Alexander Terekhov alexander.terekhov at gmail.com
Wed Aug 29 15:46:48 UTC 2007

On 8/29/07, Mahesh T. Pai <paivakil at yahoo.co.in> wrote:
> Alexander Terekhov said on Tue, Aug 28, 2007 at 08:25:20PM +0200,:
>  > Intellectual property license are contracts governed by the laws of
>  > contract.
> Wrong.
> Requirements for licensing trade secrets, copyrights, patents and
> trademarks, all of which constitute intellectual property, are
> different. Please be specific about what intellectual property you are
> talking about.
> SOME copyriht licenses are bilateral contracts, the form and formation
> of which are governed by law of contracts. Once formed, the contents
> of the licenses and remedies for breach are governed by law of
> copyright.

Let the Judicial Branch of the U.S. Government know about that. It
must be deeply confused.

"A license is governed by the laws of contract. See McCoy v.
Mitsuboshi Cutlery, Inc., 67 F.3d 917, 920, 36 USPQ 2d 1289, 1291
(Fed. Cir. 1995) ("Whether express or implied, a license is a contract
governed by ordinary principles of state contract law.")." JAZZ PHOTO,
ET AL. v ITC, 264 F.3d 1094 (Fed. Cir. 2001).

See also Sun Microsystems Inc. v. Microsoft Corp., 188 F.3d 1115 (9th
Cir. 1996), Graham v. James, 144 F.3d 229 (2nd Cir. 1998) and Jacob
Maxwell Inc., v. Veeck, 110 F.3d 749 (11th Cir. 1997) in the context
of copyright.

I'll just quote Graham.

The district court found that Graham and James had entered into a
licensing agreement under which Graham promised to pay James $1,000
for each CD-ROM release containing the C version and one dollar for
each disk sold. Graham does not contest on appeal that he breached
this agreement by failing to make the required payments, and therefore
we affirm the district court's award of breach of contract damages.

However, the award of copyright damages in this case is problematic. A
copyright owner who grants a nonexclusive license to use his
copyrighted material waives his right to sue the licensee for
copyright infringement. See Jacob Maxwell, Inc. v. Veeck , 110 F.3d
749, 753 (11th Cir. 1997); Peer Int'l Corp. v. Pausa Records, Inc. ,
909 F.2d 1332, 1338-39 (9th Cir. 1990); see also United States Naval
Inst. v. Charter Communications, Inc. , 936 F.2d 692, 695 (2d Cir.
1991) ("[A]n exclusive licensee of any of the rights comprised in the
copyright, though it is capable of breaching the contractual
obligations imposed on it by the license, cannot be liable for
infringing the copyright rights conveyed to it.").


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