Pamela Chestek
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What Every Patent License Must Have
I was going to write about the case, but Dennis Crouch explains it so much better than I could. Kimble v. Marvel Enterprises Inc., No. 11-15605 (9th Cir. July 16, 2013) Continue reading
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Update: “What is an ‘E-Signature’?”
I previously wrote about a case, Metropolitan Regional Information Systems, Inc. v. American Home Realty Network, Inc., involving the assignment of copyrights by uploading photographs to a website. In it, the district court held that uploading a photograph was the equivalent of signing an agreement under the E-Sign Act. I was unhappy with the decision;… Continue reading
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A Patent Owner Who Doesn’t Own the Patent
I’ve often written about the various categories of potential plaintiffs in patent infringement suits. Depending on what rights a licensee acquired, it may or may not have constitutional standing to bring a patent infringement lawsuit. A new case, CopyTele, Inc. v. E Ink Holdings, Inc., comes at it from a somewhat different angle — here,… Continue reading
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Does a Covenant Not to Sue Run With the Patent?
There is some belief in the open source community that a patent license and a covenant not to sue have different legal effect. The theory is that a license runs with the patent but that a covenant not to sue may not — in other words, if a company that has covenanted not to sue… Continue reading
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When “Exclusive Licensee” Equals “Registrant”
Heraeus Germany makes dental products and distributes them in the United States through a sister company, plaintiff Heraeus Kulzer LLC (Heraeus America). Defendant Omni Dental Supply imports gray market products it claims are made by Heraeus Germany but intended for distribution in other countries, primarily China. In order to stop Omni, Heraeus Germany made Heraeus… Continue reading
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The Value of Recording
A company assigned the same copyright in a film to two different companies. Who owns it? The film is Italian classic La Dolce Vita: The parties agree that a a company called Cinemat S.A. was the owner of the copyright, by assignment from original producer Riama Films S.p.A. The problem arises with the next link,… Continue reading
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You Need to Ask Who Is Making the Product
Nahshin v. Product Source International, LLC is a fairly routine manufacturer-distributor dispute with a twist — a middleman. It could have mucked things up a bit, but the Trademark Trial and Appeal Board handled it neatly. Israeli businessman and petitioner Leonid Nahshin adopted the mark NIC-OUT at least as early as January 1, 2002 outside… Continue reading
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You Have to Own the Copyright
Short and sweet: after seven years of litigation, partial summary judgment, and an award against the defendant for $100,000, the court vacated it all because, a year after the award, the defendant’s new lawyer noticed the plaintiff didn’t actually own the copyrights, its subsidiaries did. In light of the recently unearthed determination that Plaintiff lacks… Continue reading
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A Work Made for Hire Agreement is Not an Assignment
By now you’ve probably heard that Gary Friedrich’s claim of ownership of the copyright in the “Ghost Rider” Marvel Comics character has been given a second life. While the district court held that his copyright was assigned to Marvel Comics, the Court of Appeals for the Second Circuit reversed. It’s a decision that keeps on… Continue reading
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You Need a No-Contest Clause in Your Copyright Licenses
I recently wrote about a number of cases brought by photography agencies against Pearson Education, alleging that it exceeded the scope of copyright licenses. This led me to ponder the application of the licensee estoppel defense in copyright. Licensee estoppel prohibits a licensee from challenging the validity of the rights licensed. Patents have a clear… Continue reading
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