exclusive license
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Even an Exclusive Licensee Can’t Sue the Trademark Owner for Infringement
This might strike you as odd. An exclusive licensee of a copyright can sue the copyright owner for infringement, Essex Music, Inc. v. ABKCO Music & Recs., Inc., 743 F. Supp. 237, 241 (S.D.N.Y. 1990), and a exclusive licensee of a patent can sue the patent owner for infringement, Ortho Pharm. Corp. v. Genetics Inst.,… Continue reading
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The Opposition, Cancellation and District Court Trifecta
Here we have multiple businesses originally operated by a husband and wife, now divorced and now adverse to each other, and the same rights to the same trademark litigated in three different venues. There are a couple of lessons here. One, put forward your best case at the TTAB. If you lose at the TTAB… Continue reading
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A Licensor and Licensee Have Ownership Rights, But Not of the Same Thing
I raised an eyebrow reading the decision in Beard v. Helman. The court seems to have a misunderstanding about the difference between an owner and a licensee. After a casual conversation at a Renaissance fair, plaintiff Beard designed for defendant Helman a dragon image to be used for a boot button. There was originally an… Continue reading
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When Is It a License?
When reviewing a settlement agreement, I often ponder the parts where it says something like “Party B agrees not to infringe the trademark in the future.” The agreement doesn’t need it; whether you say it or not Party B isn’t allowed to break the law. I suppose adding the language gives you a breach of… Continue reading
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Not Enough Ownership
Defendant Lingfu Zhang was accused of downloading the movie Fathers & Daughters via BitTorrent. Plaintiff Fathers & Daughters Nevada, LLC was the author and registered copyright owner of the film and sued Zhang. But copyright ownership is tricky. F&D had a sales agency agreement with non-party Goldenrod Holdings and its sub-sales agent Voltage Pictures.1 Goldenrod… Continue reading
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The Patent Version of Righthaven
The news has been abuzz with Allergan, Inc,’s assignment of the patents in the highly lucrative “Restasis” dry-eye drug to the Saint Regis Mohawk Tribe and in turn receiving an exclusive license back. The transfer was so that the validity of the patents could not be challenged in an inter partes review because of the… Continue reading
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Not What Copyright Is For
I previously wrote about a puzzling case, Small Justice LLC v. Xcentric Ventures L.L.C., with the defendant better know as Ripoff Report. The First Circuit has now grappled with it, although based on a revised district court opinion amended with a highly consequential footnote. To distill it down as much as possible, a lawyer, Goren,… Continue reading
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What Rights are Conveyed? We Have to Wait and See
I asked in a prior post whether plaintiff Joseph Cooper had the right to publish his videotapes of performances of famous comedian Steve Harvey, taped at Harvey’s Texas club in 1993, based on this invoice: Click here for larger version Unfortunately we don’t know yet, because it’s most certainly a question of fact, not one… Continue reading
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What Rights are Conveyed?
Click here for larger version Can Cooper, the videographer, put his videos of now-famous comedian Steve Harvey on YouTube? This work is licensed under a Creative Commons Attribution-NoDerivatives 4.0 International License. Continue reading
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Suing the Patent Owner
As we all know, standing is difficult in patent cases. There are two types of “exclusive” licensees (in my view, making jurisprudence very confusing). First is the “virtual assignee” who has essentially all of the rights of the patent owner and can sue for infringement without having to join the patent owner. Second is an… Continue reading
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