Federal courts are prone to apply licensee estoppel to prevent a trademark licensee from challenging its prior licensor’s rights in the mark. If, of course, a licensee can establish that the prior licensor has no rights in the mark-at-issue, that licensor will not be able to enforce its rights in the mark. Those circumstances will often arise when the prior licensor sues it prior licensee because the latter continues to use the mark following expiration of the license.
Kaitlin Corey Named in The Daily Record’s Leading Women Under 40
Congratulations to our partner Kaitlin Corey on being named among The Daily Record’s Leading Women Under 40 for 2022.
The Daily Record’s Leading Women awards honor women who are 40 years of age or younger for the accomplishments they have made so far in their careers. Winners were selected for the honor based on their professional experience, community involvement, and commitment to inspiring change.
A partner at Goodell DeVries, Kaitlin Corey represents a wide range of clients in intellectual property law and litigation and tax law. Her practice spans everything from trademark litigation to multi-million dollar business transactions and tax controversy work. She speaks regularly on copyright and trademark law and is an adjunct professor at the University of Baltimore School of Law, where she co-teaches Trademarks and Unfair Competition Law with Jim Astrachan. She is immediate Past Chair of the Intellectual Property Section of the Maryland State Bar Association.
Kaitlin also serves as General Counsel for the Annapolis Police Foundation and as a Dean of the Lawyers’ Campaign for CollegeBound.
Jim Astrachan to Lead Baltimore Bar Foundation and Ethics Committee
Goodell DeVries partner and intellectual property lawyer Jim Astrachan has been appointed to two leadership roles this month. He was named President of the Baltimore City Bar Foundation and will serve a one-year term.
Jim was also appointed Chair of the Bar Association of Baltimore City’s Professional Ethics Committee, a role in which he will serve until May 2023.
Jim represents clients in intellectual property law and litigation, mediation, and business, regulatory, and transactional matters. He is a Life Fellow of the Baltimore City Bar Foundation, the Maryland Bar Foundation, and the American Bar Foundation. He has been an adjunct professor since 1979, teaching IP courses at the University of Maryland and University of Baltimore Schools of Law and University of Baltimore Graduate School of Communications Design, and taxation subjects at Loyola’s Sellinger School of Business.
Trademark Law and the Metaverse
Jim Astrachan presented “Trademark Law and the Metaverse” at the Maryland State Bar Association’s Annual Meeting in June 2022. Jim’s slides are available here.
Continuing Use: Avoiding Statutory Damages and Attorneys’ Fees
Jim Astrachan presented “Continuing Use: Avoiding Statutory Damages and Attorneys’ Fees.” at the Maryland State Bar Association’s Annual Meeting in June 2022. Jim’s slides are available here.
An Award of Statutory Damages Under the Copyright Act for Post-Registration Infringements? It Depends.
Goodell DeVries partner Jim Astrachan published this article in the Drake Law Review. Full text is available here.
ABSTRACT
In many cases of copyright infringement, the plaintiff is only able to afford to bring an action for infringement if they are entitled to ask the court to award statutory damages and attorney’s fees should they prevail in establishing infringement. While there might be a connection between the amount of statutory damages a court may award, in its discretion, the profits of the infringer and the actual damages, if any, suffered by a copyright owner, 17 U.S.C. § 504(c) allows a court to award between $750 and $150,000 for each work infringed.1 The statute does not require the plaintiff to establish what actual damages they may have suffered from the infringement or what profits the defendant reaped.2
Airfacts, Inc. v. DeAmezaga: A Lesson in Drafting Trade Secret Agreements
Attorneys who draft confidentiality and non-disclosure agreements would be wise to become familiar with a recent trade secrets decision issued by the United States Court of Appeals for the Fourth Circuit. The case is AirFacts, Inc. v. Diego De Amezaga.
Commoners in the Land of Trademarks
One of the British tabloids has taken Meghan Markle to task because she wants to trademark “archetypes” for use in conjunction with her Spotify podcast. The tabloid defiantly asserts archetypes is 470 years old. So? They write she should not be entitled to own this word. She is, however, entitled to grab a word from the dictionary and use it as a trademark to the exclusion, in category, of anyone else’s use.