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Intellectual Property Audit
Licensing Intellectual Property
Sometimes a business deal requires sharing intellectual property (IP) with outside business partners, whether in the context of a joint venture or strategic alliance or simply when working with vendors and suppliers. In these situations, we often use licensing agreements granting the other party the right to use specified intellectual property, i.e., patents, trademarks, copyrights, and/or trade secrets. However, when you grant another party a license to use your IP, the agreement must also protect your valuable intellectual property rights by maintaining your ownership and control over that IP.
When might your business need a licensing agreement?
Licensing agreements may be warranted in a variety of circumstances, but here are a few common scenarios:
When your business has worked hard to build its brand, that brand becomes incredibly valuable. And when a business deal calls for licensing your trademark to another party, then it’s credibly important for the licensing agreement to contain key provisions. If not, you run the risk of harming your brand’s reputation or even losing your trademark rights.
Any trademark licensing agreement should clearly identify:
It’s also important to confirm that the trademark is registered in the licensor’s name (or that registration applications have been submitted) in all of the jurisdictions where the trademark will be used and for all of the goods and services covered by the licensing agreement.
Maintaining control over your business’s trademarks is incredibly important for maintaining your trademark rights. You can significantly weaken and even lose your trademark rights if the trademark is not used consistently (i.e., changes to the spelling, font, logo, color, etc.). Licensing agreements should carefully dictate how your company’s trademarks are used. Typically, a licensing agreement will require that the trademark be used:
Similarly, your business might license copyrighted material to other parties. For example, a consultant might allow another party to use their content in a non-commercial, educational context. Or an author might partner with another to make a derivative version of their work in a different format. Depending on the situation, we might use a short permission letter, incorporate licensing terms into a broader business agreement, or negotiate a more complex licensing deal.
With any copyright licensing, it is important to confirm who actually owns the copyright (and thus has the right to give others permission to use the material in question) and that the material doesn’t incorporate works that are actually owned by third parties (unless, of course, those third parties have given their permission to use their copyrighted material).
Copyright licenses can also be recorded with the U.S. Copyright Office. Recordation is not required, but it can provide certain benefits. In situations where the copyright has been transferred or licensed multiple times, often with conflicting permissions granted, recordation can help to determine which transfer of rights has priority over the others. However, a written agreement evidencing a non-exclusive license will generally take precedence over a later recorded transfer of copyright ownership. Recordation creates a clear public record, which can minimize some of this confusion later.
IP Licensing Agreement: $4,275
Add HIPPA Business Associates Agreement: +$1,100
Review and Redline: $2,150
Publicity Waiver and Release / Model Release: $575
These short-form agreements may be appropriate when you need permission to use someone else’s name, image, or likeness.