In Butters and ors v BBC Worldwide Ltd and ors, decided on 20 August 2009, the Court held that contractual provisions in a joint venture agreement taken together with termination provisions in a licence of IP rights were void since the effect of those provisions on insolvency was to deprive creditors access to assets and therefore contrary to public policy in the light of insolvency laws.
BUSINESS IMPACT
Kilpatrick Townsend partner David Posner spoke at a recent New York State Bar Association event where he and other panelists discussed the topic “Around the Edges of IP: Complexities of IP in Bankruptcy.”
Mr. Posner provides four key takeaways from his presentation — “Recent Trends Involving Intellectual Property in Bankruptcy:”
Brexit. Trump. The year 2016 can be characterized as one of unpredicted results and impending uncertainty. In June, the UK electorate voted to leave the European Union and in November, a tumultuous presidential campaign in the United States ended in a stunning win by Donald Trump. Businesses throughout the world sought not only to understand the possible implications of these and other major events, but also to take strategic advantage of them.
Bankruptcy presents risks for, among many others, intellectual property (“IP”) licensees. Fortunately, there is a provision in the federal bankruptcy law that is designed to protect IP licensees when a licensor becomes insolvent.
In this exciting age of startups, the market is brimming with opportunities for individuals and entities alike to invest in emerging companies. Today’s rapid rate of technology development justifies investors’ eagerness to take an interest in innovative companies, hoping to find the next “unicorn.” Notwithstanding the fast pace of the tech industry, it remains important for investors to conduct due diligence before kicking funds into any business, especially when bargaining for a security interest or license.
Commercial Litigation
When can you be deprived of costs where you better your Part 36 offer?
Merger and acquisition transactions frequently have included ongoing obligations of the parties to each other. In a recent decision by the Third Circuit Court of Appeals, a trademark licensee in a 1991 acquisition survived an effort by the bankrupt licensor to overturn the license. (In re: Exide Technologies, U.S. Third Circuit Court of Appeals, No. 08-1872 filed June 2, 2010) The case illustrates that the time in which agreements in a merger and acquisition transaction remain at issue can be longer than would be expected.
Section 365(n) of the Bankruptcy Code provides offers substantial protection for licensees when a licensor files for bankruptcy. In a bankruptcy proceeding, a licensor/executor has the option of either accepting and continuing an intellectual property license agreement, or rejecting the license. If an intellectual property license is rejected, a licensee is afforded beneficial options under the Code. The Bankruptcy Code defines “intellectual property” in Section 101 (35A) as a-
The Supreme Court’s 2010-2011 term began in October, and it is expected to conclude by the end of April. We have been monitoring the decisions of our nation’s highest court and you may have already read some of the summaries of the major decisions written by Larkin Hoffman attorneys. This update provides a brief look at some of the cases that have been scheduled for oral argument since our last update in November.
The intersection where IP law meets bankruptcy law poses special challenges to licensees and licensors. Imagine the patent licensor whose debtor licensee intends to assign the licensed patent rights to the licensor's chief competitor. Or consider the trademark licensee whose debtor licensor wants to end the license and sell the trademark to a rival. The resolution of these IP issues may prove vitally important to the parties involved.
Executory Contracts in Bankruptcy