Is Silence Really Golden - Assumption and Assignment of Intellectual Property Licenses in Bankruptcy

Authors

Neil S. Hirshman
Michael G. Fatall
Peter M. Spingola

Abstract

A debtor-licensee often desires to assume or assume and assign intellectual property licenses to which it is a party-an action to which the non-debtor licensor may object. This article examines a debtor-licensee's ability to assume and assign such licenses in the context of bankruptcy. Courts that have considered the issue have held that, notwithstanding the general authority granted under 11 U.S.C. § 365, consent is likely required before a debtor-licensee can assume and assign a non-exclusive patent license, copyright license, or a trademark license if any such license contains an express restriction on assignment or is silent on the issue. But it remains unsettled whether consent is needed to assume and assign an exclusive patent license, copyright license, or trademark license that either restricts assignment or is silent on the issue. This Article provides a review and analysis of the current state of the relevant case law and further attempts to predict how courts might decide the unsettled issues in a matter consistent with intellectual property law principles.

Recommended Citation

Neil S. Hirshman, Michael G. Fatall, and Peter M. Spingola, Is Silence Really Golden - Assumption and Assignment of Intellectual Property Licenses in Bankruptcy, 3 Hastings Bus. L.J. 197 (2007).
Available at: https://repository.uclawsf.edu/hastings_business_law_journal/vol3/iss2/5