• About Pamela Chestek

    There’s The Episcopal Church and Then There Are Episcopal Churches

    by  • September 23, 2019 • trademark • 0 Comments

    In 2012, the South Carolina Diocese of The Episcopal Church declared that it disassociated from parent The Episcopal Church, a hierarchical church. The common understanding is that it was because of the ordination of gay clergy and acceptance of same-sex unions, although the disassociating diocese differs with that characterization. As a result there are...

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    Think of the Name

    by  • September 16, 2019 • right of publicity, trademark • 1 Comment

    In transactional work, don’t think just about what you’re getting, but also what you don’t want the target to do in the future. Three family members with the surname Traeger had a business in wood pellet grills. They sold the business to plaintiff Traeger Pellet Grills. At least one of the Traeger family later...

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    Don’t Be Too Agreeable

    by  • August 19, 2019 • patent • 1 Comment

    Plaintiff Tegu is a toy company. It hired defendant Vestal Design Atelier LLC to develop its first toy line. Vestal created prototypes for Tegu for blocks with embedded magnets. These are the relevant provisions on ownership of the intellectual property rights in the agreement: 2.0 Ownership of Intellectual Property. 1. Ownership. Intellectual property rights...

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    The Name Didn’t Stay With the Building

    by  • August 12, 2019 • trademark • 1 Comment

    Ownership of the trademark for a location-based business, like a restaurant, a theater, or a hotel, is always interesting. I don’t think there is any consistent outcome; it depends on the very specific facts of the given situation. Today’s installment is about a little bakery called The Long Grove Apple Haus. The original business...

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    Too Late for Work-Made-For-Hire

    by  • August 7, 2019 • copyright • 2 Comments

    There’s a recent decision out of the Second Circuit about an after-the-fact work-made-for-hire agreement. There is a circuit split; the Seventh and Ninth Circuits have held that a “work made for hire” agreement must be executed before the creation of the work. However, the Second Circuit held in Playboy Enterprises, Inc. v. Dumas that...

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    When There Are No Rights to Assign

    by  • August 5, 2019 • patent • 2 Comments

    You’ve all seen this language before. This is from an agreement to transfer rights to a formula for nutritional products in exchange for royalties: If you can’t read the image, it says In consideration of the sum of $1.00 payable by Synergy to HealthBanc upon execution of this Agreement, HealthBanc hereby transfers and assigns...

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    Licenses and the After-Acquired Affiliate

    by  • July 1, 2019 • patent • 0 Comments

    Licenses and releases for after-acquired affiliates can be tricky things to draft. Are after-acquired affiliates also licensed to the rights? Are they licensed on a forward-going basis only, or does the license or release cure earlier infringement? It all depends on how you write it. On November 24, 2016, plaintiff Oyster Optics, LLC sued...

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    Notifying Co-Authors About a Lawsuit

    by  • June 17, 2019 • copyright • 0 Comments

    The Copyright Act of 1976 made a fundamental change to copyright law by making copyright divisible. Authors can give someone else exclusive rights in a portion of their copyright, for example the exclusive right of first publication, retaining no right of first publication for themselves. The drafters of the Copyright Act also contemplated that...

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    Obligations versus Benefits

    by  • May 28, 2019 • copyright, trademark • 0 Comments

    Apparently someone is still interested in the Amiga operating system. In 2009, non-party Amiga, Inc. and defendant Hyperion Entertainment C.V.B.A. entered into a settlement agreement that resolved a number of lawsuits between them. The plaintiff, Cloanto Corp., was a licensee of Amiga at the time of the settlement agreement and mentioned in the agreement...

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    A Rare Section 117 Win

    by  • May 13, 2019 • copyright • 0 Comments

    We have a rare win under Copyright Act § 117(a), a section of the Copyright Act that allows someone to copy or adapt a computer program under very narrow circumstances. Invocation of the section has been largely unsuccessful because it only applies where one is the owner of a copy of the program. However,...

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