May 14, 2020

Licensing

Licensing

The EEC Patent Licensing Regulation–Practical Guidelines
      Michael L. Coleman and Dieter A. Schmitz, 42(1): 101–19 (Nov. 1986)
The long-awaited Patent Licensing Regulation of the European Economic Community now allows parties to draft patent license agreements that are exempt from some of the EEC competition rules. Beginning with a general overview of Article 85 of the Rome Treaty, this Article briefly reviews the historical background of licensing under the case law of the EEC Commission and the European Court and then analyzes the new Regulation. Finally, the Article offers some practical recommendations for the person who faces an EEC licensing situation.

Intellectual Property Licenses in Bankruptcy: New "Veto Power" for Licensees Under Section 365(n)
      Stuart S. Moskowitz, 44(3): 771–90 (May 1989)
Although technology licenses have been found to constitute executory contracts under the bankruptcy law, parties to such contracts attempting to understand their rights have often been left floundering as courts have applied varying standards and reached different conclusions when licensees sought to reject such contracts in recent bankruptcy cases. In an attempt to reduce uncertainty, Congress amended the Bankruptcy Code in October 1988 to allow for special treatment of intellectual property licenses. Although the legislation goes far to establish rules on a number of key issues, it also raises questions which may require congressional attention in the near future.

Entertainment Bankruptcies: The Copyright Act Meets the Bankruptcy Code
      Schuyler M. Moore, 48(2): 567–609 (Feb. 1993)
This Article discusses the interplay of the Bankruptcy Code and the Copyright Act. The author discusses the nature of copyright laws in the United States and in foreign countries from the perspective of the licensee and the licensor and then explores the manner for obtaining and perfecting a security interest in copyrights. The author also explores the treatment of copyright licenses as "executory contracts" under the Bankruptcy Code and the manner for determining the ownership of licensed rights in a bankruptcy.

Licensing Intellectual Property and Technology from the Financially Troubled or Startup Company: Prebankruptcy Strategies to Minimize the Risk in a Licensee's Intellectual Property and Technology Investment
      Richard M. Cieri and Michelle M. Morgan, 55(4): 1649–98 (Aug. 2000)
In today's new economy, intellectual property and technology industries are booming. As a result, companies and financial institutions increasingly are presented with new business and investment opportunities with high-tech companies. Although the potential return on such a business relationship or investment may be high, so also is the risk that the high-tech company will experience financial difficulties. A company or financial institution considering a business relationship or investment with a high-tech company thus should recognize this risk and take steps to protect its intellectual property and technology investment. This Article summarizes the potential risks facing a company or financial institution doing business with a high-tech company and suggests actions that may be taken to protect this intellectual property and technology investment.

At the Intersection of Regulation and Bankruptcy: FCC v.Nextwave
      William J. Perlstein and Kenneth A. Bamberger,59(1): 1-22 (Nov. 2003)
Last Term, in FCC v. NextWave Personal Communications, Inc. ("NextWave") , the Supreme Court held that the Federal Communications Commission could not revoke wireless communications licenses held by a debtor-in-possession under the Bankruptcy Code, following that debtor's failure to make timely payments owed for their purchase. The Code, the Court held, prevented the agency from canceling licenses issued pursuant to its administrative authority, notwithstanding the licensee's violation of a "full and timely payment" requirement established by agency regulation. The decision is significant in its particulars: the holding concerned the allocation of valuable licenses to use wireless spectrum. Yet the case also has much broader ramifications for the treatment of government agencies in bankruptcy proceedings. Specifically, the Court's opinion signals three related principles that may impose significant limitations on the power of administrative agencies participating in bankruptcy proceedings. First, agencies are subject to the strictures of the Bankruptcy Code, even when they act in a regulatory capacity; second, bankruptcy law may prohibit the enforcement of a wide array of license conditions; and third, the Bankruptcy Code trumps agency licensing rules. At the same time, however, the opinion leaves in place lower court decisions limiting bankruptcy jurisdiction over administrative action. This Article describes the factual and procedural history of NextWave's dispute with the FCC, and engages in a preliminary assessment of the case's broader implications for administrative agencies. Thus, it seeks to explore some of the consequences of the Court's decision for the treatment of government creditors in bankruptcy proceedings and for the jurisdiction of the bankruptcy courts over administrative matters. Finally, it explores the options remaining for government entities structuring licensing procedures in an attempt to comport with the NextWave decision's holdings.

Trademark Licensing in the Shadow of Bankruptcy
     James M. Wilton and Andrew G. Devore, 68(3): 739-780 (July 2013)
When a business licenses a trademark, transactional lawyers regularly advise that if the trademark licensor files for bankruptcy, the licensee could be left without a right to use the mark and with only a bankruptcy claim for money damages against the licensor. Indeed, the ability of a trademark licensor to reject a trademark license and to limit a licensee’s remedies to a dischargeable claim for money damages has been a significant risk for licensees for twenty-five years based on the Fourth Circuit case, Lubrizol Enterprises, Inc. v. Richmond Metal Finishers, Inc. This result is grounded in the Bankruptcy Code prohibition on remedies of specific performance for non-debtor parties to rejected contracts and is in accord with Bankruptcy Code policy of affording debtors an opportunity to reorganize free of burdensome contracts. In the summer of 2012, however, the Seventh Circuit, in its decision Sunbeam Products, Inc. v. Chicago American Manufacturing, LLC, held that a non-debtor trademark licensee retains rights to use licensed trademarks following rejection of the contract by the debtor-licensor. The decision, derived from a pre-Bankruptcy Code paradigm for understanding the rights of non-debtors under rejected executory contracts that convey interests in property, creates a circuit split over the implications of trademark license rejection. This article asserts that the Sunbeam Products case misconstrues the rights of a trademark licensee as a vested property right and is therefore incorrect under both the holding of the Lubrizol case and the pre-Bankruptcy Code paradigm on which the Sunbeam Products case relies.

Task Force Introductory Report and Background Considerations Model Intellectual Property Security Agreement
     Model Intellectual Property Security Agreement Task Force, Commercial Finance committee and Uniform Commercial Code committee, ABA Business Law Section, 771(3): 849-932 (Summer 2016)