Background
Plaintiffs, including the son of furniture designer George Nelson, sued MillerKnoll, Inc. alleging trademark infringement and fraud regarding the ownership of the Bubble Lamp intellectual property. The dispute centered on whether MillerKnoll had the right to own the design and word marks after acquiring them from a third party, Modernica. The district court had granted summary judgment to MillerKnoll, finding that the Nelson family had authorized the company’s ownership through contract and ratified it by accepting payments.
The court’s reasoning
The court applied Michigan state law to interpret the 2006 Royalty Agreement and the 2015 Addendum. It concluded that the plain language of the contracts granted MillerKnoll exclusive rights, title, and interest in the Nelson-designed products, including the Bubble Lamps. The court rejected arguments that the term Licensed Product implied only a license rather than ownership, noting the contract defined the term to mean products owned by the company. Furthermore, the court found that Mico Nelson ratified MillerKnoll’s ownership by accepting millions of dollars in royalty payments after learning of the company’s claim to the intellectual property. The court also held that authorization defeats claims for trademark infringement and state law torts, and the plaintiffs failed to provide sufficient evidence to support their request to cancel the trademark registrations.
What it means going forward
The ruling confirms that clear contractual language granting ownership rights, combined with the acceptance of benefits under that contract, can bar intellectual property claims even if the plaintiff later alleges fraud or unauthorized use.