assignment
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Wordiness Is Your Enemy
Lawyers are wordy. Often the wordiness doesn’t matter that much, “I hereby demand that you cease and desist” instead of “you must stop now” both get the point across. But never, ever write a contract that is wordy without a good reason, because that can put you into litigation hell. Defendant 4EverYoung, Ltd., a UK… Continue reading
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You Need to Decide Your Legal Theories Before Trial
According to the Court of Appeals for the Fifth Circuit: The popular song Whoomp! (There It Is) was released in 1993. For more than half of the song’s existence—since 2002—the parties to this action have been litigating the question of who owns the composition copyright to the song. And at least part of the reason… Continue reading
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Why Litigation Is So Expensive
The USPTO has a number of different databases with information about trademarks—one for basic trademark registration data, searched by using the Trademark Electronic Search System (TESS), assignment records at Assignments on the Web (AOTW), and ex parte appeal, opposition and cancellation proceedings in the Trademark Trial and Appeal Board Inquiry System (TTABVUE). Two older databases,… Continue reading
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Assigned from One’s Self to One’s Self
The patent, copyright and trademark statutes are not paragons of clarity when it comes to assignment. They all require that assignments be in writing, which is fine as far as it goes. What seems to befuddle lawyers is what to do when the transfer is by operation of law. The Copyright Act acknowledges implicitly that… Continue reading
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It’s All About the Words
Here’s a short one. We have co-inventors, the relevant one is James McGhie. He was an inventor on a patent of which the patent-in-suit was a continuation-in-part. McGhie assigned the original patent to the predecessor-in-interest of the plaintiff, but didn’t assign his ownership of the continuation-in-part. The plaintiff argued that the assignment of the parent… Continue reading
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STOLICHNAYA Case Still Alive, Just Barely
Oh, Federal Treasury Enterprise Sojuzplodoimport, without you I wouldn’t be so good at spelling “Stolichnaya.”* I’ve lost count of the opinions talking about who owns the STOLICHNAYA trademark and we’re now on the second lawsuit over it. It all stems from a disputed claim of ownership of the STOLICHNAYA mark in the United States. To… Continue reading
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Refusing to Execute the Documents
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
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Is It a Sublicense If It’s For All Licensed Rights Except One Day?
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
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A Patent Assignment Isn’t Rescinded Just Because You Say So
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
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The Photography Suits In a Nutshell
I’ve been writing for some time (recursive link) about numerous lawsuits between photographers, or their agencies, and textbook publishers that have used photographs in excess of what they originally licensed for their books. Mostly I’ve been writing about challenges to standing, which are early in the cases on a motion to dismiss. But some of… Continue reading
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