Breach of Contract or IP Infringement

3 Ways The Courts Determine The Issue In A Property Licensing Agreement

Two businesses go into an Intellectual Property Licensing Agreement. A dispute comes about regarding the licensee’s use of the IP for marketing purposes or patenting products – the claim is that it’s outside the terms of the agreement. Does the additional use of the IP break the contract, infringe upon the IP rights or both?

It’s important to know the distinction because infringement remedies will vary from contract damages. For instance, a copyright registered pre-infringement allows the owner to choose statutory over actual damages.

If a plaintiff in a trademark or trade secret case when his/her case, they could actually recover the exemplary damages along with the actual damages due to the breach of contract.  In trademark and patent actions, there’s also the possibility for treble damages. Recovering for attorney fees is typically easier to recuperate when there has been an efficacious breach of contract action. As you see, the differences definitely play a part in getting the most back out of the recovery.

IP Rights Infringement vs. Breach Of Contract: 3 Ways To Know Which One Your Contract Falls Under

At the beginning, it’s not so clear if the extra-license use is an IP rights infringement or if it’s a breach of contract. How can you distinguish which one is which?

1 – License Type

You need to figure out if the license is exclusive or non-exclusive. Courts have determined that an exclusive license rules the IP use as being a breach of contract. This rationale is founded on the acceptance that an exclusive license changes ownership of the IP rights.  Simply put:

- A licensee cannot infringe upon his/her IP interest.  Any use of the IP beyond what the agreement states is considered a breach of contract, not infringement. 
- And, a licensee granted a non-exclusive license can be considered held liable for infringement if the IP is used beyond the license agreement.

2 – Breach Provision

Is the license agreement provision a condition precedent and a contract covenant? Contract covenant provisions are considered a breach of contract. If the provision falls under the condition precedent, the condition isn’t satisfied and the contract doesn’t exist. Any IP means it is an infringement.

3 – Limitations

If the agreement has limitations in its scoop and the license goes beyond it, the licensor can claim infringement. To win the case, the licensor will need to establish that the terms in the agreement are the limitations, and not independent contractual covenants, to claim that the licensee’s actions went beyond the license.

There have been instances where the court has ruled an agreement has produced both a contractual covenant and conditions precedent in a license. In these cases, the courts have ruled that both an infringement and breach of contract had occurred.