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

[Orvis]

Go with your gut. My default is to strike oddball provisions. If it's important and they have a rationale, they'll explain it. Most of the time, they don't even know why it's in there.

Mar 8, 2024 5:33:26 PM Pamela Chestek via Ip-transactions <ip-transactions at oppedahl-lists.com>:

> Nope, there are none of those things in it. That's sort of the mystery, what exactly is it that they think was so critical that the whole agreement should remain in effect? When I went through it, the only terms that I would have survive were non-disparagement (hey, why not?), choice of law, enforcement costs, and notices.
> 
> 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[http://www.chesteklegal.com]
> 
> 
> 
> On 3/8/2024 5:27 PM, Jessica R. Friedman via Ip-transactions wrote:
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>> Are they concerned about survival of certain obligations, such as warranties and indemnity and payment? But that should be covered by a proper survival clause.
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>> Jessica R. Friedman
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>> Attorney at Law
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>> 300 East 59 Street, Ste. 2406
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>> New York, NY 10022
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>> Phone: 212-220-0900
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>> Cell: 917-647-1884
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>> E-mail: _jrfriedman at litproplaw.com_
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>> URL: _www.literarypropertylaw.com[http://www.literarypropertylaw.com]_
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>> [cid:part1.2KMnaE40.RpI2LaGd at chesteklegal.com][1479430908386_PastedImage][cid:part1.2KMnaE40.RpI2LaGd at chesteklegal.com]
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>> *From: *Ip-transactions <ip-transactions-bounces at oppedahl-lists.com> on behalf of asarabia2 via Ip-transactions <ip-transactions at oppedahl-lists.com>
>> *Date: *Friday, March 8, 2024 at 5:26 PM
>> *To: *ip-transactions at oppedahl-lists.com <ip-transactions at oppedahl-lists.com>
>> *Cc: *asarabia2 <asarabia2 at gmail.com>
>> *Subject: *Re: [Ip-transactions] How to manage survival of some terms of an agreement
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>> I have seen a lot of trademark licenses, but have not seen that provision.  I share your concern: a very bad idea which would  force you to consider the possible meaning of each term which continues without the license grant.  Easier and better to take it out.
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>> Regards,
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>> Tony Sarabia
>> 
>> IP Business Law, Inc.
>> 320 via Pasqual
>> Redondo Beach, CA 90277
>> (310)377-5171
>> www.calrestitution.com[http://www.calrestitution.com]
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>> On 3/8/2024 2:07 PM, Pamela Chestek via Ip-transactions wrote:
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>> 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.
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>> 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.
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>> 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."
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>> 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.
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>> 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?
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>> 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?
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>> 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[http://www.chesteklegal.com]
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