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  • Steve Davey

If I terminate a licence agreement, can the licensee still use my intellectual property?

Updated: Sep 16, 2021

In the case of Apple & Pear Australia Ltd v Pink Lady America LLC [2015] VSC 617, the Victorian Supreme Court determined that a intellectual property licence could survive the termination of the agreement that created it.

This case was appealed to the Victorian Court of Appeal (Apple & Pear Australia Ltd v Pink Lady America LLC [2016] VSCA 280).

However, the basis upon which the Court of Appeal reversed the first instance decision meant that the question as to whether the licence survived the termination did not arise.

Pink Lady America LLC sought special leave to appeal to the High Court of Australia (see Apple and Pear Australia Ltd v Pink Lady America LLC (No 2) [2017] VSCA 10, 8 February 2017). However, that application was refused.

Accordingly, the decision of the primary judge stands. An intellectual property licence can survive termination of the underlying agreement.

Accordingly, parties negotiating intellectual property licences should consider what happen to the licence if the agreement is terminated and ensure that the contract reflects their intentions.

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