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Intellectual Property Licensing: Forms and Analysis

Richard Raysman, Edward A. Pisacreta, Kenneth A. Adler

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Intellectual Property Licensing: Forms and Analysis book and CD is a comprehensive collection of forms, checklists and agreements designed to help attorneys deal with virtually any intellectual property licensing issue. It provides both the documents you need and the guidance to put them to use. The nearly 100 helpfully annotated forms and agreements in the book and on the CD-ROM include: copyright, trademark and patent agreements; work-for-hire agreements; nondisclosure and non compete agreements; exit-interview guidelines; privacy/publicity releases and celebrity endorsement agreements; merchandising agreements; software development, distribution and licensing agreements; music licensing agreements; dramatic performance licensing agreements; and sample corporate copyright and trade secret policies.

The authors devote separate, detailed chapters to product and media—specific licensing transactions, featuring discussion of negotiating considerations and the substantive legal background. This complete reference is the starting point for any licensing transaction.

Book #00649; looseleaf, one volume, 1,304 pages and one CD-ROM; published in 1999, updated as needed; no additional charge for updates during your subscription. Looseleaf print subscribers receive supplements. The online edition is updated automatically. ISBN: 978-1-58852-086-9

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  • Availability: Available
  • Brand: Law Journal Press
  • Product Type: Books
  • Edition: 0
  • Page Count: 1304
  • ISBN: 978-1-58852-086-9
  • Pub#/SKU#: 649
  • Volume(s): 1
  • CDs: 1

Author Image
  • Richard Raysman
Richard Raysman is a partner in the New York office of Holland & Knight LLP. Mr. Raysman is co-author of the two-volume treatises Computer Law: Drafting and Negotiating Forms and Agreements; Emerging Technologies and the Law: Forms and Analysis and Intellectual Property Licensing: Forms and Analysis, all published by Law Journal Press®, and co-writes a monthly column on computer law for the New York Law Journal. Mr. Raysman is past Chair of the Business Law Section, the largest section of the New York State Bar Association, and is past Chair of its Finance Committee. He also chairs Corporate Counsel's annual Law Journal IP Trademark, Copyright & Licensing Counsel Forum. Prior to practicing law, he was a systems engineer for six years with IBM Corp. Mr. Raysman concentrates his practice on Intellectual Property, including outsourcing and IP litigation, and was recently selected by Chambers as one of America's leading outsourcing lawyers. He is a member of the practical Law Company Advisory Board for Intellectual Property and Technology.


Also by Richard Raysman:
Computer Law: Drafting and Negotiating Forms and Agreements with Forms on Disk
Emerging Technologies and the Law: Forms and Analysis
When Good Software Licenses Go Bad


Author Image
  • Edward A. Pisacreta
Edward A. Pisacreta is Associate General Counsel of New York Presbyterian Hospital. He was previously a partner at Holland & Knight where he specialized in technology law and related intellectual property issues. He has extensive experience drafting and negotiating agreements in technology-related industries. He has served as Editor-in-Chief of the e-Commerce Law & Strategy newsletter from Law Journal Newsletters and is a member of its Board of Editors. Mr. Pisacreta is an Adjunct Associate Professor at Brooklyn Law School. Prior to practicing law, he was a management consultant with Ernst & Whinney (now Ernst & Young).


Author Image
  • Kenneth A. Adler

Kenneth A. Adler is a partner in Loeb & Loeb, LLP. He concentrates his practice on complex outsourcing transactions and intellectual property matters, as well as on transactions relating to emergng technologies, telecommunications and computer law. His practice includes drafting and negotiating virtually all types of domestic and international outsourcing agreements, including business process, information technology and human resource outsourcing, as well as agreements relating to the development, supply, licensing, outsourcing, marketing and distribution of information technology and telecommunications products and services. Mr. Adler is a member of the Computer Law Association, LISTNet (the Long Island Software and Technology Network), the Long Island Forum for Technology, the Association of the Bar of the City of New York, and the Nassau County Bar Association.


CHAPTER 1
Introduction to Intellectual Property Licensing

§ 1.01 Intellectual Property Rights
§ 1.02 General Laws Affecting Intellectual Property Licenses
[1] Contract Law
[2] Antitrust Law
§ 1.03 Intellectual Property Laws Affecting Licenses
[1] Copyright
[2] Trademark
[3] Trade Secret
[4] Patent
[5] The Misuse Doctrine
§ 1.04 Types of Transfers
[1] Assignment
[2] License

CHAPTER 2
Contract Law

§ 2.01 Licenses as Contracts
[1] United States Laws
[2] International Sources of Contract Law
§ 2.02 Application of Substantive Contract Law to Licensing
[1] Contract Formation
[2] Warranty Provisions
§ 2.03 Shrink-Wrap and Click-Wrap Agreements; Mass Market Licenses and Other Agreements
[1] Shrink-Wrap and Click-Wrap Agreements Under the UCC and Common Law
[2] Mass-Market Licenses Under UCITA
[3] Access Contracts Under UCITA
[4] Support and Service Contracts Under UCITA
[5] Electronic Self-Help Under UCITA
[6] UCITA's Fundamental Public Policy Defense to Enforcement
§ 2.04 Uniform Computer Information Transactions Act
[1] 1999 Official Text
[2] 2002 Official Text-Selected Sections
§ 2.05 Form: Agreement to Contract Electronically

CHAPTER 3
Copyright and Related Rights

§ 3.01 Purpose and Theories of Copyright Protection and Related Rights
[1] Theories of Copyright: Economic Rights and Moral Rights
[2] Neighboring Rights and Related Rights
[3] Sui Generis Rights
[4] Negotiated and Compulsory Licenses
§ 3.02 The International Copyright Environment
[1] International Organizations
[2] Regional Organizations
§ 3.03 Protected Subject Matter of Copyright
[1] Originality
[2] Works of Authorship
[3] Fixation
[4] Expression, Merger, and Scènes à Faire
[5] National Origin and Restored Copyright
[6] Infringement
[7] Preemption
§ 3.04 Protected Rights
[1] Copyright and Neighboring Rights
[2] Moral Rights
[3] Limitations on Exclusive Rights
[4] The Copyright Misuse Doctrine
§ 3.05 Ownership of Copyright
[1] Works Made for Hire
[2] Collective Works
[3] Derivative Works
[4] Joint Works
§ 3.06 Transfer of Copyright
[1] Transfer Under the 1909 Copyright Act
[2] Transfer Under the 1976 Copyright Act
[3] Termination of Copyright Transfers
§ 3.07 Duration of Protection for Copyright and Related Rights
[1] Applicable International and Regional Provisions
[2] United States Law
§ 3.08 Form: Copyright Assignment
§ 3.09 Form: Work for Hire Agreement
§ 3.10 Form: Copyright Policy
§ 3.11 Form: Third Party Intellectual Property Policy
§ 3.12 Form: Illustration License Agreement
§ 3.13 Form: Photograph License Agreement
§ 3.14 Form: Graphics License Agreement
§ 3.15 Form: License to Use Online Forum Content

CHAPTER 4
Trademark

§ 4.01 History and Purpose of United States Trademark Law
§ 4.02 International and Domestic Protection
[1] International Trademark Protection
[2] Federal Trademark Law in the United States
[3] State Trademark Law in the United States
[4] Common Law
§ 4.03 Marks, Trade Dress, and Trade Names
[1] Marks: Trademarks, Service Marks, Certification Marks, and Collective Marks
[2] Trade Names
§ 4.04 Devices Eligible for Trademark Protection and Licensing
[1] Distinctiveness
[2] General Types of Marks
[3] Special Uses of Marks
§ 4.05 Policing and Enforcing Marks
[1] Infringement
[2] Unfair Competition
[3] Dilution
[4] Damages
§ 4.06 Brief History of Trademark Licensing Law
[1] "Single Source" Theory
[2] Quality Theory
[3] Modern Licensing Law
§ 4.07 Choosing a License or an Assignment
[1] Hallmark of a Trademark License
[2] Hallmark of a Trademark Assignment
[3] Tax Considerations
§ 4.08 Reasons to Enter into a Trademark License
[1] The Licensee's Perspective
[2] The Licensor's Perspective
[3] Settlement of an Infringement Claim
§ 4.09 Major Issues in Trademark Licensing
[1] Quality Control
[2] Excessive Quality Control: Antitrust and Franchise Issues
[3] Product Liability
[4] Extent of Exclusivity
[5] Internet Issues
§ 4.10 Actions for Trademark Infringement
[1] Trademark Infringement
[2] Unfair Competition
[3] Dilution
[4] Causing Marks to Become Generic
[5] Trademark Disparagement
[6] Counterfeiting of Trademarked Goods
§ 4.11 Drafting the Trademark License
[1] Preamble and Recitals
[2] Grant Clause
[3] Compensation
[4] Quality Control
[5] Provisions Governing Use of the Mark
[6] Infringement Actions/Policing the Mark
[7] Indemnification
[8] Maintenance of Rights
[9] Licensee Estoppel
[10] Transfer or Assignment
[11] Termination Provisions
§ 4.12 Trademarks and Internet Domain Names
[1] Domain Name Management System
[2] Registration of Domain Names as Trademarks
[3] The Legal Interface Between Trademarks and Domain Names
[4] Scope of Trademark Protection for Domain Names
[5] Domain Name Litigation
§ 4.13 Form: Trademark License Agreement
§ 4.14 Form: Service Mark License Agreement
§ 4.15 Form: Intra-Company Trademark, Service Mark, and Trade Name License Agreement
§ 4.16 Form: Trademark License as a Dispute Settlement Agreement
§ 4.17 Form: Domain Name Infringement Letter
§ 4.18 Form: Exclusive Trademark License Agreement
§ 4.19 Form: Non-Exclusive Trademark License Agreement
§ 4.20 Form: Trademark License Agreement for Use in Educational Market
§ 4.21 Form: Domain Name Transfer Provision
§ 4.22 Form: Settlement Agreement Providing for Transferred Domain Name

CHAPTER 5
Trade Secret Law

§ 5.01 Trade Secrets Defined
§ 5.02 Scope and Sources of Trade Secret Law
[1] The International Environment
[2] Scope of Protection Under United States Law
[3] Sources of United States Law
§ 5.03 Misappropriation: Protection and Remedies
[1] Employee and Licensee Under a Duty of Confidentiality
[2] Parties Not Under a Duty of Confidentiality
§ 5.04 Criminal Liability
[1] Federal Criminal Liability
[2] State Criminal Liability
§ 5.05 Form: Sample Trade Secret Policy with Employee, Consultant, and License Forms
§ 5.06 Form: Nondisclosure Agreement (Focus Group Testing)
§ 5.07 Form: Three-Party Nondisclosure Agreement (Statistical Analysis)
§ 5.08 Form: Mutual Nondisclosure Agreement (Prospective Joint Venture or Codevelopment Relationship)
§ 5.09 Form: Mutual Nondisclosure Agreement (Prospective Outsourcing Client) [Letter Format] 
§ 5.10 Form: Nondisclosure Agreement with Proprietary Rights Clause
§ 5.11 Form: Mutual Nondisclosure Agreement with Proprietary Rights Clause
§ 5.12 Form: Nondisclosure Agreement Regarding Proprietary and Licensed Material

CHAPTER 6
Patents

§ 6.01 Overview of Patent Law
[1] Types of Patents
[2] Patentability and Validity; Statutory Bars
[3] Ownership
[4] Infringement
[5] Remedies
[6] Foreign Patents
§ 6.02 Licensing Considerations
[1] Limiting the Bundle of Rights
[2] Provisions of a Patent License
§ 6.02A Cross-Licensing
[1] Generally
[2] Patent Thickets
[3] Relationship to Research and Development
[4] Practical Considerations
§ 6.03 Antitrust and Other Limits on Licensing
[1] Overview
[2] Applying the Antitrust Laws
[3] Antitrust Examples and Cases
[4] Misuse and Related Doctrines
[5] Tying Agreements
[6] Export Restrictions and Other Technology Transfer Limitations
§ 6.04 Challenging License Agreements
[1] The Doctrine of Eviction
[2] Royalty Obligations on Unpatented, Publicly Disclosed Products
[3] Licensee Estoppel to Contest Patent Validity
§ 6.05 Form: Declaration and Power of Attorney for Patent Application
§ 6.06 Form: Assignment (Individual Inventor)
§ 6.07 Form: Assignment (Joint Inventors)
§ 6.08 Form: Assignment (Employee Inventor)
§ 6.09 Form: Simple Patent License
§ 6.10 Form: Patent License Agreement (Exclusive)
§ 6.11 Form: Patent License Agreement (Non-Exclusive)

CHAPTER 7
The Rights of Publicity and Privacy

§ 7.01 Overview of Rights of Publicity and Privacy and Licensing
§ 7.02 Protection of the Rights of Publicity and Privacy
[1] Specific Laws and Regulations
[2] Scope of the Right of Publicity
[3] Duration of the Rights of Publicity and Privacy
[4] Transfer of the Right of Publicity
§ 7.03 Generally-Applicable Terms of Releases and Endorsement Agreements
[1] Exclusivity
[2] Defining the Rights
[3] Territory
[4] Scope of Use
§ 7.04 Additional Terms of an Endorsement Agreement
[1] Celebrity Obligations
[2] "Morals" Clause
§ 7.04A Rights in Personally Identifiable Information
[1] Selected United States Laws
[2] Selected International Laws
[3] Contractual Obligations
§ 7.05 Form: Recording Release (Individual Persona)
§ 7.06 Form: Recording Release with Public Appearance Obligations (Producer-Manager-Talent)
§ 7.07 Form: Recording Release (Institutional Persona)
§ 7.08 Form: Location Release
§ 7.09 Form: Materials Release
§ 7.10 Form: Celebrity License Agreement
§ 7.11 Form: Simple Endorsement Agreement
§ 7.12 Form: Complex Endorsement Agreement
§ 7.13 Form: Vendor's Obligation to Protect Nonpublic Confidential Information
§ 7.14 Form: Limitation on Use of Data Subject to Privacy Policy

CHAPTER 8
Music Licensing

§ 8.01 Overview of Music Licensing
§ 8.02 Key Issues in Music Rights
[1] Protecting Against Unauthorized Copying of Audio Recordings (Piracy)
[2] Protecting Against Unauthorized Fixation (Digital Sampling)
[3] Anti-Circumvention Provisions and Rights Management Information
[4] International Legislative Developments
[5] Digital Rights Management
§ 8.03 Print Licenses
[1] Fees and Most-Favored-Nation Clauses
[2] Other Terms and Conditions
§ 8.04 Mechanical Licenses
[1] History of the Mechanical License in the United States
[2] Contemporary Mechanical Licensing Practices
§ 8.05 Master Use Licenses and Reuse Fees
[1] Master Use Licenses
[2] Reuse Fees
§ 8.06 Synchronization and Videogram Licenses
[1] Determining the Type of License Needed
[2] Terms of Synchronization and Videogram Licenses
§ 8.07 Performance Licenses
[1] Performance Rights in Musical Works
[2] Performance Rights in Sound Recordings (Webcasting)
[3] Exemptions from Music Licensing
§ 8.08 Form: Work for Hire Agreement (Lyric Translation)
§ 8.09 Form: Work for Hire Agreement (Musical Arrangement)
§ 8.10 Form: Master Use License
§ 8.11 Form: Audiovisual Work Synchronization and Videogram License
§ 8.12 Form: Synchronization and Public Performance License for Multimedia
§ 8.13 Form: Musical Compositions Publishing Letter Agreement
§ 8.14 Form: Musical Composition Agency Agreement
§ 8.15 Form: Musical Compositions Co-Publishing Agreement
§ 8.16 Form: Dramatico-Musical Work (Play) Tour License
§ 8.17 Form: Song Collaboration License
§ 8.18 Form: Musical Compositions Administration Agreement
§ 8.19 Form: Mechanical License
§ 8.20 Form: Single Track Music License
§ 8.21 Form: Copyright Assignment Agreement for a Musical Composition
§ 8.22 Form: Ring Tone Agreement
§ 8.23 Form: Audiovisual Streaming/Downloading License Agreement
§ 8.24 Form: License Oriented Audiovisual Streaming Agreement Short Form

CHAPTER 9
Merchandising

§ 9.01 Introduction to Merchandising
§ 9.02 Intellectual Property Rights Implicated in Merchandising
§ 9.03 Issues in Administering a Merchandising Program
[1] Common Issues
[2] Issues Specific to Entertainment and Character Properties
[3] Issues Specific to Trademark and Branded Properties
[4] Issues Specific to Sports Properties
§ 9.04 Merchandising Agreements
[1] Generally Applicable Terms of a Merchandising License
[2] Specific Merchandising Provisions
§ 9.05 Form: Licensing Agent Agreement
§ 9.06 Form: Designer Agreement
§ 9.07 Form: Toy Designer License Agreement (Annotated)
§ 9.08 Form: Cartoonist License and Merchandising Agreement
§ 9.09 Form: Reprint Sales License Agreement

CHAPTER 10
Software Development, Distribution, and Licensing

§ 10.01 Software Licensing
§ 10.02 Types of Software
[1] Off-the-Shelf Software
[2] Customized Software
[3] Custom Software
§ 10.03 Generally Applicable Terms of a Software License
[1] Ownership
[2] Scope of License
[3] Fees
[4] Term
[5] Representations and Warranties
§ 10.04 Additional Terms for Customized and Custom Software
[1] Exclusive and Nonexclusive Licenses
[2] Copy and Modification Rights
[3] Confidential Information and Trade Secrets
[4] Delivery, Installation, and Acceptance Testing
[5] Maintenance, Support, and Updates
[6] Modifications
[7] Assignment
[8] Training
[9] Source Code
[10] Indemnification
§ 10.05 Special Terms for Licenses to the United States Government
[1] Restrictive Rights
[2] Limited Rights
[3] Unlimited Rights
[4] Government Purpose
§ 10.06 Enforceability of Licenses
§ 10.07 Channels of Software Distribution
[1] Agreements with Sales Representatives
[2] Agreements with Distributors
[3] Export Issues
§ 10.07A Bioinformatics Licensing
[1] Introduction
[2] Basic Terms
[3] Managing Risk
[4] Open Data Sources
[5] Intellectual Property
[6] Public Entity Interactions
[7] Royalty Arrangements
§ 10.07B Open Source Licensing
[1] Introduction
[2] "Copyleft"
[3] The GNU General Public Licenses
[4] Other Open Source and Related Licenses
[5] Infringement of Third Party Rights
[6] Other Forms of Protection
[7] Open Source Issues in Transactions
§ 10.07C Electronic Health Records
[1] Federal Law
[2] Licensing Models
§ 10.08 Form: Vendor-Oriented Shrink-Wrap Software License Agreement
§ 10.09 Form: Licensee-Oriented Software License Transaction Checklist
§ 10.10 Form: Annotated User-Oriented Software License Agreement with Software Maintenance Agreement
§ 10.11 Form: Software Sales and License-Back Agreement
§ 10.12 Form: Licensee-Oriented Software Maintenance Transaction Checklist
§ 10.13 Form: Vendor-Oriented Software Maintenance Agreement
§ 10.14 Form: Developer-Oriented Distributor Agreement
§ 10.15 Form: Shrink-Wrap End User License Agreement
§ 10.16 Form: Click-Wrap End User Product License Agreement
§ 10.17 Form: Individual or Network Use Shrink-Wrap License Agreement
§ 10.18 Form: GNU General Public License, Version 2, June 1991
§ 10.18A Form: GNU General Public License, Version 3, June 2007
§ 10.19 Form: Most Favored Customer Clause
§ 10.20  Form: Age Verification Software License Agreement
§ 10.21  Form: Software Evaluation License Agreement
§ 10.22  Form: Software License Agreement on a per Database Instance
§ 10.23  Form: Thirty-Day Evaluation License Agreement with Perpetual Option
§ 10.24 Form: Software License Agreement (Pro-Licensee and Broad)

CHAPTER 11
Dramatic Performance Licensing

§ 11.01 Overview
§ 11.02 What Are "Dramatic" and/or "Grand" Rights?
§ 11.03 Licensing of a Play or Dramatico-Musical Work
§ 11.04 Distinguishing Grand Rights from Small Rights
[1] Non-Dramatic Performance of a Song from a Dramatico-Musical Work
[2] Dramatic Performance of a Song from a Dramatico-Musical Work
[3] Dramatic Performance of a Song Not Taken from a Dramatico-Musical Work and Not Used as Part of a Story or Plot
[4] Dramatic Performance of a Song Not Taken from a Dramatico-Musical Work and Used as Part of a Story or Plot
[5] Fair Use of a Dramatico-Musical Work
[6] Performance of a Dramatico-Musical Work
[7] Performance of a Concert with Many Songs from the Same Dramatico-Musical Work
[8] Performance of Assorted Songs from Several Different Dramatico-Musical Works in a Revue with Costume and Choreography, or as the Music for a Newly Created Play
§ 11.05 Licensing Multimedia Performances and Underlying Rights
[1] Movie, Video and Broadcast Rights
[2] Licensing Underlying Rights
§ 11.06 Other Key Issues in Grand or Dramatic Performance Rights Licensing
[1] Limiting Scope of License
[2] Billing Credits, Logos and Merchandise
[3] Collection of Royalties and Rental Charges for Performance Materials
§ 11.07 Form: Grand rights Tour License-Live Stage Performance of Dramatico-Musical Work
§ 11.08 Form: Agreement for Use of Screenplay Material in Live Stage Performance
§ 11.09 Form: Limited License for Creation of Archival Videotape
§ 11.10 Form: Limited License-Video Clips for Advertising
§ 11.11 Form: Use of Song in Grand Rights First-Class, Stock and Amateur Performances
§ 11.12 Form: Play Production Agreement
§ 11.13 Form: Motion Picture License, Marketing and Distribution Agreement

CHAPTER 12
Literary Licensing

§ 12.01 Introduction to Literary Licensing
§ 12.02 Rights Covered by a Literary License
[1] Right of Publication
[2] Format of Book Publication
[3] Subject Matter of the License
[4] Territory and Language
[5] Duration
[6] Advance and Bonuses
[7] Royalties
[8] Delivery
[9] Satisfactory to the Publisher in Form and Content
[10] Legal Review
[11] Editing
[12] Securing Permissions
[13] Publication Dates
[14] Print Run and Advertising
[15] Out of Print
[16] Warranty and Indemnification
[17] Non-Compete
[18] Options: First Refusal and Last Negotiation
[19] Force Majeure
[20] Promotion
[21] Author Copies
§ 12.03 Additional Rights Covered by a Literary License
[1] Audio Rights
[2] First and Second Serial Rights
[3] Electronic Rights
§ 12.04 Form: Literary Work License Agreement
§ 12.05 Form: Option License Agreement for a Literary Work License
§ 12.06 Form: Content License Between a Magazine Publisher and a Web Site Publisher

CHAPTER 13
Antitrust Limits on Licensing

§ 13.01 Overview of Antitrust Limits on Licensing
§ 13.02 Duty to License to Third Parties
§ 13.03 Price Restrictions in Licensing Agreements
§ 13.04 Exclusive Licensing and Exclusive Dealing
§ 13.05 Cross-Licensing and Pooling Arrangements
§ 13.06 Grantbacks
§ 13.07 Tying
[1] Generally
[2] Technological Tying
§ 13.08 Enforcement of Invalid Intellectual Property Rights

INDEX