• Posts Tagged ‘exclusive licensee’

    The Benefit of the Bargain

    by  • April 25, 2013 • copyright, trademark • 1 Comment

    We routinely include arbitration provisions in agreements and I often wonder whether an arbitration is really any easier or cheaper than litigation. But what I didn’t realize before was how much latitude arbitrators have in what they can award, including, in this case, reforming the contract to grant a license far beyond what either...

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    Standing is a Lot Easier for Copyrights

    by  • January 16, 2013 • copyright, featured, patent • 0 Comments

    I’m curious about the different legal standards that the courts apply in patent versus copyright cases when deciding whether a plaintiff who acquired the rights through transfer has standing. Patent law seems draconian, as exemplified by Abraxis Bioscience, Inc. v. Navinta, LLC.  In Abraxis (blogged here and here), standing for a patent infringement suit...

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    Whoops, the State Owns the Mark

    by  • July 21, 2012 • trademark

    Florida VirtualSchool is an agency of the State of Florida. The enabling statute for the school says this: The board of trustees … may acquire, enjoy, use and dispose of patents, copyrights, and trademarks and any licenses and other rights or interests thereunder or therein. Ownership of all such patents, copyrights, trademarks, licenses, and...

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    You Really Need It Signed

    by  • May 31, 2012 • copyright

    If you snoozed through biz org class in law school thinking that you weren’t going to be a transactional lawyer, perhaps you better go back and brush up on the law of agency. That’s what snagged Universal Music Group and its related company, UMG Recordings. That, and the pressure to get the deal done....

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    I Learned What “Dubitante” Means

    by  • April 21, 2012 • patent

    For purposes of patent standing, there are generally three categories of ownership described: patent owner, exclusive licensee, and non-exclusive licensee. The first has the right to sue, an exclusive licensee must join the assignee in any patent infringement suit, and the non-exclusive licensee has no standing at all. But the first category can be...

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    The Missing Inventor

    by  • April 15, 2012 • patent

    I love cases where the defendant goes back and finds another potential inventor. Stemcells, Inc. v. Neuralstem, Inc. shows some of the ways this can play out – in this case, standing, and the rarely-invoked bona fide purchaser in good faith defense. The patents in dispute are 7,115,418entitled “Methods of proliferating undifferentiated neural cells”...

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    The Danger of Terms of Art

    by  • January 24, 2012 • patent

    Sherman & Associates, Inc. v. Oxford Instruments, PLC discusses the fairly commonplace question of whether plaintiff Sherman & Associates, who was only a patent licensee, has standing to sue. The answer hinged on interpretation of the contract between it and the patent owner, ASM America, Inc. Sherman & Associates was originally the owner of...

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    When Do You Have an Exclusive Copyright License?

    by  • May 12, 2011 • copyright

    I’ve been hanging on to a decision from the Seventh Circuit since January, but it’s still worth some exposure because it explains one way to determine whether a copyright license is exclusive. A claim for copyright infringement may only be brought by the “legal or beneficial owner of an exclusive right under a copyright.”...

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    Why the Paperwork is Important

    by  • March 21, 2011 • trademark

    Defendant River West Brands LLC is a company that, in its own words, “identifies, acquires, redevelops, and monetizes iconic brand intellectual property that is significantly distressed.” In other words, its business is in zombie brands. I previously blogged on some of the methods the company uses here.  It’s a business model with fairly significant...

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