James E. Daniels serves on the commercial panel of the American Arbitration Association, and has a solo practice in New York City devoted to ADR work. Mr. Daniels has 40 years of litigation and related consulting experience in complex business cases. His practice has focused on the entertainment and advertising/marketing fields, with emphasis on disputes involving copyrights, trademarks, trade dress, trade secrets, publicity rights, and surrounding contractual issues. He is a frequent speaker on arbitration topics. He can be reached by email at email@example.com
IP licensors and licensees tend to shy away from using an arbitration clause because of the erroneous belief that arbitrators cannot issue preliminary remedies to preserve the status quo. This article sets the record straight on the arbitral power to issue preliminary injunctions and other interim remedies.
• A music publisher learns that an “evergreen” song licensed years ago for synchronization in a major studio’s feature film is now in a soon to be released DVD version of the film. If the use is not covered by the license agreement, how can the IP owner seek quick relief to prevent the release of the DVD?
• Strapped for cash and hoping to pay current bills with future profits, a fledgling consumer goods company threatens to launch a big ad campaign before paying the ad agency for its creative, copyrighted concepts. The ad agency’s agreement with the client is pretty clear that copyright ownership does not pass to the client until it pays the agency’s fee. The agreement also contains an arbitration clause. How can the ad agency prevent the client’s launch of the ad campaign?
• An IP licensee owes significant royalties and is rumored to be moving its assets out of the country. How can the IP owner/licensor attach the disappearing assets and get a needed audit?