• Jurisdiction Over a Patent Ownership Claim

    by  • July 30, 2015 • 0 Comments

    Predator International, Inc. v. Gamo Outdoor USA, Inc. is a Tenth Circuit decision involving a patent infringement claim. PatentlyO reports on the appellate posture, explaining why the appeal ended up at the Court of Appeals for the Tenth Circuit rather than the Federal Circuit. But I’m more interested in the ownership aspect of it....

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    Yoiks

    by  • July 27, 2015 • 2 Comments

    Yoiks. So you license someone your trademark and have this language in the license agreement: icensee hereby acknowledges the validity of the licensed mark and the exclusive ownership of the licensed mark by licensor, whether or not registered or recorded. Licensee agrees that it will not, at any time during the term of the...

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    § 21 Affirmance of Nic-Out

    by  • July 21, 2015 • 0 Comments

    I just went on a tirade against the manufacturer-distributor presumption, arguing that the doctrine is meant to apply where “distributor” means “reseller,” not the more complicated case where the so-called “distributor” has some say in how the goods are produced. And here is an example of the relationship the doctrine was meant for—properly applied...

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    Just Because You Don’t Manufacture Doesn’t Mean You’re a “Distributor”

    by  • July 16, 2015 • 1 Comment

    John Welch at The TTABlog summarizes a case that is characterized as a manufacturer-distributor dispute over the ownership of the mark “UVF861″ for UV light bulbs. John does a thorough job summarizing the case, which I won’t repeat here. In its opinion, the TTAB applied the presumption that in a manufacturer-distributor relationship, the manufacturer...

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    Patent Ownership in Germany

    by  • July 14, 2015 • 0 Comments

    Here’s an interesting little patent case involving the ownership of patents under foreign law, in this case German law. The plaintiff’s principal, Werner Schnaebele, worked in Germany for a predecessor of the defendant. He signed one employment agreement that didn’t have any provision for ownership of inventions conceived of by employees, meaning local law...

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    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

    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

    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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