Gonzaga Law Review

Gonzaga Law Review & Gonzaga's Commercial Law Center Proudly Present:
A Symposium on The Treatment of Intellectual Property in Insolvency Proceedings

The treatment of intellectual property in bankruptcy involves the intersection of two rather specialized areas of law that rest on differing, sometimes conflicting, policies and that employ different terminology.  Perhaps because of that, there seems to be little overlap among the lawyers and academics who practice bankruptcy and those who specialize in intellectual property.  For these reasons, there is a dearth of scholarship on the subject, even though the issues that arise are of increasing importance in this information age.

In response to this situation, the Commercial Law Center at Gonzaga University School of Law has joined with the Gonzaga Law Review to produce this symposium on intellectual property in bankruptcy. The four articles presented are intended to explore this intersection, address some of the important issues that can arise, and provide some methodology for engaging in thoughtful analysis. We hope that these articles prompt a more widespread dialogue, and thus begin a vigorous discussion on the state of the law.

Xuan-Thao Nguyen, Selling It First, Stealing It Later: The Trouble with Trademarks in Corporate Transactions in Bankruptcy

This article confronts the problem of distinguishing true sales of trademarks from mere licenses of trademarks when the seller/licensor files bankruptcy. She focuses on the Delaware Bankruptcy Court's analysis in In re Exide Technologies as an example of the inappropriateness of applying the Bankruptcy Code's provisions on executory contracts to trademark licenses that are in economic form a sale of the trademark. Professor Xuan-Thao Nguyen proposes that a party can imperfectly deal with the uncertainty that the Exide Technologies case exemplifies by crafting the trademark assignment as a sale of the mark in a defined field of use, while keeping rights to the trademark for other uses.

Nadine Farid, The Fate of Intellectual Property Assets in Cross-Border Insolvency Proceedings

This article addresses the complex issues posed in dealing with intellectual property assets in a global market. Given the multinational mode of doing business, there is a debilitating lack of certainty regarding what nation's laws will apply in the event of a party's insolvency to distribute the enormous amount of value tied to intellectual property and the licensing of such property. After demonstrating the diverse approaches of the United States, the European Union, and UNCITRAL, Professor Nadine Farid recommends allowing parties to choose in their corporate charter which jurisdiction will be the exclusive jurisdiction for dealing with its assets in the event of its own bankruptcy.

Sharon K. Sandeen, Identifying and Keeping the Genie in the Bottle: The Practical and Legal Realities of Trade Secrets in Bankruptcy Proceedings

This article explores the difficulties that often arise in attempting to serve the objectives of bankruptcy -- preserving assets for creditors in an open process -- while simultaneously preserving and protecting trade secrets despite their fleeting and ethereal nature.  In doing so, she examines the treatment of trade secrets in bankruptcy from the perspective of every party: debtor, creditor, and trustee. She concludes that special efforts are in order to ensure that any trade secrets included in the bankruptcy estate are not lost through ignorance and inadvertence.

David R. Kuney, Restructuring Dilemmas for the High Technology Licensees: Will "Plain Meaning" Bring Order to the Chaotic Bankruptcy Law for Assumption and Assignment of Technology Licenses?

This article analyzes in detail the conflicting case law on the assumption and assignment in bankruptcy of licenses of intellectual property. Recognizing the sometimes critical importance of such licenses to the successful reorganization of the debtor, Mr. David Kuney argues for an approach that protects the benefit of the licensor's main bargain while still permitting reorganization to occur.

Linda J. Rusch
Stephen L. Sepinuck
Co-directors, Commercial Law Center

Gonzaga Law Review is published three times a year in Spokane, Washington. The Review is a scholarly journal dedicated to the analysis of current legal issues.

Submissions

Gonzaga Law Review encourages the submission of unsolicited articles, notes, and comments on areas of law that may be of interest to the legal profession.

• We accept submissions on an ongoing basis.
• All citations should conform to The Bluebook: A Uniform System of Citation (18th ed. 2005).
• It is the policy of the Gonzaga Law Review to support and further the use of gender-neutral language.
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• We regret that manuscripts cannot be returned.

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lawreview@lawschool.gonzaga.edu

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Editor in Chief
Gonzaga Law Review
Gonzaga University School of Law
PO Box 3528
Spokane, WA 99220-3528

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Except as otherwise provided, Gonzaga Law Review permits copies of all articles to be used for classroom use under the following conditions:

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NOTE: Gonzaga Law Review reserves the right to deny any use of articles when such use does not meet the above requirements. Gonzaga Law Review also reserves the right to deny any use of articles which, although in technical compliance with the above requirements, may adversely affect the professional reputation of Gonzaga Law Review or Gonzaga University School of Law.

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