Copyright & Trademark Licensing Law Firm. IP Transactions
Vondran Legal can assist clients with acquiring and licensing copyrights, and also enforcing and defending contractual rights. This blog discusses our services in this area. We have extensive litigation experience in both the state and federal courts, including having litigated software infringement disputes, copyright infringement matters, illegal movie download cases (torrent defense) and right of publicity.
Our Legal Services
We can help in the following areas:
- International copyright infringement issues
- Assignment of rights
- Work-for-hire agreements
- Copyright ownership disputes
- Branding issues
- Software Licensing
- Intellectual property audits (ex. software audits with BSA | Autodesk | Microsoft | Adobe)
- Negotiation of book publishing contracts
- Author and agent agreements
- Life-story rights
- Music and film agreements
- Art/gallery agreements
- Artist licensing agreements
- Photography & image licensing issues
- Video game development agreements
- Celebrity endorsement contracts
- Host & spokesperson agreements
- Copyright, Trademark and Publicity clearance
- Computer animation
- Sports merchandise licensing
How to license your copyrighted work
If you are seeking to license copyright, trademark or publicity rights, you will want to embody your agreement in a written contract. You will want to take time to make sure you are addressing all potential contingencies and you want to make sure you are negotiating the best deal possible and to make sure you contract contains the essential terms and conditions. We can help with your business contract needs.
What constitutes a breach of the licensing agreement?
Here is some language pulled from a case from the ninth circuit:
“Rano argues that Sipa materially breached the licensing agreement and that the breach gave him the right to terminate the agreement. Although licensing agreements are not terminable at will, under federal and state law a material breach of a licensing agreement gives rise to a right of rescission which allows the nonbreaching party to terminate the agreement. Costello Publishing Co. v. Rotelle, 670 F.2d 1035, 1045 (D.C.Cir.1981); 3 Nimmer § 10.15[A] at 112. After the agreement is terminated, any further distribution would constitute copyright infringement. Costello, 670 F.2d at 1045. Here, it is clear that Rano attempted to rescind the agreement. The question is whether he had the right to rescind. A breach will justify rescission of a licensing agreement only when it is “of so material and substantial a nature that it affects the very essence of the contract and serve[s] to defeat the object of the parties. The breach must constitute] a total failure in the performance of the contract.” Affiliated Hospital Products, 513 F.2d at 1186; Nolan v. Williamson Music, Inc., 300 F.Supp. 1311, 1317 (S.D.N.Y.1969), aff'd sub. nom. Nolan v. Sam Fox Publishing Co., 499 F.2d 1394 (2d Cir.1974); 3 Nimmer § 10.15[A] at 116–18.”
See Rano v. Sipa Press, Inc., 987 F.2d 580, 586 (9th Cir. 1993), as amended (Mar. 24, 1993)
In another case, the Court discussed:
“On remand the district court must determine whether Talbot Press materially breached the licensing agreement or failed to satisfy a condition to the license. If Talbot Press' conduct merely constituted an immaterial breach of contract and, in addition, that breach was not a failure to satisfy a condition to the license, then the Episcopal Conferences would only have a cause of action for breach of contract and Talbot Press would be an indispensable party. 3 Nimmer s 10.15 However, if Talbot Press failed to satisfy a condition to the license, any use by the licensee or its assignee would constitute an infringement of copyright and defendant-intervenors could elect to pursue a remedy for infringement rather than breach of contract. 3 Nimmer s 10.15.”
“In addition, even if the counterclaims asserted merely constitute a breach of contract, an action for copyright infringement would lie if the breach is so material that it allows the grantor power to recapture the rights granted so that any further use of the work was without authority. It is established that even without an express reversion clause, the power to recapture may be exercised if a breach of contract is so material as to create a right of rescission in the grantor. Nolan v. Sam Fox Publishing Co., 499 F.2d 1394 (2d Cir. 1974); Nolan v. Williamson Music, Inc., 300 F.Supp. 1311 (S.D.N.Y.1969), aff'd sub nom Nolan v. Sam Fox Publishing Co., 499 F.2d 1394 (2d Cir. 1974).”
See Costello Pub. Co. v. Rotelle, 670 F.2d 1035, 1045 (D.C. Cir. 1981). Before you determine whether you can stop performing or rescind a license agreement, or sue for a breach of the licensing agreement, it is wise to have legal counsel review your case.
Contact a IP law firm
If you are in need of IP legal Counsel to help with copyright or trademark licensing issues, call us at (877) 276-5084 to discuss your needs. Unlike most “Biglaw” IP firms, we are usually able to fix a LOW FLAT RATE FEE (as opposed to having three attorneys assigned to your case who are incentivized to “bill hourly” on your case which has been known to drive up legal fees. Before you enter into an arrangement like that, call us to get a quote on our services. We are a unique law firm that prides itself in customer services, quality legal work, and affordable access to counsel.