The imperfect science
of IP licensing
Licensing of intellectual property can be an imprecise art. It is sometimes
assumed that there is a standard position when it comes to licensing, making
each licence a merely administrative action. However, as we have seen
from recent cases, drafting licence agreements is not always so simple.

It is important to recognise that
intellectual property licensing
requires a detailed understanding
of both intellectual property law
and also contract law. In the event
of a dispute, the courts turn to
the application of contract law to
determine what the parties intended
by the language used in addition
to considering the context of the
relevant intellectual property law.

It’s easy to assume that the parties
are all on the same page when it
comes to their rights and obligations
under an agreement, which they
generally are – until they aren’t.

Whilst the facts in each case will
differ, several common themes have
arisen in recent court decisions.

Inspire July 2022
Don’t leave it to chance –
if something is important,
include it in the agreement
10 In Chevron Global Energy v Ampol
Australia Petroleum 1 the court
considered whether the failure by
Ampol to remove the ‘Caltex Red’
from the fascia of its service stations
was a breach of the Trade Mark
Licence Agreement (TMLA) in place
between the parties.

Ampol had for some time been
operating service stations in
Australia using the Caltex trade
mark and brand under licence from
Chevron. Chevron terminated the
TMLA, and under the agreed work
out period Ampol was required
to discontinue all use of the trade
marks, and to remove ”any and all
signage and/or element” bearing any
of the Caltex trade marks from the
service stations. Ampol removed
the Caltex trade marks but did not
change the service station canopy
fascia’s from the ‘Caltex Red’
colour. Chevron argued that this
was a breach of the TMLA as the
1 2
‘Caltex Red’ canopy fascia was part
of the signage, and therefore needed
to be removed. Ampol denied it
was a breach and argued that the
requirement to remove the trade
marks and signage did not extend
to repainting the fascia which was
not signage. Ampol claimed that
where the trade mark was on a sign,
the sign would be removed, and
where the trade mark was on some
other element, then the trade mark
alone was to be removed from the
element such that the requirement
was to remove the trade mark from
the fascia, not repaint the fascia as
well. Ampol argued that Chevron’s
construction of the clauses in the
TMLA went well beyond what the
parties intended.

Justice O’Callaghan agreed with
Ampol, noting that to construe the
obligations under the TMLA as
requiring Ampol to repaint the red
coloured fascia some other colour
would mean that Chevron had rights
in the ‘Caltex Red’ colour, which it
did not have and had not licensed
to Ampol. O’Callaghan J noted:
“ in my view, such an outcome is at
odds with commercial sense, and if
such an uncommercial and unlikely
outcome had been intended, it
would sure have been made clear.”
Consider the bigger picture
over a longer term
When drafting licence
agreements, the focus
is often on what the
licensee wants to do
with the intellectual
property, but where the
rights being licensed
are nonexclusive
in nature, or only
exclusive in a narrow
field, it’s important to
think about what the
Chevron Global Energy Inc v Ampol Australia Petroleum Pty Ltd [2021] FCA 617
State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd [2022] FCAFC 57
licensee would be happy with the
licensor doing with its retained rights.

In State Street Global Advisors v
Maurice Blackburn 2 the Full Federal
Court considered whether Maurice
Blackburn had infringed copyright
and tortiously interfered with the
contractual relations between
State Street Global Advisors
(SSGA) and artist Kristin Visbal by
commissioning a replica of the
‘Fearless Girl’ statue.

Under the Master Agreement
between SSGA and Ms Visbal, SSGA
had a worldwide, exclusive licence to
create, use, display and distribute the
statue and two-dimensional copies of
it, in connection with gender diversity
issues in corporate governance, the
financial services sector, and itself
and the products and services SSGA
offered. The artist retained all the
residual rights outside of the exclusive
licence to SSGA, including the right
to use the artwork in connection with
gender diversity goals.

SSGA argued that use of the
‘Fearless Girl’ statue by Maurice
Blackburn in relation to their
workplace gender equality
campaign was copyright
infringement because
gender