  |
  |
  |
    
  
   |
 | |||
|
|
|
|
| |||
In re Quantegy, Inc., 326 B.R. 467 (Bank. M.D. Ala. 2005)
The debtors had entered into three licenses with Sony to use the Sony trademark as well as certain patented manufacturing processes. During their chapter 11 case, the debtors sought to assume and assign the licenses to a third party. When Sony objected to the assignment, the Bankruptcy Court focused on whether "applicable law" excused Sony from accepting performance from third parties. The Court reviewed the terms of all three licenses, which gave the licensee broad rights to assign the licenses to third parties.
Viewing the federal prohibition against patent assignments in conjunction with the contractual consents to assignment, the Court held that applicable law, which included the contract provisions, did not excuse Sony from accepting performance from a third party. As a result, 11 U.S.C. § 365(c)(1) did not restrict the debtor's ability to assume or assign the licenses. In other words, when the licensor can be forced to accept performance from a third party outside of bankruptcy because of contractual terms, section 365(c)(1) does not apply.
In re Travelot Co, 286 B.R. 447 (Bankr. S.D. Ga. 2002)
In the Travelot case, the debtor sought to assume a contract that let it provide travel services and content through CNN's website using CNN's branding. The Court concluded that the contract did not constitute a nonexclusive trademark license. Along the way though, the Court opined in dicta that a nonexclusive trademark license could not be assigned without the consent of the licensor arguing by analogy from the cases restricting assignability of patent and copyright licenses.
N.C.P. Marketing Group, Inc. v. Blanks (In re N.C.P. Marketing
Group, Inc.), 337 B.R. 230, 2005 WL 3253268 (D. Nev. 2005)
