Licensing and Domains and ADR

Question 1

Basic contents of license

Answer 1

parties, objective of the parties: scope of license, subject matter of license

Question 2

Subject matter in IP agreements/licensing

Answer 2

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

Question 3

What is a tie-in clause

Answer 3

contractual provision requiring buyer to purchase goods or services exclusively from the seller as a condition of contract or exportation

Question 4

Compensation

Answer 4

direct and indirect

Question 5

what constitutes direct compensation

Answer 5

lump sum, royalties, fees

Question 6

what constitutes indirect compensation

Answer 6

income from related operations, dividends, cost-sharing, market information, savings

Question 7

types of licenses

Answer 7

exclusive, sole, simple, non-exclusive, most favored license

Question 8

what is an exclusive license

Answer 8

licensee will have no competition

Question 9

What is a sole license

Answer 9

guarantees licensee that licensor will not give licenses to other manufactures within the contractual territory

Question 10

What is a simple license

Answer 10

provides no guarantees, just constitutes authorization to use the invention

Question 11

What is a non-exclusive license

Answer 11

means another license may be granted in the same contractual territory

Question 12

What is a most favored clause

Answer 12

ensures that the licensee receives terms that are as favorable as those offered by the licensor to any other licensee

Question 13

Government control of licensing agreements

Answer 13

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

Question 14

Who sues for infringement when there is a license at play

Answer 14

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

Question 15

What does domain name registration protect

Answer 15

prevents another person from registering the same domain name, unless other applicant has grounds to dispute the registration by the original owner

Question 16

How is domain name registration different from trademark registration

Answer 16

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.

Question 17

Common disputes regarding domain names

Answer 17

who has right to register domain name first, domain name theft, cybersquatting, passing off domain names, grievance sites

Question 18

what is domain name theft

Answer 18

where a third party has managed to transfer another person’s domain name to themselves without any entitlement to do so

Question 19

What is cyberquatting

Answer 19

catch all term describing registration and/or use of a domain name in bad faith

Question 20

what is passing off domain names

Answer 20

where a registrant registers a domain name that reflects the trading name or branding of a competitor

Question 21

what is a grievance site

Answer 21

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

Question 22

Practical measures for domain name disputes

Answer 22

do nothing, cease and desist, offer for purchase, persuade registrant to include link to complainant’s website, approach the internet service provider

Question 23

Formal Resolution of Disputes

Answer 23

uniform dispute for domain names resolution policy, other ADR, litigation

Question 24

UDPR complainant must prove:

Answer 24

(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

Question 25

in Nominet procedure Complainant must demonstrate:

Answer 25

identical or similar, domain name is an abusive registration, Nominet can order transfer of a .uk domain to a successful complainantE

Question 26

EUid ADR complainant must show:

Answer 26

.eu domain registered is identical or confusingly similar, holder of domain name has no legitimate interest or using it in bad faith

Question 27

Advantages of UDRP

Answer 27

quick decisions, no jdxs issues, party can still litigate, cost, temporary stop to transferring domain to a third party

Question 28

Disadvantages of UDRP

Answer 28

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

Question 29

What is Nominet

Answer 29

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

Question 30

Advantages of Nominet

Answer 30

speed, “only applies to .uk”, mediation resolves up to 50% of cases, temporary stop to transferring domain to a third party, cost effective

Question 31

Disadvantages of Nominet

Answer 31

panel not bound by precedent, not binding on court, can subsequently go to court, no injunctions, panel not confidential

Question 32

Advantages of Litigation

Answer 32

clear cases cybersquatting ends at SJ, binding decision, award injunctions, damages, attys fees …

Question 33

Disadvantages of Litigation

Answer 33

lengthy, costly and time consuming, choice of law and forum, defendant might be insolvent

Question 34

two types of startups

Answer 34

IP consuming, and IP generating

Question 35

Paris Convention mechanism for filing IP

Answer 35

allows for applications in multiple countries and right of priority