• Having Documents Helps

    by  • October 15, 2014 • 0 Comments

    I usually write about ownership issues in the context of infringement claims. But I ran across a tax case where management (or actually, lack of management) of the ownership of the intellectual property ended up creating a tax deficiency on 29.6 million dollars. In 1976 William and Patricia Cavallaro started a contract manufacturing company,...

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    Remember the Details

    by  • October 13, 2014 • 0 Comments

    This case demonstrates why you follow up to make sure tasks get completed. Sometimes it’s the little details that get you … Vincent Heck is the sole member of plaintiff Clarity Software LLC, a company that distributes software. Heck wrote the original software, owned a couple of companies and licensed the software to those...

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    It’s All About the Words

    by  • October 2, 2014 • 0 Comments

    Here’s a short one. We have co-inventors, the relevant one is James McGhie. He was an inventor on a patent of which the patent-in-suit was a continuation-in-part. McGhie assigned the original patent to the predecessor-in-interest of the plaintiff, but didn’t assign his ownership of the continuation-in-part. The plaintiff argued that the assignment of the...

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    The Promiscuous Licensor

    by  • September 29, 2014 • 1 Comment

    I recently took the federal courts to task for what I submit is a disconnect between the statutory definition of “abandonment” and the “naked license” defense. My argument is that trademark owners are simply being punished for behavior that is seen as too lax, without any regard for whether that laxness has actually effected...

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    STOLICHNAYA Case Still Alive, Just Barely

    by  • September 9, 2014 • 0 Comments

    Oh, Federal Treasury Enterprise Sojuzplodoimport, without you I wouldn’t be so good at spelling “Stolichnaya.”* I’ve lost count of the opinions talking about who owns the STOLICHNAYA trademark and we’re now on the second lawsuit over it. It all stems from a disputed claim of ownership of the STOLICHNAYA mark in the United States....

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    A Partner is Not Hired to Invent

    by  • September 4, 2014 • 0 Comments

    We have an interesting “employed to invent” story which arose in what I suspect can be the most common of situations—two people invent a product, form a company to commercialize it, file a patent application, and then have a falling out before the patent application is even completed. Who owns the patent? In Legacy...

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    Let’s Kill the “Naked License” Defense

    by  • September 2, 2014 • 1 Comment

    Those of you who have been reading my blog for awhile know that I’m not a fan of the naked licensing defense. The Trademark Reporter was kind enough to print a Comment I wrote explaining why I dislike it so. Click on the image for a copy. Thanks to The Trademark Reporter for granting...

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    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

    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

    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

    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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