• Challenging the Sublicense to Your License

    by  • February 23, 2015 • 0 Comments

    Hang in with me, we have a bit of a licensing chain to follow here. The lawsuit is about whether a Russian performer, Sergey Lazarev, had a license to record and perform the song “Almost Sorry”: The song was written by Taryn Murphy and Chris Landon. They pitched Lazarev’s manager in 2006 and we...

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    Ninth Circuit Walks Back Sybersound Records

    by  • February 16, 2015 • 0 Comments

    As I’ve written about before, Sybersound is a 2008 Ninth Circuit decision that was not well-received by copyright authorities. We now have a second Ninth Circuit opinion interpreting Sybersound that undoes the original harm. The decision is Corbello v. DeVito, the case that just keeps on giving for someone who writes about copyright ownership....

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    Consideration Can Be a Failed Expectancy

    by  • February 3, 2015 • 0 Comments

    I’ve written about MemoryLink Corp. v. Motorola Solutions, Inc. in the past (recursive link). Peter Strandwitz and Bob Kniskern, owners of plaintiff Memorylink, had collaborated with defendant Motorola Solutions on the development of a handheld camera that could wirelessly transmit and receive video signals. Standwitz and Kniskern trusted Motorola Solutions with filing patent applications...

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    The Complication of Government Forms

    by  • January 27, 2015 • 2 Comments

    When we file trademark applications electronically, there is a form declaration for the signatory. At the time Slep-Tone Entertainment filed its applications, this was the language: The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and...

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    Contracts 101

    by  • January 22, 2015 • 0 Comments

    Patent law heavily involves interpretation of language. In addition to the construction of the claims themselves, it has an almost unintelligible set of rules for distinguishing licenses from assignments and special rules for the language one must use to assign a patent. But in Fort. v. Innegra Technologies, LLC, we have a more interesting...

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    Not His First Time at the Rodeo

    by  • January 20, 2015 • 0 Comments

    In 1992, plaintiff Oleg Pogrebnoy began publishing a Russian language newspaper in New York titled in Cyrillic “KYPbEP,” which translates as “courier”; Pogrebnoy also later used the word “Kurier.” Pogrebnoy claimed ownership of the unregistered trademarks through a chain of transactions, starting with his own use in 1992, through five different companies (probably all...

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    Wordiness Is Your Enemy

    by  • January 12, 2015 • 0 Comments

    Lawyers are wordy. Often the wordiness doesn’t matter that much, “I hereby demand that you cease and desist” instead of “you must stop now” both get the point across. But never, ever write a contract that is wordy without a good reason, because that can put you into litigation hell. Defendant 4EverYoung, Ltd., a...

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    You Need to Decide Your Legal Theories Before Trial

    by  • January 7, 2015 • 0 Comments

    According to the Court of Appeals for the Fifth Circuit: The popular song Whoomp! (There It Is) was released in 1993. For more than half of the song’s existence—since 2002—the parties to this action have been litigating the question of who owns the composition copyright to the song. And at least part of the...

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    Why Litigation Is So Expensive

    by  • January 5, 2015 • 0 Comments

    The USPTO has a number of different databases with information about trademarks—one for basic trademark registration data, searched by using the Trademark Electronic Search System (TESS), assignment records at Assignments on the Web (AOTW), and ex parte appeal, opposition and cancellation proceedings in the Trademark Trial and Appeal Board Inquiry System (TTABVUE). Two older...

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    The Effect of Reed Elsevier v. Muchnick

    by  • December 22, 2014

    Section 411 of the Copyright Act says that “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” In Reed Elsevier, Inc. v. Muchnick, the Supreme Court held that § 411 is a...

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    Assigned from One’s Self to One’s Self

    by  • December 15, 2014

    The patent, copyright and trademark statutes are not paragons of clarity when it comes to assignment. They all require that assignments be in writing, which is fine as far as it goes. What seems to befuddle lawyers is what to do when the transfer is by operation of law. The Copyright Act acknowledges implicitly...

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