On May 30, 2019, Justice Masley of the New York County Commercial Division issued a decision in Kim v. Francis, 2019 NY Slip Op. 31554(U), holding that a trademark cannot be the subject of a claim for conversion, explaining:
Kim maintains that defendants “converted the trademark … to their own name by wrongfully and improperly removing [Kim’s] name from … [the] trademark.” Conversion is the unauthorized assumption and exercise of the right of ownership over another’s property to the exclusion of the owner’s rights. The elements of a conversion claim are (1) plaintiff had legal ownership or immediate superior right of possession to specific identifiable personal property and (2) defendant exercised unauthorized dominion over property to the exclusion of plaintiff’s rights. However, a trademark cannot support a claim of conversion because it is intangible intellectual property having no existence apart from the good will of the product or service it symbolizes. Here, Kim alleges that the defendants converted the trademark, and therefore, this cause of action is dismissed against BOG, Arabov, and San Pedro.
(Internal quotations and citations omitted).
Commercial litigation often involves conversion claims. As this decision shows, a claim for conversion cannot be based on intangible intellectual property rights. Contact Schlam Stone & Dolan partner John Lundin at firstname.lastname@example.org if you or a client have a question regarding one person depriving another of her property, whether that property is tangible or intangible, or even involves money or electronic files.
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