Music Makers Holdings, LLC v. Sarro - No. RWT 09cv1836, 2010 U.S. Dist. LEXIS 71920 (D. Md. July 14, 2010)

Rule:

When a district court addresses the question of personal jurisdiction on the basis of motion papers and legal memoranda, without an evidentiary hearing, a plaintiff need only make a 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). 

Facts:

Since 2004, Defendant Maria Saro has run a summer music camp called "Bach to Rock" in Garden City, New York. Defendant also ran bachtorock.com. In February of 2007, defendant sent plaintiff Music Makers Holdings, LLC (Music Makers) 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." Plaintiff's parent company, Cambridge Information Group (CIG), said through a letter that they were known by a unique mark that would not 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 its first rock school in Bethesda, Maryland and four more schools later on. In March 2008, the defendant sent another letter demanding plaintiff to cease and desist. Eventually, Plaintiff filed a suit and alleged 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:

Did the state have jurisdiction over an out-of-state person who infringed upon a trademark in that state?

Answer:

No.

Conclusion:

For a trademark infringement committed out-of-state against a resident, the defendant must have had "persistent course of conduct" in the state which requires greater contacts than those normally needed to establish jurisdiction. Trademark infringement occurs either where the infringer commits the acts of infringement or where the customers are likely to be deceived. Defendant's activities, considered collectively, are insufficient to establish personal jurisdiction under either the Maryland long-arm statute or the United States Constitution. Plaintiff has failed to make a facie showing of "a sufficient jurisdictional basis."