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The Money Making Power of Intellectual Property 

 
February 2013
Issue  

Greetings!

 

Welcome to the February issue of
Licensing4Profits. We begin this month with reviewing a type of IP that is often overlooked - store, home and building designs - in
Leveraging IP: Store Design Trademarks.

Developing a licensing deal is a process that involves a number of steps to complete the deal.
Learn what you need to do in this months
Strategy Session: The Licensing Deal Process

Find out how to use licensing to tap into OPR - other peoples resources - in this month's Video Licensing Lesson.

Improvements to an IP is a clause that deals with any updates or changes to the IP. In our next article, Key Terms & Conditions, we review some of the terms that should be included to define how these improvements are managed.

Next you can learn what the steamboat, the TV series "Dragnet" and Hobie surfboards have in common in This Month in IP History.

Negotiations are a big part of licensing ,and in this month's free Licensing Webinar: How to Negotiate Licensing Deals, you'll learn some pointers, deal terms, using third parties (i.e. agents or attorney's) and four real world negotiating strategies.

We conclude this month's newsletter with the licensing question "Can someone with no connections in a specific industry be successful in finding licensing opportunities in that industry?"

 

Enjoy!

 

New Licensing News from LCG 

 

 

Leveraging IP - Store Design Trademarks
Apple Store

Retailing success is a confluence of real estate, operations and product. However many retail store owners (and building and home designers) often overlook one of their most valuable assets - intellectual property.

 

Trademarks (and trade dress) can be used to protect esoteric creations such as themes of interiors of retail stores, restaurants and associated menus and related concepts. Store designs, blueprints, carpeting patterns, textiles, tapestries and other visual designs are copyright IP. In 1990, the copyright law was expanded to include physical buildings.

 

Store design IP is particularly noteworthy for retail-based franchises. Unless you and your architect (builder or remodeler) agree otherwise, you will not have the right to license the design and specifications for your prototypical retail outlet to your franchise. The rights in these plans will remain exclusively with your architect or designer, unless you have a work-for-hire agreement or copyright assignment.

 

This month, Apple, one of the most well known consumer technology companies in the world, received a trademark for the design and layout of its retail stores.  Apple's move to trademark their store designs was prompted by the fake Apple stores that popped up in China. These stores sold bootleg products and created a very similar "store experience" by ripping off open floors, glass walls, and overall minimalist design.

 

This isn't the first time a big tech company sought a trademark for its retail store designs - Microsoft was granted one in 2011. Their retail stores are similar to Apple's design, with some distinct differences. Both use aesthetic influences and style elements to maximize profits and increase interest in their products. 

Strategy Session - The Licensing Deal Process
Licensing Deal

Experienced licensing professionals use a variety of approaches for developing a licensing deal. Typically these include initiating contact with potential licensees either in person, for example at a trade show, by email or over the phone.

 

The initial communication includes general discussion about the IP ( e.g. general descriptions of the IP or public information such as article or published patent) and whether there is mutual interest in moving forward with a potential licensing deal.

 

After confirming mutual interest in moving forward, the licensee and licensor will meet in person for a more detailed presentation on the licensing opportunity. This is the point in the process where a non-disclosure agreement (NDA) may be necessary prior to the IP owner (licensor) providing more details about the IP.

 

After this preliminary information stage, the licensee will usually want to do some due diligence to confirm the commercial viability of the IP. The licensor will want to evaluate the licensee by the types of products (or services) it has brought to the marketplace and the level of success they've had with these products.

 

If both parties remain interested after the their due diligence, the deal then moves into negotiating the essential business terms of the license, which are detailed in a Deal Memo or Terms Sheet.

 

Keep in mind, the licensing deal will only happen when both sides conclude that the benefits of the deal are greater than the cost, or loss, required to make the deal possible.

Feel free to pass this newsletter along to friends and associates. You can visit www.licensingcg.com to view other free reports and presentations.  If you are interested in learning about our consulting services and coaching programs, please contact us at (646) 395-9572 or email [email protected].

 

Best Regards,

 

 

Rand Brenner

 

 

 

Rand Brenner

President & CEO

Licensing Consulting Group

 

 

 

 

 

 

 About Rand Brenner  

Rand has licensed some of the biggest Hollywood blockbusters, including "Batman" and the "Mighty Morphin Power Rangers", both of which generated billions of dollars in worldwide merchandise sales. His career included executive positions at Saban Entertainment and Warner Bros Consumer Products where he developed numerous licensing and promotional deals with Fortune 1000 companies.  

 

Rand Brenner is the President & CEO of Licensing Consulting Group, a full service intellectual property management company.  LCG provides IP management, strategy consulting, and property representation. For more information, please visit our website or send an email to [email protected].
In This Issue
Leveraging IP - Store Design Trademarks
Strategy Session -The Licensing Deal Process
Video Licensing Lesson - Licensing OPR
Key Terms & Conditions - IP Improvements
This Month in IP History
Licensing Webinar - How to Negotiate a Licensing Deal
Ask Rand Brenner
Latest Blog Postings
Video Licensing Lesson
Licensing OPR - Other Peoples Resources
Licensing OPR - Other Peoples Resources

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Intro to Lic P1 

Key Terms & Conditions - IP Improvements

IP Agreement

Improvements or modifications to an IP should be defined in every licensing agreement. This is not likely to be a major issue if the IP is already being successfully commercialized (i.e. it's making money). However, if it's a situation where the IP is still in development or testing, it's likely that there will be improvements made before it's commercialized (a strategy that is used if a company lacks the resources to finish their IP development).  

 

It's important to make sure this clause is very clear on what constitutes an improvement and who owns it. Some of the key clauses that cover improvements are:

  • Whether the licensee will have access to any improvements made by the licensor
  • Whether the licensee can make modifications to the IP
  • Who pays costs to register (i.e. patent, trademark or copyright) the modifications to the IP
  • Who owns the improvements or modifications (licensee, licensor or jointly)
  • Any adjustments to be made to the royalty payments or duration of the agreement
When preparing or reviewing a licensing agreement, it's always best to seek qualified legal advice before you sign anything. 

This Month in IP History
  • 1811Robert Fulton was granted a patent for the practical steamboat.
  • 1952 - The first episode of the TV program "Dragnet" was copyrighted.
  • 1963 - HOBIE surfboards trademark registered.
Source:About.com
Licensing Webinar - How to Negotiate a Licensing Deal
Negotiating a licensing deal the right way is the key to a successful partnership. During this webinar you will learn:
  • How to negotiate the key terms of a licensing deal  
  • The pros and cons of using someone else to negotiate on your behalf
  • Four real-world strategies that you can use to negotiate a winning licensing deal   

This webinar will feature a guest presenter, Mr. Andrew Berger, an intellectual property attorney with the New York firm of Tannenbaum Helpern Syracuse & Hirschtritt LLP.  

 

To view this webinar,click here or use this link -http://tinyurl.com/blg5xmo.

Ask Rand Brenner 

   

Q: Can someone with no connections in a specific industry be successful in finding  licensing opportunities in that particular industry?

 

A: Of course, having connections in any industry is helpful. However, there are a number of resources you can use to find companies and contacts.

 

Trade magazines are a good place to start. For example, if you're interested in licensing entertainment content, you can begin by reading entertainment industry magazines, such as Variety or Hollywood Reporter. You can also use licensing trade magazines, such as Licensing Magazine to find entertainment properties and companies to contact.  

 

Once you've researched the information, the next step is to contact the licensors to find out what opportunities are available.  

 

Follow up to last month's question:

 

This response comes to us from an attorney, David W. Koehser (website: www.dklex.com).  

"Just a follow up comment to your (royalty) audit question on how do I make sure I get paid. The audit clause should always state that the audit can be conducted by the "Licensor or its designated agents or representatives."

 

I was recently presented with a situation in which the licensee refused to allow an audit by anyone other than the actual licensor, based on the language in the audit clause which only stated that "Licensor may audit." The licensor was represented by an agent, and the agent had used a CPA to audit the licensee for other licensors.

  

The CPA had uncovered numerous irregularities in the accounting for those licensors, and the licensee was looking for reasons to keep the same CPA from conducting additional audits. The bottom line is that simply having an audit clause may not be enough to thwart a dishonest licensee. The audit clause has to be broadly written, and the parties to the audit need to consider all of their actions along the way to avoid any traps."

 

Got a question about licensing? Send an email to [email protected]. You'll get an answer to your question which will be included in a future issue of this newsletter.

Latest Blog Postings

 

Open-Mic Night for Entrepreneurs - 02-05-2013 04:53:26 AM
Approvals - 01-30-2013 04:45:01 AM
Is Your Marketing Method an IP? - 01-22-2013 04:27:38 AM
Royalties and Minimum Guarantees - 01-17-2013 04:26:27 AM

 
More articles available at  
The information in this newsletter is presented by Licensing Consulting Group as a service to the subscribers. Although the author attempts to keep this information current and accurate, he makes no warranty or guarantee that it is correct, complete or up-to-date. This newsletter may contain links or be linked to other web sites not maintained by Licensing Consulting Group. The author makes no representations, express or implied, with respect to the materials and information provided on any third-party web site linked to this newsletter, including any representations as to the accuracy, timeliness, reliability or completeness of any material or information on such linked site. Inclusion of a link in this newsletter to another web site does not imply recommendation, approval or endorsement by the author of the linked site.