A “license” has been defined as an agreement to permit someone to do that which they could not otherwise do. Any "permission" to use intellectual property rights can be a "license" whether styled as a license, or as a release, contract, agreement or some other appellation. In this sense, a "license" is analogous to a lease of real property -- someone owns the property and grants permission to use the property. Without the permission, the lessee would be a trespasser.
Patents, trademarks, copyrights, trade secrets, know how, personal rights, or combinations may all be subject to licensing. Barnes & Thornburg LLP has experience spanning many industries and legal fields. Licensing may be a component in other business arrangements including joint research, joint ventures, settlements of litigation, contracting and subcontracting.
In examining and counseling clients on license features, from defining the subject licensed, weighing the appropriate consideration for the license, evaluating the competitive and business environment presented by exclusivity and planning for cases of license termination, we can work with our clients to extract value from their intellectual property and obtain appropriate rights in other cases where the intellectual property is owned by others. Such “cross-licensing” can be advantageous in some situations.
We have assisted clients in licensing transactions involving a wide variety of products:
- Creative works and rights
- Books and maps
- Musical compositions and recordings
- Designs
- Photographs
- Sculptures, painting and fine arts
- Films
- Rights of publicity
- Publishing agreements
Manufacturing- Railroad products and services
- Industrial equipment
- Beverage making equipment
- Consumer products
- Sports products
- Furniture and furniture components
- Chemical and plastics
- Manufacturing methods
- Technology transfer agreements
Business and Financial- Stock market trading
- Banking
- Business methods
- Franchise agreements including trademark licenses
- Physician office management
- Electronic medical records
- Teleradiology
- Medical transcription
- Biotechnology
- Software
- Health information systems
Information Technology- Databases
- E-commerce
- Bioinformatics
- Software development
- Web site development and operation
Within the IP department, Barnes & Thornburg LLP brings to bear familiarity with a number of complementary legal disciplines:
- Patent, trademark and copyright law
- Rights of publicity and privacy
- Advertising and consumer protection
- Antitrust and competitive concerns
- Litigation, negotiation and alternative dispute resolution when necessary