作者：蔡億達律師（本會副秘書長）
The right to use property can be granted to others. For tangible property, this is called a “lease”. For intangible property, it is called a “license”. In contrast to tangible objects, intellectual property rights (IPR) can be reproduced indefinitely. Based on this characteristic, thelaw divides the license of IPR into “exclusive license” and “non-exclusive license”.
“Exclusive license” is so exclusive that even the licensor(right holder) himself is prohibited from exercising it, e.g., §62I of the Taiwan Patent Act, §39V of the TaiwanTrademark Act and §37 IV of the Taiwan Copyright Act.The licensee is the only person who may exercise the IPR or re-license the IPR to others unless the agreementprovides otherwise. When the IPR is infringed, only the exclusive licensee, not the licensor or owner, has standing to file a lawsuit.
If the license is non-exclusive, the licensor may exercise the IPR himself or re-license it to others. A non-exclusive licensee has only a right to exercise. Generally, such a right may not be re-licensed unless the agreementprovides otherwise (§63II of the Taiwan Patent Act, §40II of the Taiwan Trademark Act and §37III of the Taiwan Copyright Act). A non-exclusive licensee has no standing to suit for infringements of the licensed IPR because he has no right to prevent others from exercisingthe IPR, and thus there are no “injuries in fact” to support his standing.
If the exclusion clause in a license agreement is missing or too vague, we seek for the true intent of the parties. The intellectual property and commercial court in Taiwan has held that, to form an exclusive license agreement, there must be a clause expressly and unambiguously stating that only the licensee mayexercise the IPR. If the exclusion clause in the so called “exclusive license agreement” only prevents the licensor from re-licensing the IPR, but is silent on whether the licensor is excluded from exercising it, the agreement is non-exclusive.
Taiwan has a recording system for patents and trademarks license agreements based on the race statute.No license agreement is valid against any subsequent purchaser unless the agreement is recorded (§62I of the Taiwan Patent Act, §39 II, §42 and §44 I of the Taiwan Trademark Act). An unrecorded license agreement binds only the parties of the agreement. On the other hand, arecorded license agreement binds both the parties and thesubsequent purchaser. Notice that recording is not a prerequisite to make a license agreement valid and enforceable, and an unrecorded exclusive license agreement is as valid as a recorded one. Thus, if a right holder re-licenses his right after entering into an exclusive license agreement, the subsequent license agreement is invalid even if it is recorded first, for the reason that there is no right left for the right holder to re-license. Also, the recording system provides no protections for tortfeasors. An exclusive-licensee may file a suit against a tortfeasor, and lacking of record of the license agreement is not a good defense.
Unlike patents and trademarks, Taiwan has no recording system for copyrights or its license agreements.However, surprisingly, §37II of the Taiwan Copyright Act expressly stipulates that a copyright licenseagreement is valid against any subsequent purchaser, with or without notice. If a copyright holder sells his copyright to a subsequent purchaser, failing to disclosethat the right to exercise has been completely deprived due to an exclusive license agreement, the only remedy for the subsequent purchaser is money damages for a breach of the purchase contract. It is difficult to find out whether there is a license agreement attached to thecopyright. Generally, notice of the situation of propertymay be obtained by three means: by actual knowledge of the property (actual notice); by reasonable inspection upon the appearance of the property (inquiry notice), or by authoritative record (constructive notice). However, in a copyright transaction case, a purchaser will have a hard time to obtain any notice of the existence of a license agreement. There is no constructive notice because there is no record system for copyrights. There is no inquiry notice because possession of copyrights is not physical.So please do a cpmplete research or consult with attorneys specializing in Taiwan Copyright Act beforebuying copyrights in Taiwan.