Monthly Archives: February 2013

Under Armour Seeking to “Protect Its House”

By: Joseph R. Carnicella, intellectual property attorney with Picadio Sneath Miller & Norton, P.C.

Under Armour has filed suit against Nike alleging that Nike has infringed certain Under Armour trademarks as a result of Nike’s use of the phrase “I Will” in advertisements.  Under Armour alleges that Nike’s use of “I Will” infringes its trademark rights, dilutes a famous mark, e.g. the slogan “I will protect this house,” and constitutes unfair competition.  Under Armour alleges that Nike launched an advertising campaign on its Facebook page and YouTube video page that repeatedly use the “I Will” trademark/tagline, and as a result, consumers have already associated Nike’s use of “I Will” with Under Armour.

Under Armour filed the lawsuit on February 21, 2013, in the United States District Court for the District of Maryland, Baltimore Division (1:13-cv-00571).  Nike has not yet filed a response to the complaint.  We will continue to monitor this action.

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Supreme Court Decides Gunn v. Minton Patent Legal Malpractice Case – State Court It Is

Authored by Henry M. Sneath, Esq.  – Chair of the Intellectual Property Practice Group at Picadio Sneath Miller & Norton, P.C. , Pittsburgh, Pa.

Sneath, Henry 2012 headshotToday – The US Supreme Court in Gunn v. Minton decided that a patent legal malpractice case is properly brought in state court. The court held that even though the “case within a case” standard would require interpretation of a patent and other typically Federal Issues, that “case within a case” is a hypothetical case, that does not need to be in Federal Court.  Further the court wrote:

“Because of the backward-looking nature of a legal malpractice claim, the question is posed in a merely hypothetical sense: If Minton’s lawyers had raised a timely experimental-use argument, would the result in the patent infringement proceeding have been different? No matter how the state courts resolve that hypothetical “case with a case,” it will not change the real-world result of the prior federal patent litigation. Minton’s patent will remain invalid.

Nor will allowing state courts to resolve these cases undermine “the development of a uniform body of [patent] law. … Congress ensured such uniformity by vesting exclusive jurisdiction over actual patent cases in the federal district courts and exclusive appellate jurisdiction in the Federal Circuit. … In resolving the non-hypothetical patent questions those cases present, the federal courts are of course not bound by state court case-within-a-case patent rulings. … In any event, the state court case-within-a-case inquiry asks what would have happened in the prior federal proceeding if a particular argument had been made. In answering that question, state courts can be expected to hew closely to the pertinent federal precedents. It is those precedents, after all, that would have applied had the argument been made.”

We previously reported on this case and will follow for any interesting cases which actually try one of these malpractice cases in state court. Here is the opinion delivered by Chief Justice Roberts: http://tinyurl.com/a474okm

Pennsylvania Adopts UIDDA as of December 24, 2012

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. () and Jeffrey Ludwikowski, shareholder at Picadio Sneath Miller & Norton, P.C.

Previously, when out-of-state litigants attempt to serve subpoenas in Pennsylvania for discovery in out-of-state actions, they had to open a miscellaneous matter in Pennsylvania, which could be an involved and difficult process—NO MORE. Pennsylvania has adopted the Uniform Interstate Depositions and Discovery Act, which became effective on December 24, 2012. This will make out-of-state discovery in Pennsylvania easier and more efficient, by eliminating the potpourri of individualized county by county out-of-state discovery procedures across Pennsylvania.

On October 24, 2012, Governor Corbett signed Act 183 of 2012, which amends the Pennsylvania Judicial Code by adopting the Uniform Interstate Depositions and Discovery Act (the “UIDDA”). The UIDDA is a model uniform law that allows for out-of-state litigants to obtain third-party discovery in Pennsylvania. Because foreign subpoenas lose jurisdiction at the border of their issuing state, the subpoena must be “reissued” in Pennsylvania to be effective within the Commonwealth

The procedure under UIDDA is simple: foreign litigants present their foreign subpoena to the “in the jurisdiction in which the person who is the subject of the [subpoena] resides, is employed[,] or regularly transacts business in person.” After paying a fee (and complying with local rules) the prothonotary will issue the subpoena for service within its jurisdiction. The Pennsylvania subpoena must incorporate the terms of the foreign one and must contain contact information for all counsel of record and any pro se party. Requesting that a subpoena be issued in Pennsylvania under the UIDDA does not constitute a court appearance, so out-of-state attorneys need not worry about seeking admission pro hac vice.

The Pennsylvania Rules of Civil Procedure govern service and any motion practice related to the Pennsylvania subpoena or its enforcement (including protective orders). This procedure applies both to subpoenas for depositions and subpoenas for documents and things.

Here is the link to the Act as adopted in Pennsylvania.

While the UIDDA will ultimately make out-of-state discovery in Pennsylvania easier, it may take a while before the new process becomes streamlined and efficient. In fact, there have already been reports of difficulties in its implementation as attorneys and the various Prothonotaries across the state become familiar with this new process. However, we expect these issues to resolve themselves soon.