USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
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 docu - ments 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 considera - tion without notice, unless the assignment is recorded within three months after the date of the assignment or prior to the subsequent pur - chase. 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 establish priority over competing claims to the same work. Recording a security interest may also be necessary to perfect a creditor’s interest. Recordation may provide “construc - tive notice”, meaning that others are deemed to
have knowledge of the facts in the document 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 acquiescence. Federal court claims brought within the time period of the applicable state’s statute of limitations are often presump - tively timely, whereas claims brought outside the analogous state statute of limitations 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 plain - tiff does not object to defendant’s mark and/or use. Whereas laches 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 authority 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 infringement. Other courts apply a discovery rule, which requires a party to bring a claim within three years of when it became aware or should have become aware of the infringement, not necessarily when it first occurred. Where there is ongoing infringement,
736 CHAMBERS.COM
Powered by FlippingBook