• How to Write a Well-Pleaded Complaint

    by  • August 17, 2015 • 0 Comments

    The Lanham Act provides a federal cause of action for trademark registration and infringement, including for infringement of unregistered (so-called “common law”) trademarks. It is well-accepted, though, that the Lanham Act doesn’t preempt state law on the subject; all states* have laws providing for registration at the state level and an infringement cause of...

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    GUADEC 2015

    by  • August 4, 2015 • 0 Comments

    To quote the World Trademark Review: It is foolish in the extreme to ever underestimate the power of a passionate online community; if you do, what may seem like a minor blip in your trademark strategy could turn into a formidable obstacle should you come up against a cleverly-orchestrated and very determined campaign. I’m...

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    The Copyright License As a Property Right

    by  • August 3, 2015 • 1 Comment

    There are a slew of lawsuits against textbook publishers alleging use of stock photography beyond the scope of the original license (recursive link). Whether one characterizes it as massive intentional infringement, or a simple failure of the publishers to track their use and true-up on their licenses, it looks like it is a pervasive...

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    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

    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

    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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