• Battle Lines Drawn

    by  • January 22, 2018 • 0 Comments

    I previously reported on a case involving a missing patent assignment from an employee. The missing document didn’t prevent the Patent Office from issuing the patent though; the successor to the rights of the other co-inventors submitted the inventor’s employment agreement to the Patent Office and it thereafter issued the patent. However, the district...

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    Termination of a Public License

    by  • January 17, 2018 • 0 Comments

    I’ve been thinking lately about the concept of a “license.” This is a typical statement of what it is: license is not a contract; rather, a license is “permission to use a copyrighted work in a particular specified manner …” Saxelbye Architects, Inc. v. First Citizens Bank & Tr. Co., 1997 U.S. App....

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    A Circuit Split That Isn’t, At Least Not Yet

    by  • January 15, 2018 • 0 Comments

    Here is a really interesting decision in a bankruptcy case. If those words make you cringe, stop reading now because we’re going into the weeds. The question is what rights a trademark licensee has when its licensor declares bankruptcy. As a general rule, the trustee can elect to reject an e​xecutory contract under § 365(a)....

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    In the Category of Unusual “Writings”

    by  • January 4, 2018 • 1 Comment

    I don’t expect to ever see something that trumps the pawn ticket as a writing documenting a transfer (or attempted transfer) of rights. But, in the copyright realm we have a contender – an Annual Report. It’s embedded below: It says “2003 represents the first 10 months in the life of Storix as a...

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    A Good Opinion for Copyright Applicants

    by  • January 2, 2018 • 0 Comments

    “Rappers are skilled in poetry and rhythm—not necessarily in proper copyright registration procedures.” With that comment, the Court of Appeals for the Eleventh Circuit reverses a decision from the District Court for the Southern District of Florida that invalidated three copyright registrations for the same work and consequently dismissing the lawsuit. You can read...

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    A Thing of Beauty

    by  • November 13, 2017 • 0 Comments

    I don’t think I have ever been so excited about an exhibit in a case before. It’s one that makes the heart of a person who writes about trademark ownership sing. Just look at it: Yes, it is a pawn ticket. I have looked at many documents claiming to be a trademark assignment and...

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    The Devil Is In the Definitions

    by  • November 6, 2017 • 0 Comments

    Plaintiff Janssen Biotech had a fundamental structural problem with an agreement. The document was called an “Employee Secrecy Agreement,” but in addition to imposing duties of confidentiality on its employees the agreement also served as an employee invention assignment agreement, as is commonly, if not universally, done. Janssen’s structural problem was in the definition...

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    Never Trust Your Client

    by  • October 30, 2017 • 0 Comments

    If you are registering for or filing something in your client’s name, never take their word on the details of the legal entity. First off, many times your client won’t know the state of incorporation, thinking it’s the state in which they are doing business rather than Delware, or vice versa. Or, as was...

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    The Patent Version of Righthaven

    by  • October 23, 2017 • 0 Comments

    The news has been abuzz with Allergan, Inc,’s assignment of the patents in the highly lucrative “Restasis” dry-eye drug to the Saint Regis Mohawk Tribe and in turn receiving an exclusive license back. The transfer was so that the validity of the patents could not be challenged in an inter partes review because of...

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    Not What Copyright Is For

    by  • October 16, 2017 • 0 Comments

    I previously wrote about a puzzling case, Small Justice LLC v. Xcentric Ventures L.L.C., with the defendant better know as Ripoff Report. The First Circuit has now grappled with it, although based on a revised district court opinion amended with a highly consequential footnote. To distill it down as much as possible, a lawyer,...

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    I Think This One Is Wrong

    by  • September 18, 2017 • 0 Comments

    Moreno v. Pro Boxing Supplies, Inc. is a precedential decision and, IMHO, clearly contrary to the Board’s controlling precedent. Opposer and petitioner Julie Moreno is the exclusive US licensee of the unregistered trademark CASANOVA for boxing equipment: Applicant and Registrant Pro Boxing Supplies is the owner of a registration for CASANOVA in standard character...

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