After a January 2018 decision by the First Circuit Court of
Appeals, trademark licensees are faced with uncertainty again.
(In re Tempnology, LLC, 879 F.3d 389 (1st Cir. 2018)). In
our previous update, we discussed a 7th Circuit case dealing with
the same issue. At the time we predicted that the holding in the
case may have resolved the issue. (Sunbeam Products, Inc. v.
Chicago American Manufacturing, LLC, 686 F.3d 372 (7th Cir.
2012)). But that was wrong.
First, a little history. In 1985, the 4th Circuit Court of
Appeals held that, when an intellectual property license is
rejected in bankruptcy, the licensee loses the ability to use any
licensed copyrights, trademarks, and patents. (Lubrizol
Enterprises, Inc. v. Richmond Metal Finishers, Inc., 756 F.2d
2043 (4th Cir. 1985)). The Lubrizol decision was heavily
criticized, since it permitted an intellectual property licensor to
get out of a license agreement through bankruptcy. Even the 4th
Circuit acknowledged, in the
