Intellectual Property, Software, and Information Licensing: Law and Practice, with 2016 Cumulative Supplement

The three authors of this treatise examine the entire fabric of business and business innovation through the lens of licensing.


Successfully identify, acquire, and transfer rights to protected IP through licensing.

As licensing law is created and revised to keep pace with developer and user needs, Intellectual Property, Software, and Information Licensing: Law and Practice provides the information and tools practitioners need to develop comprehensive licensing agreements, rectify existing problems, maximize returns within the legal boundaries, anticipate new concerns, and avoid potential pitfalls. Unlike other licensing treatises, which focus on either license drafting or on the theory of license agreements, this treatise draws from the authors’ wealth of professional expertise to develop a balanced treatment that is both practical and theoretical in its approach.

The treatise offers in-depth coverage of such specialized topics as upstream licensing and Open Source Licenses, bankruptcy issues in licensing, tax concerns in licensing, misuse and antitrust questions in licensing, federal government procurements and licensing, and privacy and information licensing.

Supplement Information

New in the 2016 Supplement:

  • The Brulotte rule that patentees cannot collect royalties beyond the patent term survives, as the Supreme Court in Kimbel v. Marvel Entertainment declines to overrule the bright line and refuses to adopt case-by-case approach based on antitrust law’s rule of reason.

  • The Seventh Circuit held that the sale of the licensee did not constitute an assignment of the patent license agreement in violation of the anti-assignment clause because the agreement failed to include a restriction on who could own or control the licensee.

  • An exclusive licensee had no standing to bring an infringement against its competitor without joining the patentee because the license agreement contained “field of use” restriction and the nunc pro tunc amended agreement eliminating the “field of use” restriction failed to cure the standing problem, as the Federal Circuit held in a case after litigated on the merits.

  • Does an exclusive licensee’s standing change if the licensee receives the license after the patent has expired?

  • Does the licensee in a patent license agreement with foreign law as the choice of law have the burden to inform the district court to apply foreign law in interpreting the contract?

  • The Eighth Circuit held that the licensee’s fraud claim against the licensor survived summary judgment motion in a case of breach of patent license agreement, fraud, and deceptive trade practices claims where the jury awarded $786,000 in contract damages against the licensor.

  • The Second Circuit reinstated the claims brought by the licensee against the licensor for use of the licensed trademarks even though the licensor retained the ownership in the trademark.

  • Trademark licensee who ignored choice of law and forum in litigating a breach of contract action in foreign court was ordered to litigate in New York court.

  • The Eighth Circuit addressed whether an implied license can be limited in scope after the copyrighted work has been delivered.

  • The Delaware Bankruptcy Court ruled that the Debtors are prohibited from assuming or assigning the Trump trademark license agreement, despite the fact that the Debtors had no immediate plans to assign the agreement to a third party, and allowed Trump relief from the automatic stay and to proceed with the action in state court against the Debtors.

  • New questions on the intersection of patent licenses and bankruptcy:  Does section 365(n) cover exclusive distribution agreement of patented products?  Does the section protect the non-debtor party to retain the right to continue to distribute patented products?

  • The Eighth Circuit considered whether a grant of security interest in trademarks, though properly perfected, is subject to bankruptcy trustee’s power to avoid the security interest as a fraudulent transfer.



Bloomberg BNA authors and editors are practicing professionals with insider perspectives and real-life experience. Learn more about this book’s authors and editors.
Xuan-Thao N. Nguyen, B.A., J.D., is the Gerald L. Bepko Chair and Director, Center for Intellectual Property Law and Innovation, Indiana University Robert H. McKinney School of Law, Indianapolis, IN.

Robert W. Gomulkiewicz, B.A., M.A., J.D., is the UW Law Foundation Professor of Law and serves as Faculty Director of the Law, Technology & Arts Group at the University of Washington School of Law, Seattle, WA.

Professor Danielle M. Conway is the seventh dean and first African American to lead The University of Maine School of Law. She assumed her new role on July 1, 2015. Previously,Dean Conway served as the Michael J. Marks Distinguished Professor of Business Law and Director of the Hawai‘i Procurement Institute at the University of Hawai‘i at Mānoa, William S. Richardson School of Law. Over the past 14 years, Conway earned a reputation as an expert in public procurement law, entrepreneurship, and as an advocate for minorities and Indigenous Peoples. She also has more than 20 years of active and reserve duty service with the U.S. Army, and currently serves as a Lieutenant Colonel.

Since 2003, Dean Conway has been of counsel at Alston Hunt Floyd & Ing LLP. She is a graduate of the Stern School of Business at New York University, Howard University School of Law, and earned her LL.M. degree from The George Washington University School of Law. She was the Godfrey Visiting Scholar at the University of Maine School of Law in 2008.


View full tables of contents and read the book’s preface or introduction.