Licensing is the form of contract by which intellectual property owners profit from their IP without giving up ownership. An IP owner (licensor) may license others (licensees) to use, resell, or otherwise exploit the owner’s copyright, trademark, or patent rights, generally for profit.
Each license situation raises its own legal issues, though. Is the license exclusive or non-exclusive? Is the license limited to the licensee’s use of the IP, or does it also carry the right to copy and/or resell the IP? And what are the limits to the licensee’s use? We can help draft and negotiate license agreements to clarify each of these issues.
Licensing to Protect Copyright
The basic contract law of offer and acceptance has been liberally expanded by the courts in the field of software (copyright) licenses. A purchaser may buy software off the shelf without actually reading and accepting the license yet still be governed by it, if the purchaser is required to accept the license prior to installing the software. (These are so-called “shrinkwrap” licenses.) Acceptance of the license terms is generally easier to acquire for internet purchases of software, though, so it’s best when possible to require acceptance of the terms before accepting payment.
Licences that Govern Trademarks
Trademark licensing carries its own special rules. Since trademarks are expected to be associated with the goodwill of a product or service, they may not be assigned (sold) without assigning the associated goodwill as well. Similarly, trademarks licensed without some restrictions as to quality control may result in loss of the trademark, because the goodwill associated with the trademark is lost when no effort to maintain quality is asserted. This is known as naked licensing.
Don’t lose your IP rights due to improper IP licensing; contact us to do it right!