Category Archives: Licensing

Court Finds No Business In This Show Business Trademark Dispute

It is a basic principle of trademark law that a mark can only be assigned with the goodwill of the business to which the mark relates, for the good reason that the mark is in fact inseparable from the business.  But what kind of “business” is necessary to support ownership of a mark?  A recent […]

Product Liability Risk in Licensing Trademarks with Technology

A Connecticut Superior Court judge has upheld a jury verdict that once again demonstrates the product liability risks faced by trademark licensors, particularly those who license technology as well as their marks. In Hannibal Saldibar v. A.O. Smith Corp, the court upheld a $2.4 million judgment against the Tile Council of North America, which had […]

Risks of an Unrestricted License

The recent case of Edgenet, Inc. v. Home Depot U.S.A., Inc. (7th Cir., No. 10-1335, 9/2/11) illustrates the principle that a copyright license without restrictions will be broadly construed to encompass all rights. The facts of the case were that Home Depot had contracted in 2004 with Edgenet for Edgenet to develop a classification system […]

No Harm, No Foul: Acknowledgement of Irreparable Harm Doesn’t Create Irreparable Harm

It is common for contracts that grant intellectual property licenses or that include confidentiality obligations to include a provision in which the licensee or the user of confidential information acknowledges that breach of its confidentiality or license obligations will cause irreparable harm and that the other party will be entitled to injunctive relief to enforce […]

Apple and the Beatles: The End of a Long and Winding Road?

The decision by Apple Corps, the Beatles’ music company, to allow distribution of Beatles songs on iTunes appears to have been vindicated by the initial sales figures achieved (two million singles sold in the first week, reports Billboard). However, the release of Beatles’ music on iTunes, the final act in the resolution of the long-running […]

Trademark Licensors Beware: You May be on the Hook for Your Licensee’s Defective Products

The Massachusetts Appeals Court has served up a reminder to Massachusetts trademark licensors that they may be subject to liability for injuries caused by defective products bearing their licensed mark, even if they are not the manufacturer or seller of the defective product. Under the "apparent manufacturer" doctrine, a nonseller trademark licensor may be liable […]