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The American Bankruptcy Institute‘s Commission to Study the Reform of Chapter 11 issued its report last week, capping more than two years of hearings, meetings, and hard work. Having had the honor of testifying before the Commission on intellectual property and bankruptcy issues at one of its hearings in New York in June 2013, I wanted to take a closer look at its intellectual property recommendations when a licensor or licensee files bankruptcy.

You can download the Commission’s entire report for all the details, but the Commission’s main IP recommendations address five key issues:

  1. Should rejection of an intellectual property license under Section 365(g) terminate an IP licensee’s rights to the IP (absent Section 365(n) protection);
  2. Should a bankrupt licensee or trustee be able to assume an in-bound IP license;
  3. Should a bankrupt licensee or trustee be able to assign an in-bound IP license;
  4. Should Section 365(n) expressly cover foreign IP when a licensor is in bankruptcy; and
  5. Should trademarks be covered by Section 365(n)’s protections when a licensor is in bankruptcy?

Let’s examine the Commission’s recommendations on each in turn.

The Consequences Of Rejection. A threshold issue addressed was the proper impact of rejection of an executory contract, including an intellectual property license, under Section 365(g). The Commission recommended that rejection end a non-debtor counterparty’s right to continued use of property of the estate, subject to specific protections such as Section 365(n). In doing so, it appeared to follow the long-standing Fourth Circuit decision in Lubrizol Enterprises, Inc. v. Richmond Metal Finishers, Inc., 756 F.2d 1043 (4th Cir. 1985) and not the Seventh Circuit’s more recent decision in Sunbeam Products, Inc. v. Chicago American Manufacturing, LLC,  686 F.3d 372 (7th Cir. 2012). As a side note, the Commission also recommended that all IP licenses be deemed executory. In combination, these positions would make the scope of Section 365(n) even more important and, as we will see on the final two questions, the Commission had a series of specific recommendations on Section 365(n) protections.

Resolving The Hypothetical/Actual Test Issue. A key question that arises when a licensee files bankruptcy is whether the debtor licensee can assume an in-bound license of another party’s intellectual property. The circuits have split on this “hypothetical vs. actual test” reading of Section 365(c)(1) and the Commission sided squarely with the actual test when a debtor in possession, as licensee, proposes to assume but not assign an IP license. The Commission believed a licensor would be receiving the benefit of its bargain in that situation since the debtor in possession as licensee would be assuming, and therefore continuing to perform under, the license. This makes sense for a debtor in possession, but the Commission’s recommendation speaks of the right of a “trustee” to assume a license, which would introduce a new party (the trustee) in the role of licensee. Although a full discussion of this “hypothetical vs. actual test” split is beyond the scope of this post, you can read about it — and the Supreme Court’s interest in the issue a few years ago– in this earlier post discussing the issues, or of course in the Commission’s report.

Making IP Licenses Assignable To Non-Competitors. In addition to voting to codify the actual test when a debtor in possession or trustee proposes to assume an IP license, the Commission also recommended that debtor licensees and their trustees be permitted to assign those licenses to a single assignee under Section 365(f), notwithstanding applicable nonbankruptcy law such as federal patent, copyright, or trademark law, or any contrary provision in the license.

  • If the proposed assignee is a competitor of the licensor or an affiliate of such competitor, the Commission recommended that the bankruptcy court be permitted to deny the assignment if it determined, after notice and a hearing, that the harm to the nondebtor licensor resulting from the proposed assignment “significantly outweighs the benefit to the estate derived the assignment.”
  • The burden of proof would be on the nondebtor licensor in such a hearing.
  • If adopted, this would make in-bound IP licenses more assignable in bankruptcy than out, similar to non-residential real property leases, and licenses could potentially become a source of value for creditors.
  • However, even if owners of patents, copyrights, and trademarks could accept adoption of the actual test for assumption of IP licenses, they might have a harder time giving up control over whether and to whom licenses of their IP could be assigned.

The Foreign IP Issue. Section 101(35A) of the Bankruptcy Code defines “intellectual property” for purposes of the protections of Section 365(n), using either general terms or references to provisions of the United States Code. The Commission seemed to believe foreign IP was not covered by the current definitions (although several arguments suggest that it is), and to resolve any uncertainty the Commission recommended that foreign patents and copyrights expressly be included in Section 101(35A)’s definitions. It found no reasonable basis for treating foreign IP differently. In addition, the Commission recommended that foreign trademarks also be included in this definition subject to the same limitations and conditions, discussed below, as it proposed should apply to domestic trademarks.

Giving Trademark Licensees Protections Under Section 365(n). An important recent trend at the intersection of IP and bankruptcy law has been the efforts of courts to protect trademark licensees from the effects of rejection of their licenses by trademark licensors in bankruptcy. The Third, Seventh, and Eighth Circuits have sided with trademark licensees in recent cases, and a New Jersey bankruptcy court recently went so far as to extend Section 365(n) protections to trademark licensees on equitable grounds. In addition, the House of Representatives (but not the Senate) passed the Innovation Act, which would have added trademarks to Section 101(35A) and therefore grant them Section 365(n) protection. Addressing this issue, the Commission recommended the following:

  • Trademarks, service marks, and trade names as defined in Section 1127 of Title 15 of the U.S. Code should be added to the definition of Section 101(35A).
  • If the trustee or debtor in possession rejects a license of a trademark, service mark, or trade name, Section 365(n) would apply with certain modifications. First,  the nondebtor licensee would be required to comply with the license and related agreement, including with respect to (i) the products, materials, and processes the license permitted or required, and (ii) its obligations to maintain sourcing and quality of the licensed products or services. The trustee (or debtor in possession) should maintain the right to oversee and enforce quality control but without any continuing obligation to provide further products or services.
  • The concept of “royalty payments” would be expanded to include “other payments” contemplated by the license of the trademark, service mark, or trade name.

These trademark recommendations are similar to the Innovation Act’s provisions and, as such, might find support in Congress.

Conclusion. The ABI’s Chapter 11 Commission has presented a comprehensive set of recommendations on many fundamental aspects of Chapter 11. In its intellectual property recommendations, the Commission tackled some of the most common bankruptcy and IP issues being litigated today. If enacted by Congress, its recommendations would resolve circuit splits, clarify licensee and licensor’s rights in bankruptcy, and squarely extend protection to trademark licensees. Whether or not you agree with every recommendation, the Commission should be commended for its serious, thoughtful, and diligent effort to improve Chapter 11 for debtors, creditors, and the general public.