Licensing Agreement Can Support Licensee’s Standing to Request Preliminary Injunction

The district court: (a) decided that the licensees had no standing to request the preliminary injunction because they did not own the trademark "LASER GAMES"; (b) ruled it lacked jurisdiction over the issues related to copyright; (c) ordered the inventory and description of the objects in alleged infringement of the trademark “LASER GAMES” in the reported address, the seizure and attachment of a sample, and the immediate discontinuance of any use of the mark “LASER ADVENTURES”. The judge fixed a bond of AR$60,000 (approximately U.S. $10,000 at the time) for the temporary suspension of the www.laseradventure.com.ar domain name.

The plaintiff appealed insofar as the court denied legal standing to the licensees, declined jurisdiction over the copyright issues, and fixed a monetary bond.

The Court of Appeals dismissed the decision regarding lack of jurisdiction, arguing that the substance of the complaint involved an injunction of trademark use, which is a matter subject to federal courts.  The Court ruled that the appellant’s arguments were correct in that it was necessary that all issues be tried by the same judge, as they were closely related.

Secondly, the Court ruled that the licensees had standing to sue in view of a clause in the licensing agreement according to which “both parties shall be entitled to defend jointly or severally the mark, the copyrights and the domain name against the unauthorized use of same by third parties, instituting to said effect the corresponding legal actions”.

The plaintiff had also appealed the bond set by the district court, but the Court rejected this appeal, taking into account that it was necessary to preserve equality before the law and because in actual practice a personal   (sworn bond) was irrelevant.