With more innovation in technology comes an increase in potential intellectual property rights. These new IP rights can be profitable if you have the infrastructure to implement them. But what do you do if you need to outsource your production? How do you protect your new IP rights?
What is an Intellectual Property License?
In an intellectual property license, you retain ownership of your intellectual property. Through a license agreement, you give another person or entity permission to use your intellectual property. Which rights, any geographical restrictions, market restrictions, and what the other person or entity is permitted to do with the IP are set out by the license agreement. Through a license, you control how your intellectual property is used while collecting royalty payments.
Exceeding the Scope of a License Agreement?
When the other person exceeds the permissible use outlined in the license agreement, you can sue to enforce your intellectual property rights. For instance, if a licensee sells a product in a territory the licensee was not granted rights for, you can sue for infringement and for breach of the license agreement.
Dolby Sues Roku
On August 1, 2024, Dolby filed a lawsuit against Roku for breaching its license agreements. Dolby alleges Roku exceeded its permitted licensed rights by infringing Dolby’s copyrights and patents. According to Dolby, Roku integrated Dolby’s intellectual property in Roku’s software which was then distributed to consumers.
In 2015, Dolby and Roku entered into a license agreement that permitted Roku to use Dolby’s technology “‘for the sole purpose of verifying and demonstrating’ the compatibility of Dolby Technologies with Roku’s middleware.” Dolby alleges the 2015 agreement “explicitly prohibited Roku from distributing Dolby IP.” Dolby refers to this agreement in its complaint as the “Interoperability Agreement.” In 2016, the parties entered into another agreement that permitted Roku to integrate Dolby’s technology in Roku’s products and sell these products with a per-unit sold royalty fee paid to Dolby. In its complaint, Dolby refers to this agreement as the “System Agreement.”
In its current suit, Dolby alleges Roku breached the Interoperability Agreement when it sold products that included Dolby technologies. Additionally, Dolby alleges Roku breached the System Agreement because it refused to cooperate with an audit. In its complaint, Dolby states Roku infringed on its copyrights and patents by selling these products without a license to do so.
If you believe someone has infringed your intellectual property rights by exceeding the scope of their license, contact us to learn how we can help.
About Griffith Barbee
Griffith Barbee is a boutique intellectual property and commercial litigation law firm in Dallas. Our award-winning lawyers represent companies, business leaders, and entrepreneurs in high-stakes disputes in federal and state courts throughout the country and in tribunals within the U.S. Patent and Trademark Office.
