Intellectual Property | Copyright Infringement | Technology | Software

Overview of Copyright Licensing

Oct 1st, 2017 | By | Category: IP Licensing

Copyright & Trademark Licensing Law Firm.  IP Transactions

breach of IP licensing agreement


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:

  1. International copyright infringement issues
  2. Assignment of rights
  3. Work-for-hire agreements
  4. Copyright ownership disputes
  5. Branding issues
  6. Software Licensing
  7. Intellectual property audits (ex. software audits with BSA | Autodesk | Microsoft | Adobe)
  8. Negotiation of book publishing contracts
  9. Author and agent agreements
  10. Life-story rights
  11. Music and film agreements
  12. Art/gallery agreements
  13. Artist licensing agreements
  14. Photography & image licensing issues
  15. Video game development agreements
  16. Celebrity endorsement contracts
  17. Host & spokesperson agreements
  18. Copyright, Trademark and Publicity clearance
  19. Computer animation
  20. 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 agreementCostello 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.


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We are a business and civil litigation firm with a focus on copyright infringement cases involving illegal movie downloads (torrent cases such as London Has Fallen, ME2 Productions and Malibu Media defense), software audits (ex. Microsoft audits, SPLA, Autodesk audit notification letter, Siemens PLM defense, SIIA, Adobe and Business Software Alliance defense) and other software vendors threatening piracy and infringement. We also handle cases involving internet law, anti-SLAPP, media law, right of publicity, trademarks & domain name infringement, and we have a niche practice area handling California BRE licensing disputes, accusations, subpoena response, statement of issues and investigations. We have offices in San Francisco, Beverly Hills, Newport Beach, San Diego & Phoenix, Arizona and accept federal copyright and trademark cases nationwide. All content on our website is general legal information only and not a substitute for legal advice, and should not be relied upon. Decisions to hire counsel should not be based on advertising alone. Blogs, videos and podcasts are authored by Steve Vondran, Esq. unless otherwise noted. We can be reached at (877) 276-5084.

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