Category Archives:Intellectual Property

Patent infringement lawsuit brought over Cal Ripken Jr.’s baseball camps

Recently, the companies responsible for organizing retired baseball legend Cal Ripken, Jr.’s baseball camps (“Ripken Companies”) were sued for patent infringement.[1] The Plaintiff in this case is Zito, LLC, a company owned by Arthur J. Zito, Jr. (“Zito”).[2] In its Complaint Zito alleges that it owns two patents which cover a “User-Specific Dispensing System,” namely U.S. Patent No. 7,398,921 and 9,443,369.[3] The Ripken Companies are alleged to conduct baseball camps, clinics and skills training seminars using a baseball practice machine called the “Fungoman® FM-250.”[4] According to its Complaint, Zito is asserting that the Ripken Companies’ use of the “Fungoman® FM-250” baseball practice machine infringes on its two patents.[5] Zito alleges that the Ripken Companies’ infringement is willful because the Ripken Companies allegedly had notice of Zito’s patents as of March 10, 2014 when Mr. Zito listed his patents in an employment agreement with the Ripken Companies.[6]

Zito is seeking damages in the form of profits, enhanced damages and attorneys’ fees and costs. This case is currently in its early stages and we will be monitoring the status of this case. Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Partner

[1] See, Zito, LLC v. CRJ, Inc., et. al., No. 17-cv-01733-JKB, at Docket Entry No. 1 (D. Md. Jun. 23, 2017).
[2] Id.
[3] Id.
[4] Id.
[5] Id.
[6] Id.

Eleventh Circuit Affirms that a Copyright Registration is a Prerequisite to an Infringement Suit

Last week, the United States Court of Appeals for the Eleventh Circuit (“Eleventh Circuit”) affirmed that in order to bring a copyright infringement lawsuit the Plaintiff must have first obtained a copyright registration.[1] As discussed in a previous blog article, registration is required prior to a copyright owner bringing a lawsuit in court for copyright infringement. The dispute to be resolved by the Eleventh Circuit in Fourth Estate was whether the term “registration” means when the copyright owner files an application to register the copyright with the United States Copyright Office (“Copyright Office”) or when the copyright is registered.[2] The Eleventh Circuit highlighted that this is a dispute that has been resolved differently among the different District Court of Appeals.[3] Some Circuits (such as the Fifth, Eighth and Ninth) have found that registration occurs upon the filing of an application.[4] Other Circuits (such as the Tenth) have found that the Register of Copyrights must have first acted on the application by either approving or denying it prior to the lawsuit being filed.[5] While other Circuit (such as the First, Second and Seventh) have not yet resolved the dispute.[6]

The Eleventh Circuit examined the text of the Copyright Act and found that registration does not occur until “‘the Register . . . register[s] the claim.”[7] Further, the Eleventh Circuit found that filing an application alone is insufficient because the Copyright Act states that “registration can occur only after application and examination.”[8] However, it should be noted that a copyright owner who files for an application which has been refused has the ability to file a copyright infringement lawsuit.[9]

The ruling from this case teaches an important lesson. It is essential to register copyrights as soon as it is known that the copyright owner’s work is going to be published or released. Seeking registration after infringement has already occurred has several pitfalls.  For example, a copyright owner waives the right to collect statutory damages and attorneys’ fees under the Copyright Act if the work was not registered prior to the commencement of the infringing activity.  Registration also affords the registrant certain protections and advantages outside the United States, pursuant to some international intellectual property treaties. Thus, it is important to contact an experienced and knowledgeable attorney for any questions regarding copyright protection.

Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Partner

[1] See, Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, et. al., 2017 WL 2191243 (11th Cir. May. 18, 2017).
[2] Id. at 2017 WL 2191243.
[3] Id.
[4] Id.
[5] Id.
[6] Id.
[7] Id. (internal quotations omitted).
[8] Id.
[9] Id.

Patent Infringement Lawsuit Transferred away from Eastern District of Texas

Recently, a patent infringement lawsuit filed in the Eastern District of Texas was transferred to the Northern District of Texas.[1] While this news may seem hardly ground-breaking, this may signal that courts are becoming more willing to transfer patent infringement cases away from the Eastern District of Texas. A previous blog article illuminated the current dispute in patent law regarding the proper venue in which infringement lawsuits can be filed. The Supreme Court is currently hearing the case of TC Heartland LLC v. Kraft Food Brands Group LLC, which is likely to decide the proper interpretation of the patent venue statute, 28 U.S.C. § 1400(b). The underlying debate focuses on complaints that patent infringement Plaintiffs engage in “forum shopping” by overwhelmingly choosing to file lawsuits in the Eastern District of Texas, which has long been considered a patent Plaintiff friendly court. The Supreme Court heard oral argument for this case on March 27, 2017.[2] Thus, a ruling is expected within the next several months.

Although the Eastern District of Texas in Securityprofiling, LLC did not mention the TC Heartland LLC case, this case was transferred to the Northern District of Texas despite the fact that there was a total of two pending cases between the parties in the Eastern District of Texas and that Plaintiff’s principal place of business is currently located within the Eastern District of Texas.[3] The ruling in Securityprofiling, LLC begs the question of whether more courts will be willing to transfer cases from the Eastern District of Texas while a ruling from the Supreme Court in TC Heartland LLC remains pending. Our firm will be monitoring the status of the Supreme Court’s ruling in TC Heartland LLC and its potential impact. Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Partner

[1] See, Securityprofiling, LLC v. Trend Micro America, Inc. et. al., No. 16-CV-1165-RWS-JDL at Docket Entry No. 62 (E.D. Tex. May 12, 2017).
[2] http://www.scotusblog.com/case-files/cases/tc-heartland-llc-v-kraft-foods-group-brands-llc/
[3] See, Securityprofiling, LLC, No. No. 16-CV-1165-RWS-JDL at Docket Entry No. 62.