Whether dealing with the licensing of a trademark or a patent, the use of software or other protected contents – all of these require complex license and contractual decision making. A Licensing Agreement gives the licensee detailed rights of use. Precise Licensing Agreements do not only protect intellectual property, but they also prevent legal disputes and create the necessary planning security.
As an interdisciplinary law firm, Schlun & Elseven possesses comprehensive expertise in the areas of copyright law, contract law, and trademark law. A particular focus lies on the legally compliant drafting, review, and implementation of licensing agreements as well as the enforcement of rights of use – whether on behalf of companies, users, or creators of creative works. Even in cases of unjustified claims or actual legal infringements, the IP law attorneys provide support with well-founded expertise and effective defense strategies.
How far do the rights of use extend? Simple vs. Exclusive Rights of Use
Through the Licensing Agreement the licensee is granted a right of use. There is a general distinction between “simple” and “exclusive” rights.
According to § 31 sec. 2 UrhG (German Copyright Act), the simple right of use gives the licensee the right to use the work in the permitted manner, without excluding others from using it. However, the licensor can still use their work and retain the right to grant licensing rights to others as well.
The exclusive right to use – as the name implies – gives the licensee an exclusive right to use the licensed work. This means that the licensor is not allowed to give out licensing rights to third parties. The precise scope of the rights is regulated in the licensing agreement.
Drafting of licensing agreements
Whether in relation to patents, trademarks, or copyright-protected property such as music, images, and videos – a licensing agreement can be established for all areas of intellectual property. When a creator grants a third party a license to use their work, they allow them to use their work in a specific manner in terms of territory, period of time, and/or content in exchange for an individually agreed upon fee (cf. § 31 para. 1 UrhG).
This right of use is typically facilitated through the drafting of licensing agreements and usage contracts. Such an agreement is established in written form and concluded between the licensor granting permission and the licensee receiving authorization. The rights and obligations of the respective parties are precisely defined within the agreement.
The law firm Schlun & Elseven has many years of experience in drafting license agreements and reviewing existing license agreements. Our lawyers draft, review and analyze your license agreements with particular care, taking into account the latest legislation and case law. Your interests and rights are always at the forefront. Our legal team works closely with you to develop contracts that are precisely tailored to your individual needs. We advise you on the following types of license agreements:
- Copyright licenses,
- Design/ design patent licenses,
- Patent licenses,
- Trade secret licenses.
Types of Licenses | Sublicensing: Legal Advice
There are different types of licenses in Germany.
Single License
Only one licensee has the right to use, the licensor or originator has a continuing right to use the work themselves.
Free License
As the name already says, the free license is a license where there is no fee necessary. Therefore, the granted right can be used free of charge.
Sublicense
The sublicense is a type of license that grants the licensee a right to sub-license their licensee to a third party. The possibility of a sublicense must be written down in the original license agreement with the originator or licensor. In German law, the originator must agree to the sublicense as stated in § 35 Section 1 UrhG (German Copyright Law).
A sublicense is possible in the areas of Copyrights, Trademark law and Patent law. While a sublicense can bring various benefits to the licensor, it also carries legal risks. Our team is experienced with drafting contracts to optimally assert legal and economic interests, while identifying potential risks early. Feel free to contact us for legal support.
Licensing Agreements: Compliance and Risk Management
If a company allows licensing, it should also ensure that both the granting of the license and the use of the granted industrial property rights are carried out properly. If one of the parties violates any provisions of the license agreement, claims for damages may arise. Therefore, legal advice is recommended both for contract drafting and the subsequent legally secure implementation of the agreement. Contract management and compliance therefore play an important role. The specific conditions regarding contract duration, any restrictions – such as sublicensing – or payments should be regularly reviewed. Regular monitoring and review are particularly necessary for granted software licenses. The increasingly popular use of Artificial Intelligence (AI) means that more providers are expanding their software offerings. In addition, the legal situation in AI law remains dynamic, which means that regular adaptation of contracts may be necessary.
Legal Disputes regarding Licensing
In the best case scenario a well written license agreement prevents legal disputes. However, when they do arise, the following are the most common ones:
- License fees are not paid or not paid in full,
- The scope of permitted use is unclear or disputed,
- The contractually granted usage rights are exceeded,
- The granting of sublicensing is incorrect,
- Copyright infringements are alleged or actually committed, or
- A contracting party terminates or revokes the license agreement.
The lawyers at Schlun & Elseven represent individuals as well as entrepreneurs from various industries worldwide. We support licensors in, among other things, the legally secure drafting of a license agreement as well as the enforcement of any agreed contractual penalties or termination. We also support rights holders when their work is being used without their consent. In the case of such a copyright infringement, legal remedies such as issuing a cease and desist letter or obtaining an injunction are available to them. Our legal team advocates for the rights and interests of both the rights holder and the licensor. Our lawyers represent you both in and out of court.
We also advise licensees before and during contract conclusion and carefully review the license agreement – with the aim of ensuring legally secure licensing and preventing possible copyright infringements. We stand by your side during contract negotiations, advocate for the possibility of sublicensing, and support you in defending against allegations of alleged contract violations and/or damage claims. We also represent licensees both in and outside of court.
Practice Group: German Intellectual Property Law
Practice Group:
German Intellectual Property Law
Contact our Lawyers for German Intellectual Property Law
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