Category: IP Licensing

Understanding Guernsey’s Recently Expanded Personality Rights Legislation

Co-Author Mackenzie Stout, J.D. Candidate 2014, Seattle University School of Law.

Personality rights are big business throughout the globe. Celebrities often license third parties the right to use their images and likenesses for thousands, even millions of dollars. For example, boxing legend Muhammad Ali’s personality rights were recently sold for $62 million. Yet, protection for these quasi-property rights varies from country-to-country, often limiting the degree to which celebrities, as well as ordinary persons and businesses, can protect their distinctive personal traits from unauthorized use at home and abroad.

Guernsey, the autonomous British possession and well-known tax haven island off the coast of France, recently made a bold move towards greater recognition of personality rights. By passing the Image Rights (Bailiwick of Guernsey) Ordinance, 2012 (“Ordinance”), Guernsey now grants personality rights protection to several personality traits and parties not granted under most national legal systems. By establishing the first ever registry of personality and image rights, and giving a registrant (including non-personalities) the ability to register the personality and image of a personality they intend to commercially manage, the Ordinance gives many persons and businesses the potential ability to protect their personal traits throughout the world.

So how does Guernsey’s new personality rights laws provide these protections?

What’s Is Registrable? As mentioned, Guernsey’s Ordinance allows the registration of personalities and images in Guernsey as a property right, much like a trademark or copyright registration. Personalities that can be registered include: (1) natural persons; (2) legal persons; (3) joint personalities (two or more persons who are intrinsically linked in the eyes of the public); (4) groups (whose membership can be interchangeable); and (5) human or non-human fictional characters. Such registration eligibility provides several advantages. First, the personality of a deceased natural person can be registered for up to 100 years after a person’s death and there is no fame or public recognition threshold necessary for registration. This means that any personage, no matter how well known, can be registered. Second, legal entities, such as businesses, foundations, and trusts, are now eligible to register as personalities, giving them the same rights and privileges to protect their personal traits as actual people.

Images associated with a registered personality may also be registered. Registrable images include an individual’s name or alias, voice, signature, likeness, appearance, silhouette, feature, face and even mannerisms. The proprietor of a registered personality has exclusive rights in the images registered against or associated with that personality. Even unregistered images may be protected if they are closely related to the personality. However, like any trademark or copyright registration, registering a personality or image in Guernsey’s Image Rights Register (“Register”) gives a proprietor of a personality or image rights more convincing evidence of ownership over such personality or image.

How Can a Personality or Image be Registered? A proprietor can register their personality or image rights in Guernsey in person or online. Like trademarks and copyright, an applicant should first conduct a search (known as clearance) for their personality rights in the Register, searching existing registrations for personalities and images that may preclude their own registration. If a personality or image registration application is accepted by the Guernsey Intellectual Property Office, it is published on the Register for one month, during which any person or entity may comment on and/or file a notice of opposition against the application. If no opposition is filed, the personality or image is registered with the effective date being the original filing date of the personality or image application. A personality or image registration is valid for ten years, and is renewable for subsequent ten-year periods.

How Do You Enforce Your Rights in a Registered Personality or Image? A registrant of a personality or image under the Ordinance would have to likely seek enforcement through Guernsey’s legal system, and then obtain a foreign enforcement of such a judgment abroad in order to effectively utilize Guernsey’s new image rights laws. A registrant may only file an infringement proceeding in Guernsey under the Ordinance if: (a) an infringing image is used for a commercial purpose or financial benefit; and (b) the infringing image is: (i) identical or similar to the protected image; (ii) confusingly similar to the protected image; or (iii) similar to the protected image and takes advantage of or is detrimental to the distinctive character or reputation of the registered personality. Exceptions to such infringement include any use of a registered personality or image related to education, news reporting, or incidental inclusions, where, for example, an image of the registered personality appears in the background of a television segment unrelated to the image or the registered personality.

If a registrant is able to succeed in a legal proceeding in Guernsey, they would likely need to seek foreign enforcement of such judgment abroad in order to effectively enforce their personality rights. As the vast majority of infringers will likely not be domiciled in Guernsey, a registrant will likely need to have a foreign Court enforce their Guernsey judgment in order to enforce their Guernsey image rights registration(s) abroad. The chances of being able to obtain such foreign enforcement depend on a number of factors including reciprocal enforcement arrangements between Guernsey and the country where the infringing party is domiciled, as well as the foreign jurisdiction’s own personality rights laws.

What’s The Takeaway? The implications of Guernsey’s Ordinance have yet to be fully realized, but any person or business wishing to protect their personality rights or limit their liability from the same should pay close attention to the Ordinance’s new legislation. Although Guernsey’ Ordinance appears to expand the types of entities and personal traits that qualify for personality rights, determining whether a foreign Court will recognize these new personality rights in their own jurisdiction remains to be seen. Persons and businesses wishing to obtain personality and image registrations in Guernsey should work closely with qualified counsel in order to better ensure proper registration of such rights.

 

The TPP and Its Implications on Online Copyright Enforcement: Part II – Wikileaks

In November, Wikileaks leaked positions papers from the 18th round of Trans Pacific Partnership (TPP) negotiations concerning the intellectual property (IP) chapter of the TPP agreement. The papers including positions held by TTP member states (Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States and Vietnam) on all forms of IP protections they will provide to IP rights owners and rights holders from their countries, and in many cases, from abroad under a final TPP agreement. Several IP news outlets have provided good analyses of the position papers including The IPKat and InfoJustice, among others.

These position papers also provide updated positions TPP member states have on online copyright enforcement, and particular, the positions each country has on adopting notice and takedown online copyright enforcement systems. In order to provide an update on my October article on the TPP’s implications on online copyright enforcement, the following are positions TPP member states have adopted in the position papers on crucial issues concerning online copyright enforcement under the TPP.

Exclusive Rights

Article QQ.G.1 of the position papers propose that authors of works and producers of phonographic works will have exclusive rights concerning the reproduction of their works in any manner, including any temporary or permanent electronic reproductions and storage. Canada, New Zealand and Vietnam object to such proposed protections. Additionally, Brunei Darussalam, Chile, Japan, New Zealand and Malaysia suggest in a footnote to the Article (“Article QQ.G.1 Footnote”) that exceptions and limitations to such exclusive rights should be established for:

Temporary acts of reproduction which are transient or incidental and an integral and essential part of a technological process and whose sole purpose is to enable (a) a lawful transmission in a network between third parties by an intermediary; or (b) a lawful use of a work; and which have no independent economic significance.

Alternatively, Vietnam proposes that “it shall be a matter for national legislation [of a TPP member state] to determine exceptions and limitations under which the right may be exercised.”

What’s Does This Mean? Providing authors of works and producers of phonographic works exclusive rights to all reproductions of their works, including electronic reproductions for any duration, gives such persons or entities greater direct ability to enforce rights in their works online because Internet Service Providers (ISPs) would ultimately have less discretion to reject notice complaints. As several commentators have mentioned[1], the text of Article QQ.G.1 effective eliminates fair use copyright exceptions provided under U.S. copyright law and the copyright laws of other TPP member states such as Japan.[2]  By doing so, TPP member state ISPs will have greater incentive to act on any copyright infringement on their networks, including alleged infringement notified through rights owner/holder notices, due to the likely elimination of the ISPs’ own fair use defense to contributory copyright infringement for hosting unauthorized reproductions of protected work. Although notice and takedown and notice and notice systems were adopted in TPP member states to provide ISPs safe harbor from such liability upon complying with submitted notices, many ISPs in practice do not act on such notices, by determining that their users’ unauthorized reproduction of copyright-protected works on their networks is fair use, and therefore permissible. Adoption of Article QQ.G.1 would effectively force ISPs to remove allegedly infringing content or face contributory liability for the copyright infringement of their users.

However, if TPP member states ultimately adopt the Article QQ.G.1 Footnote or Vietnam’s proposal, it is likely that they will be given the option to retain any fair use exceptions provided under their own national laws, potentially impacting the degree to which TPP member state ISPs will feel compelled to act on rights owners/holders notifications of alleged infringement.

ISP Liability

The TPP member states have divergent positions on the liability ISPs should be subject to for hosting content that infringes copyright-protected works. Article QQ.I.1 provides that the U.S., Australia, New Zealand, Peru and Singapore propose (while Malaysia and Vietnam oppose) that each TPP member state provide “legal incentives for [ISPs] to cooperate with copyright owners in deterring the unauthorized storage and transmission of copyrighted materials.” Similarly, Canada proposes that each TPP member state “provide legal incentives for [ISPs] to comply, or remedies against [ISPs] who fail to comply, with any procedures established in each party’s law for: (a) effective notifications of claimed infringement; or (b) removing or disabling access to infringing material residing on its networks.”

What Does This Mean? The U.S. and Canada’s Article QQ.I.1 proposals likely leave mandating the adoption of notice and takedown systems in all TPP member states in doubt. The U.S. Article QQ.I.1 proposal provides the same ambiguous text as the February 2011 U.S. Draft IP Chapter, and the Canadian proposal goes so far as leaving the type of ISP legal incentive system each TPP member state should adopt up to its own discretion. As a result, both proposals would likely make the adoption of notice and takedown systems in TPP member states optional. For example, less forceful online enforcement systems, such as Canada’s notice and notice system provides legal incentives for ISPs to coordinate with copyright owners despite lacking the forceful effectiveness of notice and takedown systems currently available in other TPP member states such as U.S., Australia and Japan.

Despite the limitations of such proposals, mandating that TPP member states adopt some form of legal incentives for ISPs to enforce online copyright protections may likely compel TPP member states without any rights owner/holder notification systems, including Brunei Darussalam, Mexico and Vietnam, to adopt some form of rights owner/holder ISP notification system.

Notice and Takedown Procedures

The U.S., Australia, and Singapore propose in Annex to Article QQ.I.1.3(b)(ix) (while Canada, Malaysia and Mexico reject) adopting notice and takedown procedures as the “legal incentives” identified in Article QQ.I.1. These procedures closely resembles notice and takedown procedures provided under U.S., Australian, and Singaporean law. As a part of these procedures, copyright owners and/or rights holders whose works qualify for copyright protection in a TPP member state would have to submit a notice to an ISP that provides the following information in order to have the ISP examine and remove the infringing content in question:

    1. The identity, address, telephone number, and electronic mail address of the complaining party (or its authorized agent);
    2. Information reasonably sufficient to permit the ISP to identify and locate the material residing on a system or network controlled or operated by it or for it that is claimed to be infringing, or to be the subject of infringing activity, and that is to be removed or disabled;
    3. Information reasonably sufficient to enable the ISP to identify the copyrighted work(s) claimed to have been infringed;
    4. A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law;
    5. A statement that the information in the notice is accurate;
    6. A statement with sufficient indicia of reliability that the complaining party is the (U.S. propose “holder”) (Australia and Singapore propose “owner”) of an exclusive right that is allegedly infringed, or is authorized to act on the owner’s behalf; and
    7. The signature of the person giving notice.

What Does This Mean? If a final TTP Agreement mandates that TPP member states adopt a notice and takedown system, implementing Annex to Article QQ.I.1.3(b)(ix) would effectively require TPP member states to adopt similar notice and takedown procedures provided under U.S., Australian, Japanese and Singaporean law. Yet, opposition from Canada, Malaysia and Mexico may make the adoption of such requirements more unlikely.

Additionally, as Australia and Singapore propose that the “owner” of the alleged infringed copyright work be the “complaining party” listed in a notice, it is unknown whether an adopted TPP notice and takedown system would allow licensees of copyright-protected works (the “holders”) to utilize notice and takedown procedures in TPP member states. Limiting such a system’s accessibility to copyright owners only may be overly burdensome for such owners, as it would force them to enforce protections in their works on behalf of their licensees.

What’s The Takeaway?

If the U.S.-backed proposals listed above are enacted in a final TPP Agreement, copyright owners and rights holders from TPP member states, and other countries, will qualify for greater online copyright enforcement protections in TPP member states. However, such proposals have multiple obstacles before being effectively implemented. Such proposals must be included in a final TPP agreement, fully implemented as legislation in each TPP member state, and effectively upheld in each TPP member state’s legal system. Time will tell whether such enhanced online copyright enforcement protections will be adopted in the final TPP Agreement and enacted in all TPP member states.


[1] See Sean Flynn, Margot Kaminski, Brook Baker, & Jimmy Koo, Public Interest Analysis of the US TPP Proposal for an IP Chapter, Program on Information Justice and Intellectual Property, American University Washington College of Law, Dec. 6, 2011, 13, available at http://infojustice.org/wp-content/uploads/2011/12/TPP-Analysis-12062011.pdf (Analysis of the TPP’s fair use exception elimination was based on the U.S.’ leaked IP chapter proposal from Feb. 2011).
[2] Cartoon Network LP, LLLP v. CSC Holdings, Inc., 536 F.3d 121, 140 (2d Cir. 2008). See Saiful Bakri Abdul Aziz, An Assessment of Fair Dealing in Malaysian Copyright Law in Comparison with the Limitation Provisions of Japanese Copyright Law – Within the Current Technology Background, 41 Hosei Riron J. of L. & Pol. 298, 300, 305 (2009), available at http://dspace.lib.niigata-u.ac.jp:8080/dspace/bitstream/10191/12583/1/41(3.4)_298-327.pdf.

Understanding Foreign IP Customs Notification Registration Procedures

In recent years, many national customs offices have established notification procedures to allow IP rights holders the ability to alert customs officials of their IP rights in order to assist them in their import inspection activities. Like Internet Service Provider takedown requests on the Internet (more information about these procedures), IP customs office notifications is a tool for IP rights holders to protect their IP rights abroad by reducing the global spread of infringing goods and content by preventing its cross-border transit—and in many cases, assisting in its destruction. However, to utilize such protection measures, an IP rights holder must ask themselves:

  1. Can you submit such a notification in a particular country?
  2. Does the country you wish to enforce your IP rights have an IP customs notification system?
  3. Does such a country’s national IP customs notification system include the type of IP you wish to protect?
  4. What are the particular foreign customs agency’s IP notification requirements?

Can you submit a IP customs notification? Generally, an IP rights holder can only submit an IP customs notification to a foreign customs office if their IP qualifies for protection in that foreign country. Determining if particular IP qualifies for protection in a country depends on the type of IP the rights holder wishes to protect and to what extent the rights holder has secured foreign legal protections. Here is how it breaks down:

Trademarks. If an IP rights holder wants to submit a foreign customs notification to protect a trademark or service mark in another country, they usually need to have registered that mark in the IP office of that specific country or through a centralized international registration mechanism like the Madrid Protocol (more information about the Madrid Protocol). This is because trademark protection is territorial, meaning that a trademark or service mark registration only grants its owner rights in the mark in the territory of the registering country. So for example, if a U.S. company registers its trademark in the U.S. for particular goods or services and wishes to protect that trademark against infringing imports into New Zealand, it must also register that mark through the Intellectual Property Office of New Zealand or the Madrid Protocol in order to submit a trademark notification to the New Zealand Customs Service.

Of course there are some important exceptions to this territoriality requirement to keep in mind. The European Union maintains a community-wide trademark system (Community Trade Mark) allowing one community registration to qualify for customs notification registration in all EU member states (a list of EU member states is available here). The African Intellectual Property Organization (OAPI) also maintains a community trademark system where a single OAPI community mark registration is recognized in 16 African nations (a list of EU member states is available here).

Patents. Like trademarks, a patent rights holder must generally have a registered patent in the country to which they wish to register an IP customs notification. Unlike trademarks, however, there are no current community registration exceptions. As a result, patent rights holders must register their patents in the country to which they wish to register their IP customs notifications.

Trade Secrets: Generally, as trade secrets require that their owners keep the content of their secrets confidential in order to maintain its legal protections, any disclosure of such secrets to customs officials likely eliminates such secrets’ protections. Therefore, there does not appear to be any national customs IP notification systems that permit trade secret notification.

Copyright. Unlike trademarks and patents, a work qualifying for copyright protection in one country may qualify for copyright protection in other countries in order to allow foreign customs notification registration. However, depending on the country, foreign copyright authors may need to file a copyright registration in order to submit an IP customs notification. A work qualifies for international copyright protection under the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) when it becomes attached. Attachment requires that the author of the work be a national of a Berne Convention country (Berne Convention countries), the author is a habitual resident of a Berne Convention country, that the work is first published in a Berne Convention country, or that the work is published in a Berne Convention country within 30 days after an initial publishing in a non-Berne Convention country. If a work is attached through any of these means, it is treated as if the work originated in each Berne Convention country, and is then subject to each Berne Convention country’s copyright protection requirements in order to qualify for copyright protection in that specific country.

If a work qualifies as an attached work under the Berne Convention and the IP rights holder wishes to register their protected work in a foreign Berne Convention country customs office, they will be able to file a customs registration without having authored the work in the foreign Berne Convention country. Yet, as mentioned above, countries differ on national copyright registration requirements for IP customs notifications. Australia, for example, does not require Australian copyright registration prior to submitting a customs notification application to the Australian Customs Service. However, several major markets, such as the U.S., China and India, require that copyrighted works be registered in their country prior to registering an IP customs notification.

Does the country you wish to enforce your IP rights have an IP customs notification system? Not all countries maintain IP customs notification processes. Some substantial and growing markets, such as Brazil, Canada and Chile, do not currently maintain IP custom notification systems. However, many major markets and transshipment countries maintain various types of IP customs notification systems including Argentina, Australia, China, European Union (EU), Hong Kong, India, Japan, Malaysia, Mexico, New Zealand, Russia, Singapore, South Korea, Taiwan, Thailand, Turkey, Ukraine, United States and Vietnam, among others.

Does such a country’s national IP customs notification system include the type of IP you wish to protect? Several countries only maintain IP notification systems for particular types of IP. For example, The U.S. Customs and Border Protection (CBP) only accepts copyright and trademark notifications, not patent notifications (the CBP only examines imports for patent infringement based on a Section 337 exclusion order from the U.S. International Trade Commission (more information available here)). In contrast, several other countries monitor and detain imports for possible patent and geographical indication infringement. India’s Central Board of Excise and Customs (CBEC) in particular monitors imports for copyright, geographical indication, patent and trademark infringement.

What are the particular foreign customs agency’s IP notification requirements? Once an IP rights holder verifies that their IP qualifies for legal protections in the foreign country they wish to submit an IP customs notification, and that the type of IP they wish to notify customs about can be registered, the IP rights holder’s customs notification must comply with the foreign customs office’s own notification requirements.

Below are the IP customs notification submission requirements for some of the worlds’ major markets.

Governing Law

Types of IP Covered

Notes

Forms/Links

United States 19 C.F.R. 133.1 et seq.
Copyright and Trademark Instructions: Copyright and trademark notification (known as e-Recordation) requires:

-Registering a trademark with the U.S. Patent and Trademark Office or a copyright with the U.S. Copyright Office

-The trademark or copyright’s U.S. registration number

-The name, address and citizenship of the IP rights owner

-The place(s) of manufacture of goods bearing the trademark or copyright

-The name and address of individuals authorized to use the trademark or copyright

-The identity of a parent company or subsidiary authorized to use the trademark or copyright (if any)

Fees: US $190.00 per copyright and trademark (per class of goods and services).

Effective Duration of Notification: 20 years.

e-Recordation Notification Portal
Australia
Copyright Act 1968, Subsection 135(2)

Trade Marks Act 1995, Section 132

Copyright and   Trademark General Notes: Australian IP customs notifications are known as Notices of Objection.To register a copyright or trademark notice with Australian Customs Service, an IP rights holder must submit: (1) a notice of objection form; and (2) a deed of undertaking. Both types of forms as well as further instructions are located in the right column.

Duration of Notification: Four years.

Copyright

Copyright Notice Instructions

Copyright Notice Form

Copyright Deed of Undertaking

Trademarks

Trademark Notice Instructions

Trademark Notice Form

Trademark Deed of Undertaking

China Decree of the General Administration of Customs, No. 183 Copyright, Patent and Trademark Requirements: To file a IP customs notification with the General Administration of Customs (GAC), an application must include:

-a copy of the IP rights holder’s business registration certificate and a Chinese translation

-a copy of the Chinese registration certificate for the copyright, patent or trademark

-Proof of Power of Attorney (if registered by an agent)

-Registration fee (see below)

-Licensing agreements (if any)

-Pictures of the relevant goods and their packaging

Submission: Forms can be filled online or by mail.

Fees:Approximately US $130.00 (800 RMB).

GAC Online Notification Form (In Chinese)
European Union Council Regulation (EC) No 1383/2003, Article 5.5 Copyright, Geographical Indication, Patent and Trademark The EU refers to IP customs notifications as Applications For Action. Applications require: (1) a completed application form; and (2) a completed Article 6 Declaration. Both forms are located to the right.

Note: Individual EU member states may maintain their own IP customs notification systems (a link to individual EU member state customs agencies is available here).

Community Application For Action

Community Article 6 Declaration

India  Notification no. 47/2007 – Customs (n.t.) Copyright, Geographical Indication, Patent and Trademark Registration: The CBEC requires that copyrighted works be registered with Indian Copyright Office, and geographical indications, patents and trademarks with the Office of the Controller General of Patents, Designs & Trade Marks prior to submitting a CBEC customs notification.

Ports of Entry: The CBEC also requires that notifications be submitted to particular ports of entry.

Duration of Notification: Minimum period of one (1) year.

Online Notification Submission Portal

**Note**: The above requirements are meant for comparative educational purposes only. IP rights holders should consult with national customs agencies or qualified attorneys in the jurisdictions they wish to enforce their rights to confirm these and other IP customs notification requirements.

Further Steps. Once an IP rights holder’s IP is registered with a foreign customs office, the foreign customs office will generally notify the rights holder or their representative of any infringing inbound shipments and may detain and potentially destroy infringing imports. However, such detentions may include legal proceedings, as well as additional country-specific enforcement procedures. IP rights holders should obtain qualified local counsel to assist with these enforcement activities.

Making Your IP Licenses U.S. Export Compliant

Export regulations have been in the news recently as U.S. officials pledged during the December U.S.-China Joint Commission on Commerce and Trade to relax technology export controls on exports to China, and the Department of Commerce is currently evaluating several export control reforms. Although these developments may allow U.S. businesses to more easily access foreign markets, it also underscores the need for businesses to understand how their exports, and particularly their intellectual property (IP) licensing, is regulated by U.S. export regulations and what steps they should take to ensure export compliance. Beyond avoiding fines and potential criminal charges, ensuring U.S. export compliance can help businesses develop effective IP licensing procedures to reduce challenges to their international operations and realize foreign market opportunities.

Ensuring U.S. export compliance in IP licensing requires an understanding of what U.S. export regulations are and what issues should be evaluated. With the exception of certain goods and technologies, the Department of Commerce’s Bureau of Industry and Security (BIS) establishes U.S. export controls through the Export Administration Regulations (EAR), which provides requirements and restrictions for IP licenses based specifically on a license’s commodity, software, or technology (Items) and the countries to which the items is being licensed. Particularly, the following four issues should be evaluated when licensing IP:

(1) Is your license subject to EAR? Many acts that would not on first glance be considered an export may be subject to EAR. Generally, any Item transmitted from the U.S. to a foreign country or foreign citizen is regulated by EAR. Not surprising, shipments of U.S. Items from the U.S. to foreign countries are subject to EAR. However, as any transmission of Items to foreign countries or foreign citizens is subject to EAR, the licensing of protected content or technology uploaded online for download abroad or by foreign nationals in the U.S. may be subject to these regulations. Such transmissions also include oral briefings, telephone calls, faxes, and e-mails containing Items to foreign countries and foreign citizens both in the U.S. and abroad. By encompassing these multiple activities, your licensing of copyrighted material, patented technology, or even trade secrets, may be subject to EAR.

(2) What is your EAR classification? If your IP license is subject to EAR, determining what your export compliance requirements are depends on the license’s Items. Such Items and their corresponding export requirements are obtained through identifying the Items’ EAR classifications. BIS classifies all Items for EAR through Export Control Classification Numbers (ECCN), which are available on its Commerce Control List. Establishing a licensed Item’s ECCN number helps to determine whether a licensor needs to obtain an export license prior to licensing.

Often, businesses and rights holders determine which ECCN matches their licensed content or technology for export compliance purposes.  However, it is always worthwhile for a licensor to submit a request to BIS to properly classify their licensed content or technology to ensure export compliance.

(3) Where are you licensing to? In addition to a license’s Items, the country to which the license is being made to establishes what restrictions and requirements a IP licensor will subject to. Those well-versed on current world events might find some of EAR’s restrictions self-evident, yet each country provides different sets of requirements and restrictions for IP licenses, often those one may generally not associate with some of the U.S.’ largest trade partners. Not surprisingly, licensing of IP to Canada, arguably the U.S.’ strongest ally, is exempt from most export licensing requirements, while licensing to countries perceived to be a geopolitical security risk or subject to the U.S. embargoes, such as China and North Korea respectively, may be prohibited. However, licensing of content or technology to some of the U.S.’ largest and most dependable trading partners may pose unexpected export requirements. For example, licensing radiation transport calculation and modeling software to Brazil, one of the U.S.’ top 15 trading partners, is subject to export licensing requirements, while relatively smaller trading partners such as Turkey are exempt from some of these licensing requirements.

As a result of EAR’s country-specific and often divergent export control requirements, licensors should consider the export control consequences of where they decide to license their items to when entering into licensing agreements.

(4) Are there any additional considerations? It is important to note that EAR does not regulate all export controls. Foreign embargoes establish export restrictions beyond EAR, which are governed by the Treasury Department’s Office of Foreign Assets Controls (OFAC), and the Department of Defense, Department of State, and Department of Commerce may maintain their own individual export restrictions. As a result, it is important for licensors to work with their counsel and government authorities to determine whether their IP licensing is subject to these additional export restrictions.

What’s the takeaway? So what lessons should licensors take away from examining these export control issues? Being conscious of the type of licensing being conducted, the content or technology being licensed, and where such items are being licensed to can help ensure compliance with U.S. export controls and ultimately realizing foreign market opportunities.

Are there additional export control issues you face in licensing your IP?

Special thanks to Jennifer Jolley for her assistance.