• Refusing to Execute the Documents

    by  • August 25, 2014 • 0 Comments

    Songwriters Daniel Cohen and Julie Didier owned their own publishing company, Bayou Blanc Music Company, which owned the copyrights in their songs. When they divorced in 1985, the divorce decree incorporated an agreement that Didier would continue to own Bayou Blanc but she would transfer Cohen’s pro rata share of the copyright ownership in...

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    A Short Lesson on Trademark Coexistence Agreements

    by  • August 19, 2014 • 0 Comments

    The restaurants in the Benihana chain have two different owners, divided by territory. Defendant Benihana, Inc. (“BI”) owns the BENIHANA trademark in the United States, Central America, South America, and the islands of the Caribbean, the “Territory.” Plaintiff Benihana of Tokyo, Inc. (alert! noisy autoplay link) (“BOT”) owns the rights to the BENIHANA trademark...

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    Schooling on Unincorporated Associations

    by  • August 18, 2014 • 0 Comments

    The Ninth Circuit has given us a lesson on unincorporated associations and two different legal concerns when one is involved in a trademark infringement lawsuit: the association’s capacity to own trademarks and to bring a lawsuit for infringement. The plaintiff is the Southern California Darts Association (“SoCal”), which promotes darts competitions and coordinates leagues....

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    Yikes

    by  • August 11, 2014 • 0 Comments

    Whether a license provision is categorized as a “condition” or a “covenant” will determine what remedies are available. Noncompliance with a covenant of the agreement is a merely a breach, so you get contract remedies. If the noncompliance means you failed to satisfy a condition, then you have no license and are subject to...

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    A Primer on Michigan State Trademark Law

    by  • August 4, 2014 • 1 Comment

    There aren’t a lot of cases about state trademark law, so a state appeals court decision—here, Michigan—is worth a mention, if for no other reason than it is about the most thorough explanation of the fundamentals of trademark law that I’ve read in a long time. If you have someone just beginning to study...

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    Who Owns an Academic Journal?

    by  • July 28, 2014 • 1 Comment

    For decades Duke University published an academic journal called Social Science History that was edited by The Social Science History Association. At the time of the dispute, the two were parties to an “Editing and Publishing Agreement,” which provided that: If you can’t read it, the agreement was for five years and auto-renewed every...

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    A Sensible Decision

    by  • July 16, 2014 • 1 Comment

    John Welch at the must-read site The TTABlog published a post about a recent ownership decision, Conolty v. Conolty O’Connor NYC LLC. The gist is that two women started a business without any formal business structure, one of the women, O’Connor, formed the defendant LLC as a single member limited liability company, and the...

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    A Patent Assignment Isn’t Rescinded Just Because You Say So

    by  • July 10, 2014 • 0 Comments

    In December, 2010, plaintiff Dominion Assets assigned its patents to non-party Acacia Patent Acquisition, LLC, a subsidiary of the notorious non-practicing entity Acacia Research Corp., for Acacia to monetize. Below is the operative assignment language: If you can’t read the image, it says: Effective immediately upon the date of Acceptable Completion as set forth...

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    When is a Trademark License Not a License?

    by  • July 9, 2014 • 0 Comments

    The legal significance of a “license” to the BUTTERNUT trademark has been in dispute for ten years now. I put “license” in quotes because while the document in question is called a license, it’s not your typical trademark license. In 1996, in settlement of an antitrust suit brought by the Justice Department, defendant Interstate...

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    The Photography Suits In a Nutshell

    by  • July 8, 2014 • 0 Comments

    I’ve been writing for some time (recursive link) about numerous lawsuits between photographers, or their agencies, and textbook publishers that have used photographs in excess of what they originally licensed for their books. Mostly I’ve been writing about challenges to standing, which are early in the cases on a motion to dismiss. But some...

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