708 F.3d 837
6th Cir.2013Background
- AMTEL trademark created by Burkhalter for Champaign County directories; Brandeberry obtained AMTEL rights via 1994 License Agreement signed in corporate and individual capacities; 1994 licenses stated licensee would own upon payment; 2002 asset-purchase transferred AMTEL assets and the right to use the AMTEL name to White; White later registered AMTEL and sold the business to Yellowbook; Brandeberry renewed AMTEL rights in 2009 and launched a competing Champaign County directory; Yellowbook sued for trademark infringement and related claims; district court granted summary judgment to Brandeberry and American Telephone, but this court reverses and remands for injunctive relief, damages, and attorney’s fees decisions.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the 1994 license transferred exclusive ownership of AMTEL | Yellowbook argues ownership remained with Brandeberry and American Telephone | Brandeberry contends the license conveyed exclusive ownership to him/ATD | Exclusive ownership vested in Brandeberry/ATD; no joint ownership. |
| Whether the 2002 contract effectively licensed or transferred AMTEL rights | White obtained exclusive rights to use AMTEL through the 2002 contract | Contract granted unqualified right to use/transfer, effectively ownership elsewhere | 2002 contract transferred ownership rights (not a naked license) or, alternatively, abandoned rights; immunity from non-exclusive interpretation. |
| Whether Brandeberry abandoned his AMTEL rights | Abandonment by non-use after 2003-2009 supports Yellowbook | Abandonment defense only defense in infringement; not applicable offensively | Brandeberry abandoned AMTEL rights; abandonment supports Yellowbook’s rights. |
| Whether Yellowbook is entitled to attorney’s fees given punitive damages | Entitled to fees as prevailing party and punitive-damages trigger Ohio fees | District court acted within discretion; fees may be denied | Remand to reconsider fee award; not outright denial; guideline for calculat. |
Key Cases Cited
- Rock & Roll Hall of Fame & Museum, Inc. v. Gentile Prods., 134 F.3d 749 (6th Cir. 1998) (trademark rights derive from goodwill; not independent of business)
- In re Roman Cleanser Co. (Patterson Labs., Inc. v. Roman Cleanser Co.), 802 F.2d 207 (6th Cir. 1986) (assignment of trademark without goodwill is invalid)
- American Dirigold Corp. v. Dirigold Metals Corp., 125 F.2d 446 (6th Cir. 1942) (trademarks pass with business ownership; no bifurcated ownership unless intended)
- Plitt Theaters, Inc. v. American Nat’l Bank & Trust Co. of Chicago, 697 F. Supp. 1031 (N.D. Ill. 1998) (ownership transfer; improper to create unqualified license without goodwill)
- Kellogg Co. v. Exxon Corp., 209 F.3d 562 (6th Cir. 2000) (abandonment and non-use considerations in trademark rights)
- Elvis Presley Enters., Inc. v. Elvisly Yours, Inc., 936 F.2d 889 (6th Cir. 1991) (abandonment/uses in Lanham Act defenses integrated with rights)
- Hensley v. Eckerhart, 461 U.S. 424 (U.S. 1983) (fee-shifting and lodestar adjustments in attorney’s-fee awards)