Collateralizing Intellectual Property

Abstract

Consider the following hypothetical. You receive a frantic call from Dan Brown, asking you for assistance. Breathlessly, he quickly provides some pertinent information about his urgent matter.

An unknown author a few years ago, Brown was thrilled to finish his manuscript, The Da Vinci Code. A kind and generous friend who operated a financing company (the Creditor) provided a $50,000 loan to him in exchange for a security interest in the copyright of The Da Vinci Code. Brown read the boilerplate security agreement, granting the Creditor a security interest in the “general intangibles,” and signed the document. The Creditor then filed the necessary documents stating that it has a security interest in Brown's general intangibles. Brown later wrote a sequel to The Da Vinci Code, building on the character of Dr. Robert Langdon, the Harvard symbologist that he had previously developed. In the meantime, Brown depleted the money and defaulted on the original loan, prompting the creditor to foreclose on the copyright and sell it to the Purchaser. The Purchaser, as the new copyright owner, now asserts that Brown violated the Purchaser's copyright because the sequel is a derivative work of the original. In addition, Miramax wants to make a movie and is ready to negotiate with the current owner of the copyright, the Purchaser, instead of Brown. Brown is frustrated, believing he has the derivative right for a movie option and control over his own creative output in writing a new sequel.

Brown needs your help and he has your sympathy. Unfortunately for both Brown and you, neither copyright nor secured transaction laws directly address the issues at hand. That is the current state of collateralization of intellectual property. Here, the hypothetical presents the problem of the collateralization of a copyright of a book.

What does it mean to collateralize intellectual property? It is well established that intellectual property assets are core and important to the growth of the economy. Companies, small and large, create, acquire, and hold intellectual property as corporate assets. To maximize the value of intellectual property corporate assets, companies turn these assets into collateral for secured financing.

Despite the pervasive practice of using intellectual property assets as collateral in secured financing, very little scholarship has been devoted to understanding the collateralization of intellectual property. The majority of the scholarship in the past twenty years has focused only on perfecting a security interest in intellectual property. Neither courts nor scholars have addressed the fundamental question of collateralization.

The Dan Brown hypothetical above demonstrates that the use of copyright as collateral has hidden costs, including depriving the author of the right to create new works. This Article argues that the process of the collateralization of intellectual property lacks transparency. Consequently, the current Article 9 of the Uniform Commercial Code (UCC-9) may unfairly advance secured creditors' rights at the expense of intellectual property creators-such as authors and inventors who are the debtors-and ultimately at the expense of society as a whole. Due to these hidden costs, the ongoing process of collateralization may prevent intellectual property creators from creating future works based on their early creations.

This Article identifies and critiques the collateralization of intellectual property, revealing the complexity of intersecting secured transaction law, namely Article 9 of the Uniform Commercial Code, and doctrinal intellectual property laws such as patent law, copyright law, and trademark law. The inquiry challenges the silence surrounding the pervasive use of intellectual property as collateral in secured financing and suggests changes to the existing framework on secured financing law.

The Article proceeds as follows: Part II discusses the normative intellectual property rights for patents, copyrights, and trademarks and how such rights are utilized as corporate assets. Part III describes different forms of financing available for companies and the use of intellectual property in financing. Part IV explains the UCC-9 regime as the law on secured financing, focusing on the rights of both the debtor and the secured creditor in the event of default. Part V frames the existing debate on security interests in intellectual property assets and analyzes how the revised UCC-9 addresses the debate. Part VI identifies and critiques the collateralization structure and its hidden costs. Finally, Part VII offers a proposal to minimize the hidden costs, provide better notice to all parties, and promote creativity and innovation.

Keywords: trademark, copyright, patent, intellectual property, secured financing, secured transaction, derivative rights, Dan Brown, UCC, Article 9, collateral, security, preemption, conflict,