This is a webcast of the live San Francisco session.Why you should attend
Licensing can be used to gain access to intellectual property at a lower cost than developing or purchasing intellectual property assets, and as a way of generating new sources of revenue out of existing intellectual property assets. Companies are increasingly turning to licensing because it offers valuable economic and strategic opportunities. Virtually every business today must confront licensing issues and, therefore, a solid base of knowledge about licensing has never been more important for companies and their counsel. This introductory course will give you an overview of how to negotiate and draft effective license agreements, whether you are the licensor or licensee. Experts in licensing will discuss different kinds of licensing agreements, and the business and legal issues related to them.
What you will learn
- Negotiating tips and effective drafting techniques
- Fundamentals of a copyright license
- Key provisions and practical considerations in trademark licensing
- Important differences between patent and other technology licenses
- Understanding software and open source licenses
- Rights of publicity and entertainment licensing
- Drafting considerations related to protection and enforcement of rights internationally
- Addressing antitrust issues in licensing
- Treatment of IP licenses under bankruptcy law
- How licensing can generate new revenue
- Hear from a litigator about what happens when the agreement has to be enforced
Special Features
- Earn one hour of Ethics credit
- Instructive mock negotiation of a license agreement
Who should attend
General practitioners, intellectual property specialists, corporate counsel and others who need to know the basics of how to license and protect their intellectual property.
PLI Group Discounts
Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.
PLI Can Arrange Group Viewing to Your Firm
Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.
Cancellations
All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.
All times are P.S.T.
Day One: 9:00 a.m. - 5:00 p.m. (P.S.T.)
Morning Session: 9:00 a.m. - 12:30 p.m. (P.S.T.)
9:00 Introduction
Joseph Yang
9:15 Trademark Licensing
- Rationale for licensing
- Fundamentals of a trademark license
- Key provisions and practical considerations
Sally M. Abel
10:15 Copyright Licensing
- Rationale for licensing
- Fundamentals of a copyright license
- Key provisions and practical considerations
- Creative Commons licenses
Cydney A. Tune
11:15 Networking Break
11:30 Rights of Publicity and Entertainment Licensing
- Rights of publicity
- Celebrity licensing
- Television and movie licensing
- Special issues for user-generated content and the Internet
Kristina Dinerman, Bryan Thompson
12:30 Lunch
Afternoon Session: 1:45 p.m. - 5:00 p.m. (P.S.T.)
1:45 Patent and Technology Licensing
- Standard clauses and variations
- Important differences between patent and other technology licenses
- Defining the license scope (including fields of use and territorial limits)
- Negotiating compensation (royalties, milestone payments, license fees, etc.)
- Representations, warranties, and indemnities
- Sub-licensing rights
- Handling patent licensing issues in the context of joint development and software integration projects, including rights to improvements
- Rights and responsibilities for filing, prosecution, maintenance, defense and enforcement of patent rights
Joseph Yang
2:45 Software Licensing and Open Source Licenses
- Source code versus object code licenses
- Representations, warranties, indemnities and audit rights
- Key open source licensing concepts and terms
- License and open source compliance strategies
A. Clifford Allen, Alan Stern
3:45 Networking Break
4:00 Ethical Issues in Licensing
- Candor and deceit
- Communicating with an adverse party
- Out-of-state practice and the unauthorized practice of law
- Competence to handle negotiation
- Application of rules in actual cases
Merri A. Baldwin
5:00 Adjourn
Day Two: 9:00 a.m. - 4:45 p.m. (P.S.T.)
Morning Session: 9:00 a.m. - 12:15 p.m. (P.S.T.)
9:00 International Considerations in Licensing
- How to approach the licensing of IP on a worldwide scale
- Dealing with issues that specifically impact licenses with foreign entities
- Drafting considerations related to protection and enforcement of rights
Robert Stankey
10:00 Antitrust Issues in Licensing
- Applicable antitrust standard: per se violations versus rule of reason
- Distinguishing between horizontal and vertical licenses
- Particular restrictions in IP licenses
- Differences between the application of U.S. and EU antitrust laws to IP licenses
Jose A. Esteves
11:00 Networking Break
11:15 Bankruptcy Issues in Licensing
- Treatment of IP and IP licenses under bankruptcy law
- Consequences of your licensor, or licensee, going bankrupt
- Structuring IP transactions to take into account bankruptcy risk
- Negotiating tips to address the bankruptcy contingency
- Preserving IP rights in the face of bankruptcy
Lillian Stenfeldt
12:15 Lunch
Afternoon Session: 1:30 p.m. - 4:45 p.m. (P.S.T.)
1:30 Drafting for Litigation
- Hear from a litigator about what happens when the agreement has to be enforced
- How to draft boilerplate for the litigators
- A litigator’s perspective on negotiating several common license provisions
Ira Jay Levy
2:30 Regulatory and Government Issues in IP Licensing
- Export control: ITAR, EAR, anti-boycott statutes, and regulated industries
- Licensing IP from the government: required clauses, enforcement, march-in rights, and traps for the unwary
- Licensing IP to the government: marking, monitoring, minimum rights, open source issues and remedies for infringement
- Impact of government preferences on licensing: domestic manufacture, offshore R&D, and open source requirements at the state and federal levels
David S. Bloch, James G. McEwen
3:30 Networking Break
3:45 All Locations
Mock Negotiation of a License Agreement
- Putting it all together; a simulated negotiation of a license agreement
- Drafting techniques and suggestions for specific clauses
- Explanation of the “real world” relevance of license provisions
- Pointers on negotiation techniques to develop compromises
- Identification of typical business terms
Valerie Alabanza-Cary, Matthew K. Miller, Karen Y. Spencer
4:45 Adjourn
Chairperson(s)
Speaker(s)
Karen Y. Spencer ~ Global Counsel, Intellectual Property -Transactions & Licensing, Nike, Inc.
Alan Stern ~ Senior Corporate Counsel - Acquisitions, Investments & Alliances, Cisco Systems, Inc.
Program Attorney(s)
PLI makes every effort to accredit its Live Webcasts. Please check the CLE Calculator above for CLE information specific to your state.
PLI's Live Webcasts are approved for MCLE credit (
unless otherwise noted in the product description) in the following states/territories: Alabama, Alaska, Arkansas, California, Colorado, Delaware, Florida, Georgia, Hawaii, Idaho*, Illinois, Indiana
1, Iowa*, Kansas*, Kentucky*, Louisiana, Maine*, Minnesota, Mississippi, Missouri, Montana, Nebraska, North Carolina, North Dakota, New Hampshire*, New Jersey, New Mexico, Nevada, New York
2, Ohio
3, Oklahoma, Oregon*, Pennsylvania
4, Rhode Island, South Carolina, Tennessee, Texas, Utah, Vermont, Virginia
5, Virgin Islands, Washington, West Virginia, Wisconsin, and Wyoming*.
*PLI will apply for credit upon request.
Arizona: The State Bar of Arizona does not approve or accredit CLE activities for the Mandatory Continuing Legal Education requirement.
Arkansas and Oklahoma: Audio-only live webcasts are not approved for credit.
1Indiana: Considered a distance education course. There is a 6 credit limit per year.
2New York: Newly admitted attorneys may not take non-transitional course formats such as on-demand audio or video programs or live webcasts for CLE credit. Newly admitted attorneys not practicing law in the United States, however, may earn 12 transitional credits in non-traditional formats.
3Ohio: To confirm that the live webcast has been approved, please refer to the list of Ohio’s Approved Self Study Activities at http://www.sconet.state.oh.us. Online programs are considered self-study. Ohio attorneys have a 6 credit self-study limit per biennial compliance period. The Ohio CLE Board states that attorneys must have a 100% success rate in clicking on timestamps to receive ANY CLE credit for an online program.
4 Pennsylvania: A live webcast may be viewed individually or in a group setting. Credit may be granted to an attorney who views a live webcast individually. There is a 4.0 credit limit per year for this type of viewing. A live webcast viewed in a group setting receives live participatory credit if the program is open to the public and advertised at least 30 days prior to the program. Live webcasts viewed in a group setting that do not advertise at least 30 days prior the program will be considered "in-house", and therefore denied credit.
5Virginia: All distance learning courses are to be done in an educational setting, free from distractions.
Running time and CLE credit hours are not necessarily the same. Please be aware that many states do not permit credit for luncheon and keynote speakers.
Note that some states limit the number of credit hours attorneys may claim for online CLE activities, and state rules vary with regard to whether online CLE activities qualify for participatory or self-study credits. For more information, refer to your state CLE website or call Customer Service at (800) 260-4PLI (4754) or email: info@pli.edu.
If you have already received credit for attending some or the entire program, please be aware that state administrators do not permit you to accrue additional credit for repeat viewing even if an additional credit certificate is subsequently issued.