Subject to the other terms of this Sublicense, the Linux Foundation hereby grants sublicense to Sublicensee a worldwide, non-exclusive, perpetual, non-transferable sublicense to use the Sublicensee`s Trademark and Customer Base as set forth in the Statement of Approval of the Application (this Form, the “Authorized Use”) in connection with the authorized goods/services specified in the Application Approval Statement; that (if the Authorized Goods) or are provided (if the Authorized Services) by or on behalf of the Sublicensee. This sublicense may not be used as evidence of the consent of the Linux Foundation or Mr. Torvalds to register a trademark or other registered trademark with a registration authority in any jurisdiction. If such an application has been or has been filed by or on behalf of the sublicensee for the sublicensee mark and that registration authority ultimately refuses such registration as being similar to the mark (or the corresponding doctrine in the respective jurisdiction), the sublicensee shall immediately, and no later than 30 calendar days after such refusal, make use of the sublicense mark and any registration or request of Interrupt and abandon the registration, and this sublicense terminates automatically without further action by the Linux Foundation. This sublicense does not guarantee that registration for the use of the sublicense mark (or any other mark containing the trademark) will be granted in any jurisdiction, and neither the Linux Foundation nor M. Torvalds cannot or have no obligation of any kind or quality to assist sublicensees in obtaining, maintaining or defending such rights, which the sublicensee has or may perform. 4.1 The Linux Foundation warrants that it has the right to sublicense the Mark in the United States and wherever Mr. Torvalds owns the Mark. THE Linux Foundation MAKES NO OTHER WARRANTIES OF ANY KIND, EXPRESS OR IMPLIED, INCLUDING, BUT NOT LIMITED TO, AN IMPLIED WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE (E.B. THAT ALL AUTHORIZED GOODS/SERVICES TO WHICH THE SUBLICENSEE`S TRADEMARK APPLIES CONFORM TO ALL STANDARDS) AND ANY WARRANTIES OF NON-CORRUPTION OF THE TRADEMARK, THE SUBLICENSE TRADEMARK OR AUTHORIZED PRODUCTS/SERVICES BEARING THE TRADEMARK AND/OR SUBLICENSE TRADEMARK. The parties may modify their respective contractual obligations in different ways.
It is not always necessary to prove a written or oral change, as the modification of a written contract may be derived from the conduct of the parties. For example, if a party is aware of modified payments and chooses to accept them without objection, that action constitutes implied consent. It should be noted that license agreements that are silent regarding the sublicense of trademarks are not subject to tacit changes. However, if the license agreement is ambiguous with respect to sublicense rights, this ambiguity may be eliminated by contractual changes resulting from the conduct of the parties. Not to accept benefits or royalties from sources other than those provided for in the License Agreement; and CONSIDERING that the Sublicensee wishes to acquire the Linux Foundation`s right to use the Mark in conjunction with the Authorized Products/Services specified in the Sublicensee`s Sublicensee Application, to the extent that the Sublicensee`s use of the Mark is not considered “fair use”. “Authorized Goods/Services” means Goods/Services based on Linux. Linux-based assets are computer systems and software that use, integrate, or derive from any version of the Linux kernel as published by Mr. Torvalds (or his agent or authorized successor) on www.kernel.org. Linux-based services are services that provide, document, facilitate, or enhance Linux-based goods.
“Sublicensee” means the trademark from which Sublicensee has requested permission for commercial use as specified in the Application Approval Statement sent by the Linux Foundation to sublicensee (the “Application Approval Statement”). Does your licensee have a strong defence or can you prevail in an infringement lawsuit? Not surprisingly, the answer varies depending on the circumstances. Whether you`re a trademark licensor hoping to better understand the defenses available to your licensee, or a licensee whose licensor has threatened to claim a defect and take legal action against you, it`s important to know the intricacies of trademark protection. 5.5 Applicable law and jurisdiction. This sublicense shall be governed by and construed in accordance with the U.S. trademark laws and the internal laws of the State of Oregon, without regard to its conflict of laws rules. The parties hereby consent to the exclusive jurisdiction of the state and federal courts located in Multnomah County, Oregon, for all disputes arising out of this sublicense. How can a licensee assert its right to sublicense a trademark outside of the various corners of the license agreement and associated amendments? A license agreement allows the trademark owner (licensor) to transfer the right to manufacture or market goods or services, as well as the right to use the trademark affixed to that good or service, to a person or company (licensee) that is not the primary owner of those rights. The sublicense right allows that licensee to grant these rights to another party (sublicensee) that was not part of the original agreement. If there is explicit authorization, there are usually no problems between the licensor and the licensee, and the sub-license right is relatively clear.
However, disputes often arise in the context of a silent or ambiguous licensing agreement on the issue of sublicense. The vast majority of previous case law has stated that a trademark licensee – including an exclusive licensee – cannot sublicense a trademark to a third party without first obtaining the express consent of the licensor. This is another reason why licensors should conduct frequent on-site visits for quality control purposes. In order to avoid a waiver through silence, a licensor must immediately and expressly object in writing to a breach of the license agreement. But what happens when a trademark owner doesn`t monitor a trademark? This omission could give rise to a so-called “naked license”, which means that the licensor has lost all ownership rights in its trademark and cannot sue either the licensee or a third party for infringement. Since a “bare license” defense is accepted by a majority of courts, a licensee in possession of a “bare license” can freely sublicense the trademark without fear of infringement lawsuit by the licensor. “The Linux® trademark is used under a sublicense from the Linux Foundation, the exclusive licensee of Linus Torvalds, the global trademark owner.” A trademark owner is required by law under the Lanham Act (15 USC § 1051 et seq.) to monitor and control licensee`s use of its trademark in order to protect the public`s expectation that all products sold under a particular trademark are from a common source and are of the same quality. Common sense suggests that if a licensee could sublicense a trademark without notice or obtain the consent of the licensor, a licensor would lose the ability to monitor the trademark. According to that reasoning, an unauthorised sub-licence of a trade mark would infringe the right and obligation of the licensor to control the nature and quality of the goods and services offered under the licensed trade mark. In addition, the licensor would thus risk the loss of its legal rights in the trademark by waiver.
Immediately and expressly object in writing to any perceived breach of the License Agreement by a Licensee, in particular before the Licensee invests in activities outside the scope of the Agreement and its amendments. To avoid this type of waiver, a licensor must not accept benefits or royalties that are not taken into account by the parties to the license agreement. Take a minute and imagine that you, as a licensor of a trademark, have just picked up this voice message from a licensee of one of your trademarks: “I understand that you are threatening to claim the defect in our license agreement and sue me for trademark infringement because I have sublicensed your trademark abroad without your consent.