• Assigned from One’s Self to One’s Self

    by  • December 15, 2014 • 0 Comments

    The patent, copyright and trademark statutes are not paragons of clarity when it comes to assignment. They all require that assignments be in writing, which is fine as far as it goes. What seems to befuddle lawyers is what to do when the transfer is by operation of law. The Copyright Act acknowledges implicitly...

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    Over Again for STOLI – But Just For Now

    by  • November 30, 2014 • 0 Comments

    Federal Treasury Enterprise Sojuzplodoimport first sued Spirits International B.V. over the STOLICHNAYA trademark 10 years ago, in October, 2004. Two lawsuits later, FTE still hasn’t survived an examination of its standing. The case has been dismissed a second in the district court, but even the district court thinks that an appeal is warranted: “In the...

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    When Trademark and Estate Don’t Mix

    by  • November 24, 2014 • 0 Comments

    What a dispute. I’ve written before (recursive link) about the dispute over the ownership of the mark YOGI for at least tea. I say “at least” because what seems to be missing from the four (or more) lawsuits that involve the trademark is the concept that a trademark has something to do with goods...

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    Having Documents Helps

    by  • October 15, 2014

    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

    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

    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

    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

    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

    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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