USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
USCO. Grants made via a will or involving a work for hire may not be so terminated. 6.2 Licensing Requirements or Restrictions Trade Mark A trade mark licence does not have to be in writing to be valid. But, for a licence to be valid, the trade mark owner must continue to control the nature and quality of the goods and services provided under the trade mark and the agreement should so state. Failure to maintain quality control may result in a finding that the licence is “naked” and that the owner invalidated its rights. Trade mark licences should also indicate the territory, the field of permitted use, authorised goods and ser - vices, and whether the licence is sole, exclusive or non-exclusive. Licences may be perpetual or limited by time. A trade mark application may be licensed. The PTO will record licences, but doing so is not required. Copyright While informal non-exclusive copyright licences exist, it is advisable to have a written licence agreement that outlines the terms of the licence. Exclusive copyright licences must be in writing. Licences should specify which rights are being licensed, the territory, whether the licence is exclusive, the royalty and the term. 6.3 Registration or Recording of an Assignment or Licence Trade Mark The PTO will record assignments, but it is not required. However, when maintenance documents are due, such as renewals, the filing will need to be in the name of the proper owner. Therefore, assignments should be recorded in advance of the maintenance deadline. Acknowledgement of a recorded assignment is prima facie evidence of the execution thereof. Moreover, an assignment is void against any subsequent purchaser for valuable consideration without notice, unless the assignment is recorded within three months after the date of the assignment or prior to the subsequent purchase.
The PTO will record licences, which will put third parties on notice of the licence, but recording is not required. Copyright The licence does not need to be recorded with the USCO to be valid, but there are benefits. A recorded licence provides public notice and can help estab - lish priority over competing claims to the same work. Recording a security interest may also be necessary to perfect a creditor’s interest. Recordation may pro - vide “constructive notice”, meaning that others are deemed to have knowledge of the facts in the docu - ment and cannot claim otherwise. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits Trade Mark If a trade mark owner waits too long after it became aware of a trade mark infringement, a defendant can assert the equitable defences of laches or acquies - cence. Federal court claims brought within the time period of the applicable state’s statute of limita - tions are often presumptively timely, whereas claims brought outside the analogous state statute of limita - tions for similar claims are more likely to be equitably barred by the delay. In addition, interlocutory relief such as a preliminary injunction may be unavailable if there is delay in seeking such relief. Acquiescence is available as a defence when the plaintiff undertakes some affirmative conduct that conveys to the defendant that the plaintiff does not object to defendant’s mark and/or use. Whereas lach - es is passive, acquiescence requires some affirmative act. Copyright A copyright owner has three years from the date of the infringement to file a lawsuit. There is a split of author - ity as to when the period begins. Some courts have adopted an “injury rule” of accrual, which requires the claim to be brought within three years of the infringe - ment. Other courts apply a discovery rule, which
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