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Revoke this, I implied. Or something.

Originally posted 2011-03-24 17:58:18. Republished by Blog Post Promoter

Only a real IP lawyer like Pamela Chestek can write about revoking an implied nonexclusive copyright license.

And mean it.

Luxury goods rental

Originally posted 2013-08-15 15:06:12. Republished by Blog Post Promoter

“Bag Borrow or Steal™ – Borrow or Rent the Latest Authentic Designer Handbags Purses Jewelry and Accessories.”

You know they — the Big IP guys — are sitting in conference rooms trying to figure out how to stop this.

Soon enough when you buy a Gucci bag, it will come with a non-transferable “licensing” agreement!

My actual prediction:  They will make IP claims preventing the display of their merchandise in connection with promotion of this service, claiming, preposterously, a LIKELIHOOD OF CONFUSION as to affiliation, sponsorship, ownership… something.

Lotsa Matzah

Originally posted 2005-04-25 12:48:37. Republished by Blog Post Promoter

Passover has kept blogging very “light” (as they say) this week, and I am sure I will be digging out and catching up all next week. But it would not be kosher if I didn’t leaven things with a little seasonal trademark blogging. So here’s a link to the Orthodox Union, the organization that advertises its “O-U” trademark, and rightfully, as the “world’s best known kosher trademark,” which it quite certainly is. See here for information on the application of the “O-U” to kosher for Passover foods. Not that the O.U. owns the right to the “O-U” combination — hardly. Rather, it’s the “circle-U” or “U in the O” device which is where the action is and which, like any other good and valuable trademark, requires aggressive enforcement.

The O.U. isn’t the only kosher certification, of course, though it is the biggest and is very well respected. Some products bear the hechsherim or certification marks (trademarks that serve as an identification of source, not of a good itself, but of a certification about that good as to quality, such as being kosher or being safe) of various other agencies all of which, with all due respect to the federal judiciary, answer to a higher authority. Because the True Judge adjudicates beyond lifetime tenure!

Enjoy the rest of the holiday, or what should be a beautiful weekend if it’s not your festival.

Likelihood of avoision

Originally posted 2013-11-14 14:25:39. Republished by Blog Post Promoter

I’m in pretty deep in a jury trial — no, not an IP case; more like an IT case, only one conducted under a tent and with three rings and thrills and chills for children of all ages — this week, so blogging’s been lighter than light. And regular LOC readers know what that tack means:  It’s ripoff time!

Tacks case?Today, let’s just cut and paste this genuinely litigation-y post from the redoubtable trademark-blogging wunderkind of the Left Coast, Michael Atkins:

This is first for STL: a tax case.

In Blistex Bracken v. City of Seattle, the City imposed a business and occupation (B & O) tax on the licensor of the BLISTEX, BLISTIK and BLIST-FZE trademarks it owns for lip balm and skin care products to Blistex, Inc., an Illinois corporation. Blistex Bracken (BBLP), a Washington limited partnership, objected to the City’s tax on the royalties it received from its licensee. The City assessed $80,406.28 in unpaid B & O taxes plus interest and penalties, for a total of $131,439.84.

BBLP paid the tax and filed an action for a refund in superior court. The court sided in favor of BBLP on summary judgment and ordered the City to pay the refund. The City appealed.

The question on appeal was whether a sufficient nexus existed between BBLP’s activities and the City to justify assessment of the tax under the Due Process Clause of Washington’s Constitution.

On Sept. 21, the Washington Court of Appeals noted that licensee Blistex, not licensor BBLP, develops, manufacturers, markets, licenses, and sells products using the trademarks, and generates the royalty income. The court found the record showed minimal activities that BBLP engaged in relating to owning, managing, and maintaining the trademarks. This led the court to conclude the City lacked the nexus it needed to collect the tax.

Oh, and… you were wondering about the post title?  Let’s avoid the whole tacky subject.  I myself barely passed it in law school.  And the IRS and its like … well, better not to say anything at all, right?

Build American! Or hire good lawyers.

Beanstalk's Oliver Herzfeld

Oliver Herzfeld

Originally posted 2008-09-11 15:37:14. Republished by Blog Post Promoter

When it comes to manufacturing, it’s all about price, right?  Brand management and licensing gurus Oliver Herzfeld and Richard Bergovoy beg to differ, writing in Managing Intellectual Property that a casual attitude toward offshore manufacturing could end up costing a fortune in brand equity:

Richard Bergovoy

Richard Bergovoy

In a brand owner’s worst nightmare, goodwill that has taken years to generate can disappear in a flash with publicity about wrong-doing in a factory halfway around the world, which is contracted to manufacture goods by a licensee. Such wrongdoing typically takes the form of unsafe products or unfair labour practices. While legal liability risk may be low, brand damage can be high. Victims include the Kathie Lee Gifford apparel line licensed to Wal-Mart as well as toy company Mattel. But brand owners can limit their damage caused by incorporating safeguards in the licensing agreements and manufacturer’s agreements. These should set out the  responsibilities of both the manufacturer and the licensee. They should also include provisions on what to do if and when any problems arise. Taking these steps at the contractual phase should help minimize damage to your brand.

The whole article is available online to subscribers, and you can get a free trial at the site.

Locution, Locution, Locution: IP Licensors – Service Suppliers or Product Providers?

Secondary Trademark Liability | Bloomberg BNA

Buy me!

Consider the following scenario: Company A is a well-known film producer that licenses its intellectual property rights in famous cartoon characters to Company B, a jewelry manufacturer. Company B in turn features those characters in bracelets that infringe Company C’s marks. Company C sues both Company B and Company A, alleging direct and contributory trademark infringement, respectively.

In this situation, how should the court apply contributory liability doctrine to the Company A, the licensor defendant? As explained in the website overview, that doctrine prescribes a different standard depending on whether the defendant has supplied a product or a service to the direct infringer. How then should the court view Company A? Has it supplied the direct infringer with an intangible “product” – its intellectual property? Or has it provided it with a “service” – the licensing arrangement? Neither option seems to capture the essence of the licensor-licensee relationship. And yet the difference is not merely a matter of form: In the latter case, Lockheed Martin’s version of the Inwood Labs. test would apply, with its additional requirement that the plaintiff show “direct control and monitoring” of the instrumentality of infringement.[1]

While the courts generally agree that contributory liability doctrine applies in the licensing context,[2] they have wrestled with how, precisely, to characterize the relationship between the licensors and licensees. In the three cases discussed below, the courts considered licensing relationships in the context of contributory liability. In two of the cases, the courts assumed thatLockheed Martin would apply,[3] while the third court reserved judgment pending further developments in the case.[4] Each court had a different view of how to characterize the licensor’s relationship with its licensee. More …

Another highly derivative blog post

Does this work for you?

Does this work for you?

We learn from our mistakes.  Far better, however, is to learn from the other guy’s mistakes.  Here by “our” and “other guy” I am referring to people engaged in the practice of commercial law.

Take, for example, this teaching moment, written up by Pamela Chestek:

I like the cross-over of different legal disciplines. Ownership issues arise as part of an infringement claim, but also come up in trusts and estates, mergers and acquisitions, taxation, and bankruptcy. These cases can end in an unexpected way, sometimes happening because there is a failure to understand exactly how the various trademark, copyright and patent rights work.

To distill it down to its essential elements, we have a case where a company, defendant Priva Security Corp., had granted to co-defendant Pro-Marketing Sales (PMS) a security interest which included an interest in “Copyrights”:

all copyrights arising under the laws of the United States, … whether registered or unregistered, published or unpublished, now or hereafter in effect and all registrations and recordings thereof …

The  agreement also gave a security interest in “Copyright Licenses,” defined as:

all agreements providing for the granting of any right in or to any Copyright (whether the Company is licensee or licensor thereunder) and the granting of any right in any derivative work based upon any copyright….

Priva, in financial distress and as part of a Chapter 11 reorganization, granted plaintiff Cyber Solutions International, LLC (CSI) a license to its “technology,” which for our purposes was the copyright to a functionality called “SKSIC.”  PMS didn’t object to the license and its senior interest was acknowledged in the license agreement.

The license to CSI was very generous; it gave CSI a worldwide, perpetual license to the copyright and allowed CSI to “pursue” it’s own improvements, although Priva would be the exclusive provider of services for engineering, design and customization. In both cases, whether developed by CSI or Priva, CSI ended up the owner of the copyright.

And there were improvements; a new product, “TRSS,” was developed. Although the court doesn’t describe it using the legal term of art, it appears that TRSS was a derivative work of SKSIC.

Priva didn’t recover from its financial distress so PMS elected to exercise its right to own the technology pursuant to the security agreement. Which is what creates the legal question—who owns the copyright in TRSS? Does PMS, by virtue of its security agreement in the copyrights and/or copyright licenses, or does CSI, by virtue of the express grant of ownership in the license agreement?

Now that I’ve copied most of Pam’s blog post, Read More…

Best of 2008: Color me infringing

First posted on December 8, 2008.

Trademark law continues to slip from its moorings in subtle ways.  From Inside Higher Ed (hat tip to its editor, Doug Lederman, for sending it along):

On Wednesday, the U.S. Court of Appeals for the Fifth Circuit — ruling in a case involving an apparel manufacturer that made T-shirts that incorporated the colors but not the names or logos of major college football programs — declared that the use of “color schemes along with other indicia” that have come to be strongly associated with a university can be enough to trigger a finding of trademark violation when they create a “a probability of confusion” in the mind of consumers.

What’s the thinking here, exactly?



A federal court in 2006 endorsed the universities’ arguments that Smack’s products were purposefully similar enough to their own licensed products that they were likely to mislead consumers into believing that the company’s goods were produced by or associated with the universities’ own. . . . The three-judge panel of the Fifth Circuit appeals court took very much the same stance as the lower court. . . .

“[W]e conclude that there is no genuine issue of fact that Smack’s use of the universities’ color schemes and other identifying indicia creates a likelihood of confusion as to the source, affiliation, or sponsorship of the t-shirts. As noted above, the digits of confusion — particularly the overwhelming similarity of the marks and the defendant’s intent to profit from the universities’ reputation — compel this conclusion,” the court’s opinion states.

I hadn’t entirely assimilated this “digits of confusion” terminology, though it’s been out there for a while, but, bigger picture — what’s really going on is somewhat troubling.   Read More…

Best of 2014: Bakeries, bankruptcy, BUTTERNET and … bleh!

Originally posted on July 14, 2014.BUTTERNUT trademark

If the tone of my the title of this post sounds dismissive, it’s not quite that.  It is, rather, just an admission that there are some things in trademark law that are complicated in a pretty untrademark-law-like way.  Usually I manage to avoid them completely … and then along comes Pamela Chestek, who makes us sit up and take notice no matter how intellectually lazy July in New York makes me want to be.

It’s like this:

The legal significance of a “license” to the BUTTERNUT trademark has been in dispute for ten years now. I put “license” in quotes because while the document in question is called a license, it’s not your typical trademark license.

In 1996, in settlement of an antitrust suit brought by the Justice Department, defendant Interstate Bakeries Corporation (IBC) had to divest itself of some Bread Assets (land, buildings, fixtures, equipment, vehicles, customer lists, etc.) and Labels, which included “all legal rights associated with a brand’s trademarks, trade names, copyrights, designs and trade dress.”

Plaintiff Lewis Brothers Bakeries (LBB) was the company that acquired the rights Interstate Brands had to sell. The judgment was reduced a transaction that had both an Asset Purchase Agreement and a License Agreement. One of the assets being transferred in the APA was . .  . “the perpetual, royalty-free, assignable, transferable exclusive license to use the trademarks as described in Schedule 1.2(e)(the “Trademarks”) pursuant to the terms of the License Agreement (as described in Section 3.6) …” Section 3.6 described a “trademark license agreement substantially in the form of Exhibit G hereto ….”

So we have what is a very unusual trademark license agreement. Most trademark license agreements aren’t assignable, transferable or perpetual, and when you add in “exclusive” you get an agreement that looks much more like a transfer of all rights rather than a license.

Bad enough.  Then comes the other B:  Bankruptcy, under Chapter 11 of the Code of which Interstate Bakeries ends up filing in 2004.  “As part of its reorganization plan,” Pamela explains, the debtor “identified the license agreement as an executory contract that it was going to assume.”  Which is one of the things you get to do — if the contract you, the debtor, have identified is really indeed an executory contract, which in this case would be an executory licensing agreement.

But — another famous B — as Pamela noted, this business didn’t look so much like a license.  It looked like a transfer of all rights, i.e., an asset sale.

Well, which is it?   Read More…

Whaddya know!

MustangLogo1The Mustang Ranch trademark case has finally been resolved — and it turns out that prostitute proprietor Lance Gilman gets to claim the trademark for the whorehouse he done boughten after all.  Ho-ho-ho!