The licensing of Intellectual property serves as one of the most fundamental rights granted in the franchisor / franchisee relationship. Successful franchises and franchisors require strong trademarks (and sometimes, patents) that are both recognized by consumers in the marketplace and capable of protection under federal and state law. When a franchise is granted, the franchisor undertakes a serious responsibility and obligation to defend and preserve the marks that it is licensing.
When a franchisors trademark is challenged by a competitor or third party, the franchisor must vigorously defend its interests, and indirectly, the interests of its franchisees. When counseling and advising clients as to intellectual property planning and litigation strategy, the potential purchase of “Intellectual Property Infringement Defense Insurance (“IPIDI”) is sometimes raised as a means of defraying what may be substantial legal fees typically incurred in IP litigation.
What is IPIDI – basically it is an insurance policy that covers your legal fees in the event that you are sued for infringing on the trademarks or patents of a third party. The exact nature of this insurance varies between insurance companies and will be defined by the express terms of the proposed insurance agreement. So when considering this insurance and comparing premiums, it is critical to have your lawyer evaluate the express terms of the proposed policy.
Should IPIDI be Considered by Franchisors – Yes, but it is critical to recognize that this insurance is typically limited to only those instances where you are sued and not where you are suing a competitor for infringing on your trademarks or patents. Also, remember that this policy only covers “legal fees” and if you lose the lawsuit (i.e., found to have infringed a competitors IP, insurance will not cover monetary awards or judgments issued against you.
Some of the Important Factors to Consider – When considering this form of insurance, you should discuss with your franchise or business lawyer some of the following issues:
- Does the policy exclude declaratory judgment lawsuits;
- If the policy excludes “intentional acts of infringement” from coverage, how does the policy define “intent;
- Does the policy require frequent opinion letters from legal counsel as to the subject trademarks and patents;
- How does the premium compare to historical and possible future IP “defense” legal fees.
Like any insurance, Intellectual Property Infringement Defense Insurance does not offer a complete solution, but, depending on the terms of the policy and the cost of the premium, should be considered as a supplement to your intellectual property strategy and planning.