Pick your poison
Is it infringement or a breach of contract? Is it a license or an assignment? Well, whatever it is, it’s a little complicated, and Pamela Chestek does a good job of following all that geometry on her Property, Intangible blog.
Not just a good job: That blog post represents hard work — not just intellectually following the fact pattern, but painstakingly cutting and pasting “actualities” into the post. Nice. But it’s all worth it for a great blog post, isn’t it, Pamela? Uh, right?
Either way, I liked this excerpt she pulled from the July 16, 2010 Southern District of New York opinion:
[This] is essentially a contract dispute between an exclusive licensee and licensor over the right to use the trademark[s] at issue. The dispute should be determined by the principles of contract law, as it is the contract that defines the parties’ relationship and provides mechanisms to redress alleged breaches thereto. The Lanham Act, in contrast, establishes marketplace rules governing the conduct of parties not otherwise limited. This is not a case of either the licensee or licensor attempting to protect a trademark from unscrupulous use in the marketplace by third parties. Rather, this case involves the alleged breach of a license agreement.
Is the Mother Court reading “unscrupulous” back into the Lanham Act? That would be refreshing!