USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
Copyright Assigning a copyright involves transferring own - ership rights. An assignment must be in writ - ing and signed by the owner of the rights being assigned. The agreement must clearly indicate the scope of the rights being transferred and whether it is a full or partial assignment. A copy - right may be bequeathed or passed by intestacy at death. The Copyright Act permits authors or their heirs, under certain circumstances, to terminate the transfer or licence of a copyright. These ter - mination provisions are set forth in 17 USC §§ 203, 304(c) and 304(d), and generally require the author to serve a “notice of termination” on the grantee and record it with the 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 writ - ing 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 agree - ment 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 services, 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.
expungement proceeding, or (3) file a re-exami - nation petition. See 5.2 Legal Grounds for Filing an Opposition or Cancellation . There is no USCO adversarial procedure to address copyright fraud. 6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions Trade Mark An assignment must be in writing and signed, and identify: • the parties; • the marks assigned (application or registra - tion numbers, if applicable); and • the effective date. An assignment must include the goodwill of the business associated with the mark. An assign - ment without goodwill is “in gross” and may invalidate the trade mark. Assignment of an intent to use application is not allowed except to a successor to the applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing (15 USC § 1060). Partial assignments of trade marks are per - mitted. For example, a trade mark owner may assign one class of goods/services to another. The PTO will not conduct a substantive review, and recording of an assignment is not an indica - tion of validity.
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