• The Original Trademark Owner Accused of Infringement

    by  • February 28, 2022 • 0 Comments

    In Unisource Discovery, Inc. v. Unisource Discovery, LLC, we have a trademark ownership decision masquarading as a likelihood of confusion analysis. The same mark was used by two entities cooperatively for a number of years without any formal licensing arrangement. As happens there was a falling out, and now the two are dueling over...

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    So You Can Tack — Now What?

    by  • February 22, 2022 • 0 Comments

    It’s not unusual for those involved in charitable work to have trademark ownership issues. I suspect it is because the organizations are largely volunteer-driven without, at least at first, any formal business organization or structure. They are also often ideologically driven, which means that different views on the group’s direction will cause a schism....

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    Assigning a Trademark Claim

    by  • February 7, 2022 • 0 Comments

    Plaintiff Delta Medical Systems, Inc. co-owned a trademark registration for NITREX for “medical gloves” with Delta Hospital Supply, Inc. and Delta Medical Supply Group, Inc. Delta Medical sued defendant DRE Health Corp. for trademark infringement. You may have seen this coming: DRE Health Corp. filed a motion to dismiss that the two other co-owners...

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    Answer: Yes, There Was An Assignment

    by  • February 3, 2022 • 0 Comments

    In an earlier post I asked whether a written agreement allowing the creation of a “Sequel” assigned the copyright in the original season of a telenovela, referred to as “the Series.” Caracol argued that the writing wasn’t a clear and unambiguous transfer of the rights in the Series, particularly since other parts of the...

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    Are Social Media Accounts Property? We Don’t Know Yet

    by  • February 1, 2022 • 0 Comments

    In writing about control of the social media accounts used by wedding dress designer and defendant Hayley Paige during her now-terminated employment with JLM Couture, the court outlined the following areas of dispute: JLM and Gutman agree that the Disputed Accounts are property belonging to one of them, but they disagree vigorously about whose...

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    Quiz: Was There An Assignment?

    by  • January 31, 2022 • 2 Comments

    Caracol Television, S.A. and Telemundo Television Studios co-created a telenovela called “El Señor de los Cielos,” referred to as “the Series.” The parties agreed that if either party wanted to create a derivative work, i.e., another season, the other would have the option to become a co-producer. Telemundo wanted to make another season of...

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    You Have to Use a Mark to Own It

    by  • January 26, 2022 • 0 Comments

    The main lesson here is be careful who you go into business with, or at least have an agreement that keeps them from backstabbing you. Defendant William Brady was the president of a company called Xponential, Inc. d/b/a EKR. EKR was a consulting firm that assisted startups with business strategy, marketing, creative services, and...

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    Terminating the Copyright in a Trademark

    by  • December 20, 2021 • 0 Comments

    The Copyright Act gives a great deal of power to the original creators of works. For works created after 1977, the original author of a work can terminate any grant of rights roughly between 35 and 40 years after the date of the grant and provided that at least two years’ notice of the...

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    Jus Tertii is Disfavored Except When It 100% Works

    by  • September 21, 2020 • 0 Comments

    This is a litigation strategist’s dream. I don’t think the outcome is right, but I will say it was really excellent lawyering. Plaintiff Business Moves Consulting, Inc. owns a trademark registration for: for a long list of clothing items. It sued Collegiate Licensing Company, LLC and others for trademark infringement.1 CLC is a licensing...

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