Monday 11 May 2009

Copyright preassignment contract can drive you to drink ...

Here's some news from Lithuania about an unintended consequence of a contract for the pre-assignment of a copyright.

The plaintiff was a well-known Lithuanian politician who was involved in the impeachment of the  former President. Throughout her political career she had been particularly famous in the media as being associated with a special cocktail of brandy and coffee; the public had come to associate this cocktail with her name of the plaintiff. The defendant subsequently registered a trade mark for brandy which was identical to her forename.

The plaintiff sued for invalidation of the trade mark registration since it amounted to the use of her name without her consent, the application being made in bad faith. The district court dismissed the claim and the plaintiff appealed unsuccessfully to the Court of Appeal which held that, though the trial court erred in law, it got the right result.  It noted that the parties had entered into a copyright agreement, under which the plaintiff undertook to create the label for brandy produced by the defendant and to transfer to the defendant the copyright in that label, as well as any trade marks created in the process of performing the agreement. 

According to the court, this agreement should be interpreted as consent from the plaintiff to use her name in the trade mark.Even though the copyright agreement was signed after the defendant had filed the trade mark application -- and consent was therefore given only after the trade mark had been registered -- this did not invalidate the trade mark registration. And since the plaintiff had consented, the trade mark neither infringed her rights nor was made in bad faith.

Source: "Copyright Agreement Constitutes Consent to Name Trademark", by Rūta Pumputienė (Lideika Petrauskas Valiunas ir partneriai LAWIN), International Law Office.

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