2004, the Russian Federal Treasury Enterprise Sojuzplodoimport (FTE) filed a lawsuit
accusing defendants of misappropriating the American trademarks for Stolichnaya
vodka. The Russian Federation created FTE and entrusted it with certain authority,
including the use of alcoholic products in accordance with relevant trademarks.
Though the Russian Federation ultimately owned the Stolichnaya marks, FTE
argued that it had authority over the marks and, thus, standing to sue.
Thursday, the Southern District of New York dismissed FTE's
long-running suit, holding that FTE lacked standing. Under the
Lanham Act, 15 U.S.C. § 1114,
only a "registrant" may bring a civil action for trademark infringement. "Registrant"
is defined to include the trademark owner, as well as the "legal
representative, predecessors, successors, and assignees ..." 15 U.S.C. §§ 1051, 1127. FTE
argued that it was either a legal representative or an assignee.
rejecting FTE's arguments, the court initially noted that "legal representative"
was not defined by the Lanham Act, the legislative history, or Second Circuit
precedent. FTE argued for a broad definition, contending that a legal
representative should include "any legally authorized agent." The court
rejected this argument and adopted a narrow definition - that is:
a party qualifies as a legal representative ... if the party has the
authority to appear on behalf of the registrant owner with respect to the registrant/owner's
legal interests and the registrant/owner is unable or incapable of
representing itself and enforcing its own rights.
Applying the narrow definition, the court held that FTE
failed to establish its status as a legal representative for the Russian Federation.
While FTE demonstrated itself as an agent/representative for the Russian
Federation in relation to the marks, FTE failed to provide an explanation for
pursuing the litigation in its own name on behalf of the Russian Federation,
which was the real party in interest.
The court also held that in light of the complaint and the facts, FTE
was not, as a matter of law, an assignee. However, "[i]n unique situations, an
exclusive licensee may be considered
an assignee pursuant to 15 U.S.C. § 1127's definition of registrant." Krasnyi Oktyabr, Inc. v. Trilini Imps.,
2007 U.S. Dist. LEXIS 23733 (E.D.N.Y. Mar. 29, 2007) (emphasis added) [enhanced version available to lexis.com subscribers]. In
assessing FTE's status as an exclusive licensee, the court noted that under the
FTE's Charter with the Russian Federation, FTE's rights were neither tantamount
to ownership nor sufficient to permit FTE to exclude the Russian Federation
from taking action with respect to the marks. Consequently, FTE lacked truly
exclusive rights to the Stolichnaya mark and, thus, was
not an exclusive licensee/de facto assignee.
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