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In another thread, now locked, the question was raised, what is the legal authority for Phoenix to sue infringers of the CB marks for infringement that occurred before Phoenix owned the mark?

Unfortunately, because that thread is locked, the impression is given that we don't actually have any legal authority to do so, or that we have no response to the challenge.

In fact, the rule is a very old one: The right to sue for infringement belongs to either (a) the person who owned the IP at the time of the infringement, or (b) the person who owns the IP now, as long as the then-owner also assigned the right to sue for past infringement.

There is an extensive discussion of this issue in a case called Int'l Soc. for Krishna Consciousness of W. Pennsylvania, Inc. v. Stadium Auth. of City of Pittsburgh, 479 F. Supp. 792, 795 (W.D. Pa. 1979), in which the district court analyzed numerous Supreme Court cases, mostly in the area of patent law, to answer the question. In the Krishna case, the trademark plaintiff received an assignment of the right to sue the Krishnas for past infringement of the PITTSBURGH PIRATES trademark, without an assignment of the trademark rights themselves. The question was, is that legal? The answer, after extensive analysis, was "no." To be valid, an assignment of the right to sue for past infringement must include assignment of the trademark rights. The district court quoted from a 1923 Supreme Court case that states the rule:



Crown Die & Tool Co. v. Nye Tool & Machine Works, 261 U.S. 24, 40-44 (1923).

Crown Die & Tool is still good law, having been cited and discussed as recently as last year.

Thank you Jim, that makes us all feel so much better now.

Yawn.

I too get frustrated when a thread is prematurely locked.

I have a question I wanted to ask about the legal authority to sue over past abuses of a trademark prior to transfer of ownership.
I'm wondering if it matters if prior to the transfer of ownership rights that the trademark was applied to improperly licensed materials?
In particular, I'm wondering if there would have been actual goodwill transferred with the trademark rights?
If so, would that allow for those who may have had uncollected judgments against the previous owners to sue the new owners because of the benefit they would receive by owning the infringing mark?

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In the absence of a lien against the trademark, that sort of thing would be foreclosed by the subsequent assignment. When the assignment is made to a good faith purchaser for value, any unrecorded claims on the property are extinguished.

As the Krishna case I cited points out, patent law and trademark law are exactly the same on this point.

Claims for past infringement are assignable with the trademark, according to the cases I've cited. If you think you can do better, go ahead. Show us the point of law that contradicts these cases.

Oh, and as to the other question... Any unrecorded lien, to the extent that it would act to divest a subsequent purchaser of title to the trademark or impose derivative liability on that purchaser, is void under 15 USC 1060(d):

An assignment shall be void against any subsequent purchaser for valuable consideration without notice, unless the prescribed information reporting the assignment is recorded in the United States Patent and Trademark Office within 3 months after the date of the assignment or prior to the subsequent purchase.

The Krishna case, which I cited, is a trademark case.

But if that's not good enough, here are a few more:

George W. Luft Co. v. Zande Cosmetic Co., 142 F.2d 536, 541-42 (2d Cir. 1944) (bare assignment of trademark does not convey right to sue for past infringement, but express assignment of claims or of "all assets" is valid)
H & J Foods, Inc. v. Reeder, 477 F.2d 1053, 1056 (9th Cir.1973) (holding that pre-assignment damages are disfavored, and only allowed when the right to sue is clearly spelled out in the assignment)
Bulte v. Igleheart Bros., 137 F. 492, 493 (7th Cir. 1905) (noting that the plaintiff had received all interest in the trademark at issue, including the rights of action for past infringement)
Lanard Toys, Ltd. v. Novelty Inc., 511 F.Supp.2d 1020, 1030 (C.D.Cal.2007) (holding that the plaintiff had standing to sue for trademark infringement where the assignment included “the right to sue on existing causes of action”)
Exakta Camera Co. of Am. v. Camera Specialty Co., 154 F.Supp. 158, 160 (S.D.N.Y.1957) (assignment of right to sue is valid if underlying trademark rights are valid)
FragranceNet.com, Inc. v. FragranceX.com, Inc., 679 F. Supp. 2d 312, 327 (E.D.N.Y. 2010) (assignment of right to sue, together with assignment of trademarks, is valid)
Ricks v. BMEzine.com, LLC, 727 F. Supp. 2d 936, 957 (D. Nev. 2010) (assignment of trademark does not convey right to sue for past infringement unless it explicitly says so, or conveys all assets of the assignor)

Shall I continue?

("That's eight cases, but why can't you provide nine? Hmm?")

The same people who paid to be Sound Choice certified will be the same people that are willing to pay again to be CB Certified. If it helps them to sleep at night; I guess it's worth paying a small fee to the Schleps. I can't remember the last time that I read anything about Sound Choice or whatever they are calling themselves these days, winning a big case against any pirate outfit. The pirates keep proliferating and the legal hosts are fading into oblivion. Many KJs don't even bother to print out books because their libraries are so large that the books would weigh a ton. They are everywhere and the Pep Boys can't seem to even put a dent in their grip on the karaoke business. They no longer have web pages that brag about how many songs they have. They let word of mouth do their advertising for them and it seems to be working great for them. They have shows almost every night of the week. I haven't seen a disc based karaoke host in years. The one that used to use discs had nothing but copied CDR discs that he got from another KJ. I guess he would like like a legal host because he was always flipping discs but one look at this work table and you would see nothing but burns and no original discs. The pirates have won big time and PEP is just looking to grab so low hanging fruit. 98% of the pirates didn't pay up the first time around and nothing happened to them. Why would they pay this time around? Because it's cheaper? Nothing is cheaper than free.

OK...two questions arise from this conclusion:

1) From whom was the trademark purchased/acquired, Tennessee Production Company, or Digitrax?

2) Is it known, with 100% accuracy, that there is NOT a lien against the trademark by the record label that sued them? It seems that if there was NOT, it would be a significant oversight by the lawyers hired by one of the giants of the recording industry...

The trademark was purchased from Piracy Recovery, LLC, which in turn received it by assignment from Tennessee Production Center, Inc. This is documented in the chain-of-title records of the U.S. Patent & Trademark Office.



Yes, we know with 100% accuracy that there was no recorded lien against the trademark by anyone. If there had been a recorded lien, it would have appeared in the records of the USPTO, and the assignment would not have been permitted to be recorded unless and until a lien release was recorded.

However, I wouldn't regard the lack of a recorded lien as an oversight by anyone (unless, of course, there was an unrecorded lien). The fact that one entity has a judgment against another entity does not automatically create a lien against the judgment debtor's property. I'm not even 100% sure that anyone had a judgment against TPC at all.

The reason why the system is set up in this way is to put the burden on claimants to intellectual property to make their claims public by recording them. Generally, you must record an assignment (or other document affecting title, like a lien or security interest) within 90 days of its execution. If you don't, your assignment is void against any subsequent purchaser of the property, unless (a) you record the assignment before the subsequent purchase is made, or (b) the subsequent purchaser has actual knowledge of the assignment.

This system is very similar to the systems for recording title to real property in most states.

We actually don't care whether people choose to become CB certified or not--we do, however, want them to become CB registered if they are going to use copies rather than original media.

I don't know who you are referring to as "the Schleps." Kurt Slep (note the spelling; it's pronounced just like it's spelled) is the majority owner of Phoenix Entertainment Partners, but he's the only person with any ownership interest in the company whose last name is "Slep."



That depends on what you mean by "winning a big case." We don't often take cases to trial because most of the time we are able to resolve cases through settlement, summary judgment, or default judgment. However, we did try a case last year in Arizona; that trial resulted in a judgment in our favor against a multi-system operator, and it included a finding of willful infringement.

I seem to recall at least one judgement being discussed quite a bit on the forum, and a quick search revealed that is was from CAVS.

https://dockets.justia.com/docket/calif ... 612/514765

If one means of relief for a judgement is to put a lien on the property, it seems like that most businesses would include making the effort to record liens as standard operating procedure...


***Quick Sidebar, for those who get a kick out of irony: This is the address for CAVS

CAVS USA Inc.
8616 **PHOENIX** Drive
Manassas, VA 20110


http://assignments.uspto.gov/assignment ... 1-0249.pdf

Here is the black-and-white, for those interested. If all the information presented bears out, it means we live in a country where a company can benefit from buying a trademark, in which they had zero interest in its development (certainly, in this case, made some type of effort over the years to actually thwart its attempts to succeed), without any of the liabilities created by the owners/creators of the trademark--ALL (at least, in this case) for the sum of $10...

http://assignments.uspto.gov/assignment ... 8-0694.pdf

I recall some discussion quite a while back, questioning the nature of Mr. Harrington's position with the new company. The above document does put such a title in black-and-white...

Question: Would they have allowed Mr. Slep to sign both as the assignee AND assignor, and, if not, why?

Can Music Maestro be far behind?

That will never happen.

So one can only assume that PRLLC has no interest in the CB logo anymore?

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I'm not sure anyone was "questioning" it. I have stated consistently that I am an officer of the company. (It even says so below every post I make here.)


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Since he is an officer of both companies, yes, he could have signed on behalf of both of them.

*crickets*

If you had case law that supported your position, you would have already posted it.

Do you really think you have a better handle on the law than I do?

If by "different" you mean "wrong," sure.

https://en.wikipedia.org/wiki/Dunning%E ... ger_effect

But, by all means, dazzle us with your brilliance.