Anatomy of a Trademark/Merchandising License Agreement

Gregory J. Battersby is the managing member of The Battersby Law Group, LLC’s intellectual property law firm in Westport, CT. He has over 50 years of experience in patents, trademarks, and licensing law. Before founding Battersby Law Group, he had been a founding partner in Grimes & Battersby. He had previously been associated with two major New York City IP law firms and was senior counsel at Gulf & Western Industries (now Viacom), the then-owner of Paramount Pictures.

Greg has an A.B. degree from Seton Hall University and a law degree from Fordham Law School, where he was an editor of Fordham’s Urban Law Journal while working as an NDT analyst in the Quality Control Laboratory at Grumman Aerospace on the Navy’s F-14 and NASA’s Lunar Modular programs. He is admitted to practice law in New York and Connecticut as a patent attorney before the U.S. Patent & Trademark Office.

He served as General Counsel for the International Licensing Industry Merchandisers’ Association (“LIMA”), now Licensing International, for almost 25 years and was a member of its Executive Committee. He is also a LIMA’s Licensing Hall of Fame member—the only practicing attorney ever inducted. He and Danny Simon created and served as Co-Deans of its CLS Program. He has also been an officer and member of the Board of Directors of the New York Intellectual Property Law Association (“NYIPLA”). He has been designated a ”Super Lawyer” for Intellectual Property matters every year since its inception in 2006.

Greg is a prolific author, having written more than 60 books on various licensing and IP topics, including the two-volume, seminal book on the law of merchandising entitled The Law of Merchandise & Character Licensing, published by Thomson Reuters/West, which was initially published in 1985 and is updated annually. He also wrote and annually updates their Multimedia & Technology Licensing Forms and Commentary work and provides an annual update for the Licensing Law Handbook. Greg authors two annual books for Wolters Kluwer entitled Licensing Royalty Rates and Licensing Update and has written and annually updates its License Agreements: Forms and Checklists and Internet Forms.

He has co-authored the original Basics of Licensing book for Kent Press, which morphed into several editions, as well as the Business of Licensing, Licensing Tales, and Language of Licensing.

Greg is a founder and executive editor of The Licensing Journal and the IP Litigator, both published by Wolters Kluwer, and is the legal columnist for Total Licensing. He has written over 50 articles on licensing and IP topics and given over 200 talks to audiences like INTA, LES, AIPLA, LIMA, NYIPLA, CT Bar, and other organizations.

He has qualified as an expert in more than forty licensing-related actions.

Greg turned a passion for baseball into a business, having invented a computerized video baseball/softball pitching and cricket bowling simulator for which he has received 13 U.S. patents and numerous international ones. In his spare time, he founded and runs ProBatter Sports, which manufactures and sells these simulators to customers, including a dozen Major League teams and more than 300 colleges and commercial training facilities.

Danny Simon is a forty-plus-year licensing industry veteran with expertise in all phases of the merchandising and licensing process. Having built the licensing divisions for Lorimar Productions, 20th Century Fox, and Carolco Pictures, he opened his licensing agency in 1992 in Los Angeles, CA, called The Licensing Group, Ltd.

Danny has pioneered entertainment licensing, focusing on material geared to the teen+ market. Beginning with the television program DALLAS, he was among the first to license adult, prime-time television entertainment, and with DYNASTY, he was the first to apply branding techniques to television shows. He also developed successful licensing programs for MAS*H, Fall Guy, Alf, Rambo, Terminator 2: Judgment Day, Mortal Kombat, Baywatch, U.S. Secret Service, Arnold Schwarzenegger, and David Hasselhoff.

He has also succeeded in film development. With MORTAL KOMBAT, he produced the first-ever film adaptation of a video game. He’s a partner in an entertainment development company that sold the rights to the MATT HELM book series to DreamWorks and Paramount, where it is currently in development as a motion picture.

For 18 years, Danny taught a continuing college-level entertainment licensing course at UCLA. He’s a founding member of LIMA and has been its president, a two-time member of its Board, and a member of LIMA’s Licensing Hall of Fame. With Greg Battersby, he developed and serves as Co-Dean of LIMA’s Certificate of Licensing Studies (‘CLS”) program.

Danny is also a regular lecturer on a variety of licensing topics around the world and serves as an international licensing consultant, providing consulting services to the Hong Kong Trade Development Council and other international groups.

He has qualified as an expert witness on licensing issues in over 25 litigations.

Over the years, Danny has written many articles on licensing for various industry publications. He regularly contributes to the Licensing Update book published annually by Wolters Kluwer and writes a monthly column on entertainment licensing for The Licensing Journal.