The Ins and Outs of Licensing:
Getting Access to Technology and Resources You Need, and Monetizing Your Own Underutilized Business Assets
We all deal with licenses in the everyday world including driver’s licenses, hunting and fishing licenses, professional licenses, business licenses, alcohol licenses, firearms’ licenses and the like. These typically are granted by the state or city and give you the right to drive, to hunt, to fish, practice a profession, or run a business (like a restaurant or food cart), sell alcohol, or carry a firearm.
So a license is really just an agreement or document that gives one person (or company) rights granted by another person (or company).
Business licenses and other business agreements frequently involve rights in intellectual property – patents, trademarks, copyrights, trade secrets, know-how, and such. For example, if you had a huge library of photos and wanted to monetize it, you could license out the entire library or you could license out photos individually for use.
Most people are familiar with software licenses. If you need access to a particular software, you generally don’t purchase the software, but rather you purchase a license to give you the right to use the software on your computer or on your website.
But have you ever tried to read the fine print? It is often a cure for insomnia for the average person. . .
As contracts, it is critical that the terms are correct and convey legally and practically what the parties actually agree(d) upon.
Technology agreements and licenses have significant legal effects and if the agreements are not clear they may end being litigated. Licensing of this type should be done by an attorney with experience in drafting a reviewing license deals. The relatively few dollars you save in legal fees by skimping on the drafting and reviewing of a license or technology agreement will be spent many times over if your agreement ends up being disputed in court. A well-written and carefully reviewed agreement will be less likely to get misinterpreted, and less likely to wind up in court!
Whether you are licensing out your own software, copyrights, trademarks, know-how, invention, or technology, or seeking a licensing that involves acquiring rights from someone else, you should have proper representation. Pinnacle IP can help whether you are a software developer with a new product or need to revise your existing license, or whether you are licensing technology from another company for your own needs.
Some of our recent licensing projects:
Drafted a detailed EULA for a breakthrough Internet software product.
Reviewing and revising license and detailed development agreement for amazing new technology in the biotech field for a small company acquiring development rights.
Drafted IP license to protect client who owned creative content and branding which was licensed to third party manufacturer.
Assisting attorney in the investment management industry with drafting/reviewing license and IP clauses regarding trade secret financial algorithms and related technology licenses for companies in the hedge fund and investment management industry.
Drafted license and manufacturing/supply/distribution agreement that included multi-national aspects for company with intellectual property in the medical marijuana industry.
Drafted a number of licenses for co-marketing and/or co-distribution agreements for a number of products and services in a variety of industries including medical products, apparel industry, foods & nutritional supplements, and others. Industries include equipment leasing, environmental, medical / pharmaceutical, insurance, and software.
Developed strategies for and drafted multiple licenses for established copywriter and marketer for both online and offline activities to substantially protect the copywriting work while maximizing performance-based revenue.