• Tax Structuring Strikes Again

    by  • June 22, 2015 • 0 Comments

    Oh, adidas. adidas AG is a large multinational conglomerate headquartered in Germany. It reported that at the close of 2014 it had 154 subsidiaries, one of which is co-plaintiff adidas America, Inc. A few years ago adidas developed “miCoach,” an “interactive personal coaching and training system.” Parent adidas AG owns the company’s US patents...

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    When Is an Infringed Trademark “Registered”?

    by  • June 15, 2015 • 0 Comments

    A claim for trademark infringement can be brought under two different sections of the Lanham Act, Section 32 for infringement of registered trademarks and Section 43(a) for infringement of unregistered trademarks.* Registration provides some evidentiary benefits, like prima facie evidence of distinctiveness, so if a plaintiff doesn’t have a registered trademark then it will...

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    You Need to Take Care of the Little Details

    by  • June 3, 2015 • 0 Comments

    Every patent litigation starts with an examination of the chain of title, or at least it should. Often there are multiple inventors; every link for each one has to be there, and even the language of the employment agreement has to be just right. Even after that, every corporate assignment has to be done...

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    It Doesn’t Work That Way

    by  • June 1, 2015 • 0 Comments

    When we last visited Florida VirtualSchool v. K12, Inc., the Court of Appeals for the Eleventh Circuit certified a question to the Supreme Court of Florida. As a refresher, in Florida VirtualSchool we have a state entity, FVS, enforcing a trademark. The defendants argued, successfully at the trial court stage, that FVS did not...

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    The Year Is the Key

    by  • May 29, 2015 • 0 Comments

    I previously asked readers to “Name the Owner” of a copyrighted work. And the answer is: Urbont does not own the copyright* and the case is dismissed. The key is that the work was created in 1966, so whether the Iron Man Theme was a work for hire is decided under the Copyright Act...

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    Not What I Would Have Guessed …

    by  • May 27, 2015 • 0 Comments

    Plaintiff ZipSleeve, LLC had registered its ZIPSLEEVE trademark* but the registration lapsed for failure to file a declaration under Section 8 of the Trademark Act. ZipSleeve filed a new application, which hasn’t registered yet. ZipSleeve sued West Marine Inc. for trademark infringement under 15 U.S.C. § 1114, which is for infringement of a registered...

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    Name the Owner

    by  • May 26, 2015 • 2 Comments

    Below are the facts, and here’s the question—who owns the copyright? Answer in a later post. In 1966, songwriter and plaintiff Jack Urbont was aspiring. A friend introduced him to Stan Lee of Marvel Comics fame who was developing a television show called “Marvel Super Heroes.” Urbont wasn’t familiar with the Marvel superheroes, so...

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    Check the Clock

    by  • May 7, 2015 • 0 Comments

    Mr. Hillyar was the the former director of Gems TV (UK). Gems TV (UK) was owned by Gem TV Holdings Ltd. Gems TV (UK) owned the ‘211 Patent and intended to assign it to Gem TV Holdings Ltd. but didn’t. Gem TV Holdings Ltd. then sold Gems TV (UK) in a stock purchase agreement...

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    A Trademark Cause of Action Absent Confusion

    by  • April 13, 2015

    Sometimes it’s difficult to state a claim for a trademark ownership dispute. There is no cause of action per se for declaring or correcting ownership of a trademark.* Resolution of the ownership issue is almost always subsumed into the infringement claim, because the two warring parties are both trying to use the trademark and...

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    Assent Versus Signature

    by  • April 9, 2015

    I asked whether the below “Submit” page, used when one posts a review on Rip-Off Report (owned by defendant Xcentric), transferred an exclusive license in the submitter’s copyright: If you were to use the scrollbar on the right, you would find this grant: “By posting information or content to any public area of www.RipoffReport.com,...

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    STC.UNM v. Intel Stands

    by  • April 8, 2015

    I’ve written in the past about a patent ownership stand-off, where, because of a mix-up in assignments and a disinterested possible co-owner, the interested owner cannot enforce the patent (original decision here and en banc decision here). The Supreme Court has refused to review the decision, so Ethicon, Inc. v. United States Surgical Corp.,...

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    Sometimes It’s That Easy

    by  • April 7, 2015

    Legal doctrine has developed a manufacturer-distributor paradigm, but that is too simplistic in today’s commercial world. What we have in ACRO Biosystems v. Acrobiosystems USA LLC, an opposition, is manufacturer versus branch office. The opposer is a Chinese manufacturer of biochemical reagents sold in the US under the mark ACROBIOSYSTEMS. The applicants are a...

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