AND · 15usc1125:actionable-interest
Kroma EU illustrates enforcement rights reserved to the licensor; mere economic interest is insufficient in that contractual setting. Article III injury and statutory cause-of-action entitlement are distinct. Lexmark’s specific commercial-injury test is set out separately for advertising.
Exact element source
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.Source:
docroot/ir/usc/title15.jsonl#title15_sec1125; Unicode character offsets [870:988] (end exclusive); SHA-256 0a5680239d11ae3247a99abab2344db45177346d2d2e3050e95c82fb39f3aca7.All variants
| Variant | Description | Merits instance blocks | Distinct cases | Example cases (up to 3 per group) |
|---|---|---|---|---|
| licensing/enforcement-reserved-to-licensor | 1 Satisfied 0; not satisfied 1; excluded context 0 | 1 | /f3d/920/0704-01 — United States Court of Appeals for the Eleventh Circuit · 2019 — not |
How courts decided this element
| Case | Element | Holding and scope | Variant | Exact source quotations |
|---|---|---|---|---|
| /f3d/920/0704-01 — United States Court of Appeals for the Eleventh Circuit · 2019 | Entitlement to sue and protected commercial interest | not Counted merits instance applied / merits basis: law; party: Kroma EU against Kardashian defendants; subject: party=Kroma EU against Kardashian defendants 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. | licensing/enforcement-reserved-to-licensor | 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.Source: docroot/ir/caselaw/f3d_920.jsonl#/f3d/920/0704-01; Unicode character offsets [623:804] (end exclusive); SHA-256 6e77869881244fd295fa194aa518afd7917c84bbbeb6287a54038cc81c2dab35.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."Source: docroot/ir/caselaw/f3d_920.jsonl#/f3d/920/0704-01; Unicode character offsets [12083:12251] (end exclusive); SHA-256 6e77869881244fd295fa194aa518afd7917c84bbbeb6287a54038cc81c2dab35.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.Source: docroot/ir/caselaw/f3d_920.jsonl#/f3d/920/0704-01; Unicode character offsets [13782:14074] (end exclusive); SHA-256 6e77869881244fd295fa194aa518afd7917c84bbbeb6287a54038cc81c2dab35.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."Source: docroot/ir/caselaw/f3d_920.jsonl#/f3d/920/0704-01; Unicode character offsets [7190:7391] (end exclusive); SHA-256 6e77869881244fd295fa194aa518afd7917c84bbbeb6287a54038cc81c2dab35.Therefore, the licensing agreement does not give Kroma EU sufficient "rights in the name" to sue under the Lanham Act.Source: docroot/ir/caselaw/f3d_920.jsonl#/f3d/920/0704-01; Unicode character offsets [16861:16979] (end exclusive); SHA-256 6e77869881244fd295fa194aa518afd7917c84bbbeb6287a54038cc81c2dab35. |
Court interpretations
interpretation
Here, applying the licensing agreement to this inquiry is a straightforward exercise. The plain language of the agreement demonstrates the parties' intent for Tillett to retain all ownership and enforcement rights. Kroma EU-while it may have other rights under the agreement-does not possess the ability to assert its rights in the mark in this proceeding.
/f3d/920/0704-01 — United States Court of Appeals for the Eleventh Circuit · 2019
Here, applying the licensing agreement to this inquiry is a straightforward exercise. The plain language of the agreement demonstrates the parties' intent for Tillett to retain all ownership and enforcement rights. Kroma EU-while it may have other rights under the agreement-does not possess the ability to assert its rights in the mark in this proceeding.Source:
docroot/ir/caselaw/f3d_920.jsonl#/f3d/920/0704-01; Unicode character offsets [11514:11870] (end exclusive); SHA-256 6e77869881244fd295fa194aa518afd7917c84bbbeb6287a54038cc81c2dab35.Kroma EU illustrates enforcement rights reserved to the licensor; mere economic interest is insufficient in that contractual setting. Article III injury and statutory cause-of-action entitlement are distinct. Lexmark’s specific commercial-injury test is set out separately for advertising.