What Options are Available to Deal With the Breach of an IP Licensing Agreement?

Through a licensing agreement, the right to use intellectual property—such as a trademark or a copyright—can be granted to another party. A properly drafted licensing agreement is a legally enforceable contract. You can take action against the counterparty to address a breach. A proactive approach is key. Here, our Florida trademark and copyright licensing attorney provides an overview of your options if your counterparty breached the terms of a licensing agreement.

Option #1: No Action (Breach Will Likely Continue) 

If a licensing agreement is breached, you are likely not required by law to do anything. However, it is important to emphasize that a breach will almost certainly persist. The other party could interpret your silence as acceptance or indifference to the violation. Leaving the breach of a licensing agreement unaddressed—even if it is relatively minor—is generally not the right solution.

 Option #2: Notify Other Party, Seek Direct Resolution 

You can notify the other party about the breach and seek a direct resolution. A breach of a licensing agreement could be unintentional or a mistake. Alternatively, the other party may be willing to correct things relatively quickly after they are notified. By addressing the issue openly, you may resolve the problem amicably without further escalation.

 Option #3: Terminate the Licensing Agreement 

Depending on the nature, severity, and persistence of the breach, you may have the option to terminate the licensing agreement. A material breach of contract is often good cause for termination. Though, the specific language within the contract always matters. Termination sends a clear message that you will not tolerate violations of the agreement. Of course, it is certainly not the right option for each situation. Pursuing termination is likely to end the commercial relationship.

Option #4: Escalate the Matter (Alternative Dispute Resolution) 

You can escalate the matter through alternative dispute resolution methods like mediation or arbitration. By choosing this route, you seek a resolution outside of court, which can be faster and less adversarial. Many licensing agreements call for mediation and/or arbitration to resolve breach of contract issues.

 Option #5: File a Breach of Contract Lawsuit  

A lawsuit may be required to address a serious breach of contract in a licensing agreement case. By taking legal action, you pursue remedies such as damages or injunctions to enforce your rights. Of course, litigation is generally only the right approach after other options—such as trying to settle the matter directly with the counterparty—have not produced results. If you are considering breach of contract litigation over a licensing deal gone wrong, a Florida IP lawyer can help.

 Contact Our Florida IP Licensing Attorney for Immediate Help

At Perkins Law, our Florida IP licensing attorney provides solutions-focused legal advocacy to clients. We handle all types of cases, including trademark licensing disputes and copyright licensing disputes. Contact us today to arrange your fully private initial case review. With a law office in Boca Raton, our firm handles IP licensing breach of contract cases throughout South Florida.