Ernest Hemingway is not just a famous author anymore. Part of
his legacy, as carefully managed by companies controlled by his
heirs, is now growing into a significant branding enterprise that
does much more than publish books. While there are still existing
copyrights in his literary works–the cornerstone of
intellectual property (IP)–there is also newer IP, such as
trademarks based on his name, which, since he is dead, can be a
registered, Ernest Hemingway®. There are also
personality rights in his likeness. Whether or not a famous
author's legacy should be commercialized in the manner
discussed below is an issue that will be debated among fans, but if
it is going to be commercialized, then protecting the IP rights is
IP should always be managed in an orderly way. In each
case, an owner needs to identify, control and secure its IP
assets, register them where appropriate, decide whether to make the
product or offer services yourself, or license other companies to
do so. Owners need to be proactive, not reactive.
While Hemingway's life was chaotic
at times, the newer branding endeavors in his name appear to be
more orderly and very collaborative. Some products are
commercialized under license to a Hemingway-named company, such as
clothes by Hemingway, Uomo., which we assume to be related to the estate.
In other cases, a Hemingway company cooperatively licenses-out the
Ernest Hemingway® trademark rights to arm's length third
parties. There is
furniture by Thomasville, rum
by Papa's Pilar,
seasonings by EH Gourmet and a boat
by Baha Marine. There is even a
Hemingway app developed by two brothers to help improve a
user's writing style to be more concise. If only it was so easy
to write like Hemingway!
Licensing-out is not just for low-tech consumer products,
it can also be used to commercialize cutting edge science. In
biotechnology, Cetus licensed a famous patented reaction called PCR
which was used to exponentially multiply the miniscule amounts of
DNA in a sample so that it could be tested and characterized. It is
very useful for basic research as well as diagnostics. The initial
patents, US 4,683,202 and 4,683,195, later acquired by Roche,
expired about 10 years ago, but improvements have been patented,
portfolio of IP to license-out.
Now a new technology called CRISPR is being used to modify
genes of mammalian cells. There are initial patents held by the
Broad Institute, MIT and other affiliated groups, which focus on
engineered components, compositions and processes. These patent
rights are available for
license-out. Again, there is a pattern of building a portfolio
of patents around the original technology and new developments.
If the person that produces the initial innovation protects it
properly, then it may be able to obtain broad rights that control
use of its own technology by others, and that are also broad enough
to cover incremental improvements made entirely by arm's length
companies. This can be the basis of a good licensing-out program
that is a win-win for everybody by making the new IP widely
available while generating revenue.
Protecting IP early is critical regardless of the type of IP.
However, as the Hemingway example shows, it is never too late to
try to build IP and license it out.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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