Litigation Planning for Licensing Attorneys CLE Presentation

8/14/2019 Litigation Planning for Licensing Attorneys CLE Presentation

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Litigation Planning forLicensing Attorneys

Michael G. Atkins

Graham & Dunn PCDecember 15, 2008


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Naked Licensing of Trademarks


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e n on o na elicensing

Approving use of ones trademarkwithout exercising control over thequality of the goods or servicesprovided under the mark


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Trademark principles

A trademark: Symbolizes goodwill

Assures consistency of quality

Encourages brand loyalty

Avoids consumer confusion

Licensor must control quality ofgoods/services sold under licensedmark to maintain these principles Naked licensing is inherently

deceptive


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xamp e o na elicensing

Give me some loot and use thename.

TTAB found petitioner engaged ininadequately controlled licensingof PIED PIPERS mark

Owner Clark Yocum abandoned

rights in markYocum v. Covington,

216 U.S.P.Q. 210 (TTAB 1982)

A


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A an onment o tra emarrights

Failure to exercise quality controlmay cause licensed mark to stopfunctioning as trademark

Owner is estopped from assertingrights in trademark

Mark is deemed abandonedwithout owners subjective intentto do so


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Insufficient quality control

Licensor informally tasted wineconnected with licensed mark Determined wine was good

Licensor relied on licenseesreputation as a world-famouswinemaker

Held: Abandonment found; S/Jagainst licensor affirmed

Barcamerica v. Tyfield,

289 F.3d 589 (9th

Cir. 2002)


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What control is sufficient?

Quality better than or equal toexisting goods/services offered bylicensor

Define how quality is judged

Objective or subjective measures

Define inspectionprocess/representative samples

Right to review customer

comments


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Right to control quality isinherent

Right to control quality stems fromtrademark law, not licenseagreement

Contractual silence does not amountto naked licensing Exercise of control is whats

important

Licensor can block unwantedsublicenses even if sublicenses arepermitted

Miller v. Glenn Miller,

454 F.3d 975 (9th Cir. 2006)


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Recent case law

Halo Management v. Interland, 2004WL 1781013 (N.D. Calif.)

License agreement required licensee

to: Employ reasonable commercial efforts

to maintain positive business value ofHALO mark

To limit mark use to that as shown inpending applicationsTo mitigate confusion or likelihood of

confusion Held: Defendants S/J motion to dismiss

owners infringement claim granted


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Recent case law

Bach v. Forever Living Prods., 473F.Supp.2d 1110 (W.D. Wash. 2007)(Pechman, J.)

No express quality control provision Trademark owner reserved moral rights in

copyrighted work that served as trademark Owner would establish and protect validity

of rights if attacked by third parties In separate agreement, owner reserved

right to veto change in movie title and toapprove score to movie

Held: Defendants S/J motion to

dismiss owners infringement claim


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Recent case law

Experience Hendrix v. Electric Hendrix,2008 WL 3243896 (W.D. Wash.)(Zilly, J.)

Quality control procedures, includinginspection of prospective licenseeprototypes to ensure mark properly

displayed and that Jimi Hendrix notplaced in a bad light, deemedsufficient

Held: Owners S/J motion to dismiss


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Questions?

Michael Atkins

Graham & Dunn PC

(206) 340-9614

[email protected]

Documents

Litigation Planning for Licensing Attorneys CLE Presentation