• Unauthorized Registration As Material Breach

    by  • January 14, 2019 • 0 Comments

    I just ran across this older opinion upon seeing a more recent opinion in the case on attorneys’ fees. The situation was interesting enough to make me go back and find the earlier decision. Defendant Otkrytoe Aktsionernoe Obshchestvo “Spartak” is a Belarusian company specializing in the production of chocolate. Spartak entered into a non-exclusive...

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    A Service Mark Is Not Always a Trademark

    by  • December 26, 2018 • 0 Comments

    The Port Authority of New York and New Jersey owns the site on which the World Trade Center in New York sits. The original two towers complex was completed in 1973 and included the “Top of the World” observation deck and gift shops, which were operated under a lease with the Port Authority. As...

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    Are These Registrations Valid? The Answer

    by  • December 19, 2018 • 0 Comments

    In my last post I posed questions about the validity of two registrations. If you guessed that both registrations were valid, you were right. The first application was filed and assigned at a time when the entity had been administratively dissolved. DC Bocce claimed that the non-profit still had the capacity to sue and...

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    Are These Registrations Valid? A Quiz

    by  • December 17, 2018 • 0 Comments

    Non-profit DC Bocce League was incorporated in DC in 2004. Its status was revoked in 2007 but it continued to operate through 2010. It filed its formal articles of dissolution on November 4, 2010. The respondent, owner of the challenged registrations, is Major League Bocce, LLC d/b/a DC Bocce League. It is a Delaware...

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    The Agreement At Work

    by  • October 23, 2018 • 0 Comments

    I have a crush on the trademark assignment agreement of the Tavern on the Green mark. It’s a tour de force of drafting. In a nutshell, for decades the City of New York leased the premises for the famous Tavern on the Green to a restauranteur. In 2009 the restauranteur lost its lease, but...

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    A Covenant Not to Sue Is Not An Exclusive License

    by  • October 18, 2018 • 0 Comments

    I am quite puzzled by this decision. It is designated by the court as “not for publication,” which may explain why the reasoning is so unclear. In March 1989, John Z. DeLorean, creator of the DeLorean car, entered into a license agreement with Universal Pictures, licensing the use of the car in “Back to...

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    Illustrating Why Registration Should Not Be Required

    by  • October 15, 2018 • 0 Comments

    I suggested in a recent blog post that the Copyright Act should be amended to eliminate the requirement that a copyright must be registered before one can file a copyright infringement lawsuit. My position is that the registration does nothing to aid the court in its decisionmaking and the additional step it adds to...

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    The Cluster That Is Copyright Registration

    by  • October 1, 2018 • 0 Comments

    Subtitled “Writing it so @RickSanders doesn’t have to“ The copyright registration system, as it relates to an infringement case, is utterly and completely broken. We need reform. Here are the facts we’ll assume are true for purposes of today’s rant. Plaintiff SellPoolSuppliesOnline.com, LLC (SPSO) provided Ugly Pools Arizona, Inc., the defendant and a company...

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    What Is the Mark Being Used?

    by  • September 24, 2018 • 0 Comments

    What Is the Mark Being Used? Two entities are disputing the ownership of the domain name “coralgardens.com.” The domain name is owned by Reef Residences Management Ltd., a company that manages short term rentals for the Coral Gardens condominium resort in the Turks and Caicos Islands, British West Indies. The Proprietors, Strata Plan No....

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    Real Party in Interest

    by  • September 19, 2018 • 0 Comments

    There is an ongoing dispute between the National Grange of the Order of Patrons of Husbandry, more commonly known as “The Grange,” and a former chapter in California. National Grange established the California State Grange in 1873 and it registered as a California corporation in 1946. In 2012, there was a dispute between the...

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    Saved by the Paris Convention

    by  • September 17, 2018 • 0 Comments

    Here’s a drafting lesson: if you’re granting rights to a trademark, you should have the trademark rights. That sounds like an obvious lesson, but I’ll bet it happens all the time, in the same way it happened to defendant Worldwide Entertainment Group. I’ll bet a lot of you have done it. The plaintiff Adria...

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    Removing the Veil

    by  • September 10, 2018 • 0 Comments

    We’re all familiar with the concept of “piercing the corporate veil.” As a general rule, the owner of a legal entity, like the parent of a subsidiary, or the shareholder of a company, is legally insulated from the wrongdoing of the owned company. In some cases though, where the owner and the company haven’t...

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