All Bark, No Bite: An Analysis of IP Contractual Terms That Are Unenforceable or Result in Unintended Consequences
Organizing Committee: IP Licensing
Monday, 18 September
4:00PM – 5:30PM
Many business agreements contain provisions that transfer or modify the parties’ rights in intellectual property assets. Common IP-related contracts include assignments, licenses, joint development agreements, nondisclosure and confidentiality agreements, and other commercial agreements. These instruments raise important issues because they are negotiated and performed at the intersection of multiple bodies of law. The interpretation and enforceability of a contractual provision affecting IP rights can be affected by substantive intellectual property law, general contract law principles, or rules from other areas of law, such as bankruptcy, antitrust, and freedom of expression. As a result, provisions in licenses and other contracts involving intellectual property rights sometimes prove to be unenforceable or are interpreted in ways that the parties did not expect.
This program will explore common provisions which are “all bark and no bite:” Parties may insert them into agreements affecting IP rights. But the provisions may have unforeseen consequences or, in some cases, may be unenforceable at all. These provisions commonly appear in a variety of IP-related agreements, including licenses, joint development agreements, assignments, and nondisclosure agreements. “All bark” provisions can affect all forms of IP rights, including patents, copyrights, and trademarks.
A panel of experienced licensing practitioners will identify a number of contract provisions to be aware of, including:
- Identification of IP rights
- Exclusivity and Standing
- No challenge clauses
- Patent exhaustion
- Patent marking
- Bankruptcy
- Antitrust concerns
- “Most favored” licensee terms
The panel will also discuss possible strategies for addressing some of these complicated provisions to help prevent surprises in your IP-related agreements.
Written by the panelists and David Berry, Brooks Kushman P.C.
David is a member of IPO’s IP Licensing Committee.
The Right of Publicity and Social Media
Trademark/Copyright General Session
Monday, 18 September
9:00AM-10:15AM
The Right of Publicity is a mechanism for protecting the name, voice, image, likeness, signature, or photograph of a particular person that has been around since the mid-1900s. However, with the advent of the Internet, and more specifically, social media, the Right of Publicity has become an area fraught with potential missteps, many of which are actionable under state statute, or sometimes under common law, with an erratic treatment depending on the state in the US where the acts occurred.
For those who are unfamiliar with the concept, the Right of Publicity has its roots in the protection of a celebrity’s name, likeness, and image, in contrast to the Right to Privacy, which protects an average citizen’s right to be left alone and free from “intrusion upon seclusion.” However, in our modern world, the Right of Publicity applies to virtually everyone, since images can be produced, reproduced, posted, shared, etc. in seconds, and the audience for same can reach the millions shortly thereafter.
The Right of Publicity is often misunderstood, at best, and more frequently than not, completely ignored. For example, a company may wish to use an image of a celebrity from the “Golden Age of Hollywood” who has been deceased for decades. The company may purchase the copyright to a photograph that features that celebrity, all the while thinking that it is now free to use the image in an advertising campaign, or at the very least, post the image on its social media page with a whimsical line or two about how lovely that person was, or how the star changed fashion with his or her impeccable sense of style. The danger in this thinking is that although the company likely will not face any copyright infringement claim, many states have Right of Publicity laws that protect celebrities who have passed, even decades before, with such protection lasting up to 100 years post-mortem. In addition, there may be trademark violations (not discussed in detail here) that pertain to the star and/or the clothing items, or even background objects, buildings and signs portrayed in that photograph.
The largest danger of this Right of Publicity / social media cross-over is that any posting on the Internet or via a smartphone app will result in a cause of action in every single state in the US that has a Right of Publicity statute or common law protection. This leaves the door open for forum shopping to obtain the most favorable result and the greatest amount of damages from the unsuspecting, and often well-meaning company, who likely believed that proper rights clearance was achieved through purchase of the copyright to the photograph.
However, there are other dangers in that Right of Publicity issues can arise even in the case where a company obtains a release from the person featured in the photograph, ad or video, if the subsequent use exceeds the scope of consent. Another issue is the advent of photo-retouching software that often leads to “he said, she said” arguments about whether the complainant is or is not the person featured in the photograph, ad or video. In addition, the periodic purging of company documents and electronic data migration can lead to situations where the release has been destroyed or proofs from a photoshoot are re-dated with a decades newer date, and so on. In short, the amorphous nature of the various state laws concerning the Right of Publicity lead to an extremely fact-intensive, case-by-case analysis of each situation. The good news is that there are certain guidelines and steps that companies can take to minimize Right of Publicity risks that will be featured in IPO’s Annual Meeting general session on Monday, 18 September at 9:00am.
Written by Lynne M.J. Boisineau, McDermott Will & Emery LLP
She is a member of IPO’s Domain Names & Social Media Committee
