What clauses are required in a United States Licensing Agreement?

United States law requires specific provisions including: License Grant, Ownership Reservation, Fees, Royalties & Payment. contract.diy automatically includes all mandatory clauses with proper legal citations when generating your Licensing Agreement.

What terms are prohibited in a United States Licensing Agreement?

Under United States law, certain provisions are void or unenforceable, including: Trademark license without quality control provisions; License grant broader than licensor's actual rights. contract.diy is built to avoid these terms and will warn you if your description suggests including something that's not legally permissible.

How does contract.diy ensure my Licensing Agreement complies with United States law?

Every generated contract goes through 7 automated compliance checks specific to United States. These cover mandatory provisions, prohibited terms, proper citations, and formation requirements. Any issues are flagged before you download.

Can I use this Licensing Agreement template outside of United States?

This template is specifically tailored to United States law. Using it in another jurisdiction may result in missing requirements or including provisions that don't apply. We recommend generating a new contract with the correct jurisdiction selected for full compliance.

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Licensing Agreement for United States

Generate a licensing agreement that complies with United States law — with 7 mandatory clauses and 7 compliance checks built in.

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Key legal considerations

Generate a US IP licensing agreement. Key considerations: 1. LICENSE TYPE: Clearly specify exclusive vs. non-exclusive. Under copyright law (17 U.S.C. § 204), exclusive licenses MUST be in writing. Non-exclusive licenses can be oral but written is best practice. 2. IP TYPE: Tailor the agreement to the type of IP: - COPYRIGHT: 17 U.S.C. — specific rights (reproduce, distribute, display, perform, derivative works) - PATENT: 35 U.S.C. — right to make, use, sell, import - TRADEMARK: 15 U.S.C. (Lanham Act) — MUST include quality control provisions to prevent naked licensing - TRADE SECRET: DTSA/UTSA — use restrictions, confidentiality 3. SCOPE: Territory (US only, worldwide, specific regions), term (fixed, perpetual, auto-renewing), and field of use. 4. FINANCIAL TERMS: License fees, running royalties, minimum guarantees, audit rights. 5. QUALITY CONTROL: Essential for trademark licenses — without it, the trademark may be deemed abandoned. 6. UCITA: While only adopted in VA and MD, it influences software licensing drafting across the US. 7. FIRST SALE DOCTRINE: For copyright, the first sale doctrine (17 U.S.C. § 109) limits licensor's control after a lawful sale of a copy.

What's required

Mandatory clauses for a valid licensing agreement under United States law.

License Grant
Ownership Reservation
17 U.S.C. § 106 (copyright exclusive rights); 35 U.S.C. § 261 (patent assignment)
Fees, Royalties & Payment
Quality Control (Trademark Licensing)
15 U.S.C. § 1055 (Lanham Act — use by related companies)
Severability
Common law severability doctrine
Entire Agreement / Merger Clause
Common law parol evidence rule
Electronic Signature Authorization
15 U.S.C. § 7001 (E-SIGN Act)

What's prohibited

Terms and provisions that are void or unenforceable under United States law.

Trademark license without quality control provisions
A 'naked license' — granting trademark rights without maintaining quality control — can result in abandonment of the trademark under the Lanham Act. Quality control provisions are essential for trademark licensing.
15 U.S.C. § 1055; Eva's Bridal Ltd. v. Halanick Enterprises, Inc., 639 F.3d 788 (7th Cir. 2011)
License grant broader than licensor's actual rights
A licensor can only grant rights it actually possesses. Purporting to license rights broader than those owned creates misrepresentation and warranty issues.

Legal references

Key statutes and regulations that govern licensing agreements in United States.

Copyright Act
17 U.S.C. § 101 et seq.
Governs copyright ownership, exclusive rights, licensing, and duration. Copyright licenses can be exclusive or non-exclusive; exclusive licenses must be in writing.
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Patent Act
35 U.S.C. § 101 et seq.
Governs patent rights, licensing, and assignment. Patent licenses may be exclusive, sole, or non-exclusive.
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Lanham Act (Trademark Act)
15 U.S.C. § 1051 et seq.
Governs trademark registration, protection, and licensing. Trademark licenses require quality control to prevent abandonment.
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UCC Article 2A (Leases of Goods)
UCC § 2A-101 et seq.
Governs leases of goods. May apply to certain types of IP licensing that involve tangible goods or equipment.
UCITA (Uniform Computer Information Transactions Act)
UCITA
Software licensing framework. Only adopted in Virginia and Maryland, but influential in contract drafting for software licenses nationwide.