Licensing and Domains and ADR Flashcards
Basic contents of license
parties, objective of the parties: scope of license, subject matter of license
Subject matter in IP agreements/licensing
identification of product/process, invention, description of know-how, confidentiality, access to technical advances/cross licensing, limitations of the license and anti-competitive practices, territory, permitted field of use, exploitation, settlement of disputes, duration of contract
What is a tie-in clause
contractual provision requiring buyer to purchase goods or services exclusively from the seller as a condition of contract or exportation
Compensation
direct and indirect
what constitutes direct compensation
lump sum, royalties, fees
what constitutes indirect compensation
income from related operations, dividends, cost-sharing, market information, savings
types of licenses
exclusive, sole, simple, non-exclusive, most favored license
what is an exclusive license
licensee will have no competition
What is a sole license
guarantees licensee that licensor will not give licenses to other manufactures within the contractual territory
What is a simple license
provides no guarantees, just constitutes authorization to use the invention
What is a non-exclusive license
means another license may be granted in the same contractual territory
What is a most favored clause
ensures that the licensee receives terms that are as favorable as those offered by the licensor to any other licensee
Government control of licensing agreements
Some developing countries have legal systems which require industrial property licenses and tech transfer agreements be reported to government authorities. Failure to submit within certain time limits may have legal consequences
Who sues for infringement when there is a license at play
The licensor retains the ability and must sue for alleged infringement. The licensee can sue for infringement, but must initiate lawsuit if the licensor fails to sue or if required by contractual clauses
What does domain name registration protect
prevents another person from registering the same domain name, unless other applicant has grounds to dispute the registration by the original owner
How is domain name registration different from trademark registration
registration of a trademark gives the owner exclusive rights to prevent others from using that mark without the owner’s consent. This is not protected for domain names.
Common disputes regarding domain names
who has right to register domain name first, domain name theft, cybersquatting, passing off domain names, grievance sites
what is domain name theft
where a third party has managed to transfer another person’s domain name to themselves without any entitlement to do so
What is cyberquatting
catch all term describing registration and/or use of a domain name in bad faith
what is passing off domain names
where a registrant registers a domain name that reflects the trading name or branding of a competitor
what is a grievance site
where a disgruntled person registers a domain name containing a complaint’s TM and/or linking to content which is critical of the complainant’s business
Practical measures for domain name disputes
do nothing, cease and desist, offer for purchase, persuade registrant to include link to complainant’s website, approach the internet service provider
Formal Resolution of Disputes
uniform dispute for domain names resolution policy, other ADR, litigation
UDPR complainant must prove:
(1) identical to of confusingly similar with a trademark, service mark, or name which the complainant has rights, (2) registrant doesn’t have a legitimate right, (3) registrant has registered and used domain name in bad faith
in Nominet procedure Complainant must demonstrate:
identical or similar, domain name is an abusive registration, Nominet can order transfer of a .uk domain to a successful complainantE
EUid ADR complainant must show:
.eu domain registered is identical or confusingly similar, holder of domain name has no legitimate interest or using it in bad faith
Advantages of UDRP
quick decisions, no jdxs issues, party can still litigate, cost, temporary stop to transferring domain to a third party
Disadvantages of UDRP
panel not bound by precedent, decisions not binding in court, doesn’t preclude party from subsequently going to court, can’t issue injunctions, can’t order costs or damages
What is Nominet
The nominet dispute resolution service is specifically designed to address disputes involving .uk domain names.
Common disputes arise when someone registers a domain name that a complainant believes infringes on their rights
Advantages of Nominet
speed, “only applies to .uk”, mediation resolves up to 50% of cases, temporary stop to transferring domain to a third party, cost effective
Disadvantages of Nominet
panel not bound by precedent, not binding on court, can subsequently go to court, no injunctions, panel not confidential
Advantages of Litigation
clear cases cybersquatting ends at SJ, binding decision, award injunctions, damages, attys fees …
Disadvantages of Litigation
lengthy, costly and time consuming, choice of law and forum, defendant might be insolvent
two types of startups
IP consuming, and IP generating
Paris Convention mechanism for filing IP
allows for applications in multiple countries and right of priority
