• You Had One Job

    by  • September 21, 2015 • 0 Comments

    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 • 0 Comments

    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 • 0 Comments

    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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    Corporation versus Unincorporated Association

    by  • September 10, 2015 • 0 Comments

    One of the issues I often write about is what entity, exactly, owns a trademark. As described by the Trademark Trial and Appeal Board, “feuding members of extended family businesses, aging pop bands, or religious organizations riven by theological schisms” are frequent litigants because trademarks can be adopted with great informality and no documentation....

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    How to Write a Well-Pleaded Complaint

    by  • August 17, 2015 • 1 Comment

    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

    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

    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

    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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    by  • July 27, 2015

    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

    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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    You Can’t Sue the Co-Owners of Your Trademark

    by  • July 20, 2015

    It seems like a simple concept, maybe so simple it isn’t litigated much. You can’t sue the co-owner of your trademark. It’s a band name case (what else?), over “Get the Led Out,” a cover band of Led Zepplin. In 2002 Plaintiff Paul Piccari conceived of the idea to form a band and thought...

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