Earlier today, the Supreme Court finally answered the question of whether a trademark licensee is protected when the trademark owner/licensor files a bankruptcy petition and rejects the trademark license in accordance with section 365 of the Bankruptcy Code. To cut to the chase, trademark licensees won.

The Supreme Court’s decision today in Mission Product Holdings, Inc. v. Tempnology LLC resolved longstanding uncertainty at the intersection of trademark and bankruptcy law. In particular, the Court determined whether the rejection of a trademark license in a bankruptcy case deprives the trademark licensee of its rights under the license for which it had likely paid a lot of money.

In prior posts, we discussed the perplexing issue of how and whether a trademark licensee is protected when the trademark owner/licensor files a bankruptcy petition and moves to reject the trademark license in accordance with section 365 of the Bankruptcy Code.

The Bankruptcy Code gives special protections to licensees of intellectual property when a debtor, as licensor, seeks to reject the license. However, the Bankruptcy Code does not include trademarks in its definition of “intellectual property.” So, are licensees of trademarks given any protection when debtors reject trademark licenses? If the Supreme Court grants a recent petition for writ of certiorari, we may get an answer.

Certain licensees of intellectual property are expressly given expanded rights when their licensors file bankruptcy. But what about trademark licensees? Trademarks are not among the defined categories of “intellectual property” for bankruptcy purposes. Nonetheless, are trademark licensees otherwise protected in a licensor bankruptcy? Unfortunately for these licensees, a recent circuit court decision put the brakes on attempts to expand protection to licensees of trademarks.

In 1988, Congress added section 365(n) to the Bankruptcy Code to provide special protections for licensees of intellectual property upon a debtor’s rejection of an intellectual property license agreement. Whether trademarks are within the ambit of section 365(n) protection, though, is open to question.

Section 365(c)(1) of the Bankruptcy Code limits a debtor’s ability to assume or assign a contract where “applicable law” excuses a non-debtor counterparty from accepting performance from a third party.  Circuits currently are split on whether this section prohibits a debtor from assuming an intellectual property license without the consent of the

As previously discussed here and 

The equitable theory of veil piercing, intended to serve as a rectifying mechanism against certain fraud, dishonesty or wrongdoing, is of particular import in the bankruptcy context given that it is an attractive remedy for a creditor of an insolvent company hoping to obtain a greater recovery on its claim. State law governs veil piercing claims and sets forth the hurdles a party must overcome in order to persuade the bankruptcy court that the debtor’s corporate formalities should be ignored.

In 1988, Congress added section 365(n) to the Bankruptcy Code, which grants some intellectual property licensees the right to continued use of licensed property notwithstanding rejection of the underlying executory license agreement by a debtor or bankruptcy trustee. The addition came three years after the Fourth Circuit Court of Appeals ruled in Lubrizol Enters., Inc. v. Richmond Metal Finishers, Inc., 756 F.2d 1043 (4th Cir. 1985), that if a debtor rejects an executory intellectual property license, the licensee loses the right to use any licensed copyrights, trademarks, and patents.