Licensing Agreements

IP and technology licensing

A license is a grant of rights, not a transfer of ownership, and the first job is to say precisely what's being granted. Patents, copyrights, trade secrets, and know-how each license differently, and the agreement has to fix the scope: exclusive, sole, or non-exclusive; the field of use; the territory; whether the licensee can sublicense or improve the work, and who owns those improvements. Patent licenses and assignments are governed by the Patent Act (35 U.S.C. § 261), and a copyright license meant to be exclusive has to be in a signed writing to transfer ownership under 17 U.S.C. § 204. Where the value is in confidential know-how, the license has to carry confidentiality and use restrictions backed by trade-secret law, the federal Defend Trade Secrets Act (18 U.S.C. § 1836) and Washington's Uniform Trade Secrets Act (RCW 19.108), because once a secret is disclosed without protection it can lose its status entirely. We draft the grant clause and the definitions behind it so there's no later argument about what the licensee received and what the owner kept.

Trademark and brand licensing

Licensing a brand carries a duty most licensors don't see coming: control. Under the Lanham Act, a trademark owner who licenses the mark without exercising quality control over the licensee's goods or services grants what courts call a "naked license," and the consequence is severe. The owner can be found to have abandoned the mark entirely (15 U.S.C. §§ 1064, 1127). A brand license that doesn't reserve and actually exercise quality-control rights puts the underlying trademark at risk. We build in approval rights, quality standards, inspection, and the brand-usage guidelines that keep the mark protected, and we draw the line between a trademark license and a franchise, since a license that bundles a mark with a marketing system and a required fee can trigger federal and state franchise registration and disclosure obligations the licensor never intended. Getting that characterization right while drafting avoids a regulatory problem that is expensive to fix later.

Software and SaaS licensing

Software licensing turns on how the product reaches the user and what the vendor promises about it. A traditional software license, a SaaS subscription, and a hosted-services arrangement allocate ownership, uptime, support, and data rights very differently, and the agreement has to match the actual delivery model. We draft end-user license agreements, subscription terms, and master services agreements with the warranty, service-level, and limitation-of-liability provisions that decide who bears the risk when software fails. Open-source components need their own attention: the wrong open-source license inside a proprietary product can force disclosure obligations the company never agreed to, so we review license compatibility and build compliance terms accordingly. We also address source-code escrow, data ownership and privacy, and the anti-circumvention rules under the DMCA (17 U.S.C. § 1201). Where a deal sits at the line between a license and a sale of goods under UCC Article 2 (RCW 62A.2), we make the characterization deliberate rather than accidental, because it changes which warranties and remedies apply by default.

Royalties, payment, and audit rights

The payment terms are where licensing deals quietly succeed or fail. A royalty can be a flat fee, a per-unit amount, a percentage of net sales, or a tiered rate, and each definition has to be airtight, especially "net sales," which is where most royalty disputes start. We draft minimum guarantees, advances, milestone payments, and most-favored-licensee terms where they fit, and we pair them with the reporting and audit rights that let a licensor verify what it's owed rather than take the licensee's word for it. An audit clause without teeth (no inspection right, no records-retention requirement, no cost-shifting when an underpayment is found) is worth little when revenue is actually in question. For cross-border licenses, we coordinate withholding-tax and treaty issues so the royalty that arrives is the royalty that was negotiated. The goal is a payment structure the licensor can actually enforce and the licensee can actually administer.

Term, termination, and post-termination rights

How a license ends matters as much as how it starts, because the rights have to revert cleanly. The agreement sets the term, renewal mechanics, and the grounds for termination (breach, insolvency, failure to meet minimums), and it has to say what happens to inventory, sublicenses, and confidential information afterward. Bankruptcy is a particular trap: when a licensor files, Section 365(n) of the Bankruptcy Code (11 U.S.C. § 365(n)) lets a licensee of intellectual property elect to keep its rights even if the trustee rejects the contract, but only if the license was drafted to capture that protection. A licensee that didn't plan for it can lose access to technology its business depends on. We draft termination, sell-off, and reversion provisions, and the bankruptcy and survival language behind them, so neither side is surprised by what it keeps and what it loses when the relationship ends.