Page 25 - The Katten Kattwalk - Fall 2025 - Issue 30

have the ability to sue under the Lanham Act on Finally, note that these procedures only concern
behalf of the actual owner, that depends on a
number of options: whether the licensee is exclusive;
nonexclusive, but the US distributor for a foreign
mark; and what the actual terms of the agreement
state. In Ripple, there was no actual license
agreement — Ripple stated that it was a “user” and
“implied licensee” of the mark. Additionally, the
assignment expresslyWW assigned to the owner/
CEO all rights to “institute and prosecute” any suit for
rights associated with the mark. Again, the decision
cited a wealth of authority across circuits explaining
that the rights granted in agreement between the
plaintiff and the mark owner governs whether the
plaintiff has standing to sue. Accordingly, Ripple’s
motion to amend was denied.
Brands need not be overly worried about a similar
result. The lower court noted that “[r]arely in civil
litigation is a case dismissed” based on Rule 17. This
case provides an effective road map for avoiding
similar problems. If miscommunication or sloppy
drafting leads to the wrong party as plaintiff, there
are “generous remedial procedures” to avoid such a
result: joinder, ratification, assignment, substitution
and even invoking certain license arrangements.
offensive actions. If positioned as a defendant in a
trademark suit, Rule 17(a)’s requirements regarding
the “real party in interest” do not govern.
1
Fed. Treasury Enter. Sojuzplodoimport v. Spirits Int’l N.V., 623 F.3d 61, 70 (2d Cir.
2010) (quoting Island Software & Computer Serv., Inc. v. Microsoft Corp., 413 F.3d
257, 259–60 (2d Cir. 2005)) (“[O]wnership of the relevant trademark is one of the
‘necessary elements . . . of trademark infringement under the Lanham Act.’”).
2 Ripple Analytics Inc. v. People Ctr., Inc., No. 20-cv-894, 2024 WL 552801, at *3
(E.D.N.Y. Jan. 5, 2024), report and recommendation adopted (Feb. 5, 2024).
3 4 Fed. R. Civ. P. 17(a)(3).
Id. advisory committee’s note to 1966 amendment.
5 Ripple, 153 F.4th at 269.
6 Id. at 270.
7 Ripple, 2024 WL 552801, at *4.
8 9 See 5 McCarthy on Trademarks and Unfair Competition § 32:12 (5th ed.)
Ripple, 153 F.4th at 271–72.
10 See 6 McCarthy on Trademarks and Unfair Competition § 32:12 (5th ed. 2021) (“[I]
f the license agreement prohibits the licensee from having the right to sue, then
it has no right to sue under § 43(a).”); see also Fin. Inv. Co. (Bermuda) Ltd. v. Geberit
AG, 165 F.3d 526, 532 (7th Cir. 1998) (“Even assuming they met the statutory
requirement of being a person who believes that he or she is likely to be damaged
by a likelihood of confusion, the express terms of the license prohibited any of
them from bringing suit in their own capacity.” (quotation marks omitted)); Kroma
Makeup EU, LLC v. Boldface Licensing + Branding, Inc., 920 F.3d 704, 708 (11th Cir.
2019) (holding that a licensee did not have standing to sue under § 43(a) because
of “the rights granted to the licensee in the licensing agreement” (quotation marks
omitted)
11 Ripple Analytics Inc. v. People Ctr., Inc., No. 20-cv-894, 2023 WL 4763256, at *1
(E.D.N.Y. July 26, 2023), aff’d, 153 F.4th 263 (2d Cir. 2025).
12 Id.
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