Property, intangible

Songwriters Daniel Cohen and Julie Didier owned their own publishing company, Bayou Blanc Music Company, which owned the copyrights in their songs. When they divorced in 1985, the divorce decree incorporated an agreement that Didier would continue to own Bayou Blanc but she would transfer Cohen’s pro rata share of the copyright ownership in all… Continue reading

The restaurants in the Benihana chain have two different owners, divided by territory. Defendant Benihana, Inc. (“BI”) owns the BENIHANA trademark in the United States, Central America, South America, and the islands of the Caribbean, the “Territory.” Plaintiff Benihana of Tokyo, Inc. (alert! noisy autoplay link) (“BOT”) owns the rights to the BENIHANA trademark outside… Continue reading

The Ninth Circuit has given us a lesson on unincorporated associations and two different legal concerns when one is involved in a trademark infringement lawsuit: the association’s capacity to own trademarks and to bring a lawsuit for infringement. The plaintiff is the Southern California Darts Association (“SoCal”), which promotes darts competitions and coordinates leagues. It… Continue reading

Whether a license provision is categorized as a “condition” or a “covenant” will determine what remedies are available. Noncompliance with a covenant of the agreement is a merely a breach, so you get contract remedies. If the noncompliance means you failed to satisfy a condition, then you have no license and are subject to infringement… Continue reading

There aren’t a lot of cases about state trademark law, so a state appeals court decision—here, Michigan—is worth a mention, if for no other reason than it is about the most thorough explanation of the fundamentals of trademark law that I’ve read in a long time. If you have someone just beginning to study trademark… Continue reading

For decades Duke University published an academic journal called Social Science History that was edited by The Social Science History Association. At the time of the dispute, the two were parties to an “Editing and Publishing Agreement,” which provided that: If you can’t read it, the agreement was for five years and auto-renewed every year… Continue reading

Trade secret is a bit of the odd man out in intellectual property law. Trade secret arises under state law, not federal, and has no formalities: no recording of an interest or filing of an application is required. Something is a trade secret just because it’s a secret. There aren’t a lot of a cases… Continue reading

John Welch at the must-read site The TTABlog published a post about a recent ownership decision, Conolty v. Conolty O’Connor NYC LLC. The gist is that two women started a business without any formal business structure, one of the women, O’Connor, formed the defendant LLC as a single member limited liability company, and the LLC… Continue reading

Those who draft patent licenses take note. MDS (Canada), Inc. v. Rad Source Technologies, Inc. is a state court opinion from the Supreme Court of Florida distinguishing an assignment of a patent license from a sublicense. MDS (Canada), now “Nordion,” was a licensee of technology from Rad Source. The license could not be assigned absent… Continue reading

In December, 2010, plaintiff Dominion Assets assigned its patents to non-party Acacia Patent Acquisition, LLC, a subsidiary of the notorious non-practicing entity Acacia Research Corp., for Acacia to monetize. Below is the operative assignment language: If you can’t read the image, it says: Effective immediately upon the date of Acceptable Completion as set forth in… Continue reading