Intellectual Property in Asset/Stock Purchase Agreements

Brock, Jack

If you are purchasing a business, one of the most important assets you buy may be the intellectual property. In a business sale, the intellectual property includes, but is not limited to: patents, trademarks, copyrights, trade names, customer lists, and trade secrets. Many times, a buyer will seek market entry by purchasing a business and obtaining the goodwill this business has built over the years. Along with adding provisions in the Asset/Stock Purchase Agreement concerning the retention of key employees, it is important to include provisions concerning the intellectual property.

First, during your due diligence, you will want to discovery the types of intellectual property of the business. Second, your Agreement (whether it is a stock or asset sale) should include provisions about the transfer of the intellectual property. Third, you will want the seller to disclosure all of its intellectual property on the Seller Disclosure Schedules which should be attached to the Agreement, and incorporated by reference.

Intellectual Property is usually an important asset in a business purchase. If you are buying a business, remember to include provisions concerning Intellectual Property in your agreement and in your negotiations.

Disclaimer: The above does not constitute legal advice. If you are purchasing a business, you need to contact an attorney.

For help with intellectual property law questions or other civil litigation issues, call Jack Brock, II, Attorney with Colombo Kitchin Attorneys in Greenville, NC, at 252-321-2020.


Publishing and Copyright Issues

Brock, Jack

If you are a publisher of a magazine or a book that includes multiple authors, you could run into some interesting copyright issues.

First, if you would like to copyright your work, it is important that the publisher has entered into a contract with the author of the articles. This contract should, at the very least, grant the publisher the right to copyright article within the larger work.

Second, if a publisher is receiving articles from multiple authors, there is always the possibility that an author submitted an article that violates the copyright of another. It is extremely important that the publisher enters into a contract with the authors that have submitted articles to be published with states 1) that the article is the author’s independent work; and 2) that if the work violates the copyright of another, the author will indemnify the publisher.

In conclusion, for a publisher it is very important to enter into a contract with the authors that submit articles to be published in order to 1) delineate the parties’ respective intellectual property rights; and 2) for protection against authors which plagiarized another author’s work.

For help with intellectual property questions or other civil litigation issues, call Jack Brock, Attorney with Colombo Kitchin Attorneys in Greenville, NC, at 252-321-2020.

Intellectual Property: Learn How to Protect Your Ideas

Brock, Jack

If you have a great idea, there may be people that wish to copy your idea. Although it is said, “Imitation is the sincerest form of flattery,” many times imitation will not compensate you for your idea unless you have adequate legal protection.

If you are 50 years or older and want to learn more about ways to protect your intellectual property, including a brief overview of copyright, patent and trademark law, East Carolina University offers a class through the Lifelong Learning Program.  To learn more, visit the ECU Lifelong Learning Program.

For questions about Intellectual Property or other civil litigation matters, please contact Jack Brock at 252-321-2020.

Nationwide Priority

Brock, Jack

For help with intellectual property questions or other civil litigation issues, call Jack Brock, Attorney with Colombo Kitchin Attorneys in Greenville, NC, at 252-321-2020.

If you have a company that has a brand, you may want to register your brand name as a trademark.  Registering your trademark has certain benefits, one of which is nationwide priority.  Nationwide priority means that the owner of a registered trademark has priority over other unregistered marks that began use after the filing date.  It also means that an owner of the registered mark has priority over other registered marks that were filed subsequent to the owner’s filing date.

Priority is important as the owner of the registered trademark which has priority over a junior trademark which infringes will be able to request that the court enjoin the junior infringing mark, and/or ask for damages.  For example, in one Fourth Circuit case, Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F. 3d 922 (1995), a national chain entered into the D.C. market area and forced another company to stop using its name, as the other company’s junior mark infringed on the national chain’s registered mark. Needless to say, the national chain’s registered mark had priority.

National priority means that an owner of a mark with priority can enjoin another company’s mark if the owner with priority can show a likelihood of entry into the disputed territory.  As the court stated in Lone Star Steakhouse, the registrant has a nationwide right, but the injunctive remedy does not ripen until the registrant shows a likelihood of entry into the disputed territory. . . . [The junior user’s] use of the mark can continue only so long as the federal registrant remains outside the market area.”

Injunctive relief, and/or damages will only be available if the owner can show that the junior mark infringes on the owner’s mark.  The “likelihood of confusion” test is used to determine whether there is infringement, and this test will be discussed in greater detail in subsequent articles.  What is important to take away from this article is that 1) if a company is interested in expanding into more market areas, or the company is concerned about other companies expanding into other market areas, and 2) the company has a recognizable brand name that they wish to protect, then the company should probably register their brand name. Registration will be strategically offensive (by allowing companies to expand with their brand into new market areas), and tactically defensive (by allowing companies to protect the use of their brand in their current market areas).