April 6, 2018
In a Chapter 11 proceeding, the debtor seeks to reorganize its business by decreasing its debts and perhaps terminating certain agreements it finds burdensome. To allow the debtor to reorganize without having to fend off creditors, Section 362(a) of the Bankruptcy Code provides that certain actions against the debtor are automatically "stayed" (that is, suspended). Thus, during the stay, the licensee would be prevented from taking certain actions against the publisher (for instance, the licensee could not force the publisher to deliver required artwork).
Ofperhaps greater concern to the licensee is Section 365 of the Bankruptcy Code, which gives the debtor the right to assume (that is, accept) or reject any contract that has not been fully performed by the parties (what is known as an "executory contract"). Most license agreements (including those described in this article) fall into this category. If the debtor/licensor accepts the contract, then it must cure existing defaults and thereafter should carry out its obligations under the agreement. If the debtor rejects the contract, it is effectively terminated, and the other party merely has a claim for any damages incurred (with damages incurred after the bankruptcy filing ranking ahead of those incurred before the filing). Moreover, during the time period the debtor/licensor is given to determine whether to accept or reject a contract, the other party must continue to carry out its obligations under the contract. The Bankruptcy Code grants the debtor a lengthy, indeterminate period of time to make its determination. Since the burden is on the licensee to have the court set a deadline, the period can stretch for months.
What does all this mean for the licensee that has spent $300,000 ramping up for production of the comic book-based action heroes? The bad news is the debtor/licensor can elect to reject the license agreement (perhaps because another licensee is waiting in the wings ready to offer a better deal), in which case the licensee would simply have a claim for damages, and would have to stand in line with numerous other creditors to obtain what might be pennies on the dollar. Moreover, while the licensor is deciding whether to accept or reject the contract, the licensee is obligated to perform the agreement (i.e., continue with its production plans and pay royalties on any sales).
There is some good news, however. In 1998, Congress amended the Bankruptcy Code by adding Section 365(n), which provides that, even if a debtor/licensor rejects a contract, the licensee may retain its rights with respect to any intellectual property licensed to it under the contract, provided the licensee continues to make any payments due the licensor in connection with such license. Unfortunately, the licensee is not fully protected by Section 365(n), as the definition of intellectual property specifically excludes trademarks. Thus, while the licensee might be able to continue to produce action figures that are based upon copyrighted artwork provided under the license agreement, the licensee would not be able to use the associated trademark, such as "Spider-Man." Since the licensee likely will not want to manufacture figures and market them as "the strong guy in blue and red tights who can climb walls," additional preventive measures would have to be taken to protect the licensor's investment in the transaction and allow it to reap the benefits of the deal.
A prospective licensee should do its homework and confirm that the licensor has sufficient cash on hand to continue its operations. Size certainly does not equal stability, and even if a parent entity has cash on hand, the licensor may be a cash-starved affiliate whose future outlook is questionable. Of course, even if the licensor has a heavy debt load, the licensee may want to proceed, as the potential payoffs may be great. If this is the case, the license agreement can be structured as follows to afford maximum protection to the licensee:
- If the licensee is to pay a stream of royalties to the licensor, to the maximum extent possible the payments should be characterized as being made for the right to use the licensor's trademark, as opposed to any copyrighted material. Even if the licensor rejects the license agreement, per Section 365(n), the licensee can keep any copyright license (but not the trademark license) in effect. If few payments are to be made for the copyrighted artwork (the physical representation of the character), the licensee can continue to use the artwork for relatively little money. Moreover, the licensor may be more inclined to keep the license agreement in effect to retain the larger trademark payments.
- The licensee should avoid making any up-front payments (or at least any sizable up-front payments). If any such payments are made, the licensor subsequently can seek Chapter 11 protection and reject the license agreement, and all the licensee can do is seek repayment along with all other creditors. If the licensor insists on some up-front payments, try to defer payment to one or more later dates so you will have an opportunity to exploit the license before payment is made. This strategy also may give the licensor reason to accept the contract, so it can receive the later payments.
- If possible, require the licensor to place an agreed-upon sum of money in escrow, which would be released to the licensee if the license is terminated for any reason other than a breach by the licensee. Alternatively, a portion of the royalties could be held back and paid to the licensor only upon the termination of the license period (or at least at some later date, allowing the licensee time to earn back its costs).
- The license agreement must specifically state it is an intellectual property license under Section 365(n) of the Bankruptcy Code, and should specify what a reasonable maximum period would be for the licensor to accept or reject the contract. While such a period probably would not be accepted by the bankruptcy court, the licensee could use it in asking the court to set a short deadline for the licensor's decision.
- A licensee might seek outright ownership of the trademark (at least with respect to certain uses), in which case a rejection of the contract would not affect the licensee's right to use the trademark. However, it is questionable whether such an approach would be upheld by a bankruptcy court, and might only be useful in limited circumstances.
For the Licensor
Having considered the plight of the licensee, what about the licensor that just read its childrenswear licensee, XYZ Co., has filed for bankruptcy. As a result of the automatic stay described above, the licensor cannot take any actions against XYZ Co., even if it is in breach of the license agreement (i.e., it is not paying royalties). Also, the licensor must continue to perform under the agreement until XYZ Co. decides whether or not to accept the contract. For instance, if the license agreement requires the licensor to spend its own funds advertising the XYZ Co. license, the licensor may be obligated to incur such costs even though it is not receiving royalties from XYZ Co., and even though XYZ Co. ultimately may reject the contract.
But the licensor can take preventive measures. In addition to conducting its research into the licensee's financial health, the licensor should keep in mind the following:
- The license agreement should contain financial covenants, which, if not met, would trigger a termination of the agreement. While a bankruptcy filing generally cannot be used to trigger a termination, the licensor could require that the licensee maintain a minimum amount of cash on hand, or that certain debt-to-equity ratios be met. Failure to meet such covenants would be an early warning of financial problems, and could give the licensor an opportunity to terminate the relationship before the bankruptcy filing occurs.
- The licensor would want a sizable up-front and nonrefundable payment, either as payment for granting the license, or that could be offset against future royalty payments. If the licensee rejects the contract, the licensor would keep such payments. This would give the licensee a reason to accept the contract.
- The licensor likely wants to avoid a situation where XYZ Co. files for bankruptcy protection, and then assigns the contract to a party with which the licensor does not wish to do business. Thus, the agreement should be very clear that the license is personal to XYZ Co., and is not assignable under any circumstances. Also, the contract should specify what a reasonable maximum period would be for the licensee to accept or reject the contract.
While there is no sure-fire means of avoiding the negative impact of a contract partner's bankruptcy filing, a well-drafted agreement can help avoid many of the pitfalls inherent in any bankruptcy. Remember: Time invested now is money saved later.
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