HOW TO USE IN­TEL­LEC­TUAL PROP­ERTY

Inc. (USA) - - LEAD -

DO IT YOUR­SELF.

The main pur­pose of an agree­ment to li­cense in­tel­lec­tual prop­erty is to give en­tre­pre­neur-li­censees per­mis­sion to do what they want and need with that prop­erty. The risk is that if you’re not knowl­edge­able enough to build ap­pro­pri­ate per­mis­sions—re­lated to du­ra­tion and pa­ram­e­ters of use, for ex­am­ple—you’re ask­ing for trou­ble, says Marc P. Misthal, an at­tor­ney and share­holder at Got­tlieb, Rack­man & Reis­man, an IP law firm in New York City. “If you li­cense a pho­to­graph to use on your web­site and brochure, you can­not legally use it on a pro­mo­tional back­pack,” he says, not­ing that such us­age as­sump­tions among li­cens­ing neo­phytes are typ­i­cal. “You can’t forge a good deal un­less you know what you want.”

AGENTS.

A li­cens­ing agent, en­trusted by IP own­ers to make deals, is one con­duit to help your li­cens­ing quest. “These agents know what it takes to se­cure an agree­ment, and they’ll want to see a pro­posal from the po­ten­tial li­censee to eval­u­ate,” says Misthal, adding that re­dos are not un­com­mon. En­trepreneurial clients of Jack Mor­row’s Out of the Box pay both a monthly re­tainer for his ex­per­tise in iden­ti­fy­ing—and pur­su­ing—suit­able li­censes and a com­mis­sion on roy­al­ties for li­censes se­cured. The ROI is that good li­cens­ing agents are more at­tuned to mat­ters that af­fect new­bie li­censees, such as: Would you even be deemed a suit­able can­di­date by the IP owner?

IP ATTORNEYS.

Be­cause of the speci­ficity of IP law, Misthal ad­vises bud­get-minded, li­cense-seek­ing en­trepreneurs to ne­go­ti­ate and work out the bulk of a deal with li­censers and agents. “When you’re nearly ready to sign the li­cense agree­ment, hire an in­tel­lec­tual prop­erty at­tor­ney to re­view the agree­ment and tell you what needs to be added and omit­ted,” he says. Good IP lawyers en­sure that con­tracts spell out who’s re­spon­si­ble for what, and ad­dress top­ics such as ex­clu­siv­ity, dis­putes, and even ju­ris­dic­tion and venue in case of a law­suit. Once you know the is­sues that need to be fixed, you can again hire the IP at­tor­ney to re­vise the con­tract. But many busi­nesses don’t re­al­ize they need a writ­ten agree­ment. One com­pany hired Misthal’s firm af­ter it had used, with­out a li­cens­ing deal, a pho­to­graph lifted from a web­site, and the agency rep­re­sent­ing the pho­tog­ra­pher sent a bill. “En­trepreneurs like us­ing stuff for free, and li­censers are onto them,” says Misthal.

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