Articles

Use of Software License after Merger Was an Unauthorized License Transfer and Copyright Infringement

Journal of Intellectual Property Law & Practice
March 2010

Esquenet, Margaret A.

Article

In the case of Cincom Systems v. Novelis Corporation, the Sixth Circuit upheld the District Court’s grant of summary judgment in favor of plaintiff-licensor (Cincom) on its copyright infringement claim against Novelis, holding that the defendant-licensee’s merger resulted in an unauthorized transfer of the software license. Finnegan partner Margaret Esquenet examines the case and explains the practical significance for IP practitioners: companies considering a merger or other corporate restructuring should carefully review IP licenses to ensure compliance with their terms. Esquenet concludes that unless the license agreement specifically allows for assignment or transfer, the Cincom case illustrates that the surviving entity may not be able to continue using the IP licensed to the original entity without obtaining permission from the licensor.  To view the full text of the article please visit http://jiplp.oxfordjournals.org/cgi/content/full/jpp213?ijkey=CBhLq70z1Y2GEzf&keytype=ref.