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AMERICAN COURTS ON LICENSING

1. LICENSING PATENTS

A patent licensee does not have to materially breach or terminate a license agreement in order to bring an action against the licensor challenging the patent covered by that agreement.Inc. v. Genentech, Inc., 549 U.S. 118 (2007).

2. LICENSING TRADE SECRETS

Royalty payments pursuant to a written agreement should continue for as long as the licensed formula is used – even after the trade secret becomes know to the public.

Warner-Lambert Pharmaceutical Co., Inc. v. John J. Reynolds, Inc. et al , 178 F. Supp. 655 (SDNY 1959).

3. LICENSING COPYRIGHT

A copyright holder may be able to dedicate certain work to free public use and yet enforce an “open source” copyright license to control the future distribution and modification of that work.

Jacobsen v. Katner, 535 F.3d 1373 (Fed. Cir. 2008).

Generally, a copyright owner who grants a nonexclusive license to use his copyrighted material waives his right to sue the licensee for copyright infringement and can sue only for breach of contract.

Sun Microsystems, Inc., v. Microsoft Corp., 188 F.3d 1115, 1121 (9th Cir. 1999); Graham v. James, 144 F.3d 229, 236 (2d Cir. 1998).

If, however, a license is limited in scope and the licensee acts outside the scope, the licensor can bring an action for copyright infringement.

S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1087 (9th Cir. 1989).

4. LICENSING TRADEMARKS

When a trademark owner licenses a trademark to another party to use but fails to reserve for themselves a right to police and approve said use, this is called “naked licensing” and the mark may be deemed abandoned.

Barcamerica International USA Trust v. Tyfield Importers, Inc., 289 F3d 589 (9th Cir. 2002).

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Licensing your intellectual property – be it ideas and inventions, trademarks or copyright – is the easiest, the shortest and often the surest way to monetize it and get rewarded.
 
The United States history knows numerous examples of inventors who sold an idea or invention for profit and went on to receive royalties through their entire life. And their heirs kept receiing royalties, too.
 
Every year American manufacturers pay many millions of dollars in royalties to those inventors who decide to go this way. The arrangement is equally convenient for both parties to the deal. As a result of selling ideas, inventors get rewarded for their creativity and free their time to do what they enjoy most: invent. And manufacturers get a developed idea of a new and original consumer product which can be produced in quantities, put on the market in no time, and bring profits to both parties.
 
The same can be said of licensing trademarks and copyright. The entire multi-billion franchise industry grew out of idea/trademark licensing. Character licensing brings right owners billions of dollars every year...

 
Is not this the right time for you to license your great idea or invention?
 

We will be happy to assist you in selling your ideas and licensing your Intellectual Property rights. REQUEST YOUR CONSULTATION TODAY!

© Valery Milgrom, 1997 - 2012

Disclaimer: This website is designed for general information only. The information presented should not be construed to be formal legal advice nor the formation of a lawyer/client relationship.

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