assignment
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What is an “E-Signature”?
I just blogged about a case where an email was inadequate to transfer ownership of copyright. It wasn’t because it was email, though; an email exchange can do the trick, as was the case in Vergara Hermosilla v. The Coca-Cola Company (blogged here). There is a federal statute that allows for electronic signature of documents,… Continue reading
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You Don’t Really Need a Writing
I recently reported on a case where the plaintiff successfully claimed that a trademark hadn’t been assigned, despite the fact that virtually all of the other assets of the company were assigned. Jomaps, LLC v. D-Mand Better Products, LLC is the opposite case. The principle is that the assignment of a business in its entirety… Continue reading
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Questionable Decision on Assigning an ITU
I recently wrote about a case which held that, while there was an assignment of an invention, a continuation-in-part application was not assigned because it had new matter. I’m not sure if the outcome was right; at least I suspect that many drafters of assignment language haven’t thought about it that way. The same decision… Continue reading
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Another Band Name Ownership Decision
Ok, I’m very confused by the decision in the TTAB case O.T.H. Enterprises, Inc. v. Vasquez. What’s confusing is that the Board discusses, in two separate parts of the decision, ownership of the mark and priority. I don’t really get that – if the case is about who owns the mark, what other mark is… Continue reading
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Assigning the “Goodwill”
There are several meanings to the word “goodwill,” depending on the context. This ambiguity was the basis for Axiom Worldwide, Inc. v. HTRD Group Hong Kong Ltd. The plaintiff Axiom Worldwide, Inc. (Axiom Inc.) registered trademarks, obtained authorizations from the Food and Drug Administration, and “created its own intellectual property” (those are the court’s words,… Continue reading
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Copyright Transfer by “Operation of Law”
A copyright can be transferred by written document or by operation of law. The First Circuit recently discussed the latter form of transfer, albeit with a neat sidestep of the question. The plaintiff Society of the Holy Transfiguration Monastery (the Monastery) is a religious order in Massachusetts founded in the 1960’s. The Monastery created translations… Continue reading
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“Co-owned” Means Owned by the Same Entity
Short and sweet: The parties agree with binding Federal Circuit precedent that holds that if the ownership of a disclaimed patent is separated from the prior patent, the disclaimed patent is not enforceable. Further, the parties do not dispute that, according to the condition set forth in the Terminal Disclaimer, the ‘176 Patent is enforceable… Continue reading
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Assignment of a Part of a Continuation-in-Part?
Plaintiff AB Coaster Holdings Inc. claimed to be the owner of patents that were subject to terminal disclaimers. Some of the patents were expressly assigned and some were not. Here are the pairings: ‘633 (assigned) and ‘079 (not expressly assigned)‘445 (not expressly assigned) and ‘263 (assigned)‘079 (not expressly assigned) and ‘263 (assigned) The defendant argued… Continue reading
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Lack of Control as a Shield
You are undoubtedly familiar with the concept that the lack of control over the quality of the goods and services with which a mark is used can mean that the trademark is abandoned (recursive link alert) by the trademark owner. But in East West, LLC v. Rahman, the lack of control was instead used to… Continue reading
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