Kroma Makeup Eu v. Boldface Licensing & Branding

920 F.3d 704 (2019) United States Court of Appeals for the Eleventh Circuit 2019-04-01

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)

Facts

  1. 6 Entitlement to sue and protected commercial interest not law
    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.
  2. 6 Entitlement to sue and protected commercial interest not law
    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."
  3. 6 Entitlement to sue and protected commercial interest not law
    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."
  4. 6 Entitlement to sue and protected commercial interest not law
    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.
  5. 6 Entitlement to sue and protected commercial interest not law
    Therefore, the licensing agreement does not give Kroma EU sufficient "rights in the name" to sue under the Lanham Act.