Q&As

Does the grant of a copyright licence provide an implied right to sublicense that right in the absence of any express provision in the licence, as is possible under the general law of contract?

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Produced in partnership with Joanne Frears of Lionshead Law Ltd
Published on LexisPSL on 07/02/2017

The following IP Q&A Produced in partnership with Joanne Frears of Lionshead Law Ltd provides comprehensive and up to date legal information covering:

  • Does the grant of a copyright licence provide an implied right to sublicense that right in the absence of any express provision in the licence, as is possible under the general law of contract?
  • Sublicences in contract law
  • No automatic sublicences for intellectual property
  • Statutory and common law rules
  • Sublicenses

Sublicences in contract law

Contract law generally allows a licensee to sublicense their contractual rights and obligations, unless the agreement states expressly that this is not permitted. This principal was established in British Waggon Co v Parkgate Waggon Co v Lea & Co.

The exception to this is where the contract requires a particular person to perform the contract or requires personal services from them.

Sublicensing involves the creation of a further licence which is intended to be subordinate to the head licence and which pushes some or all of the elements of performance of the contract onto the sublicensee. A written sublicence will specify the terms under which it is granted, such as the deliverables and the limits on use of the licensed rights.

No automatic sublicences for intellectual property

The general contractual position stated above is reversed for intellectual property and under English law sublicensing of such rights can only be undertaken with express permission of the head licensor. The general consensus is that by granting a licence and not an assignment, the rights owner wishes to maintain an element of control over their rights and that providing a licensee with an automatic right to sublicense would undermine this. Although misuse or non-use of a paten

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