Posts Tagged: "license agreements"

The U.S. Supreme Court has agreed to hear Mission Product Holdings Inc. v. Tempnology, LLC on appeal from the Court of Appeals for the First Circuit. The case will ask the nation’s highest court to determine whether 11 U.S.C. § 365, the statute in U.S. bankruptcy code regarding executory contracts and unexpired leases, requires that a debtor-licensor’s rejection of a trademark license agreement in bankruptcy terminates rights of the licensee that would survive the licensor’s breach under applicable non-bankruptcy law. The Supreme Court declined to take up a second question presented on whether an exclusive right to sell certain products practicing a patent in a particular geographic territory is a “right to intellectual property” within Section 365(n) of U.S. bankruptcy code.

On Friday, November 2nd, the Court of Appeals for the Eighth Circuit issued a decision in Sturgis Motorcycle Rally, Inc. v. Rushmore Photo & Gifts, Inc., et. al. which reversed various parts of the lower court’s decision in the trademark infringement case brought by Sturgis, which claimed to own trademarks covering merchandise related to a well-known motorcycle rally which has taken place in Sturgis, SD, going back to 1938. While the appellate court affirmed the district court’s denial as a matter of law to the defendants’ as to Sturgis’ claims of deceptive trade practices, false advertising and trademark infringement claims, the Eighth Circuit reversed the lower court’s findings that various marks asserted by Sturgis were valid because it found that Sturgis didn’t provide the jury with sufficient proof regarding validity.

Patent broker Brad Close notes that encumbrances can have the effect of reducing a patent’s value by up to 100 percent, practically rendering a patent valueless on the market. “If the only companies which are potential targets for a license are already licensed, then the intellectual property is essentially worthless,” Close said. “If a startup is considering entering into an agreement that would place an encumbrance upon a patent, I would advise them to be very sure that what they’re receiving in return offers adequate value and to take into consideration both their investors and the future of the business,” Close said.

LOT Network markets itself as a non-profit consortium, which offers its members a legal mechanism affording them protection from patent assertion entities (PAEs) and immunizes its members against patent suits from non-operating entities for about 1.2 million worldwide patent assets currently owned by LOT members… The LOT Network conditional license only applies to patents that are in network at the time that a firm joins the consortium. If a business joins LOT after a LOT member sells a patent, previous LOT members are protected by the conditional license whereas the new member still faces the potential of an infringement suit down the road on that patent.

???In Montauk U.S.A. v. 148 South Emerson Associates the Second Circuit vacated-in-part an earlier ruling in a trademark case. In that ruling, the district court denied a motion for preliminary injunction filed by Montauk, which was asserting its trademark rights to marks associated with The Sloppy Tuna restaurant.

One of the critical moments in the life of a start-up tech company is landing its first big contract with a giant tech company. That first tech deal is also a daunting process. Take a deep breath. You can negotiate these agreements, as long as you negotiate smartly. Here are five common-sense tips for going forward… Play the long game. Nothing begets more business opportunities than a satisfied customer. Earn their trust. Show them you can deliver what they want. If you can start that process as early as the negotiations on the first contract, you are already ahead of the game.

A jury awarded $710,000 in damages for trademark and copyright infringement to Grumpy Cat Limited, the entity holding the rights to the Internet cat celebrity Grumpy Cat. The lawsuit targeted the sale of unlicensed coffee beverages marketed under the Grumpy Cat name by a Los Angeles-area beverage company.

On Friday, January 19th, a magistrate judge in the District of Delaware entered a memorandum opinion ordering Cornell University to enter into arbitration proceedings to resolve a dispute with licensee Life Technologies Corporation. The dispute arises out of a patent infringement case in which both parties are plaintiffs after Cornell felt that it was fraudulently induced into a settlement agreement with Life Technologies and Illumina, Inc., the defendant in the case.

The key idea is to think strategically about the software, the value it can provide to the company, and whether the technology should be developed in-house. In some cases, software can provide more value to the company when it includes open source components. Here at Dropbox, for example, we use open source software in our products and we use it to help with development… Even here there are a few ground rules: We evaluate the code on the way in so we know what has been incorporated in our software later. And we prohibit code that is licensed under more restrictive terms that could require us to open source our product in turn.

In the suit, Nye alleges that Buena Vista Television entered into an agreement in March 1993 to promote, market and distribute the Bill Nye the Science Guy television series. That agreement entitled the owners of the show to 50 percent of the net profits divided four ways, leaving Nye entitled to 16.5 percent of the total net profits earned by the show… Nye first became suspicious as to whether Buena Vista was upholding its end of the agreement in July 2008 after Buena Vista informed Nye they had made a mistake in calculating a participation payment sent to Nye that April; instead of earning $585,000 in net profits, Nye then owed Buena Vista nearly $500,000. Since that July 2008 statement recalculation, Nye alleges that Buena Vista ceased making participation or royalty payments, claiming that Nye first had to repay the $500,000 before receiving future payments. Nye’s suit specifically notes that Disney failed to act in good faith to resolve the dispute when counsel contacted them about the issue.

Legal protection for databases in Canada is, perhaps surprisingly, a little convoluted. In some jurisdictions, unique database rights have been legislated (e.g. the EU). This is not yet the case in Canada where protection instead comes from a patchwork of rights provided by different regimes. Traditional intellectual property (“IP”) rights provide some protection, but with sufficient gaps to make exclusive reliance on IP inadvisable… In the decision, the Competition Tribunal found that the information in the MLS database does not attract copyright protection. The decision sets out the Tribunal’s attempt to apply the relevant copyright case law to determine whether copyright subsists in the overall arrangement of information in the MLS database.

The IP Licensing Guidelines, which state the agencies’ antitrust enforcement policy with respect to the licensing of intellectual property protected by patent, copyright, and trade secret law and of know-how, were issued in 1995 and are now being updated. In the agencies’ view, the IP Licensing Guidelines remain soundly grounded, as a matter of antitrust law and economics. Nevertheless, the agencies have determined that some revisions are in order because the IP Licensing Guidelines should accurately reflect intervening changes in statutory and case law.

Patents are a big capital investment for a startup company, but so is an office building. However, no startup company owns their office building outright. Even if they did own the building, they would take a mortgage on the building to free up capital. Exclusive licenses are the same thing as a lease agreement: the startup has full control of the assets, but does not have to spend capital to build or maintain the asset.

This post provides a practical approach for companies to handle the licensing of Intellectual Venture’s (IV’s) smaller in-house funds (ISF & IDF) during a negotiation with IV. These two smaller, in-house funds together represent approximately 20% of IV’s total portfolio. In a typical negotiation with IV, all of the patents in the IIFs (described below) are available for license without exclusions. But, the ISF and IDF patents are more restrictively licensed. Additionally, IV may have presented evidence of use (EOU) materials for assets in these funds, or otherwise highlighted, some of these assets during negotiations, further heightening the risks. For the two smaller funds, IV will provide a list of excluded assets. How can you cost-effectively assess these funds and the associated risks from these smaller funds?