Archive for the ‘Licenses’ Category

A Star is Born: The Licensing of Blue Ivy

Friday, February 24th, 2012

We here at The Licensing Law Blog have a saying: “It’s never too early to teach your kids about licensing.”

Apparently mega-super-celebrities Beyonce and Jay-Z agree. With licensing in mind, they recently filed a trademark application for their newborn baby daughter’s name, Blue Ivy.

Here to explain the how and why, we are honored to have as a guest blogger our friend and former Beanstalk colleague, Oliver Herzfeld:

1.    How does one trademark a child’s name?

Trademarking a child’s name is no different than doing so for any other name or mark.  In many countries, one’s right to use a mark is conditioned on being the first to register it in the relevant jurisdiction (i.e., it is a race to the filing office).  However, in the U.S., one’s right to use a mark is conditioned on being the first to actually use the mark in commerce.  Federal trademark registration is not mandatory.  In general, registering a mark in the U.S. will not help permit one to use it, nor will a failure to register a mark in the U.S., by itself, prohibit one from using it.  In most cases, all registration will do is provide certain procedural advantages.  One exception to the foregoing is a so-called “intent to use” application (ITU).  In the U.S., if one has not yet commenced using a trademark, but plan to do so in the future, one may file an ITU based on a bona fide intention to use the trademark in the future.  Doing so provides the registrant with the benefits of constructive use and priority that “relates back” to the original filing date.  This is precisely the type of registration Blue Ivy’s parents, Jay-Z and Beyonce, have pursued.  In other words, they are not yet using the name “Blue Ivy” in commerce, but they are claiming that they intend to do so in the future and, if/when they do, in terms of priority, they will be deemed to have commenced their use on January 26, 2012, the date of their ITU registration application.

2.    Is this a first or is there precedent for it?

This is certainly not a first.  For example, Ford Motor Company registered “Edsel”, the first name of Edsel B. Ford, son of the company’s founder.  The Edsel was an automobile manufactured by Ford, but the name has become synonymous with failure because the car never gained popularity and Ford lost millions of dollars on it.  Nonetheless, Ford continues to maintain five live trademark registrations for the name Edsel covering a variety of product categories.

3.    What do Jay-Z and Beyonce gain from this?

Owning a federal trademark registration provides a number of advantages.  Most importantly, it provides a legal presumption of their ownership of, and exclusive right to use, the name nationwide on or in connection with the goods/services listed in their registration.  Other benefits include:

  • Public notice of their claim of ownership (to counter any defendant’s claim of innocent infringement);
  • The ability to bring an infringement action in federal court;
  • The use of the U.S. registration as a basis to obtain registration in other countries;
  • The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
  • The right to use the federal registration symbol ®; and
  • Listing in the United States Patent and Trademark Office’s online databases.

4.    What do you think Jay-Z and Beyonce will use the trademark for?

Blue Ivy’s parents were obligated to describe their intended uses in their ITU application.  Here are the products and services they included grouped in accordance with certain international trademark classification numbers: (more…)

Betty Boop Trademark Case Has A Happy Ending

Sunday, January 8th, 2012

Like a hero rescuing a damsel in distress, the federal Ninth Circuit Court of Appeals granted a happy ending to the brand licensing industry in the controversial Betty Boop trademark case.

After its original opinion in Fleischer Studios, Inc. v. A.V.E.L.A., Inc. appeared to not only reverse settled case law, but also undercut the foundations of the brand licensing industry, the Ninth Circuit withdrew the opinion and replaced it with one that omits the controversial ruling.

The court’s original ruling held that under the doctrine of “aesthetic functionality,” there is no trademark infringement if a third party uses a trademark for its consumer appeal, rather than to identify the goods as “official.”

This holding unleashed a firestorm of criticism from the brand licensing industry, and prompted a petition for rehearing by the full Ninth Circuit Appeals Court, supported by briefs from such industry heavyweights as INTA, the MPAA, Major League Baseball, the NFL, and the NBA.

The Ninth Circuit did not give the petitioners what they had asked for, but something better— dispensing with rehearing by the full appeals court, the original three judge panel withdrew its  opinion, and replaced it with a new opinion omitting all mention of aesthetic functionality. In its new ruling, the court stuck to the narrow issues at hand. It upheld the trial court by ruling that Fleischer Studios had not proved that it held a valid trademark in the Betty Boop image mark, but reversed the trial court by ruling that Fleischer Studios might have a valid trademark in the Betty Boop word mark, and sent the case back to the trial court for further hearings on the issue.

Takeaway: the Ninth Circuit Court of Appeals followed both common sense and its own recent case law by withdrawing its arbitrary expansion of the doctrine of aesthetic functionality, saving the brand licensing industry from free riders who could sell branded merchandise as long as they make clear the mark was used for its consumer appeal, and not to identify the goods as made or endorsed by the mark owner.

Boop Oop a Yikes! Did the 9th Circuit Just Torpedo the Brand Licensing Industry?

Sunday, June 19th, 2011

The Ninth Circuit's slip is showing

In a recent case involving the saucer-eyed, short-skirted Betty Boop cartoon character, the federal Ninth Circuit Court of Appeals in Fleischer Studios, Inc. v. A.V.E.L.A., Inc. appears to have torpedoed the legal foundations of the brand licensing industry by ruling that there is no trademark infringement if a trademark is used for its commercial appeal rather than its source-identifying value.

If read broadly, the case would give a free pass to merchandisers to sell unlicensed New York Yankee caps or Mercedes-Benz medallions, as long as buyers were purchasing the goods for their brand appeal, and not under the mistaken belief that they were “official” goods.

The court’s Betty Boop “slip” was doubly surprising, considering that it had torpedoed a similar argument just five years ago.

The case involved both copyright and trademark infringement claims of Fleischer Studios against unlicensed sellers of vintage posters and other merchandise featuring the Betty Boop character.

The main focus of the court’s opinion was whether Fleischer had in fact purchased the copyrights to the Betty Boop character. The court concluded that Fleischer had not, because the party from which Fleischer had purportedly purchased its rights did not have an unbroken chain of title. Accordingly, Fleischer’s copyright infringement claims failed.

The court then focused on Fleischer’s alternate argument, that because it (along with Hearst Publications) owned the registered trademarks in the Betty Boop name and image, even if the defendants had not infringed its copyright, their unlicensed use of Betty Boop infringed Fleischer’s trademarks.

The court did not decide whether Fleischer in fact owned the trademarks, but ruled that in any case there was no trademark infringement because the defendants’ use of Betty Boop was not for the purpose of indicating that Fleischer or any other party was the source or origin of the products, but only for Betty’s commercial appeal to consumers. In other words, since the primary function of a trademark is to identify the source or origin of goods and services, the defendants’ use was not a trademark use, and therefore such use could not infringe Fleischer’s trademark rights, if any. Furthermore, added the court, Fleischer had not submitted evidence that the defendants’ use of Betty Boop had mislead consumers that Fleischer was the source of the goods. (But that was not surprising, given that the court raised the issue for the first time on appeal (below)).

As precedent, the court cited its 1980 opinion in International Order of Job’s Daughters v. Lindeburg & Co., which held that a maker of jewelry incorporating the trademarked insignia of the Job’s Daughters young women’s organization did not infringe because, “Trademark law does not prevent a person from copying so-called ‘functional’ features that constitute the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored or endorsed a product.” In a nutshell, this is the doctrine of “aesthetic functionality,” which starts from the long-accepted premise that a functional feature of a product cannot qualify as a trademark, because to do so usurps the domain of patent law, but then extends that an extra layer by holding that features that contribute to consumer appeal, including trademarks themselves, are automatically “functional” in the same way as an attention-grabbing mechanical feature of a product.

There was just one problem. Neither the parties in their briefs nor the trial court in its opinion had cited Job’s Daughters, probably because the Ninth Circuit itself had put the case in a very narrow box in its 2006 opinion in Au-Tomotive Gold Inc. v. Volkswagen of America, Inc. In Auto Gold, a dealer in automobile accessories tried to sell keychains and other paraphernalia featuring Volkswagen and Audi logos, arguing that under Job’s Daughters, it was using the marks for their consumer appeal, not their source-identifying function, and had attached disclaimers stating that the goods were not produced or endorsed by Volkswagen or Audi.

The Auto Gold court flatly rejected that argument on the grounds that in Job’s Daughters and similar cases, the “aesthetic functionality” doctrine had only exempted aesthetic or ornamental features, like product color or shape, and only when they had some function “wholly independent of any source-identifying function.” The court contrasted those cases with the Volkswagen and Audi branded goods sold by Auto Gold, for which the “alleged aesthetic function is indistinguishable from and identical to the marks’ source identifying nature… The demand for Auto Gold’s products is inextricably tied to the trademarks themselves,” and not to independent economic or performance benefits of the designs. In other words, it is nonsensical to say that because a source-identifying symbol that is designed to have consumer appeal in fact has such appeal, that makes it per se “functional,” and therefore ineligible to receive trademark protection.

And in a footnote, the Auto Gold court marginalized Job’s Daughters directly by saying that the case only applied to “collective marks,” that is, a category of trademarks used by members of a collective group or organization, which typically have less of a source-identifying function than commercial trademarks, according to the court.

But the Fleischer opinion did not even mention Auto Gold, much less attempt to distinguish it from the Betty Boop facts. Making it extremely likely that another merchandiser will try to free-ride another famous brand, and the Ninth Circuit will have to hide its Betty Boop slip all over again.

Takeaway: brand owners selling products in the federal Ninth Circuit (California, Oregon, Washington, Nevada, Arizona, Idaho, Montana, Alaska, Hawaii, and Guam) should be vigilant to stop companies from selling unlicensed merchandise featuring their trademarks which claim that the marks are not used for their source identifying purposes, but rather for their consumer appeal. It will be especially helpful to gather evidence that consumers believe the unlicensed goods are “official” goods manufactured, sponsored, or endorsed by the brand owner.

Handling Trademark Licensees in Bankruptcy

Tuesday, May 31st, 2011

Don’t panic, trademark licensors with financially shaky licensees. In case it has already sold out at your local newsstand, here is a copy of Handling Trademark Licensees in Bankruptcy, Part 1, from the June issue of Royaltie$ magazine, written with our friend and former Beanstalk colleague, Oliver Herzfeld.

Part 2 will be out in August.

Conditions, Covenants, Copyrights, and Contracts

Thursday, May 26th, 2011

More weapons for licensors, my pet!

Whether you are doing battle in a virtual world with mythical beasts or in a real courtroom with rebellious licensees, it’s all about the weapons.

In MDY Industries LLC vs. Blizzard Entertainment, Inc., the federal Ninth Circuit Court of Appeals explained under what circumstances a licensee’s violation of a non-exclusive software license agreement would not only be a breach of contract, but also an infringement of copyright, giving the licensor many more powerful legal weapons with which to do battle.

World of Warcraft (“WoW”) is a popular multiplayer fantasy computer game in which weapons feature prominently. Players must advance through 70 different levels by fighting battles, slaying beasts, and buying or trading for weapons and armor. WoW has an end user desktop software component subject to an end user license agreement, and an Internet server component subject to terms of use. Michael Donnelly invented a software bot called Glider that automatically plays the game and advances players through the lower levels of WoW without their participation. Glider quickly became popular, eventually earning Donnelly $3.5 million.

When Blizzard became aware of Glider, it changed the end-user license agreements and the terms of use to prohibit use of game-playing bots, and implemented an anti-bot component called Warden to intercept Glider. Donnelly added an anti-detection module to Glider, and bragged in the press that Blizzard would never be able to completely shut down Glider.

After Donnelly received a threatening visit from Blizzard’s legal counsel, his company, MDY, filed suit. Blizzard countersued, claiming: 1) end-users’ use of Glider in violation of the license agreement and terms of use was an infringement of Blizzard’s copyright in the WoW software; and 2) although MDY did not directly infringe Blizzard’s copyrights, it either encouraged or permitted Glider users to do so, which made MDY liable under theories of either contributory or vicarious copyright infringement. (Blizzard also raised claims under the Digital Millennium Copyright Act and tortious interference with contract.)

Blizzard claimed copyright infringement in part out of necessity – MDY was not a licensee of WoW, so Blizzard could not sue MDY for breach of contract – and in part out of preference. As we saw in Jacobsen vs. Katzer, copyright infringement actions give the plaintiff powerful legal remedies. Not only the right to seek the licensor’s actual damages as in a breach of contract action, but also to seek the infringer’s profits, statutory damages of up to $150,000 per work, injunctive relief, attorney’s fees, as well as enforcement against downstream infringers.

The trial court found in favor of Blizzard on the copyright claims, assessed a judgment of $6.5 million against MDY, and permanently prohibited MDY from distributing Glider.

The Ninth Circuit started from the premise that a copyright licensor normally waives the right to claim copyright infringement against a non-exclusive licensee, and is therefore limited to its contractual remedies for breach of the license agreement.

The exception to this rule occurs when the licensee breaches a condition of the license, that is, a contractual term on which the licensor conditioned his permission for the licensee to access the copyrighted material. And not just any condition, but one that has a close nexus to the licensor’s exclusive copyright rights.

This was in accord with the Federal Circuit in Jacobsen vs. Katzer and other courts that have ruled that breach of garden variety contractual promises (covenants) in a license agreement condition would not constitute copyright infringement, but that breach of conditions might. According to the WoW court, state law will normally define these terms, but generally speaking, a covenant is a promise to act or not act in a particular way (“Licensee agrees that it will not X”), while a condition is a precondition that must be fulfilled before a party delivers a benefit (“Provided that Licensee does not A, then Licensor will allow Licensee to B”).

Furthermore, the breached condition must have a nexus to the licensor’s exclusive copyright rights such as copying, selling, and creation of derivative works. If not, wrote the court, all licensors would draft every license provision to say that it is an essential condition of the license, to access more powerful copyright remedies against breaches. In a footnote, the court ruled that a licensee’s failure to pay the license fee would always be deemed to have the required nexus to permit the licensor to bring a copyright infringement action.

Turning to the facts of the Glider bot, the court found MDY was not liable for either contributory or vicarious copyright infringement, because: 1) the Blizzard license prohibitions against using bots were phrased as covenants (“You agree that you will not…create or use cheats, bots, ‘mods,’ and/or hacks….”), not as conditions to using WoW; and (2) Glider users’ violations of the license terms did not implicate any exclusive copyright rights, for example copying WoW or creating altered versions of it.

Takeaway: Although Blizzard lost its copyright claim, in a larger sense licenses and licensors won in yet another Ninth Circuit case. Expect licensors to draft software and other copyright licenses in which many of the licensee’s obligations are styled not as covenants, but as conditions to the licensor’s provision of the license, by inserting language such as, “Provided that Licensee…” or “Subject to and conditioned on Licensee’s…” With the increased legal weapons that a copyright infringement action makes available to licensors, there could be an increase in litigation not only against licensees, but also against third parties who may have encouraged or permitted infringement by licensees.

Cloud Services and SAAS Agreements: Clickwrap vs. Custom

Monday, March 28th, 2011

Photo Courtesy NASA

Many businesses are attracted by the economic advantages of cloud computing, yet at the same time wary of the risks of putting their data and business in the hands of a stranger.

The advantages of cloud computing include: eliminating the need for a major upfront investment in equipment that is then utilized only part-time; ability to ramp up quickly (scalability); ability to add functions quickly (modularity); paying only for what you use on a “utility model.” On other hand, the worst case scenario is that a cloud vendor could lose all of the customer’s data, as happened to many users of Sidekick mobile phones, who were notified in late 2009 that their e-mails, photographs, contacts, and other data stored in the cloud had been lost due to an equipment failure.

A well-drafted contract, that defines and allocates the risks between the parties, is therefore essential.

But most newcomers go the clickwrap route. Let’s take a look at a representative clickwrap cloud services agreement– the Amazon Elastic Cloud Compute (EC2) agreement, which is actually somewhat more customer-friendly than most– and how it could be improved from a customer’s point of view.

Uptime: Amazon’s goes further than most clickwrap agreements, offering concrete service levels that guarantee 99.95% uptime. Sounds good, right? But what happens if Amazon flunks its SLAs? The customer gets a service credit of 10% per month against future invoices, but note that Section 11 says that Amazon has no responsibility to pay for violation of SLAs, and in any event, total damages from all causes are limited to fees paid, not much comfort if your e-commerce site is down Christmas season. As a customer, you would want contractual provisions allowing you to receive more than token damages, and to require the vendor to insure you against loss. If the vendor is providing applications or services in addition to raw computing power, then service levels should be crafted that define and quantify the vendor’s success—uptime alone is not a sufficient metric.

Data Protection and Data Loss: major concerns for a cloud customer are loss of data security or integrity due to equipment failure or malicious third party actions such as hacking. Section 3.1 of the agreement says only that Amazon will implement reasonable measures to prevent loss, and puts the burden on the customer to back up data and to secure it against hacking. As a customer, you would want: contractual provisions guaranteeing that the vendor will implement certain safeguards and comply with certain security protocols; provide backup against data loss; allow customer audits; require vendor reporting, especially in case of security breaches, in which case you would also want a defined incident response, including requiring the vendor to provide any third party notifications required by law. And if all else fails, you would want the ability to recoup damages against the vendor, especially if a third party is making claims against you arising from actions of the vendor.

Regulatory Issues: location of the vendor’s equipment could impact what regulations a customer is subject to. In Section 3.2, Amazon allows customers to choose the physical location where their data is stored and used, and offers safe harbor programs to ensure compliance with the regulations of the relevant jurisdictions. That’s a good start, but Amazon puts the burden on customers to determine whether data will ever be stored or transmitted outside the requested location. Customers should review the provisions of the myriad state, federal, and foreign data privacy and security laws, to assess which might apply and how to the customer’s business model, then negotiate appropriate provisions with the vendor to ensure compliance. For example, the EU has a strict regulatory scheme to protect personally identifiable information of its residents, and has determined that US standards generally are non-compliant. So if there is any chance that such data will flow through the US, the agreement should require the vendor to comply with the EU-US Safe Harbor program of the US Department of Commerce.

Data Portability: clickwrap cloud services agreements are often silent about what happens to the customer’s data and content at the end of the contract. In the Amazon agreement, for 30 days after voluntary termination, Amazon promises not to erase data, and to offer reasonable assistance to transfer data back to the customer. That’s pretty good by clickwrap standards, but the agreement should also address other common scenarios where data access is a concern: if the vendor becomes insolvent, or is acquired by another vendor, or in a disaster recovery scenario.

Update, 4/25/11: This just in from our I Don’t Want To Say I Told You So Dept.: Amazon’s EC2 service went down last Thursday, and did not return to normal until Sunday, knocking out or seriously impairing thousands of websites, including Reddit and Foursquare, and resulting in permanent data loss for a small number of EC2 customers. But surely the 10% credit against next month’s bill will make up for the downtime…

There Are 8 Million Lawsuits in the Naked Cowboy

Wednesday, February 23rd, 2011

This blog post is not authored by, endorsed by, or affiliated with the Naked Cowboy(R), and other stuff our lawyer made us say.

Photo Courtesy Ryan McGinnis

A New York New Year’s tradition is the dropping of the ball in Times Square.

Another is fast becoming the serving of the New Year’s lawsuit by Times Square’s scantily clad troubadour, the Naked Cowboy.

Robert John Burck, aka the Naked Cowboy, recently sued CBS and the producers of the soap opera “The Bold and The Beautiful” for an episode showcasing a character in “Naked Cowboy signature garb” of cowboy hat, cowboy boots, tighty whitey briefs, and strategically placed guitar. The suit seeks $15 million damages for a casebook worth of intellectual property-related legal injuries, including trademark infringement, trademark dilution, false advertising, misappropriation of right of publicity, and unfair business practices.

But guys, you missed the most obvious claim of all– infringement of trade dress.

The complaint claims that the suit was filed only after the defendants ignored multiple requests to take a $150,000 license, in order that the “integrity and propriety of the brand be kept in tact [sic].”

Would that have been a naked license?

In 2008, Burck sued candy maker Mars, Inc. on the grounds that Times Square billboards and a mural featuring a guitar-strumming, underwear-clad blue M&M infringed his Naked Cowboy trademark and rights of publicity. The judge dismissed the right of publicity claim on the grounds that Burck could not claim it for a fictional character; the parties later reached a confidential settlement regarding the trademark infringement claims.

In 2009, Los Angeles videogame maker Gameloft filed a preemptive lawsuit against Burck seeking a ruling that the appearance of a scantily clad, guitar strumming character in its videogame, New York Nights, was not an infringement of the Naked Cowboy trademark.

Also in 2009, Burck sued Clear Channel Communications, claiming that its Tampa radio station created and promoted a Naked Cowboy imposter.

In 2010, Burck sued Sandra Brodsky, a bikini-clad, guitar strumming ex-stripper who strolled Times Square as the Naked Cowgirl, after she refused to sign a Naked Cowboy franchise agreement (going price: $5,000 per year or $500 per month) and ignored a cease-and-desist letter to halt all Times Square performances. Burck’s complaint alleged that the Naked Cowgirl would cause confusion among potential consumers of Naked Cowboy services, and tarnish his wholesome image, by her frequent use of obscene language and gestures towards uncooperative tourists.

What Is A Reasonable Royalty?

Thursday, January 27th, 2011

Did somebody say royalty?

What is a reasonable royalty rate for licensed intellectual property?

According to the Court of Appeals for the Federal Circuit, it is not 25%–at least not as a rule of thumb.

The U.S. Patent Act requires that damages in a successful patent infringement lawsuit equal the reasonable royalty that a licensee would pay a licensor in a hypothetical license negotiation at the time the infringement began.

In Uniloc USA, Inc. v. Microsoft Corp., Uniloc prevailed at trial in its patent infringement claim and was awarded damages of $388 million, based in part on its expert witness’s testimony that 25% of Microsoft’s expected profits on its Office software suite was a reasonable baseline from which to calculate patent royalties. The infringed invention was a product activation key designed to deter illegal software copying.

The 25% rule of thumb starts with the infringer’s gross profit margin (profits divided by nets sales), multiplies that by 25%, then multiplies the resulting royalty rate by the infringer’s net sales from the infringing products, to calculate the patent owner’s damages. For example, if the present value of net sales of an invention is $6, and the present value of manufacturing expenses is $4, the gross profit margin is 33.3% (6 – 4/ 6), and the 25% rule royalty rate would be one-quarter of that, or 8.3% of net sales. The initial royalty rate is often adjusted upwards or downwards, according to the 15 factors detailed in the 1970 case, Georgia-Pacific Corp. v. U.S. Plywood Corp.

On appeal, Uniloc argued that academic studies had proven that the 25% rule of thumb was supported by evidence that patent royalties negotiated in the real world averaged around 25% of profits.

The CAFC conceded that it had tolerated the 25% rule of thumb in cases where the parties had not contested it, but ultimately overturned Uniloc’s damages award on the grounds that to be admissible, a general theory must be sufficiently tied to the facts of the case, however Uniloc’s expert had not laid the necessary groundwork to introduce the 25% rule of thumb in that case.

More broadly, the CAFC said the 25% rule failed because: 1) it did not account for the importance of the patent to the product in which it was incorporated; 2) it did not account for the difference in market power and risk assumed by the parties; and 3) it is essentially arbitrary, and does not fit within the model of a hypothetical negotiation assumed to occur prior to a finding of infringement.

So what then is a “reasonable royalty” for licensed IP?

The CAFC endorsed three of the 15 Georgia-Pacific factors for calculating a reasonable patent royalty: looking at royalties paid or received in licenses for the patent or in comparable licenses, and looking at the portion of profit that is customarily allowed in the particular business for use of the invention or similar inventions. But even these must be tied to the facts of the particular case.

By way of reference, a frequently cited rule of thumb for calculating a fair trademark royalty rate is 10% to 25% of the licensee’s expected gross profit margin, depending on the type of goods, the size of the market, and the strength of the mark. In the same ballpark as patent law’s deposed 25% rule of thumb, but with more flexibility to allow calibration of the licensed IP’s actual contribution to the profitability of the product that incorporates it.

Licensor Recovery of Attorneys’ Fees in Bankruptcy

Thursday, November 18th, 2010

Photo Courtesy tristam sparks under the cc 2.0 license

The only thing worse for a licensor than losing money when its licensee files for bankruptcy is paying attorneys’ fees on top of that to stop the bleeding.

Two of the most common bankruptcy proceedings that licensor creditors get involved in are: 1) hearings related to the licensee’s attempt to assume an executory license agreement; and 2) lawsuits against the licensor to recover so-called preferential transfer payments from the licensee.

But can a clever licensor recover attorneys’ fees incurred in post-petition bankruptcy proceedings, if it had the foresight to include a well-drafted attorneys’ fee provision in its boilerplate license agreement?

Since a 2007 Supreme Court decision, the answer has been “maybe,” which was a big improvement over the previous answer of “almost never.”

Until 2007, there were two hurdles against a licensor creditor recovering its attorneys’ fees in a bankruptcy proceeding. The first was that many courts invalidated attorneys’ fee provisions to the extent that they applied to bankruptcy proceedings, arguing that the Bankruptcy Code had a general policy to invalidate contractual clauses that were triggered by bankruptcy. The second was that some courts interpreted the Bankruptcy Code to prohibit recovery of attorneys’ fees by unsecured creditors under any circumstances.

In 2007, the US Supreme Court removed the first hurdle in Travelers Casualty & Surety Co. v. Pacific Gas & Electric Co., which held that the Bankruptcy Code did not contain a blanket prohibition on recovery of attorneys’ fees for bankruptcy related proceedings, as long as the attorneys’ fees provision is valid under state law.

But the Travelers case did not address the second hurdle, and there is currently a split among various courts whether unsecured creditors can recover attorneys’ fees even pursuant to a contractual provision valid under state law. So far, the Second Circuit, Ninth Circuit, and Sixth Circuit federal appeals courts have permitted such recovery, while the First Circuit and Eighth Circuit (in pre-Travelers opinions) have not.

Sigh, so confusing. What is a licensor to do? Well of course, put attorneys’ fee recovery language in your boilerplate license agreement. The worst that can happen is the court says no.

A starter attorneys’ fee provision might read as follows:

“If any legal action, arbitration, or other proceeding is brought under or in relation to this Agreement, including but not limited to any legal action, arbitration, or proceeding under the U.S. Bankruptcy Code, then in addition to any other relief to which the Licensor is entitled, if the Licensor is the successful or prevailing party, then the Licensor is also entitled to recover, and the Licensee shall pay, all: (a) reasonable attorneys’ fees of the Licensor; (b) court costs; and (c) expenses, even if not recoverable by law as court costs (including, without limitation, all fees, taxes, costs and expenses incident to arbitration, appellate, bankruptcy and post-judgment proceedings); incurred in that action, arbitration, or proceeding and all appellate proceedings. For purposes of this Section, the term ‘attorneys’ fees’ includes, without limitation, paralegal fees, investigative fees, expert witness fees, administrative costs, disbursements, and all other charges billed by the attorney to the Licensor.”

Adjust the above to be valid under the state law that governs the license agreement. Check whether that state law makes the provision reciprocal, by deeming that if an agreement grants one party the right to recover attorneys’ fees, then the other party is automatically entitled to recover its attorneys’ fees under like circumstances. Then cross your fingers.

Licenses 2, Sales 0 in Eminem and Autodesk 9th Circuit Rulings

Wednesday, September 22nd, 2010

The growing popularity of licensing as a strategic business and legal tool is likely to grow even greater as a result of a pair of cases decided one week apart in the federal Ninth Circuit Court of Appeals that broadened the scope of and increased the powers of licenses.

The first Ninth Circuit decision, F.B.T. Productions vs. Aftermath Records, involved a dispute between rap artist Eminem and his record label Aftermath about whether Aftermath’s provision of Eminem’s songs to iTunes was a “sale” or “license” for purposes of a contract drafted in the pre-digital age. The difference was significant, because the agreement provided that the label would pay Eminem royalties of between 12% and 20% of the adjusted retail price of all “full price records sold in the United States… through normal retail channels,” but would pay 50% of its net receipts “[o]n Masters licensed by us… to others for the manufacture and sale of records or for any other uses.” The agreement was signed in 1998, before iTunes was established, and did not further define either “sale” or “license.”

The record label argued among other things that the custom in the recording industry was that the “masters licensed” provision applied only to “compilation records and incorporation into movies, TV shows, and commercials,” and furthermore, that the iTunes download was functionally no different than a purchase of a vinyl record or CD at a record store.

The court rejected that argument, and held that under copyright law, a license is, “an authorization by the copyright owner to enable another party to engage in behavior that would otherwise be the exclusive right of the copyright owner, but without transferring title in those rights.” Because the record label retained ownership of the copyrights for the Eminem songs as well as title to the digital music files that it made available to iTunes in exchange for periodic payments based on the volume of downloads, the transaction was a license, and the higher 50% royalty rate applied.

One week later, in the case of Vernor vs. Autodesk, Inc., the court ruled that most written license agreements will preserve the licensor’s right to prohibit resales not only under the license agreement, but also under the Copyright Act. There the issue was whether Timothy Vernor could sell on eBay outdated copies of Autodesk’s AutoCAD software for a few hundred dollars that normally sell for several thousand dollars per copy when new.

Copyright law confers several exclusive rights on copyright owners, including the exclusive right to reproduce their works and to distribute their works by sale or rental. An important exception to this exclusive right is the so-called “first sale doctrine” codified at Section 109 of the Copyright Act, which says that the, “owner of a particular copy or phonorecord… is entitled without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.” So for example if a publisher sells a book to a bookstore, the bookstore is free to resell it to anyone, and the purchaser is in turn free to sell the same book to anyone on eBay.

Vernor had purchased the AutoCAD software from an architectural firm that had licensed it from Autodesk. The AutoCAD license agreement contained standard provisions prohibiting transfer to or use by any party other than the original licensee, however, it did not require the licensee to return old installation disks. Vernor argued that under prior case law in the Ninth Circuit, since the license did not require the architectural firm to return its copies of the install discs, the firm was an “owner of a particular copy,” which kicked in the first sale doctrine which exempted the firm and any of its purchasers from a copyright infringement claim arising out of resale of the discs. Although the architectural firm had violated its license agreement by reselling the discs, Vernor argued that he had not, because he had neither installed the software nor agreed to any online license agreement before the eBay sales.

After an extensive review of prior case law the appeals court disagreed with Vernor, and held that a software user is a licensee rather than an “owner of a copy” where the copyright owner: 1) specifies that the user is granted a license; 2) significantly restricts the user’s ability to transfer software; and 3) imposes notable use restrictions. Like most well-drafted software license agreements, the Autodesk agreement passed with flying colors, despite the absence of a requirement to return old install discs. Thus, because the architectural firm was a licensee, not an “owner,” then the first sale doctrine did not apply, and Vernor had infringed Autodesk’s exclusive distribution rights in violation of copyright law.

Takeaway: the Eminem case is not expected to have much of a practical impact on the recording industry, because since the time of that agreement, almost all record label agreements deem that provision of songs to iTunes will be treated as a “sale” at a 12% to 25% royalty rate. But when the nature of a copyright transaction is unclear, the Ninth Circuit will presume it is a license rather than a sale where the copyright owner retains control of the copyright, retains title to the media on which the content is delivered (CD, mp3 file, etc.), and receives periodic payments after the original transaction. Vernor says that when a standard license agreement is in place during the original transaction, the copyright owner can use both the license agreement and copyright law to prohibit later resale or disposition of the content. This will encourage copyright owners to cast transactions as licenses rather than sales, and with the proliferation of digital content that can be made easily subject to clickwrap license agreements even after the original point of sale, they will likely succeed in their efforts. So the purchaser of a hard copy of The Girl With the Dragon Tattoo will be able to resell it, because she (and the bookstore before her) took title to the media (book) on which the content was delivered. But she might not be able to resell her e-book version, if she purchases it subject to a standard license agreement at the time of download. One practical effect is that copyright owners will now be able to easily assert that resale of software, digital games, and many other kinds of digital content is a copyright infringement. Please note that these rulings only apply in the Ninth Circuit (California, Oregon, Washington, Nevada, Arizona, Idaho, Montana, Alaska, Hawaii, and Guam), and that other circuits may not follow them.