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