license
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Sometimes You’re Just Stuck With Bad Facts
Sometimes you just have to remind yourself that the facts are the facts, and no amount of sharp lawyering is going to change them. That was the situation for defendant ABN AMRO Bank N.V. (“ABN”). It had hastily negotiated a sale of certain assets to Bank of America (“BAC”) in an unsuccessful attempt to avoid… Continue reading
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What Every Patent License Must Have
I was going to write about the case, but Dennis Crouch explains it so much better than I could. Kimble v. Marvel Enterprises Inc., No. 11-15605 (9th Cir. July 16, 2013) Continue reading
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Does a Covenant Not to Sue Run With the Patent?
There is some belief in the open source community that a patent license and a covenant not to sue have different legal effect. The theory is that a license runs with the patent but that a covenant not to sue may not — in other words, if a company that has covenanted not to sue… Continue reading
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The Value of Recording
A company assigned the same copyright in a film to two different companies. Who owns it? The film is Italian classic La Dolce Vita: The parties agree that a a company called Cinemat S.A. was the owner of the copyright, by assignment from original producer Riama Films S.p.A. The problem arises with the next link,… Continue reading
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You Need a No-Contest Clause in Your Copyright Licenses
I recently wrote about a number of cases brought by photography agencies against Pearson Education, alleging that it exceeded the scope of copyright licenses. This led me to ponder the application of the licensee estoppel defense in copyright. Licensee estoppel prohibits a licensee from challenging the validity of the rights licensed. Patents have a clear… Continue reading
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The Benefit of the Bargain
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 party… Continue reading
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One Famous Mark, Two Owners
You all know that I’ll be having a “what were they thinking!” moment when I see a trademark case with a caption something like Del Monte v. Del Monte. We’ll start with the court’s opinion on the wisdom of the arrangement: Continue reading
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I Have Never Seen An Ownership Case So Complicated
I’ve read a lot of cases with convoluted fact patterns, which I guess is how they end up in litigation. But C.F.M. Dist. Co. v. Costantine, an opposition before the Trademark Trial and Appeal Board, is in the stratosphere of convoluted. Not surprisingly, it’s about a family business. In a 44-page decision, 4 pages are… Continue reading
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For the Want of an Assignment Agreement
What we have in Anderson v. TOL, Inc. is the kind of case that makes lawyers’ heads hurt. In 2003, while Plaintiff Lloyd Anderson was in Chapter 13 bankruptcy, he formed PhoenixArts LLC, of which he was the President and sole owner. A few days later, he filed his first of three patent applications for… Continue reading
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Mind Your Licenses
Mind your licenses – if you want the mark to remain valid, it behooves you to comply with the terms of the license. Non-party Ansell Incorporated, later called Ansell Healthcare Products (Ansell), owned the mark CONDOM SENSE for prophylactics, claiming first use in 1988. In 1992, it filed an intent-to-use application for the mark CONDOM… Continue reading
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