I recently spoke at a CLE at my firm about how to successfully draft key provisions in an intellectual property license and negotiate them. Here is an edited transcript that I post in two pieces. In this first one I offer suggestions about drafting warranties, indemnities and limitations of liability and I also provider some drafting tips.
January 28, 2013
January 21, 2013
Andrew, joined by his colleagues Mark Grossman and Don Prutzman, will speak at the firm on Thursday morning January 24, 2013, on the art of the deal: how to negotiate intellectual property and technology transactions. The seminar will examine the difficult legal and business issues that often arise in software, copyright and trademark licenses, cloud computing and technology agreements.
March 14, 2012
I this week did a licensing program with Rand Brenner, President & CEO at Licensing Consulting Group. Rand is a licensing expert assisting clients in the acquisition and sales of licensing rights. His recent assignments include acquiring licensing rights for clients to several national brands including Major League Baseball, The NFL and NCAA Football.
At the program I discussed ten considerations the parties to a license agreement should keep in mind when negotiating it.
February 13, 2012
Thinking about outsourcing? Take a deep breadth and you may want sit down till the thought passes. Many outsourcing arrangements fail for a variety of reasons and even when they succeed the costs incurred may be more than the costs saved.
One of the biggest risks is protecting your intellectual property (“IP”) when it is outsourced. There are no silver bullets that will guarantee protection.
December 13, 2011
Introduction by Andrew Berger
Negotiating tech deals is a bit like trying to navigate through uncharted waters. There are no statutes or regulations to guide the voyage. Instead as my colleague Mark Grossman in his guest post explains below, negotiating a tech deal requires an understanding of unwritten industry norms. Armed with that understanding, you can push in those areas where you may have an impact and, as Mark aptly says “choreographing your concessions around areas where you’re not likely to win the battle anyway.”
Mark explains a number of invaluable “How Tos,” including how to draft a warranty to protect against the unexpected; how to protect against a loss when the unexpected occurs; how to limit the limitations on liability and how to avoid the tendency to see the deal’s starting point as the vendor’s form.
April 27, 2011
The Advanced IP Forum for Advertising Counsel will take place in NY from April 27-29. The program offers an impressive list of speakers from the content and media industries. Andrew will moderate a panel at this Forum on April 28. The program brochure is here
The April 28 panel will focus on combating IP infringement on the internet.
February 23, 2011
Cornell Entrepreneurial Network Webinar on February 23: How to Brand, License and Protect your Intellectual Property
Andrew will be speaking at a one-hour webinar sponsored by the Cornell Entrepreneurial Network on February 23 about how to brand, license and protect your intellectual property. The webinar will cover:
• How can I transform my idea into a brand?
• What kinds of market strategies work best in the physical and digital worlds?
• How can I license my brand in various media: online, print, web, Facebook and more?
June 10, 2010
I am happy to post here an outline of an excellent talk about software licensing Marc Temin delivered to our Copyright Subcommittee of the IP Litigation Committee of the Litigation Section of the ABA last month.
The outline is clear and comprehensive covering:
the differences between commercial and software licensing;
licensing grant alternatives (grants with conditions, covenants and implied grants);
the first sale doctrine that we will hear much more about when the Supreme Court next term considers Costco v.
May 20, 2010
Random House has now apparently reversed course with respect to electronic rights to William Styron’s earlier works. A decade ago Random House claimed it had ebook rights to those works. But Random House, Inc. v. Rosetta Books LLC, 150 F.Supp.2d 613 (S.D.N.Y. 2001), aff’d, 283 F.3d 490 (2d Cir. 2002), held otherwise. Judge Stein found that Random House’s license agreements with Styron, giving Random the right to “print, publish, and sell” Styron’s older works “in book form,” did not give the publisher the right to distribute these works as ebooks.
May 18, 2010
Andrew moderated a panel discussion sponsored by the Copyright Society of the U.S.A entitled Licensing in the Digital Age – Deals, Risks, and Challenges in the Media Frenzy. The program took place at Anchin Block & Anchin on May 18 beginning at 6 pm. The other panelists where Joe Salvo, Senior Vice President and Global General Counsel at HIT Entertainment, Jonathan Wells, the bureau chief of the NY office of Paris-based SIPA Press and Mary Beth Roberts, a music publisher.