• Posts Tagged ‘assignment’

    Mars Gets at Least One Do-Over

    by  • January 3, 2009 • patent

    The June, 2008 decision in Mars, Inc. v. Coin Acceptors, Inc., blogged here, was a tale of what happens when companies move IP assets around for tax purposes. In Coin Acceptors, Mars sued Coin Acceptors, then assigned the patents to a subsidiary, MEI, Inc. The assignment created a standing problem for Mars, which lost...

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    Not So Fast

    by  • November 18, 2008 • copyright, trademark

    In Halicki Films, LLC v. Sanderson Sales & Marketing, plaintiff Denice Shakarian Halicki and various related entities owned some rights – exactly what, to be decided by the court – in Eleanor, billed as “the only Ford Mustang in history to receive STARRING credit in a motion picture.“ There are really two Eleanors: a...

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    You Still Have to Own the Copyright

    by  • November 14, 2008 • copyright

    The requirement for a written assignment of copyright can bedevil a copyright claimant, as in Tacori Enterprises v. Rego Manufacturing. In Tacori, the plaintiff was vulnerable because the assignment of copyright was not in a writing, although the original copyright owner and assignee agreed that the copyright had been assigned. Luckily for copyright owners,...

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    Invention and Assignment of Patents

    by  • October 28, 2008 • patent

    A couple of ownership cases of interest. First, Oren Tavory failed in his effort to join in the NTP jackpot also known as the RIM settlement – he’s not a co-inventor because he didn’t have evidence that his contribution to the invention was more than simply the exercise of ordinary skill in the art....

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    Cherry and Jerry Garcia

    by  • October 26, 2008 • trademark

    Awhile back I did a survey on ice cream flavors.  One of the flavors in the survey was Cherry Garcia, a Ben & Jerry’s flavor.  According to the PTO records, the trademark was originally registered by Ben & Jerry’s but was later assigned to Jerry Garcia’s estate in 1997. The Grateful Dead’s attorney passed away recently and...

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    Pay Me Now or Pay Me Later

    by  • October 21, 2008 • copyright

    Tacori Enterprises v. Rego Manufacturing is such a meaty case that I’ll do separate posts on the various trademark and copyright issues in the case. This post is a lesson on how not to assign ownership of a copyright and register it – the plaintiff spent tens of thousands of dollars defending attacks on...

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    Positively Perfect in Every Way

    by  • September 30, 2008 • patent

    Positive Technologies whiffed the first patent infringement complaint by filing in the name of the wrong entity, Positive-California, when it should have been filed in the name of Positive-Nevada.  Positive calls a mulligan and refiles in the correct entity’s name, then the two companies merge into Positive Technologies, Inc. The standing problems aren’t over...

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    Oklahoma City or Seattle Supersonics?

    by  • July 28, 2008 • trademark

    There is some consternation in Seattle. The Seattle Supersonics are moving to Oklahoma City. One news report said “the SuperSonics are headed to Oklahoma City with Bennett leading the way, leaving behind the team name, colors and 41 years of history.” More accurately, another report said a binding agreement would “keeps the SuperSonics’ name,...

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    When Not to Assign Intent-to-Use Applications

    by  • July 25, 2008 • trademark

    The TTABlog reports on a successful trademark opposition because of an invalid assignment of an intent-to-use application. I mentioned yesterday that U.S. trademarks can be assigned without any tangible assets, but the U.S. trademark system has a carve-out for intent-to-use applications – they can’t be assigned without at least part of the ongoing business...

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