Recent Caselaw Arising from Breach of a Trademark License

Marina L. Lang, Partner at SoCal IP Law Group LLP, will be giving a live, online presentation at the SoCal IP Institute meeting on Monday, March 15, 2021 at 1pm PST. Participating in this activity is approved for 1 hour of MCLE credit. All are welcome. If you will be joining us, please RSVP to elisham@socalip.com prior to the start of the meeting to obtain a link to the video conference.

Ms. Lang practices intellectual property law, with an emphasis on litigation, anti-counterfeiting strategies, procuring and enforcing trademark, copyright, trade secret, domain and internet assets, and publicity rights for her clients throughout the country and world. Further, she guides her clients through complex commercial transactions involving the licensure, assignment, acquisition, valuation, sale and transfer of intellectual property, technology, know-how, trade-secret and other valuable IP assets including non-tangibles.

Properly papering IP transactions is key, especially considering the current upward trend of courts enforcing and upholding trademark licenses based on the plain meaning of the words, which is never “plain” when it comes to intellectual property. Recent case Authentic Apparel Group, LLC, Ron Reuben v. United States (Fed. Circuit March 4, 2021) 2020-1412 available here demonstrates the importance of drafting Intellectual Property contracts with care and strategy. The United States Court of Appeals for the Federal Circuit affirmed the lower court’s grant of summary judgment in favor of the government in this case involving alleged breach of a trademark license agreement between the Department of Defense and Plaintiff Authentic.

Another recent case, Grundig Multimedia AG v. Etón Corp. (N.D.Cal. Feb. 5, 2021, No. 20-cv-05206-NC) also arises out of breach of a license agreement between the two parties. In this case, not only will we discuss enforcement of exclusive jurisdiction clauses, but enforcement of the same when they specify foreign countries. This case also discusses the Uniform Foreign-Country Money Judgments Recognition Act (UFMJRA), codified under California Code of Civil Procedure section 1713, et seq., and its application to all foreign-country judgments.