Only assignees and some exclusive licensees have standing to bring a claim for patent infringement. In the category of “exclusive licensee,” there is some line drawing that goes on around the meaning of “exclusive.” Where an exclusive license is tantamount to an assignment, the exclusive licensee can sue without joining the owner. Where the...
Read more →Well here’s an interesting one. In July, 2020, Huang Zhiyang filed a suit in the Eastern District of Virginia to quiet title under 28 U.S.C. § 1655, the Computer Fraud and Abuse Act, the Federal Communications Privacy Act, and related Virginia common law claims, claiming that someone had hacked into his account and stolen...
Read more →Here we have multiple businesses originally operated by a husband and wife, now divorced and now adverse to each other, and the same rights to the same trademark litigated in three different venues. There are a couple of lessons here. One, put forward your best case at the TTAB. If you lose at the...
Read more →I raised an eyebrow reading the decision in Beard v. Helman. The court seems to have a misunderstanding about the difference between an owner and a licensee. After a casual conversation at a Renaissance fair, plaintiff Beard designed for defendant Helman a dragon image to be used for a boot button. There was originally...
Read more →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...
Read more →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....
Read more →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...
Read more →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...
Read more →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...
Read more →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...
Read more →Attorney Advertising. Prior results do not guarantee a similar outcome.
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