Practice Areas

License Agreements

Federal complex litigation

Putting your intellectual property to work for you

Your brand is a valuable asset that drives customer loyalty and deserves strong protection. Our firm manages every aspect of intellectual property protection to safeguard your brand. We help secure the proper protections, and if your brand is ever infringed, we will take swift action to hold the infringer accountable.

A license is an agreement with someone else

Intellectual property rights like trademark, copyright, and patent rights are shared through formal license agreements. License agreements protect both the IP owner (the licensor) and the party who wants to use the IP (the licensee) by accurately spelling out the scope of the permission, each party’s respective obligations (including payment), and the process for ending the business relationship after a period of time. There are nuances to each license agreement, but whatever the issue, the written document should explicitly describe the limitations on the license – such as whether it is exclusive or non-exclusive – and care must be taken to avoid conflicting terms among multiple license agreements of the same IP.

Consistency is mandatory to protect your rights

Intellectual property owners should consistently use written license agreements whenever rights are granted to a third party, even if the rights are shared without payment. Owners must consistently exercise strict control over their rights to avoid losing them.

Exclusive vs. non-exclusive

Intellectual property can be licensed exclusively or non-exclusively. For example, if you have a patent on an improved coffee maker, you might give an exclusive license to Mr. Coffee™ to make your coffee maker and sell it. Using an exclusive license, Mr. Coffee™ might want such an arrangement to prevent it from competing with other coffee maker manufacturers utilizing your patented design. In this case, an exclusive license might make sense.

On the other hand, if you have a copyright for a photo, you might non-exclusively license the same photo for many people. The license of a copyrighted stock photo online is an example of this use. One person may pay to use it for their business card, but it won’t stop another person from using the same image for their business card or some other use, such as on a website. If either party wanted exclusive use of your photo, they may agree to pay a premium to prevent others from using it.

Exclusive vs. non-exclusive is just one of the critical nuances of licensing that an attorney can help you navigate.

Trademark license agreements

A trademark license agreement has a requirement that is unique to it to be enforceable. A trademark license must provide the trademark owner with adequate means to ensure the quality of the goods bearing the licensed trademark. The reason for this is that one of the purposes of a trademark is to protect the consumer from inferior quality products. FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509, 515 (9th Cir. 2010). Ensuring that standards of quality are being maintained allows the public to rely on the trademark to vouch for the quality of the good. On the other hand, if a trademark owner issues a trademark license having no method to ensure good quality (a so-called “naked license”), then the consumer protection purpose of the trademark is frustrated. A naked license can lead to losing the trademark altogether.

Patent license agreements

A patent license agreement grants the end user the right to make, use, sell, offer to sell, or import a patented product. There are many complicated aspects of patent licensing, including geographic scope and field of use. Because patents expire, there are some nuanced aspects to patent licenses. One limitation is that the patent license may not exceed the term of the patent. Brulotte v. Thys Co., 85 S. Ct. 176 (1964). In that case, the patent owner unsuccessfully attempted to extend the payment of royalties beyond the term of the patent license. The Court found this was improper because it expanded the patent right’s exclusivity beyond the time envisioned by Congress.

Royalties

“Royalty” is a term for art. A royalty is the “compensation for the use of the property . . . expressed as a percentage of receipts from using the property or as an account per unit produced.” Carpenter Tech. Corp. v. Armco, Inc., 800 F. Supp. 215, 227 (E.D. Pa. 1992). A fixed-fee license that does not fluctuate is something different from a royalty. Tekelec, Inc. v. Verint Sys., 708 F.3d 658, 666 (5th Cir. 2013). Whether a royalty or fixed fee is appropriate depends on the specific facts of your intellectual property and your contemplated license or licenses. Ensuring you are utilizing the correct framework is an important reason to have your licensing agreement reviewed by an attorney before signing it.

Copyright license agreements

A copyright license agreement can be complex because it may relate to specific fields of use. Copyright rights are particularly amenable to being separately licensed. For example, an author may license the rights to the book for use in connection with a screenplay or movie. But the author may not want to license so-called “derivative uses,” the right to make spin-offs or sequels. Ensuring that only the rights you wish to license are transferred is an important part of counseling on license agreements.

Likewise, the license may relate to specific countries, industries, and the number of views. For example, a photographer may license an end user to publish a photo on a website. However, the same photograph may not be permitted in a television commercial. These fields of use are important considerations when reading or creating a license agreement.

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HENRY LAW FIRM

Otto M. Bartsch

With degrees in philosophy and chemistry, Otto excels in complex litigation and intellectual property cases.

In a recent federal case, Otto used forensic digital analysis of crucial documents to reveal their fraudulent nature, immediately resolving all claims in our client’s favor. Otto led a multi-jurisdictional collection effort of a $3.4 million judgment for Oklahoma Genetics, Inc. The case was on claims of intentional violation of the Plant Variety Protection Act, and a federal judge tripled our client’s damages. Years after the judgment was entered, Henry Law Firm forcibly seized substantial assets, and OGI could re-invest proceeds into future seed varieties and genetics.

Before affiliating with Henry Law Firm and practicing law as Otto M. Bartsch, PLLC, Otto earned his Master of Laws in Intellectual Property & Technology Law. At graduation, Otto ranked highest in his LL.M. class. He also won the Client Counseling Competition and competed in the national semi-finals of the AILPA Giles Rich Moot Court Competition in intellectual property law.

Otto works with clients to establish and protect their trademarks, copyrights, and brand identities. He is also experienced in breaking or enforcing non-competition agreements.

COURT ADMISSIONS

Otto is licensed to practice in Arkansas, Missouri, and Texas and has been admitted to practice in several federal courts, including the Eastern and Western Districts of Arkansas, the Eastern and Western Districts of Missouri, and the United States Court of Appeals for the Eighth Circuit.

HENRY LAW FIRM

Mark Henry

Mark is AV-Preeminent™ rated, a distinction earned through years of consistently outstanding legal work and a reputation for integrity. With decades of experience as a registered patent attorney and an LL.M. in agricultural law, he has developed a deep focus on protecting agricultural seed technology. Mark works closely with universities and multinational companies to navigate complex intellectual property matters and ensure long-term protection of innovation. He has handled more than 100 cases under the Plant Variety Protection Act, bringing a wealth of practical insight to the defense of plant breeders' rights. In addition to his legal practice, Mark has contributed to the field as an educator, teaching agricultural biotechnology law in the LL.M. program at the University of Arkansas School of Law.

Mark prosecutes and defends highly complex civil litigation and high-stakes, bet-the-company disputes involving trade secrets, patents, copyrights, and DMCA claims in federal courts across the country. His cases frequently address cutting-edge issues involving computer code, seed genetics, and architectural works. Licensed in six states and admitted to practice before the United States Patent and Trademark Office, he has served as lead counsel for clients in more than twenty-five states, offering broad strategic perspective and experience.

Mark brought one of the first cases under the Frank Broyles Publicity Rights Act, Ark. Code Ann. § 4-75-1101, helping to shape the early application of Arkansas’s right of publicity law. He successfully represented professional rodeo athlete Cody James in a case involving the unauthorized commercial use of James’s name and likeness. A decorated competitor, Cody has qualified for the Arkansas Rodeo Association Championships 22 times, is a seven-time ARA Champion, and has been named both Overall Rookie of the Year and Tie-down Roping Rookie of the Year by the Professional Rodeo Cowboy Association. Mark’s advocacy in Cody James v. Boot Barn, Inc., No. 4:22-cv-646-KGB (E.D. Ark. 2023), helped affirm the importance of protecting the identity and brand of professional athletes under Arkansas law.

He also serves as both trial and appellate counsel, offering a comprehensive approach to complex litigation. In Associated Electric Cooperative, Inc. v. Southwest Power Pool, Inc., Case No. 23-1293, (8th Cir. 2024), Mark secured a significant trial and appellate victory, successfully defending a $37.64 million claim in an energy dispute involving tariffed energy rates. The Eighth Circuit agreed that SPP had fully compensated AECI for the transactions in question and held that equitable recovery theories are not available when an express contract governs the parties’ relationship.

Mark is also known for taking a principled stand against improper litigation conduct. In Lyon v. The Academy, Inc., 2024 Ark. App. 386, he obtained Rule 11 sanctions against opposing Arkansas counsel Matthew Campbell and Elizabeth Lyon. The Arkansas Court of Appeals affirmed the sanctions, finding that their claims were frivolous, had no chance of success, and were brought solely to harass and drive up litigation costs—highlighting Mark’s commitment to professionalism and the integrity of the legal process.

When disputes arise with Walmart, Mark provides trusted counsel to both large and small vendors. Given that Walmart is headquartered in Northwest Arkansas and most of its contracts require disputes to be litigated in Benton County, Mark’s location in Fayetteville—home to the federal court for Northwest Arkansas—positions him ideally to handle these matters efficiently and effectively.

Mark is admitted to practice before the U.S. Supreme Court, the U.S. Courts of Appeals for the Eighth and Federal Circuits, and several federal district courts, including the Eastern and Western Districts of Arkansas, the District of Nebraska, and the Eastern and Western Districts of Oklahoma. He also represents clients before the Trademark Trial and Appeal Board in trademark matters.

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