Last month gave us three noteworthy post-trial decisions in three different cases from three different states, all centering on disputes among business co-owners over the ownership and exploitation of the businesses’s core intellectual property. While each case stems from a unique set of facts, they all have in common failures to allocate IP ownership by means of clear contractual undertakings ex ante and/or failures to exercise due diligence at inception or during the life of the business.

The first highlighted case hails from New York, involving an extremely high stakes financial dispute between family members comprising the minority and controlling shareholders of the famous Palm restaurants located throughout the United States and elsewhere. The second case comes from Delaware, in which the court ordered dissolution of a limited liability company where the 50% member who licensed to the LLC the patented technology on which rested its entire business plan, as it turned out, did not own the rights. In the third case, from Arkansas, the judge dismissed a one-third LLC member’s claims for copyright infringement and dissolution after finding that he was equitably estopped from enforcing his copyrights in the company’s principal software products.

Derivative Suit Over Palm Restaurant IP Yields $120 Million Award

The original Palm Restaurant was founded in Manhattan in 1926 by Pio Bozzi and John Ganzi, who ran it with their wives. Today, despite the ubiquity of Palm-branded restaurants throughout the U.S. and worldwide, the original corporation formed by Pio and John, now owned by third-generation family members, does not operate a single restaurant. Rather, its sole asset consists of the enormously valuable Palm IP consisting of a series of trademarks and service marks, and design elements including its menu and distinctive restaurant décor, all of which is licensed to independent Palm restaurant operators as well as Palm restaurants owned in whole or with other investors by two family members, Bruce Bozzi and Walter Ganzi, who also happen to own 80% of the original Palm corporation that owns the IP, which I’ll called Palm IP Corp. Continue Reading IP Disputes Among Private Business Co-Owners Dominate Three Recent Cases

When you think about protecting a business firm’s intellectual property (IP), usually you think about protecting it from infringement by external actors.

But there also are internal threats — even mortal ones — to the business when the owners don’t take adequate steps to allocate and memorialize ownership rights in the business-related IP as between the company and those responsible for its creation.

Two recent cases illustrate the point.

What’s In a Name?

The first, from New York, involves a popular Manhattan restaurant serving Southern cuisine, called Root & Bone, operated by the eponymously named Root & Bone LLC. The company was formed in October 2013 by its three members, the plaintiff Freedman and defendants McInnis and Booth, each holding a one-third membership interest. Continue Reading Dissension Follows When Business Owners Don’t Put Their IP House in Order