Licensing

Licenses, SaaS, and the Cloud

Some Legal Issues to Consider When Migrating to Become a Service Provider

Although everyone’s into blockchain and the Internet of Things, believe it or not, there are still plenty of traditional software developers out there, and some of them still distribute physical software under traditional licenses to end users. Many of these vendors are in the midst of migrating their business models to distribution of their software as a service (SaaS), or via related models (platform or infrastructure as a service [PaaS and IaaS], among others). For vendors moving in that direction, there is a tendency to try to shortcut changes to standard license agreements by merely amending existing license terms to refer to SaaS environments. However, that attempt to “make do” with a software license when vendors move to the cloud can lead to potentially significant legal problems down the road.

License or Not?

Commentators on the legal consequences of SaaS distribution of software are quick to point out that a license grant to software provided over the web is probably ill-advised (although that analysis may be over-simplified). Technically, because the software is not installed locally, and users are merely accessing it in the cloud or at a … Keep reading

What's In a Name?

Question: What do Sean Combs, J.K. Rowling, LeBron James, Lionel Messi, and Mark Wahlberg have in common? Two things, actually. First, they are all listed on the Forbes 2017 Celebrity 100 List; second, they all have gone to the trouble of registering their personal names as trademarks with the U.S Trademark Office. Indeed, of the first 20 celebrities on this “A” list, 19 have sought registration of their names as trademarks.

Trademark Protections For Personal Names

Under Federal law, everyone is entitled to seek protection of his or her name as a brand. The Lanham Act expressly provides that:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it … consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.

As indicated by the language of the statute, in addition to names, likenesses (portraits) and signatures of individuals are entitled to trademark registration. Several well-known entertainers have taken advantage of this right, including Meryl Streep, Robert De Niro, and Anthony Hopkins Keep reading

Does the Emperor Really Have No Clothes?

A Teachable Moment in the Way of the TRUMP Brand and Naked Licensing of Trademarks

 

The current POTUS has a lot of things on his plate right now, and the status of his trademark rights (or, perhaps, more appropriately, the trademark rights of the Trump Organization) around the globe shouldn’t be top of mind. That said, the Trump Organization’s pattern of not controlling the quality of services that are provided under the TRUMP brand provides a teachable moment in the world of trademarks and branding.

The news media have reported repeatedly about the Trump Organization’s penchant for distancing itself from TRUMP-branded projects that have failed, including those in Baja California, and Tampa and Fort Lauderdale, Florida, as well as developments outside the U.S. in Panama and Azerbaijan, among others. While the details of these projects vary, all of them follow a similar narrative. The Trump Organization involves itself in the promotion of an upcoming TRUMP-branded real estate development, and then, despite hype and ample purchases by willing consumers and investors seeking to own a piece of TRUMP real estate, the project never properly gets off the ground, the developers flee with the deposits, and the purchasers … Keep reading

I can’t define disparagement, but I know it when I see it…

On Wednesday, June 18, 2014 the Trademark Trial and Appeal Board, the judicial body that provides review to all Federal trademark filings and disputes relating to such filings, released its second decision to CANCEL the trademark registrations owned by Pro-Football, Inc. and used by the National Football League’s Washington Redskins football team.  The decision is interesting for many reasons, legal, political, and socio-cultural.  But to me the most bloggable angle is how the media has exploded about the decision in the last couple of days, often misreporting the facts (and the law) and suggesting odd conclusions that purportedly flow from the decision.

CNN proclaimed: “If you want to start selling T-shirts with the Washington Redskins’ logo without permission, you may be in luck.”  This unsubstantiated assertion was repeated in other media outlets including Ad Age, which suggested that losing the registrations meant everyone could sell branded items without “fear of reprisal.”

First.  False.  If the decision of the Office stands, the Redskins team, and Pro-Football will still be able to sell their wares and stop others from doing so.  Thousands of unregistered trademark … Keep reading