Originally posted 2013-10-15 11:38:17. Republished by Blog Post Promoter
Does anyone write a better lead sentence in trademark blogging than Pamela Chestek?:
International Importers v. International Spirits & Wines, LLC is, at bottom, a manufacturer-distributor dispute. It’s also a lesson in how not to handle trademark ownership.
And is anyone better at guiding us through the most tortured factual corporate histories in the process of teaching that lesson? I don’t think so. So no sense in my trying; read the post. It’s a picnic of complicated licensing and corporate-legal missteps that would warm the cockles of IP litigators’ “hearts” (if we had any) — and speeds them up a bit.
Here’s why. The mess comes about in a fight over standing, prudential and otherwise. Pretty technical stuff. Here’s a part I was able to alight upon that seemed like just foothold enough for LIKELIHOOD OF CONFUSION®:
With that as background (phew!), International Importers sued International Spirits & Wines, LLC and â€œD’Aquino Group of Companies,â€ a non-existent legal entity, for infringement of the mark WALLABY CREEK based on the defendants’ importation and sale of the wine. Most notably, Fernbrew is one of the â€œD’Aquino Group of Companies.â€ So at the end of the day we have what is a common situation â€“ the former distributor of a product claiming ownership of the trademark and bringing a trademark infringement claim against the manufacturer and the new distributor. But because of the joint ownership of the mark, what happens next is far from typical.
Looks like I chose well! So? Next:
Rather than sorting out the ownership under the usual manufacturer-distributor framework (alert – recursive link), the defendants challenged International Importers’ standing under Fed. R. Civ. P. 12(b)(1), on the theory that all co-owners must be joined, and under Fed. R. Civ. P. 12(b)(7) for failure to join a necessary and indispensable party under Rule 19, namely, the other owners of the trademark.
So does one owner have standing without joining the other owners?
The answer to this question sounds like something Rule 12 mavens should know. Read the whole thing! Seriously. In this fight over spirits, there’s some dispiriting in there — for transactional and litigating IP lawyers alike. I’ll take a double!