In the Red – The Business Bankruptcy Blog

In the Red – The Business Bankruptcy Blog

The Business Bankrupty Blog

Tag Archives: intellectual property

What Did The ABI Chapter 11 Commission Recommend On Intellectual Property Licenses And Bankruptcy Issues?

Posted in Business Bankruptcy Issues, Recent Developments
The American Bankruptcy Institute‘s Commission to Study the Reform of Chapter 11 issued its report last week, capping more than two years of hearings, meetings, and hard work. Having had the honor of testifying before the Commission on intellectual property and bankruptcy issues at one of its hearings in New York in June 2013, I wanted … Continue Reading

The Trend Of Protecting Trademark Licensees In Bankruptcy Continues: For The First Time A Court Extends Section 365(n) Protections To Trademark Licensees On Equitable Grounds

Posted in Business Bankruptcy Issues, Recent Developments
If you doubted it before, you can stop now. The trend of courts finding ways to protect trademark licensees from the harsh effects of losing their trademark license rights in bankruptcy is in full swing. The latest example comes in the Crumbs Bake Shop, Inc. Chapter 11 bankruptcy case in New Jersey. On October 31, … Continue Reading

U.S. Supreme Court Denies Review In Jaffe v. Samsung, Letting Stand The Fourth Circuit’s Decision Applying Section 365(n) To Protect Licensees In A Chapter 15 Bankruptcy Case

Posted in Business Bankruptcy Issues, Recent Developments
On Monday, October 6, 2014, the U.S. Supreme Court issued an order denying the petition for a writ of certiorari in the Jaffe v. Samsung case, also known as the Qimonda case. The Supreme Court let stand the Fourth Circuit’s December 2013 decision that affirmed the bankruptcy court’s order applying Bankruptcy Code Section 365(n) in … Continue Reading

A Closer Look At Recent Trends At The Intersection Of Intellectual Property And Bankruptcy Law

Posted in Business Bankruptcy Issues, Recent Developments
I had the honor of being a panelist at the American Bankruptcy Institute‘s 22nd Annual Southwest Bankruptcy Conference last Friday, speaking on current developments in business bankruptcy. My part of the discussion focused on recent intellectual property and bankruptcy law trends. Among the topics I covered were: the direction U.S. Courts of Appeals have been taking … Continue Reading

Patent Reform Bill, And Its Revisions To Bankruptcy Code Section 365(n), Stalls In The Senate

Posted in Business Bankruptcy Issues, Recent Developments
Image courtesy of Matt H. Wade In December 2013 I wrote about the Innovation Act, H.R. 3309, a bill focused on patent infringement litigation and other patent law reforms that passed the House of Representatives on a bipartisan basis. My interest in the bill was because it would make the most sweeping changes to the … Continue Reading

Innovation Act, Passed By The House, Would Make Major Changes To Section 365(n)’s IP Licensee Protections

Posted in Business Bankruptcy Issues, Recent Developments
It isn’t law yet, but on December 5, 2013, the U.S. House of Representatives passed a significant patent reform bill known as the "Innovation Act." Although the focus of the legislation is on patent infringement litigation and other patent law revisions, the Innovation Act, H.R. 3309, would also make major changes to Section 365(n) of the Bankruptcy Code. … Continue Reading

When Worlds Collide, The Sequel: Fourth Circuit Rules On Section 365(n)’s IP Licensee Protections In Chapter 15 Cross-Border Bankruptcy

Posted in Business Bankruptcy Issues, Recent Developments
My how time flies in protracted bankruptcy litigation. More than four years ago, as I reported back at the time, the Bankruptcy Court in the Chapter 15 cross-border bankruptcy case of Qimonda AG issued its first decision on the application of Section 365(n) in that case. After an initial appeal, a four-day trial on remand, and another appeal, last week the U.S. … Continue Reading

Video Of Testimony Before ABI Commission To Study Reform Of Chapter 11

Posted in Business Bankruptcy Issues, Recent Developments
As mentioned in a recent blog post, the American Bankruptcy Institute has established a Commission to Study the Reform of Chapter 11. A video of testimony before the Commission’s June 4, 2013 field hearing in New York is available below. At that hearing, I testified on the second panel, discussing intellectual property licenses, their treatment in bankruptcy cases, and … Continue Reading

ABI Commission To Study The Reform Of Chapter 11

Posted in Business Bankruptcy Issues, Recent Developments
The American Bankruptcy Institute has established a Commission to Study the Reform of Chapter 11. This afternoon, June 4, 2013, I will be testifying before the Commission about intellectual property licenses, their treatment in bankruptcy cases, and potential reforms to address several key issues.  Lawrence Gottlieb, my colleague at Cooley LLP in our Corporate Restructuring and Bankruptcy group, will also … Continue Reading

Do Trademark Licensees Have Reason For Hope? New Article Discusses Recent Decisions On Trademark Licenses And Bankruptcy

Posted in Business Bankruptcy Issues, Recent Developments
I have written a number of times on the blog about the impact of bankruptcy on trademark licenses, in particular what happens to trademark licensees whose licensors file bankruptcy. Trademark licensees face a real risk of losing their license rights in bankruptcy since they have no protection under Section 365(n) of the Bankruptcy Code. However, recent decisions, including an important … Continue Reading

Seventh Circuit Bankruptcy Ruling Is Big Win For Trademark Licensees

Posted in Business Bankruptcy Issues, Recent Developments
On July 9, 2012, the U.S. Court of Appeals for the Seventh Circuit issued its decision in Sunbeam Products, Inc. v. Chicago American Manufacturing, LLC, and in doing so handed a major victory to trademark licensees whose licenses are rejected in bankruptcy by trademark owners. A copy of the opinion is available through this link. … Continue Reading

First Published Court Of Appeals Opinion Issued Answering Whether Trademark Licenses Are Assignable In Bankruptcy

Posted in Business Bankruptcy Issues, Recent Developments
It’s been a long wait, but we finally have a published decision from a U.S. Court of Appeals answering whether a trademark license is assignable in bankruptcy without the licensor’s consent. On July 26, 2011, the U.S. Court of Appeals for the Seventh Circuit issued an opinion in In re: XMH Corp., written by Circuit Judge Richard … Continue Reading

Third Circuit Decision Suggests Another Way For Trademark Licensees To Protect Against License Rejection In Bankruptcy

Posted in Business Bankruptcy Issues, Recent Developments
Trademark licensees have long faced the serious risk of losing all license rights to a trademark if the licensor files bankruptcy and rejects the trademark license as an executory contract. However, a recent decision from the U.S. Court of Appeals for the Third Circuit in the In re: Exide Technologies case may give some trademark licensees … Continue Reading

When Worlds Collide: Do Section 365(n) IP Licensee Rights Work In A Chapter 15 Cross-Border Bankruptcy?

Posted in Business Bankruptcy Issues, Recent Developments
Section 365(n) And Licensee Rights. I have discussed in the past how Section 365(n) was added to the Bankruptcy Code to protect licensees of intellectual property in the event the licensor files bankruptcy. Under Section 365(n), if the debtor or trustee rejects a license, a licensee can elect to retain its rights to the licensed intellectual property, … Continue Reading

Major Amendments To The CCAA, Canada’s Reorganization Law, Are Now In Force

Posted in Business Bankruptcy Issues, Recent Developments
In a post last year entitled "North Of The Border: Reorganization Under Canada’s Companies’ Creditors Arrangement Act," I discussed the various types of bankruptcy and insolvency proceedings available under Canadian law. Included in the discussion was the Companies’ Creditors Arrangement Act, known as the CCAA, used by many Canadian companies to reorganize. At that time, although … Continue Reading

Protecting IP Rights From A Licensor’s Bankruptcy: What You Need To Know About Section 365(n)

Posted in Business Bankruptcy Issues
Many companies rely on in-bound licenses of intellectual property, especially those involving patents or trade secrets, and spend millions of dollars on research, development, and ultimately commercialization of drugs or products incorporating the licensed IP. With so much at stake, licensees frequently ask a critical question: Can our license rights be terminated if the licensor … Continue Reading

U.S. Supreme Court Shows Interest In Deciding Whether The Hypothetical Test Or The Actual Test Should Be Used To Determine If IP Licenses Can Be Assumed In Bankruptcy

Posted in Business Bankruptcy Issues, Recent Developments
It looks like the U.S. Supreme Court, or at least two of the Justices, is interested in deciding whether the "hypothetical test" or the "actual test" should be used in determining whether an intellectual property license can be assumed by a debtor in possession under Section 365(c)(1) of the Bankruptcy Code. That was the clear message from the somewhat … Continue Reading

Ninth Circuit Rules In N.C.P. Marketing Trademark License Case

Posted in Business Bankruptcy Issues, Recent Developments
Back in March I gave an update on In re: N.C.P. Marketing Group, Inc., a case addressing whether a debtor can assume a trademark license over the trademark owner’s objection. In 2005, the U.S. District Court for the District of Nevada issued its first of a kind decision, In re: N.C.P. Marketing Group, Inc., 337 B.R. 230 … Continue Reading

Trademark Licenses In Bankruptcy: New Developments In The N.C.P. Marketing Case

Posted in Business Bankruptcy Issues, Recent Developments
Last November I reported on the status of the Ninth Circuit appeal in In re: N.C.P. Marketing Group, Inc., a case addressing whether a debtor can assume a trademark license over the trademark owner’s objection. Back in 2005 the U.S. District Court for the District of Nevada issued its first of a kind decision, In re: N.C.P. … Continue Reading

Licensing Intellectual Property From An Israeli Company: What Happens If There’s A Bankruptcy?

Posted in Business Bankruptcy Issues, The Financially Troubled Company
Many technology companies are based in Israel and license intellectual property to companies in the United States and around the world. This raises an interesting question: what happens if the Israeli company, as licensor, goes into bankruptcy or liquidation in Israel? The latest edition of Cross Border Commentary, a publication by the International Business Practice of my firm, … Continue Reading

Assumption Of Trademark Licenses In Bankruptcy: An Update On The N.C.P. Marketing Case

Posted in Business Bankruptcy Issues, Recent Developments
Over a year ago, I posted on a first of its kind decision in In re: N.C.P. Marketing Group, Inc., 337 B.R. 230 (D.Nev. 2005), in which the U.S. District Court for the District of Nevada held that trademark licenses are personal and nonassignable absent a provision in the trademark license to the contrary. Click here for … Continue Reading

Patent Law Collides With Bankruptcy: Federal Circuit Denies Bankruptcy Liquidation Trust Standing To Sue For Patent Infringement

Posted in Business Bankruptcy Issues, Recent Developments
The United States Court of Appeals for the Federal Circuit has jurisdiction over, among other areas, patent appeals, so it’s not every day that a Federal Circuit decision appears on this business bankruptcy blog. (Actually, it’s been about a year since this post discussing another Federal Circuit decision.) However, a September 19, 2007 opinion (available here) … Continue Reading

Are “Termination On Bankruptcy” Contract Clauses Enforceable?

Posted in Business Bankruptcy Issues, The Financially Troubled Company
Practically every contract has a provision that makes the bankruptcy or insolvency of one contracting party a trigger for the other party to terminate the contract. These are standard fare and rarely negotiated unless they also include a provision for the reversion back of ownership of property, often intellectual property, upon bankruptcy or insolvency. This post takes a … Continue Reading

Another Court Follows The Footstar Decision On Assumption Of IP Licenses In Bankruptcy

Posted in Business Bankruptcy Issues, Recent Developments
Intellectual property licenses continue to be significant to companies across a wide range of industries. This fact makes their treatment in business bankruptcy cases a topic of keen interest.  Can A Debtor Licensee Retain IP License Rights? When the debtor in possession is a licensee under a patent, copyright, or trademark license, a key question arises: Can … Continue Reading