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Licensing of Intellectual Property
Incisive Media, Pages: 1,000
VOLUME ONE
CHAPTER 1
Introduction to Licensing
§1.01 What Is Licensing?
[1] Types of Licensing Agreements
[2] Requirements for Effective Licensing Agreements
[3] Nature of Rights and Unlicensable Rights
§1.02 Innovation and Licensing in a Worldwide Marketplace
[1] Two Paradigms of Intellectual Property Law
[2] Innovation in the International Marketplace
§1.03 Business Advantages of Licensing
[1] “Leveraging” Resources
[2] Broadening Geographic Markets
[3] Broadening Product Markets
[4] Obtaining Early Market Entry
[5] Increasing Market Penetration Through Complementary Products
[6] Obtaining Additional Revenue
[7] Technology “Barter”
[8] Enhancing Reputation and Goodwill
[9] Controlling Exploitation
§1.04 Business Disadvantages of Licensing
[1] Loss of Control Over Exploitation
[2] Loss of Contact with Customers
[3] Loss of Incentive for Expansion
[4] Loss of Incentive for Vertical Integration
[5] Loss of New Business Opportunities
[6] Dependence on Others for Revenue
[7] Risk of Piracy
[8] Loss of Technological “Edge”
[9] Loss of Public Recognition
§1.05 The Subject Matter of Licensing: Bundles of Intangibles
[1] “Bundles of Rights” in Intellectual Property
[2] Combining Bundles of Rights
§1.06 The Law Governing Intellectual Property Licenses
[1] Licenses as Contracts Under State Law
[2] Supervening Federal Policy
CHAPTER 2
Invalid Intellectual Property
§2.01 Introduction
§2.02 Licensee's Right to Repudiate the License Agreement
[1] Licensee Estoppel and No-Contest Clauses
[2] Repudiation of Licenses for Reasons Unrelated to Intellectual Property
§2.03 Licensee's Right to Recover Royalties Already Paid for Rights Under Invalid Patent
[1] Recovery of Royalties Already Paid for Licenses Under Invalid Patents: The General Rule
[2] Challenges to Patent Validity Brought by Third Parties
[3] Involuntary Escrow and the Right to Interim Royalties
§2.04 Refusing to Take a “License” Under Invalid Intellectual Property
[1] Threshold Requirements for a Successful Antitrust Claim: Objective Baselessness and Bad Faith
[2] Other Elements of the Antitrust Offense
[3] Legal Relief
[4] Procedure: A Compulsory Counterclaim?
§2.05 Third-Party Causes of Action
[1] Contributory Infringement
[2] Unjust Enrichment
[3] Interference with Contract
[4] Interference with Business Relations or Prospective Economic Advantage
CHAPTER 3
Involuntary Licensing
§3.01 Introduction
§3.02 The Strength of Exclusivity: Refusal to License and Patent Suppression
[1] Property, Exclusivity and the Free Market
[2] Refusal to License Patents
[3] Refusal to Grant Nonpatent Licenses
[4] Patent Suppression
[5] General Limitations
§3.03 Statutory Compulsory Licensing
[1] Compulsory Licensing Laws Abroad
[2] Compulsory Licensing in the United States
[3] The Collective-Work Publisher's Privilege
§3.04 Implied Licenses
[1] The General Standard for Implied Licenses
[2] Implied Licenses and Most-Favored Licensee Clauses
[3] Sale of Nonstaple Components
[4] Use of Purchased Items in Patented Method or Process
[5] Authorized Modification
[6] After-Acquired Patents
[7] Employed Inventors
[8] Implication of Licenses Under Nonpatent Intellectual Property
§3.05 Equitable “Licenses”: Laches and Estoppel
[1] Laches
[2] Comparing Laches and Estoppel
[3] Estoppel
[4] An Intermediate Defense?
[5] Acquiescence
§3.06 Denial of Injunctive Relief
[1] The Injunction as a Standard Remedy for Infringement
[2] “Compulsory Licensing” Through Denial of Injunctive Relief
[3] The Effect of Denying Injunctive Relief
CHAPTER 4
Royalties and Other Monetary Consideration
§4.01 Introduction: What Is a Royalty?
§4.02 Amount of Royalty
[1] Absence of General Restrictions on Royalty Rate
[2] Antitrust and Contractual Restrictions
[3] Custom and Practice
§4.03 The Royalty Base
[1] Interpretation of Royalty Base Provisions in Patent Licenses
[2] Effect of First-Sale or “Exhaustion” Doctrine on Royalty Base
[3] Royalties on Unpatented Subject Matter
§4.04 Total Sales Royalties
[1] Business Considerations
[2] The Supreme Court's Automatic Radio and Zenith Decisions
[3] Practical Effect of Rule
[4] Future of the Zenith Rule
[5] Expiration of Patents
[6] Nonpatent Licensing
§4.05 Royalty Rate Discrimination
[1] Section 2 of the Clayton Act
[2] Sherman Act Restrictions
[3] Price Discrimination and Intellectual Property
[4] Misuse Doctrine
§4.06 Predatory Pricing
[1] The Concept of Predation: Trading Short-Term Loss for Long-Run Gain
[2] Governing Law
[3] Identifying Predatory Pricing
[4] Predatory Pricing and Intellectual Property
§4.07 Other Consideration
[1] Nonequivalence of Different Forms of Consideration
[2] Characterization of Consideration
CHAPTER 5
A Brief Primer on Antitrust Law and Misuse Doctrine
§5.01 Introduction: The Relevance of Antitrust and Misuse
§5.02 United States Antitrust Law
[1] Goals and Purposes
[2] The Sherman Act
[3] The Clayton Act
[4] Enforcement of United States Antitrust Law
§5.03 Antitrust Law in the European Union
[1] Article 85
[2] Article 86
[3] Enforcement
[4] Negative Clearances, Exemptions, and Comfort Letters
[5] Block Exemptions
§5.04 Misuse Doctrine
[1] Historical Origins of Misuse Doctrine
[2] Patent Misuse, the Antitrust Laws and Purging
[3] Copyright Misuse
[4] The 1988 Patent Misuse Amendments
[5] Analysis and Critique
[6] Misuse of Intellectual Property and Antitrust: A Gradual Reconciliation
VOLUME TWO
CHAPTER 6
The Relationship Between Intellectual Property and Antitrust Law
§6.01 Introduction
§6.02 Basic Principles and Policies
[1] Complementary Goals
[2] Potentially Conflicting Means
§6.03 Failed Approaches to the Patent-Antitrust Interface
[1] The “Scope of Patent Protection” Doctrine
[2] Inherency Theory
§6.04 A Suggested Method of Analysis
[1] The Economic Approach: Optimization and the Problem of Indeterminacy
[2] A Legal Approach: Balancing the Policies Underlying the Law
[3] A Suggested Test for the Validity of Contractual Restraints in Licensing
§6.05 An Analytical Tool Kit
[1] The Primary Mode of Antitrust Analysis—the Rule of Reason for Vertical Nonprice Restraints
[2] Applying Antitrust Analysis to Licensing
[3] Maintaining the Limited Term of Protection
[4] “Naked” Versus “Ancillary” Restraints
[5] Nonpatent Licensing
CHAPTER 7
Common Restrictive Practices in Licensing: An International Overview
§7.01 The “Triage” Approach in the United States, Europe, and Japan
[1] The Triage Approach in the United States
[2] Triage in the European Union
[3] The Triage Approach in Japan
[4] Application of the Triage Approach
§7.02 Restriction on the Sale of Products of Patented Processes
§7.03 Royalties on Unprotected Items
§7.04 Field-of-Use Restraints
§7.05 Restraints on Protected Products After Their First Authorized Sale
§7.06 Tying
[1] In General
[2] Tying Software to Dominant Platforms
§7.07 Mandatory Package Licensing
§7.08 Exclusive Dealing
§7.09 Grantbacks and Back-Licenses
§7.10 Price Fixing
§7.11 Territorial Restraints
[1] The United States
[2] Europe
[3] Japan
CHAPTER 8
Exclusive Licenses
§8.01 The Nature of an “Exclusive License”
[1] The Exclusive Licensor's Rights
[2] Co-Ownership and Exclusive Licenses
§8.02 Recordation of Exclusive Licenses
[1] Patents
[2] Copyrights
[3] Trademarks
[4] Semiconductor Chip Protection
[5] Intellectual Property Protected Under State Law
§8.03 Legality of Exclusive Licensing
[1] Vertical Versus Horizontal Effects
[2] Patent Pools and Cross-Licensing
§8.04 Enforcement of Exclusivity
[1] Enforcement Against Third Parties
[2] Enforcement Against Licensor
§8.05 Acquisition of Exclusivity
[1] Acquisition of Intellectual Property Ownership
[2] Nonexclusive Licensee's Acquisition of Intellectual Property
[3] Nonexclusive Licensee's Veto over Further Licenses
§8.06 Exclusivity and Standing to Sue
[1] Patent Licensee's Standing
[2] Copyright
[3] Mask Works
[4] Trademarks
[5] Trade Secrets
§8.07 Exclusive Licensee's Obligations of Diligence
[1] Implied Obligations
[2] Explicit But General Obligations
[3] Specific Obligations
CHAPTER 9
Most Favored Licensees
§9.01 Introduction
§9.02 More Favorable Terms
[1] Rates, Royalties and Other Terms
[2] “Entire Agreement” Clauses
[3] Retroactivity
[4] Implied Licenses
[5] Evaluating the Package of Consideration
[6] The Purpose of Most-Favored-Licensee Clauses
§9.03 Procedural Triggers
§9.04 Problematic “More Favorable” Terms
[1] Infringement Settlement Licenses
[2] Lump-Sum Conversions and Volume Requirements
[3] Other “More Favorable” Terms
[4] Voluntary Notification
§9.05 Making Most-Favored-Licensee Clauses Work: Author's Comments
[1] Exclusions and Limitations
[2] Acceptance of Entire Agreement
[3] Coordination of Licensing Administration
CHAPTER 10
Allocating the Risks of Infringement
§10.01 Introduction
§10.02 Risks of Third-Party Infringement Claims Against Licensees
[1] The Risk of Infringement of Third-Parties' Rights
[2] Implied Warranties and Indemnities
[3] Business Justification for Covenants to Indemnify or Defend
[4] Interpretation and Enforcement of Indemnities
[5] Legal Consequences of Infringement Indemnities
[6] Common Risk-Sharing Provisions
CHAPTER 11
Special Problems in Licensing
§11.01 Introduction
§11.02 Marking Requirements
[1] Patent Marking
[2] Trademark Marking
[3] Semiconductor Chip Protection
[4] Copyright Marking
[5] Trade Secrets
§11.03 Quality Control in Trade Symbol Licensing
[1] Control Theory
[2] An Overview of Licensing Control Law
[3] Consequences of Failure of Control
[4] The Legal Standard for Control
[5] What Should Licensors Do?
Appendices
Index
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