• The Promiscuous Licensor

    by  • September 29, 2014 • 0 Comments

    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 • 0 Comments

    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 • 0 Comments

    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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    Let’s Kill the “Naked License” Defense

    by  • September 2, 2014 • 1 Comment

    Those of you who have been reading my blog for awhile know that I’m not a fan of the naked licensing defense. The Trademark Reporter was kind enough to print a Comment I wrote explaining why I dislike it so. Click on the image for a copy. Thanks to The Trademark Reporter for granting...

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    Refusing to Execute the Documents

    by  • August 25, 2014 • 0 Comments

    Songwriters Daniel Cohen and Julie Didier owned their own publishing company, Bayou Blanc Music Company, which owned the copyrights in their songs. When they divorced in 1985, the divorce decree incorporated an agreement that Didier would continue to own Bayou Blanc but she would transfer Cohen’s pro rata share of the copyright ownership in...

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    A Short Lesson on Trademark Coexistence Agreements

    by  • August 19, 2014 • 0 Comments

    The restaurants in the Benihana chain have two different owners, divided by territory. Defendant Benihana, Inc. (“BI”) owns the BENIHANA trademark in the United States, Central America, South America, and the islands of the Caribbean, the “Territory.” Plaintiff Benihana of Tokyo, Inc. (alert! noisy autoplay link) (“BOT”) owns the rights to the BENIHANA trademark...

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    Schooling on Unincorporated Associations

    by  • August 18, 2014 • 0 Comments

    The Ninth Circuit has given us a lesson on unincorporated associations and two different legal concerns when one is involved in a trademark infringement lawsuit: the association’s capacity to own trademarks and to bring a lawsuit for infringement. The plaintiff is the Southern California Darts Association (“SoCal”), which promotes darts competitions and coordinates leagues....

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    Yikes

    by  • August 11, 2014 • 0 Comments

    Whether a license provision is categorized as a “condition” or a “covenant” will determine what remedies are available. Noncompliance with a covenant of the agreement is a merely a breach, so you get contract remedies. If the noncompliance means you failed to satisfy a condition, then you have no license and are subject to...

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    A Primer on Michigan State Trademark Law

    by  • August 4, 2014 • 1 Comment

    There aren’t a lot of cases about state trademark law, so a state appeals court decision—here, Michigan—is worth a mention, if for no other reason than it is about the most thorough explanation of the fundamentals of trademark law that I’ve read in a long time. If you have someone just beginning to study...

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    Who Owns an Academic Journal?

    by  • July 28, 2014

    For decades Duke University published an academic journal called Social Science History that was edited by The Social Science History Association. At the time of the dispute, the two were parties to an “Editing and Publishing Agreement,” which provided that: If you can’t read it, the agreement was for five years and auto-renewed every...

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