In the Red – The Business Bankruptcy Blog

In the Red – The Business Bankruptcy Blog

The Business Bankrupty Blog

Tag Archives: trademark

The Trend Of Protecting Trademark Licensees In Bankruptcy Continues: For The First Time A Court Extends Section 365(n) Protections To Trademark Licensees On Equitable Grounds

Posted in Business Bankruptcy Issues, Recent Developments
If you doubted it before, you can stop now. The trend of courts finding ways to protect trademark licensees from the harsh effects of losing their trademark license rights in bankruptcy is in full swing. The latest example comes in the Crumbs Bake Shop, Inc. Chapter 11 bankruptcy case in New Jersey. On October 31, … Continue Reading

A Closer Look At Recent Trends At The Intersection Of Intellectual Property And Bankruptcy Law

Posted in Business Bankruptcy Issues, Recent Developments
I had the honor of being a panelist at the American Bankruptcy Institute‘s 22nd Annual Southwest Bankruptcy Conference last Friday, speaking on current developments in business bankruptcy. My part of the discussion focused on recent intellectual property and bankruptcy law trends. Among the topics I covered were: the direction U.S. Courts of Appeals have been taking … Continue Reading

In A Reversal, Eighth Circuit Sitting En Banc Protects Trademark Licensee Whose Licensor Went Bankrupt

Posted in Business Bankruptcy Issues, Recent Developments
Image courtesy of  Kazuhisa Otsubo Trademark Licenses At Risk. I have written a number of times on the blog about the impact of bankruptcy on trademark licenses, with a special focus on the risk that trademark licensees face if their licensors file bankruptcy. Trademark licensees have no protection under Section 365(n) of the Bankruptcy Code, and legislative … Continue Reading

Patent Reform Bill, And Its Revisions To Bankruptcy Code Section 365(n), Stalls In The Senate

Posted in Business Bankruptcy Issues, Recent Developments
Image courtesy of Matt H. Wade In December 2013 I wrote about the Innovation Act, H.R. 3309, a bill focused on patent infringement litigation and other patent law reforms that passed the House of Representatives on a bipartisan basis. My interest in the bill was because it would make the most sweeping changes to the … Continue Reading

Innovation Act, Passed By The House, Would Make Major Changes To Section 365(n)’s IP Licensee Protections

Posted in Business Bankruptcy Issues, Recent Developments
It isn’t law yet, but on December 5, 2013, the U.S. House of Representatives passed a significant patent reform bill known as the "Innovation Act." Although the focus of the legislation is on patent infringement litigation and other patent law revisions, the Innovation Act, H.R. 3309, would also make major changes to Section 365(n) of the Bankruptcy Code. … Continue Reading

Do Trademark Licensees Have Reason For Hope? New Article Discusses Recent Decisions On Trademark Licenses And Bankruptcy

Posted in Business Bankruptcy Issues, Recent Developments
I have written a number of times on the blog about the impact of bankruptcy on trademark licenses, in particular what happens to trademark licensees whose licensors file bankruptcy. Trademark licensees face a real risk of losing their license rights in bankruptcy since they have no protection under Section 365(n) of the Bankruptcy Code. However, recent decisions, including an important … Continue Reading

Seventh Circuit Bankruptcy Ruling Is Big Win For Trademark Licensees

Posted in Business Bankruptcy Issues, Recent Developments
On July 9, 2012, the U.S. Court of Appeals for the Seventh Circuit issued its decision in Sunbeam Products, Inc. v. Chicago American Manufacturing, LLC, and in doing so handed a major victory to trademark licensees whose licenses are rejected in bankruptcy by trademark owners. A copy of the opinion is available through this link. … Continue Reading

First Published Court Of Appeals Opinion Issued Answering Whether Trademark Licenses Are Assignable In Bankruptcy

Posted in Business Bankruptcy Issues, Recent Developments
It’s been a long wait, but we finally have a published decision from a U.S. Court of Appeals answering whether a trademark license is assignable in bankruptcy without the licensor’s consent. On July 26, 2011, the U.S. Court of Appeals for the Seventh Circuit issued an opinion in In re: XMH Corp., written by Circuit Judge Richard … Continue Reading

Third Circuit Decision Suggests Another Way For Trademark Licensees To Protect Against License Rejection In Bankruptcy

Posted in Business Bankruptcy Issues, Recent Developments
Trademark licensees have long faced the serious risk of losing all license rights to a trademark if the licensor files bankruptcy and rejects the trademark license as an executory contract. However, a recent decision from the U.S. Court of Appeals for the Third Circuit in the In re: Exide Technologies case may give some trademark licensees … Continue Reading

Protecting IP Rights From A Licensor’s Bankruptcy: What You Need To Know About Section 365(n)

Posted in Business Bankruptcy Issues
Many companies rely on in-bound licenses of intellectual property, especially those involving patents or trade secrets, and spend millions of dollars on research, development, and ultimately commercialization of drugs or products incorporating the licensed IP. With so much at stake, licensees frequently ask a critical question: Can our license rights be terminated if the licensor … Continue Reading

Spring 2009 Edition Of Bankruptcy Resource Is Now Available

Posted in Business Bankruptcy Issues, Recent Developments
The Spring 2009 edition of the Absolute Priority newsletter, published by the Cooley Godward Kronish LLP Bankruptcy & Restructuring group, of which I am a member, has just been released. The newsletter gives updates on current developments and trends in the bankruptcy and workout area. Follow the links in this sentence to access a copy of … Continue Reading

U.S. Supreme Court Shows Interest In Deciding Whether The Hypothetical Test Or The Actual Test Should Be Used To Determine If IP Licenses Can Be Assumed In Bankruptcy

Posted in Business Bankruptcy Issues, Recent Developments
It looks like the U.S. Supreme Court, or at least two of the Justices, is interested in deciding whether the "hypothetical test" or the "actual test" should be used in determining whether an intellectual property license can be assumed by a debtor in possession under Section 365(c)(1) of the Bankruptcy Code. That was the clear message from the somewhat … Continue Reading

Ninth Circuit Rules In N.C.P. Marketing Trademark License Case

Posted in Business Bankruptcy Issues, Recent Developments
Back in March I gave an update on In re: N.C.P. Marketing Group, Inc., a case addressing whether a debtor can assume a trademark license over the trademark owner’s objection. In 2005, the U.S. District Court for the District of Nevada issued its first of a kind decision, In re: N.C.P. Marketing Group, Inc., 337 B.R. 230 … Continue Reading

Trademark Licenses In Bankruptcy: New Developments In The N.C.P. Marketing Case

Posted in Business Bankruptcy Issues, Recent Developments
Last November I reported on the status of the Ninth Circuit appeal in In re: N.C.P. Marketing Group, Inc., a case addressing whether a debtor can assume a trademark license over the trademark owner’s objection. Back in 2005 the U.S. District Court for the District of Nevada issued its first of a kind decision, In re: N.C.P. … Continue Reading

Assumption Of Trademark Licenses In Bankruptcy: An Update On The N.C.P. Marketing Case

Posted in Business Bankruptcy Issues, Recent Developments
Over a year ago, I posted on a first of its kind decision in In re: N.C.P. Marketing Group, Inc., 337 B.R. 230 (D.Nev. 2005), in which the U.S. District Court for the District of Nevada held that trademark licenses are personal and nonassignable absent a provision in the trademark license to the contrary. Click here for … Continue Reading

Patent Law Collides With Bankruptcy: Federal Circuit Denies Bankruptcy Liquidation Trust Standing To Sue For Patent Infringement

Posted in Business Bankruptcy Issues, Recent Developments
The United States Court of Appeals for the Federal Circuit has jurisdiction over, among other areas, patent appeals, so it’s not every day that a Federal Circuit decision appears on this business bankruptcy blog. (Actually, it’s been about a year since this post discussing another Federal Circuit decision.) However, a September 19, 2007 opinion (available here) … Continue Reading

Another Court Follows The Footstar Decision On Assumption Of IP Licenses In Bankruptcy

Posted in Business Bankruptcy Issues, Recent Developments
Intellectual property licenses continue to be significant to companies across a wide range of industries. This fact makes their treatment in business bankruptcy cases a topic of keen interest.  Can A Debtor Licensee Retain IP License Rights? When the debtor in possession is a licensee under a patent, copyright, or trademark license, a key question arises: Can … Continue Reading

A Second District Court Decides Whether A Trademark License Can Be Assumed In Bankruptcy

Posted in Business Bankruptcy Issues, Recent Developments
Once again, a district court has faced the issue of whether a non-exclusive trademark license can be assumed by a debtor in possession. Before the November 2005 decision in In re: N.C.P. Marketing Group, Inc., 337 B.R. 230 (D.Nev. 2005), no court had directly addressed that question. The decision in the N.C.P. Marketing case, now on … Continue Reading

Assumption Of Intellectual Property Licenses In Bankruptcy: Are Recent Cases Tilting Toward Debtors?

Posted in Business Bankruptcy Issues, Recent Developments
Executory contracts present a host of interesting issues in bankruptcy cases. This is especially true when the executory contract involves a license of intellectual property (or "IP"). In the past I’ve devoted several posts to the topic, including how IP licenses are treated in bankruptcy and the unique issues presented when a trademark licensee or trademark licensor files bankruptcy.  In this … Continue Reading

New Article Examines Interplay Between Bankruptcy and Intellectual Property Law

Posted in Business Bankruptcy Issues
Peter S. Menell, a Professor of Law at the University of California, Berkeley, School of Law (Boalt Hall) and the Director of the Berkeley Center for Law and Technology, is a highly regarded expert on intellectual property law. I wanted to let you know that he’s just posted a very interesting and comprehensive article on the Social … Continue Reading

Copyrights And Bankruptcy Sales: The Importance Of Protecting Your Rights

Posted in Business Bankruptcy Issues, Recent Developments
I’ve posted in the past about bankruptcy asset sales and how parties with executory contracts need to keep track of bankruptcy cases to protect their rights. Steve Jakubowski of The Bankruptcy Litigation Blog has an entertaining and informative post about a recent Court of Appeals decision involving rappers, recording companies, copyrights, and bankruptcy that raises some … Continue Reading

Trademark Licensor In Bankruptcy: Special Risk For Licensees

Posted in Business Bankruptcy Issues
In an earlier post I discussed how a recent district court case gave trademark owners a leg up when a licensee files for bankruptcy. This begs the question: Does the advantage switch back to the licensee if the trademark owner files for bankruptcy? The answer generally, and perhaps surprisingly, is no.  Limited protection of Section 365(n). Of … Continue Reading

Infringement Claims: Is Bankruptcy The End Of The Line?

Posted in Business Bankruptcy Issues
Defending intellectual property ("IP") litigation can be expensive and, if unsuccessful, often crippling for the defendant’s business. Sometimes an accused infringer facing IP litigation will seek bankruptcy protection to invoke the automatic stay. Unless lifted by the bankruptcy court, the automatic stay will prevent further litigation against the debtor, outside of the bankruptcy claims process, for pre-bankruptcy … Continue Reading

Trademark Licensees In Bankruptcy: A Leg Up For Trademark Owners?

Posted in Business Bankruptcy Issues, Recent Developments
Apparently, until last November, no court had been called upon to resolve whether a trademark licensee in bankruptcy can assume, or assume and assign, a non-exclusive trademark license without the trademark owner’s consent.   The decision. We got the first answer to that question in a case called In re: N.C.P. Marketing Group, Inc., 337 B.R. 230 … Continue Reading