IP Licenses in Bankruptcy: Strategies for Licensees and Licensors to Protect IP Interests Under the Code

Recording of a 90-minute premium CLE webinar with Q&A


Conducted on Thursday, September 10, 2020

Recorded event now available

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Program Materials

This CLE webinar will guide IP licensor, licensee, and bankruptcy counsel on the impact of the Bankruptcy Code on IP license agreements. The panel will examine the Supreme Court's decision addressing trademark licenses in bankruptcy. The panel will analyze the issues from all perspectives and outline best practices for addressing IP licenses in bankruptcy proceedings.

Description

When Congress codified the Bankruptcy Code Section 365(n), it defined intellectual property in 101(35) to include patents, trade secrets, and copyrights. It did not specify trademarks, leaving interpretive challenges to the courts.

In 2019, in Mission Products Holdings Inc. v. Tempnology L.L.C., the Supreme Court resolved a circuit split regarding the impact of bankruptcy on trademark licenses. The Court held that a debtor-licensor's rejection of a trademark license agreement does not "deprive the licensee of its rights to use the trademark."

Separately, additional questions have emerged in recent years as to the ability of a debtor-licensee to assume or assign an IP license, and whether or not an IP license is executory and can be rejected by a debtor-licensor.

Listen as our authoritative panel examines the impact of the Bankruptcy Code on IP license agreements and reviews the Supreme Court's opinion in the Tempnology case. The panel will also provide insights for dealing with IP licenses in bankruptcy proceedings.

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Outline

  1. Impact of Bankruptcy Code on IP license agreements (rejection, assumption and assignment, retention of license rights)
  2. Treatment of trademarks
  3. Analysis of definition of executory contract as applied to IP licenses
  4. Debtor as licensor
  5. Mission Product Holdings Inc. v. Tempnology L.L.C. (U.S. 2019)
  6. Debtor as licensee
    1. Ipso facto clauses
    2. Assumption and assignment

Benefits

The panel will review these and other high priority questions:

  • What are the implications of Mission Product Holdings Inc. v. Tempnology for trademark licensees when the licensor becomes a debtor in bankruptcy?
  • What special rights are accorded licensees under Section 365(n) of the Bankruptcy Code?
  • What are the continuing obligations of a debtor-licensor after rejecting a license agreement?
  • Can a debtor licensee assign an IP license over the licensor's objection?

Faculty

Barefoot, Luke
Luke A. Barefoot

Partner
Cleary Gottlieb Steen & Hamilton

Mr. Barefoot’s practice focuses on bankruptcy litigation, insolvency, corporate restructuring and related...  |  Read More

Ilan, Daniel
Daniel Ilan

Partner
Cleary Gottlieb Steen & Hamilton

Mr. Ilan’s practice focuses on intellectual property law, as well as cybersecurity and privacy. He has...  |  Read More

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