Monetizing Your Reach Through IP Licensing

By Paul S. Rafelson, Founder, Rafelson Law PLLC

What are the common ways to monetize through IP?

What should be in place before licensing?

1. Clean ownership. Written assignments from the people who helped create the content and the brand. See copyright in your content.
2. A filed trademark for the brand and the product categories. See trademarking your name and brand.
3. The right entity holding the IP and licensing it to operating companies. See holding companies and ownership structure.
4. A view of limits. Which categories the creator will never license, and what uses of likeness are off the table, including digital replicas.

Why do licensing deals go wrong?

Three ways. The licensee gets more than the creator meant to give, because the grant was written in categories instead of products. The creator has no way out, because the term renews or sell-off rights run for years after termination. And the creator never sees the real numbers, because the royalty report is the licensee’s and nothing lets the creator check it. A license is the only one of these deals where the creator keeps ownership and still loses control, and the difference sits in terms most first-time licensors skip. We draft and negotiate those terms for creators.

A trademark owner who licenses the mark without controlling the quality of what is sold under it risks losing the mark altogether (15 U.S.C. § 1127). Controlled use by a licensee counts as the owner’s own use (15 U.S.C. § 1055).

What should a creator watch for with likeness?

A license of name and likeness should be limited to the product, channel and period, and it should require approval for new uses. Right-of-publicity rules differ by state (see protecting your name, image and likeness). California and New York now void a contract term letting a company create a digital replica of your voice or likeness in place of your own work unless the term describes the intended uses and you had a lawyer or union negotiate it (Cal. Lab. Code § 927. N.Y. Gen. Oblig. Law § 5-302, both effective January 1, 2025). Those laws reward you for having counsel and punish the open-ended grant. Be specific about whether any synthetic use is allowed, and for what.

What about selling products on marketplaces?

A creator who sells a product line on Amazon needs a registered or pending trademark for Brand Registry, and the entity owning the mark is the one Amazon enrolls. When a holding company owns the brand and a separate company runs the store, the enrollment and the roles between the two have to be set up to match, or the store loses access to the Brand Registry tools. We set up the ownership and the Brand Registry roles together. See what a pending trademark gets you and what a pending mark cannot do. A manufacturer who designed the product owns the design unless the contract assigns it to you.

How do I get started?

Contact us. Tell us what you want to license, to whom and what you already own, and we will tell you whether we can help.

Paul Rafelson is admitted in Florida and New Jersey. Katie Dariano is admitted in New York. For a matter governed by another state’s law, or in another state’s courts, we bring in local counsel or seek admission as the rules require.

Frequently asked questions

Related pages

Sources and notes

• 15 U.S.C. §§ 1055, 1127; 17 U.S.C. §§ 101, 204(a); Cal. Lab. Code § 927; N.Y. Gen. Oblig. Law § 5-302; see the companion pages for publicity, trademark and copyright sources. Amazon Brand Registry materials as cited on the Brand Registry pages.