• The Security Interest Quiz Answer

    by  • January 20, 2016 • 0 Comments

    I previously offered a quiz asking you to decide who, between a secured party and a licensee, owned the rights in an improved version of software. And the answer is — Pro Marketing, owner of the security interest. I missed it, but it is a straightforward answer. The key is that the collateral included...

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    A Security Interest Quiz

    by  • January 18, 2016 • 0 Comments

    Priva Technologies didn’t do well in its business. It financed its business, first, by taking a loan and granting a security interest in assets, including in its software, and second, as part of a reorganization, by assigning the improvements in the software to a licensee. Then it shuttered. Who owns the improvements? The original...

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    STOLI Is Back

    by  • January 11, 2016 • 0 Comments

    This is my sixth post (recursive link) about the STOLI case. The defendant, Spirits International B.V., claims to own the STOLI and STOLICHNAYA trademarks as a result of privatization during the collapse of the Soviet Union and is listed as the owner of the trademark registrations. The Russian government, acting through state entity Federal...

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    ACPA and Standing

    by  • January 4, 2016 • 0 Comments

    It is a simple result, but not one that is forgone. An entity, HELP.org, LLC, owned a domain name, directorschoice.com. A company called Director’s Choice, LLP,* brought a Uniform Domain Name Resolution Policy proceeding against HELP.org for cybersquatting and won. Russ Smith, who owns Help.org, transferred the domain name to his own name and...

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    “By Operation of Law” Addendum

    by  • December 14, 2015 • 0 Comments

    I recently chided a court for not recognizing that one of the parties was claiming ownership of copyright “by operation of law,” specifically “under the operation of California law … governing partnerships, promoters, agents, fiduciaries and cofounders, not as a question of employment, work for hire … or joint work.” The court never reached...

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    IP Rights and NDAs

    by  • December 8, 2015 • 0 Comments

    You have someone sign an NDA that says this: If you can’t read it, it says 4. Beverly Johnson shall not directly or indirectly acquire any interest in, or design, create, manufacture, sell or otherwise deal with any item or product, containing, based upon or derived from the information, except as may be expressly...

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    “By Operation of Law”

    by  • December 3, 2015

    I’m seeing what I believe is a misunderstanding of the statutory section describing transfer of copyright. Section 204(a) of the Copyright Act, titled “Execution of Transfers of Copyright Ownership,” says A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum...

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    What Went Wrong?

    by  • November 30, 2015

    Recently I’ve been thinking about the US rules of contract interpretation versus the approach used in other countries, UK law in particular. As I understand it, under UK law the courts have more latitude in interpreting the language of the agreement to derive what the parties intended than what we allow under US law....

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    The Exemplar Case For Why Joint Trademark Ownership is Bad

    by  • November 17, 2015

    According to McCarthy, “hen there is a dispute over who owns a trademark, the worst possible solution is to allow mark ownership to be shared among the warring parties.” That is in the lastest opinion on the the YOGI marks, which I’ve written about many, many, many times before. The cases revolve around the...

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    Infringement Without Confusion?

    by  • November 9, 2015

    It’s a simple case, but simple doesn’t mean you get to take shortcuts on the legal rationale. At the end of 1998 Ford and ThermoAnalytics entered into a License Agreement for RadTherm software for heat mapping. In the agreement, FGTI (Ford Global Technologies, Inc.) granted ThermoAnalytics an exclusive license to develop and commercialize “FGTI...

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    A Proper Copyright Assignment

    by  • November 2, 2015

    I have called Righthaven the gift that keeps on giving. In Righthaven, the plaintiff tried to obscure the fact that there wasn’t a true copyright assignment by putting the relevant terms in different agreements. Righthaven, a copyright troll, eventually got whacked for it by the 9th Circuit. Now, when defendants see any kind of...

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