Pamela Chestek
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Who Can Enforce the Mark?
I previously wrote about an unusual case in Florida, where a state agency alleged infringement of registered trademarks. The lawsuit was dismissed for lack of standing, with the district court reaching the conclusion that the enabling statute for the agency didn’t grant it the right to enforce its trademarks. According to the statute, Florida VirtualSchool is… Continue reading
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An Indispensable Owner
We know from Florida Prepaid that a State has sovereign immunity in federal intellectual property cases, so that it can only be required to appear in federal court if it has waived the immunity. This principle has ended a trademark infringement case before it got started. It’s an odd fact pattern. Plaintiff Richard Diaz, of… Continue reading
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Check All the Boxes
When we last visited DeliverMed Holdings, LLC v. Schaltenbrand, plaintiff DeliverMed had lost on all claims, including on some copyright and trademark theories. DeliverMed appealed the holdings that it was not the owner of the copyright in this logo and that the copyright registration was invalid. The district court was colorful in its description of… Continue reading
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How to Do a Copyright Assignment So You Can Sue
I’ve written before about a bunch of copyright infringement lawsuits brought by numerous photo agencies claiming that book publishers exceeded the scope of licenses granted, either by publishing in unlicensed territories or printing more copies than permitted by the license. The photo agency business model presents litigation challenges, though: only the legal or beneficial owner… Continue reading
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What Doesn’t Work for Copyright Standing
Screen Media Ventures filed a copyright infringement suit against BitTorrent downloaders of the movie “Infected” and sought leave to subpoena internet service providers for subscriber information. Screen Media claimed this language gave it enough ownership interest to have standing for the claim: [Screen Media is authorized] by itself, or in the name of Infected LLC… Continue reading
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Pay Attention to This One
Ok, here’s one every in-house patent attorney should pay attention to. It’s a case from North Carolina state court, but has much wider-reaching ramifications. Maybe it’s a fact pattern that doesn’t arise too often, but the result is pretty eye-opening. Plaintiff Robert Morris was the first employee at the defendant company Scenera Research, LLC. There… Continue reading
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Too Many Transactions
Six inventors, four changes in ownership before the patent issued and four more after. That’s a recipe for a standing problem. In Mayfair Wireless LLC v. Cellco Partnership d/b/a Verizon Wireless, Mayfair Wireless did a lot of due diligence and even some extra clean-up — it had the six original inventors assign any rights to… Continue reading
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Which Distributor Owns the Mark?
Hold on, we’ve got a complicated one here. Save it for your “very long reading” queue. One trademark, three potential owners in the distribution chain with overlapping periods of time during which they claim ownership. The mark: “Smart Candle” (Smart Candles, SMARTCANDLE, SmartCandles, etc.) for electronic candles. The companies: Smartcandle.co.uk Limited (“SCK”) — non-party UK… Continue reading
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Attorney-Client Privilege and Patent Assignment
Here’s an interesting tidbit to keep in mind—the assignee of a patent may be able to claim that a legal opinion given to the original owner of a patent is privileged despite the assignment of the patent. The case is SimpleAir, Inc. v. Microsoft Corp., and the challenger to the claim of privilege is Google.… Continue reading
About Me
Learn more about me at my website, Chestek Legal
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- social media
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