• What Went Wrong?

    by  • November 30, 2015 • 0 Comments

    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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    Infringement Without Confusion?

    by  • November 9, 2015 • 7 Comments

    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 • 1 Comment

    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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    Never Underestimate the Burden of Proof

    by  • October 28, 2015 • 0 Comments

    Trademark examining attorneys occasionally make mistakes and often the error can’t be challenged once the trademark is registered.* In Vujovic v. Octop there was a clear procedural error and it was most likely outcome determinative. Two people worked together at a company called “Octop.” The opinion doesn’t have much information (because most of the...

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    Copyright and Egyptian Law

    by  • October 26, 2015 • 0 Comments

    Jay-Z’s win in a copyright infringement suit has been widely reported. Jay-Z obtained a license to use an Egyptian work written by Baligh Namdi called “Khosara, Khosara” in “Big Pimpin”: Namdi’s heir, Fahmy, sued Jay-Z claiming that “Big Pimpin” was an unlawful derivative work, infringing both the moral and economic rights in Khosara, Khosara....

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    Working Around Incontestability

    by  • October 22, 2015 • 0 Comments

    Once a trademark is incontestable, its validity cannot be challenged except on certain limited bases. Is “void ab initio” one of them? “Void ab initio” isn’t listed in the statute as a basis for challenge, but the defendant in NetJets Inc. v. IntelliJet Group, LLC found a workaround. The plaintiff registered its trademark, INTELLIJET,...

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    Beware UGC

    by  • October 7, 2015 • 1 Comment

    In a contest that requires a creative contribution, the contest sponsor will generally require that the participant assign the copyright in the contributed work. LittleMismatched did no differently, but it ran into some trouble because its target demographic is young girls. Mix children and contract and it gets a little trickier. The plaintiff, I.C.,...

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    But What’s the End Game?

    by  • October 5, 2015 • 0 Comments

    The U.S. government has been in a multi-year, multi-indictment quest to acquire the trademarks of the Mongols motorcycle club. You can find the whole complicated background here, but the short version is that, because of improper assignments, the government indicted the wrong party the first time around. So the government is back, this time...

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    You Had One Job

    by  • September 21, 2015

    The court: Exploiting the patent-in-suit in these cases, U.S. Patent No. 5,781,788 (the ‘788 patent), was AVT’s sole reason for being. The only precondition to Plaintiff’s fulfilling its singular purpose was its acquisition of title to the ‘788 patent. Obtaining ownership of the patent was AVT’s sine qua non, the only thing Plaintiff absolutely...

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    Be Careful What You Sign – UPDATE

    by  • September 16, 2015

    Update: The Court of Appeals for the First Circuit affirmed that the hospital was the owner of the trademarks. Greene conceded that the Massachusetts General Hospital IP Policy was broad enough to cover the trademarks he adopted and used for a program associated with MGH. The court rejected his contract defenses of equitable estoppel,...

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    Going to the Back-up Plan – UPDATE

    by  • September 14, 2015

    Update: The Court of Appeals for the First Sixth Circuit affirmed the lower court decision that there was an implied assignment of the trademark. The defendant challenged the decision on two bases. First, without using the word “abandoned,” the defendant argued that the trademark rights were lost when Taylor ceased business. But the owner...

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