Introduction
Intellectual property (IP) is a cornerstone of modern innovation and creativity, providing creators and inventors with the legal means to protect their works, inventions, and brands. Typically, discussions about IP infringement focus on external parties unlawfully using someone else's IP. However, there are unique scenarios where an individual or entity can inadvertently infringe upon their own intellectual property rights. This seemingly paradoxical situation can arise due to various legal and practical complexities. Below, we explore these scenarios and the underlying reasons why self-infringement might occur, along with relevant legal precedents and statutes.
Failure to Adhere to Licensing Agreements
One common scenario involves licensing agreements. When an IP owner licenses its IP to another party, the agreement often includes specific terms and conditions regarding how the IP can be used. For examples, if the IP owner exclusively licenses the IP (despite retaining ownership), then the IP owner cannot use the IP. If the IP owner later uses the IP in a way that violates these terms, they could be considered in breach of the agreement, effectively infringing on their own IP. It's important, here, for the licensor to really understand what IP is being licensed away. If the IP owner wants to retain certain rights, then an exclusive license is not the answer, rather it is non-exclusive with the terms laid out expressly.
Example: A software developer licenses their software to a company with the stipulation that it can only be used for non-commercial purposes. If the developer later decides to use the same software for commercial purposes without adhering to the license's terms, they could be held accountable for violating the agreement.
Example: suppose the IP owner licenses the IP to the licensee, but the IP owner continues to make improvements and then wants to utilize those improvements. The licensee could complain that the improvements belong to it and the IP owner has no rights. The licensor believes that the improvements are not subject to the license. This situation happened in Sun Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115 (9th Cir. 1999). In this case, Microsoft was found to have violated the terms of its license agreement with Sun Microsystems, leading to a legal battle over Java technology.
Trademark Dilution
Trademark dilution occurs when the use of a trademark, even by the owner, diminishes its uniqueness and distinctiveness. This can happen if the owner uses the trademark in a way that confuses or misleads consumers, thereby weakening the brand's identity.
Example: A fashion brand known for high-end luxury goods decides...
