[Ip-transactions] How to manage survival of some terms of an agreement

[Pamela Chestek]

I'm reviewing a trademark license that someone else wrote and I see 
something I've not seen before and wondering why it's done this way. 
It's not written by an adversary, I was just asked for a second opinion 
on it.

The document is an agreement that includes a trademark license. There 
are very few other terms; it is a royalty-free license so there isn't 
any need for commercial terms like payment, etc. It has the standard 
product approval, marketing approval, termination, and boilerplate, but 
nothing particularly substantive outside of the trademark license.

Upon termination, the agreement says expressly that only the license 
(identified by section number) terminates and "Except for any 
obligations in this license that expressly state they apply only during 
the term of this license, all provisions of this license will survive a 
License Termination Event."

So first off, I think the references to "license" should be "Agreement" 
- they've misused the word "license" to mean both the specific grant 
language and the document itself, so that needs to get cleaned up.

But fixing that problem, have you seen license agreements where the 
premise is that the agreement itself remains operative, it's only the 
license grant that terminates? Typically the agreement as a whole 
terminates and only specifically identified sections survive. I'm a 
little nervous about the ways that a breaching licensee might try to 
claim they still get to do things that might infringe. For example, 
there is a section, different from the license grant, that describes how 
the mark should be used. Might they claim that section didn't terminate 
and by implication they get to use the mark?

I'm just wondering what I'm missing. I'm thinking maybe they used an 
agreement that had more significant business terms (e.g., royalty 
payments) where you do want to make sure you continue to get those even 
after the license terminates?

Pam

Pamela S. Chestek
Chestek Legal
300 Fayetteville St.
Unit 2492
Raleigh, NC 27602
+1 919-800-8033
pamela at chesteklegal.com
www.chesteklegal.com