-
Calling John Welch …
A fairly mundane trademark opinion, Warden v. Falk, raised a trademark ownership question I hadn’t thought of. What is the legal effect of a consent to use and register the name of a living individual when the name is already a trademark? Plaintiff Bob Warden was a QVC television personality selling cookbooks and endorsing others’… Continue reading
-
Not Just Ownership, Authorship
Plaintiff Chris Sevier, owner of Severe Records, LLC, collaborated with artist Shanna Crooks on two songs,“Better” and “Watching Me Leave,” the extent of the collaboration on the songs and the sound recordings TBD. Both of them distributed the sound recordings. Next was the expected falling out, and Shanna Crooks’ new management company accused Sevier of… Continue reading
-
Check the Chain of Title, Please
Folks, really. Check the assignment documents before you file the lawsuit, don’t assume the face of the patent is correct: At some point soon after PBS Inc. filed its motion to amend, it was discovered that PBS Ltd., not PBS Inc., is the assignee and owner of the ‘651 and ‘039 patents. PBS Inc. is… Continue reading
-
The STOLICHNAYA Case Ends Again
In 2004 plaintiff Federal Treasury Enterprise Sojuzplodoimport (FTE) challenged defendant Spirit International B.V.’s (“SPI”) claim of ownership of the various STOLICHNAYA trademarks. In 2006 the district court dismissed almost all claims on a motion to dismiss, holding that the incontestable status of SPI’s registration meant that FTE couldn’t challenge ownership. In 2010 the Court of… Continue reading
-
Does a “Beneficial” Patent Owner Have Standing?
Often there is the concept of “beneficial owner” in intellectual property-related transactional documents. My limited experience is that the concept is useful for tax purposes, i.e., one can have legal title in one company and “beneficial” ownership in another in order to create a favorable tax position. This presents some interpretive problems in the United… Continue reading
-
WYHA (Would You Have Abandoned)?*
ZAO Gruppa Predpriyatij Ost v. Vosk International Co. is a very long decision with very little meat. Sixty-eight pages, of which the first 34 are evidentiary rulings suitable for the final exam for any evidence course. Applicant Vosk International Co. had an agreement with opposer and manufacturer ZAO Ost Aqua to import ZAO Ost Aqua’s… Continue reading
-
Trick Question
A debtor-in-possession had a contract it wanted to assign. The contract included a trademark license, but it was somewhat unusual in structure. For starters, it was a trademark sublicense, not a direct license, for the mark “Jag Jeans”: There is no registered trademark for “Jag Jeans,” although there are several for “Jag” owned by Jag… Continue reading
-
The Fight for Bratz – With a New Plaintiff
Just when you thought the Bratz story was over, it gets better. You know, the fight over the pouty-lipped dolls, where the designer, Carter Bryant, who was employed by Mattel off and on, claimed to have designed them while the relationship was off and then took the design to MGA Entertainment. Mattel sued MGA, won… Continue reading
-
What Does a Patent “Cover”?
What does “cover” mean in a patent assignment clause? Plaintiff Openwave Systems, Inc. developed software for network computing but decided to sell off the client-side part of the business, keeping the server-side. It sold the business to Purple Labs S.A., predecessor to defendant Myriad France S.A.S. Some patents were assigned in the transaction, but the… Continue reading
-
The Mongols Have Their Colors Back (For Real)
The whole Mongols trademark seizure case is a little confusing, so this story is put together from a few different decisions in two different cases. Two marks, the MONGOLS word mark for “association services, namely, promoting the interests of persons interested in the recreation of riding motorcycles” and the “Image Mark“ for “jackets and t-shirts”… Continue reading