cases/15usc1125/f3d-920-704-kroma-makeup-v-boldface.case

Source: cases/15usc1125/f3d-920-704-kroma-makeup-v-boldface.case

Case source: https://www.neochart.com/catalog/cases/f3d/volume_920/0704_01/index.html

Verbatim annotated passages

We adopt the position taken by the district courts in this circuit-that a licensee's right to sue to protect the mark "largely depends on the rights granted to the licensee in the licensing agreement."

Therefore, the licensing agreement does not give Kroma EU sufficient "rights in the name" to sue under the Lanham Act.

Exact source text

casedsl 1

case /f3d/920/0704-01
  name    Kroma Makeup Eu v. Boldface Licensing & Branding
  cite    920 F.3d 704 (2019)
  court   United States Court of Appeals for the Eleventh Circuit
  date    2019-04-01
  url     catalog/cases/f3d/volume_920/0704_01/index.html
  source  ir/caselaw/f3d_920.jsonl sha1=8592221ae2e2466a011029534daf62b4f5e304e8 chars=17048

law 15usc1125
  role    applied
  posture Rule 54(b) appeal from summary judgment for Kardashian defendants; statutory right of action determined by license terms, not Article III jurisdiction.
  result  claimant-lost

element actionable-interest : not-satisfied [law]
  variant licensing/enforcement-reserved-to-licensor
  party Kroma EU against Kardashian defendants
  fact @623..804 [supports] | In October 2012, Tillett granted an exclusive license to Kroma EU to import, sell, and distribute KROMA products in Europe, and to use the KROMA mark in furtherance of its business.
  fact @12083..12251 [cuts-against] | Tillett retains the KROMA trademark as its "exclusive and inalienable property" and "reserves the right to assign/transfer it to any individual person or legal entity."
  fact @13782..14074 [cuts-against] | But importantly, Section 4.3.2 only vested Kroma EU with the obligation to "inform [Tillett] of any illegal use of the trademark," prompting Tillett to file suit against the infringer-at which point Tillett would be required to compensate Kroma for its losses resulting from the infringement.
  rule @7190..7391 | We adopt the position taken by the district courts in this circuit-that a licensee's right to sue to protect the mark "largely depends on the rights granted to the licensee in the licensing agreement."
  held @16861..16979 | Therefore, the licensing agreement does not give Kroma EU sufficient "rights in the name" to sue under the Lanham Act.
  gloss Pure contract construction resolves statutory entitlement on summary judgment. Economic injury and exclusive distribution do not override this reservation; no universal registered-owner restriction or jurisdictional standing failure is inferred.

misfit Single dispositive element: the court did not decide confusion, infringement, or claim preclusion. Contract rights, statutory zone of interests, and Article III are distinct despite the lower court standing terminology.