Licences and non-licences

The IPKat's scholarly and distinguished friend Professor Bob Gomulkiewicz (University of Washington School of Law) is visiting this year at Oxford's Intellectual Property Research Centre, where he is researching the history of intellectual property licensing. If you know of any useful articles, books, papers, or other sources he should be browsing through, Bob will be grateful to learn about them. Possible topics would include early copyright licensing by collective rights organizations, early patent licensing, and early licensing of unregistered trade marks. You can email Bob here.

A few weeks ago the IPKat put out a plea for information concerning "non-asserts". He wrote:
"It sometimes happens, usually when an intellectual property dispute is settled by agreement, that the IP rights owner undertakes not to assert his right against the other party to the agreement. In theory the rights owner merely forbears to sue, but in practice it can be said to be a licence. Does any reader of this blog know of any reported cases -- in any jurisdiction -- which turned on whether the non-assert was characterised as a licence or not?".
After a respectable time the Kat returns to this subject to report on readers' responses, which were quite limited this time round. Several UK readers identified the same case: SAFARI Trade Mark, a 2001 decision of Allan James of the UK IPO. Alas, this was the only bit of case law received from the UK or indeed from any other jurisdiction.
Left: not all consumers find SAFARI an appealing brand concept
Curiously, all of the respondents who suggested this case were trade mark attorneys. Anyway, thanks for taking the time and trouble to write in -- and thanks also to those of you whose correspondence the Kat appreciated receiving.
Licences and non-licences Licences and non-licences Reviewed by Jeremy on Tuesday, October 28, 2008 Rating: 5


  1. Dear Jeremy

    In approx 1988, I represented Sport Internationaal Bussum BV in the Court of Appeal against Hi-Tec Sports PLC. Although that litigation related to the validity of a no-challenge clause in a trade mark licence, you might find some authority for your case in the various decisions about trade mark licences which were cited in their Lordships' judgments. That 1988 decision (as well as that of the House of Lords in 1984 in related litigation between Sport Internationaal and Inter-Footwear Ltd) are extensively cited by Neil Wilkof in his excellent tome on trade mark licences, to which you might also like to refer.

    Kind regards.


  2. The GNU General Public License (GPL) can be seen as an open-ended conditional undertaking not to assert an intellectual property right; albeit not an undertaking established in the fallout of a lawsuit. Similarly the "patent peace" section of Sun's recent CDDL licence, and other such similar licences.

    Proponents of the GPL have always presented it as a significant issue that "GPL is a license not a contract". According to Pamela Jones of Groklaw, "The reason [this distinction] matters is because if it's a contract, then you enforce it under contract law, which is enforced state by state, and there are certain necessary elements to qualify as a valid contract. If it's a license, then it's enforced under copyright law, and that's enforced on the federal level according to the terms of copyright law, not contract law. The penalties available are not the same."
    -- Pamela Jones, "The GPL is a License, Not a Contract", Groklaw, December 14 2003.

    See also Moglen and inevitably Stallman on the subject:

    The GPL has now been tested in courts in America, and I believe that this question was raised and upheld, but I can't remember the case.

    In Germany I understand such distinctions are not so relevant, and when the GPL has been tested in German courts I believe they have treated it just as another type of contract.

    Andres Guadamuz-Gonzalez had a paper in EIPR in 2004 (vol 26, pp 331-339) on the GPL in Civil Law Europe which I believe considered the German situation.

  3. The recent US case relating to the open source license was Jacobson v. Katzer (Fed. Cir. 2008). The CAFC held that open source license conditions are enforceable under the copyright laws.

    More info at:


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