The Licensing Corner

• Publication year: 2019

The Licensing Corner

John Pavolotsky

Intel Corporation

FOOTBALL, SOCCER, AND THE AFFILIATE CONUNDRUM

I am writing this article on a quiet, hazy Sunday afternoon in late September. It's football season, with a multitude of games on Saturdays and Sundays, and mid-week as well. Both of my home teams, the San Francisco 49ers and the California Golden Bears, are unbeaten, the stars perfectly aligned, an event almost as infrequent as Hal-ley's Comet. Unfortunately, my other football team, RCD Espanyol (RCDE), is not faring as well, languishing in the relegation zone of the La Liga table, after a loss to Real Sociedad at Estadi Cornelià-El Prat, its home base on the outskirts of Barcelona. After losing a prolific striker (Borja Iglesias) and its coach (Rubi) to Real Betis during the summer, this is clearly not the team I saw last October, in a scintillating performance (and win) against Villarreal, on a perfectly balmy Sunday night, just a few meters from the pitch, amid enthusiastic RCDE fans, encouraging Los Periquitos and educating the referees on the finer points of an off-side call or a missed foul, in colorful language that, luckily, could not be fully comprehended by my children.

Add to this a stint coaching (AYSO), "masters" weekend pickup soccer, and a subscription to "Best of Spanish" Sling TV (which includes, of course, weekly RCDE matches), you can see quite easily that soccer is an interest, if not a passion. Accordingly, it should come as no surprise that a hypothetical for my Technology Transactions course earlier this year featured the licensing and provision of access to technology to a fictional European soccer league, to power club-branded apps to be made available to fans globally. More broadly, and perhaps to the chagrin of my students, I could not resist using soccer as a metaphor for licensing generally; both require precision, technical skill, planning, vision, the ability to operate in tight spaces, creativity, and last, but not least, practice (and more practice).

I had been interested in creating and teaching a semester-long course for some time, excited about the opportunity to give back and share 19 years of licensing and other transactional experience. I had a lot of ground to cover, and as such my syllabus was wide-ranging, providing, in part:

Following our exploration of Information Technology Agreements, we will discuss specialty licensing topics, such as open source and data licensing, patent topics that tend to arise in technology transactions, and joint development and consortia agreements. After Spring Break, we will cover mergers and acquisitions, and specifically, the intellectual property and data protection issues that may be identified during the due diligence process leading up to the transaction, mitigating risks through the transactions documents, and (post-closing) integration activities to address any remaining risks.

Like most attorneys, I learned the mechanics and finer points of licensing after law school. However, my goals for the class were much broader than familiarizing my students with a new lexicon and enabling them to develop some...