiction over a defendant comports with due process, a court must consider
`
`(1) the extent to which the defendant has purposefully availed itself of conducting activities in
`
`the forum, thereby invoking the benefits and protections of its laws; (2) whether the plaintiff’s
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`claim arises out of the defendant’s activities directed at the forum state; and (3) whether the
`
`exercise of personal jurisdiction would be constitutionally “reasonable.” Christian Sci. Bd. of
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`Dirs. of the First Church of Christ, Scientist v. Nolan, 259 F.3d 209, 216 (4th Cir. 2001); see
`
`also Hanson v. Denckla, 357 U.S. 235, 253 (1958) (stating that for minimum contacts to exist,
`
`there must be “some act by which the defendant purposefully avails itself of the privilege of
`
`conducting activities within the forum State, thus invoking the benefits and protections of its
`
`laws”). Constitutional reasonableness is measured by considering “(1) the burden on the
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`defendant of litigating in the forum; (2) the interest of the forum state in adjudicating the dispute;
`
`
`
`7
`
`

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`Case 8:09-cv-01836-RWT Document 35 Filed 07/15/10 Page 8 of 19
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`(3) the plaintiff’s interest in obtaining convenient and effective relief; (4) the shared interest of
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`the states in obtaining efficient resolution of disputes; and (5) the interest of the states in
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`furthering substantive social policies.” See Consulting Eng’rs, 561 F.3d at 279 (citing Burger
`
`King Corp v. Rudzewicz, 471 U.S. 462, 477 (1985)).
`
`II.
`
`Defendant’s Alleged Contacts with Maryland
`
`Plaintiff describes five activities that purportedly “collectively more than satisfy the
`
`‘minimum contacts’ requirements of the Due Process Clause and Maryland law.” Pl.’s Opp’n 5.
`
`A.
`
`Cease-and-Desist Letters to Plaintiff
`
`Plaintiff first argues that Defendant subjected herself to the Court’s jurisdiction by
`
`sending two cease-and-desist letters to Defendant.3 Pl.’s Opp’n 5-7.
`
`Neither the Fourth Circuit nor any federal or state court in Maryland has addressed
`
`whether sending a cease-and-desist letter is sufficient to invoke personal jurisdiction under the
`
`Maryland long-arm statute or the Fourteenth Amendment.4 Cf. Bond v. Messerman, 391 Md.
`
`706, 723 (Md. 2006) (stating that “[g]enerally, telephone calls and correspondence with the
`
`plaintiff in the forum state are not sufficient contact with the forum state to satisfy due process
`
`requirements”); id. at 722 (concluding that even if defendant’s dispensing of legal advice by
`
`
`3 Plaintiff acknowledges that cease-and-desist letters alone are insufficient to invoke personal jurisdiction, citing one
`Sixth Circuit case and three out-of-circuit, unpublished district court decisions, but argues that Defendant’s letters
`are factors supporting purposeful availment. See Pl.’s Opp’n 6-7. Defendant asserts that the letters are insufficient,
`but cites no supporting authority. See Def.’s Reply 13.
`4 Three cases from the Middle District of North Carolina have held that merely sending a cease-and-desist letter is
`insufficient to establish personal jurisdiction. See United Plastics Corp. v. Terra Tech., Inc., No. 1:06cv00629, 2007
`U.S. Dist. LEXIS 10812, at *11-13 (M.D.N.C. Feb. 6, 2007) (finding that the out-of-state defendant did not avail
`itself of the laws of North Carolina when it sent a cease-and-desist letter and subsequent correspondence in an
`attempt to settle a patent dispute); Wood Int’l, Inc. v. McRoy, 436 F. Supp. 2d 744, 751 (M.D.N.C. 2006) (noting that
`defendant did not attempt to solicit business or enter into a business relationship in North Carolina and concluding
`that a cease-and-desist letter alone is not sufficient to support personal jurisdiction in a declaratory judgment action
`involving copyrighted material); Intec USA, LLC v. Engle, No. 1:05CV468, 2005 U.S. Dist. LEXIS 38490, at *15-
`16 (M.D.N.C. Sept. 8, 2005) (holding that no personal jurisdiction existed in breach of contract action because
`defendant’s letter sent to Washington state, the location of plaintiff’s law firm, did not clearly threaten litigation in
`North Carolina, the location of plaintiff).
`
`
`
`8
`
`

`
`Case 8:09-cv-01836-RWT Document 35 Filed 07/15/10 Page 9 of 19
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`letter and telephone satisfied section 6-103(b)(1) and (3), plaintiff nonetheless lacked minimum
`
`contacts with Maryland).
`
`However, recent out-of-circuit court of appeals decisions have analyzed the issue in a
`
`variety of contexts and have uniformly held that cease-and-desist letters alone do not establish
`
`personal jurisdiction. See, e.g., Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012,
`
`1021 (Fed. Cir. 2009); Avocent Huntsville Corp. v. Aten Int’l Co., 552 F.3d 1324, 1333-34 (Fed.
`
`Cir. 2008); Kehm Oil Co. v. Texaco, Inc., 537 F.3d 290, 301 (3d Cir. 2008); Stroman Realty, Inc.
`
`v. Antt, 528 F.3d 382, 386-87 (5th Cir. 2008); Stroman Realty, Inc. v. Wercinski, 513 F.3d 476,
`
`484-87 (5th Cir. 2008).5 In the patent arena, the Federal Circuit has explained that:
`
`Principles of fair play and substantial justice afford a patentee
`sufficient latitude to inform others of its patent rights without
`subjecting itself to jurisdiction in a foreign forum. A patentee
`should not subject itself to personal jurisdiction in a forum solely
`by informing a party who happens to be located there of suspected
`infringement. Grounding personal jurisdiction on such contacts
`alone would not comport with principles of fairness.
`
`Red Wing Shoe Co., Inc. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355, 1360-61 (Fed. Cir.
`
`1998). Accordingly, in determining whether they may exercise personal jurisdiction, courts tend
`
`to consider cease-and-desist letters in conjunction with defendants’ other activities in the forum
`
`state. See, e.g., Campbell Pet Co. v. Miale, 542 F.3d 879, 886-87 (Fed. Cir. 2008) (concluding
`
`that the court had specific personal jurisdiction over defendant in patent litigation where
`
`defendant sent cease-and-desist letters and took steps to interfere with plaintiff’s business by
`
`
`5 But cf. Yahoo! Inc. v. La Ligue Contre Le Racisme, 433 F.3d 1199, 1208-09 (9th Cir. 2006) (en banc) (suggesting
`that a cease-and-desist letter alone can be the basis of personal jurisdiction in certain circumstances, but that
`defendant’s letter at issue was insufficient to invoke jurisdiction because it was not abusive or tortious or used to
`facilitate settlement but rather to alert plaintiff of defendant’s intent to file suit in France); Bancroft & Masters, Inc.
`v. Augusta Nat’l Inc., 223 F.3d 1082, 1089 (9th Cir. 2000) (stating that the court had personal jurisdiction when
`defendant sent a cease-and-desist letter to plaintiff as well as a letter to Network Solutions, Inc. (“NSI”) which,
`under NSI procedures, would have operated to automatically prevent plaintiff from using a website had it not filed
`suit), overruled in part on other grounds by Yahoo!, 433 F.3d at 1208.
`
`
`
`9
`
`

`
`Case 8:09-cv-01836-RWT Document 35 Filed 07/15/10 Page 10 of 19
`
`attempting to have plaintiff removed from a trade show in the forum state); Dudnikov v. Chalk &
`
`Vermilion Fine Arts, 514 F.3d 1063, 1081-82 (10th Cir. 2008) (holding that the court had
`
`specific personal jurisdiction in action seeking declaratory judgment that plaintiff’s prints do not
`
`infringe defendants’ copyrights because defendants not only sent e-mails threatening suit but also
`
`contacted eBay with the intent that it take action against plaintiffs’ business interests); Ehrenfeld
`
`v. Mahfouz, 489 F.3d 542, 547-50 (2d Cir. 2007) (recognizing that the Second Circuit had
`
`previously held that a cease-and-desist letter alone is insufficient to invoke personal jurisdiction
`
`under New York’s long-arm statute, but choosing to certify to the Court of Appeals of New York
`
`the question of whether the foreign defendant transacted business in the state by sending various
`
`letters and e-mails to plaintiff); Breckenridge Pharm., Inc. v. Metabolite Labs., Inc., 444 F.3d
`
`1356, 1363-67 (Fed. Cir. 2006) (clarifying that cease-and-desist letters in conjunction with a
`
`licensing agreement between defendant and a company in the forum state through which an
`
`ongoing relationship beyond royalty payments is formed, permits a court to exercise personal
`
`jurisdiction).
`
`Consistent with the overwhelming weight of the case law, the Court concludes that cease-
`
`and-desist letters alone are not sufficient to invoke specific personal jurisdiction in an action for
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`trademark infringement. A defendant does not “transact business” within the meaning of
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`section 6-103(b)(1) of Maryland’s long-arm statute by sending written communications to a
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`purported infringer of its rights. Md. Code Ann., Cts. & Jud. Proc. § 6-103(b). Moreover, the
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`maintenance of a suit based solely on such letters would “offend traditional notions of fair play
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`and substantial justice,” Int’l Shoe, 326 U.S. at 316 (quotation marks omitted), and would
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`therefore not comport with due process.6
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`6 Basing personal jurisdiction solely on cease-and-desist letters may also have the unintended negative consequence
`of discouraging rights holders from resolving disputes expeditiously before seeking relief from the courts.
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`10
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`Case 8:09-cv-01836-RWT Document 35 Filed 07/15/10 Page 11 of 19
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`The primary purpose of the February 6, 2007 and March 25, 2008 letters was to inform
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`Plaintiff of Defendant’s rights and demand that Plaintiff cease and desist using the Bach to Rock
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`mark.7 See Sarro Suppl. Decl. Ex. A; Lutzker Decl. Ex. 1. Defendant did not threaten to file suit
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`in Maryland or otherwise avail herself of Maryland’s laws.8 Accordingly, because the two
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`communications are nothing more than cease-and-desist letters and are not sufficient to establish
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`personal jurisdiction over Defendant, the Court must examine Defendants’ other activities.9
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`B.
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`E-mail Correspondence and Telephone Calls with Maryland Residents
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`Plaintiff argues that this Court has personal jurisdiction over Defendant because she
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`responded to at least two e-mails from Marylanders inquiring about Bach to Rock and received
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`telephone calls originating from Maryland. Pl.’s Opp’n at 7-8.
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`These e-mail and telephone communications10 perhaps suggest that Defendant’s mark is
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`being viewed by Marylanders and that there is confusion between the marks. However, they do
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`not establish that Defendant (i) transacted business in Maryland, see Md. Code Ann., Cts. & Jud.
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`Proc. § 6-103(b)(1); (ii) engaged in a persistent course of conduct in Maryland, see id.
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`7 Although Defendant’s February 6, 2007 letter does mention the possibility of a licensing/franchise agreement, see
`Sarro Suppl. Decl. Ex. A, there is no evidence that the parties negotiated or entered into any such agreement.
`8 At the March 22, 2010 hearing, Plaintiff argued that the Court has personal jurisdiction over Defendant because
`she filed a Notice of Opposition with the PTO opposing one of Plaintiff’s applications for a trademark. However,
`the PTO is located in Virginia and there is no connection between the filing of the Notice of Opposition and the
`State of Maryland.
`9 In determining personal jurisdiction in patent actions, the Federal Circuit has held that commercialization efforts
`are relevant in infringement suits but not in actions seeking a declaratory judgment. Compare, e.g., Avocent
`Huntsville Corp. v. Aten Int’l Co., 552 F.3d 1324, 1336 (Fed. Cir. 2008) (holding that only enforcement or defense
`efforts related to the patent rather than the patentee’s own commercialization activities are to be considered for
`establishing specific personal jurisdiction in a declaratory judgment against the patentee), with Synthes (U.S.A.) v.
`G.M. Dos Reis Jr. Ind. Com. De Equip. Medico, 563 F.3d 1285, 1298-1300 (Fed. Cir. 2009) (finding that
`commercialization-type contacts, such as attending a trade show, are highly relevant to personal jurisdiction in
`patent infringement suit); see also Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1020 n.1 (Fed. Cir.
`2009). The Court assumes, without deciding, that Defendant Sarro’s commercialization activities – activities that
`relate directly to Plaintiff’s claims and alleged harm – are relevant to the issue of personal jurisdiction in an action
`for trademark infringement.
`10 Defendant maintained a handwritten document entitled “People that have contacted us!” See Pl.’s Opp’n Ex. C.
`The four-page document contains a list of names and telephone numbers as well as notes, such as “wanted to
`schedule a party in Rockville, MD” and “called for Maryland camp – found it confusing.” Id.
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`11
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`Case 8:09-cv-01836-RWT Document 35 Filed 07/15/10 Page 12 of 19
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`§ 6-103(b)(4); or (iii) derived substantial revenue from services used or consumed in Maryland,
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`see id. The e-mail communications are isolated occurrences and the list of telephone inquires
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`does not indicate whether Defendant solicited the calls or otherwise sought business from
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`Marylanders. Furthermore, the communications relied upon by Plaintiff in no way contradict
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`Defendants’ averment that no Maryland resident has ever attended her music camp in New York.
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`See Sarro Aff. ¶ 11; Sarro Suppl. Decl. ¶ 2; see also id. ¶ 3 (stating that Defendant has never sent
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`advertising material to any Maryland resident ).
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`Moreover, even assuming, arguendo, that these communications support the proposition
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`that Defendant infringed on Plaintiff’s mark within Maryland, thereby falling under the ambit of
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`section 6-103(b)(3) of the Maryland long-arm statute, they do not, however, satisfy due process
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`because Defendant did not purposefully avail herself of conducting activities in Maryland. In
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`fact, the e-mail communications reveal that Defendant rebuffed potential Maryland customers
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`rather than solicited business from them. Specifically, in response to the first e-mail inquiry
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`cited by Plaintiff, Defendant wrote “Where are you located? Are you, by any chance in the
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`DC/Maryland area? I’m wondering if you might have us confused with a different Bach to
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`Rock?” See Pl.’s Opp’n Ex. A; see also Sarro Suppl. Decl. ¶ 11. Similarly, in response to the
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`second e-mail inquiry, Defendant wrote “I think you’re confusing us with the Bach to Rock
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`organization in Maryland. We’re actually up in New York. Good Luck!” See Pl.’s Opp’n Ex.
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`B; see also Sarro Suppl. Decl. ¶ 12.
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`Accordingly, the two e-mail exchanges and the telephone communications cited by
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`Plaintiff do not support personal jurisdiction over Defendant.
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`C.
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`Defendant’s Website
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`Plaintiff next seeks to establish personal jurisdiction over Defendant by virtue of
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`Defendant’s bachtorock.com website. Pl.’s Opp’n at 8-12.
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`12
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`Case 8:09-cv-01836-RWT Document 35 Filed 07/15/10 Page 13 of 19
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`In the Fourth Circuit, the mere act of “placing information on the Internet is not sufficient
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`by itself to subject that person to personal jurisdiction in each State in which the information is
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`accessed.” Carefirst, 334 F.3d at 399 (quotation marks and alterations omitted) (quoting ALS
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`Scan, Inc. v. Digital Serv. Consultants, Inc., 293 F.3d 707, 712 (4th Cir. 2002)). Rather,
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`defendant “must have acted with the manifest intent of targeting Marylanders.” Id. at 400
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`(quotation marks omitted).
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`The Fourth Circuit has adopted a “sliding scale” model for website-based specific
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`jurisdiction, a model that was first articulated by the United States District Court for the Western
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`District of Pennsylvania in Zippo Manufacturing Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119,
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`1124 (W.D. Pa. 1997).11 See Carefirst, 334 F.3d at 399; ALS Scan, 293 F.3d at 713-14. Under
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`this sliding scale, there are passive, interactive, and semi-interactive websites:
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`At one end of the spectrum are situations where a defendant clearly
`does business over the Internet. If the defendant enters into
`contracts with residents of a fo