IP & Data Monetization

Companies are increasingly pursing new and innovative ways to use their IP and data to create new, data-driven revenue streams. However, to succeed with these initiatives, companies need to evaluate and account for a number of legal, business and operational issues.

IP Securitizations

With 100 securitization lawyers in offices worldwide, Mayer Brown is one of a handful of international law firms that have securitized virtually every asset type – including a variety of intellectual property assets. We are consistently ranked among the top law firms representing issuers and underwriters of public and private asset-backed financial instruments, reflecting our strong influence on the development of the securitization industry.

Mayer Brown was at the forefront of intellectual property securitizations with our work representing the rating agency on the original "Bowie Bonds" in 1997 – the first securitization of a music performer's music and publishing catalog. We structured the bonds to securitize the future royalty stream from David Bowie's music portfolio and handled the related copyright due diligence. We also represented a major music publishing company in the largest-ever music industry IP securitization of royalty streams in global jurisdictions that include the United States, United Kingdom, Germany and Italy.

• We represented a music publisher in the proposed securitization of its music publishing assets, which would allow it to borrow against the more reliable revenues from its back catalogue.
• We advised two financial services firms in connection with a proposed staple financing and whole business securitization in connection with the acquisition of an entertainment company.
• We advised the owner of a major music catalogue on its proposed securitization as part of the disposal of the catalogue by the owner’s parent company for a figure in excess of $2 billion.
• We advised on structured finance transactions involving the music catalogues of several artists and structured a securitization of one of the largest multi-rights catalogues in the industry.
• We represented the lender on a transaction for a company which owns a large catalogue of songs. In this transaction the lender made a straight corporate loan to the catalogue owner and took security over a group of songs valued by independent appraisers in an amount in excess of the loan value.
• We represented a major national retailer in a $1.8 billion term securitization of a portfolio of major, internationally recognized consumer brand trademarks and their corresponding licensing agreements which we believe to be the largest IP securitization to date.
• We advised a global entertainment company as issuer in two securitizations of filmed entertainment receivables aggregating approximately $800 million.
• We represented an investor in the private placement of $600 million monoline-wrapped asset backed notes issued to securitize the trademarks and franchise agreements for the Sonic fast food chain.
• We represented the dealer in the $20 million private placement of asset backed notes to facilitate a securitization of the well-known shoe and clothing trademarks and related license agreements.

Corporate Transactions

Whether a transaction is a joint venture, divestiture, strategic alliance, marketing collaboration or some other arrangement, we provide guidance on confidentiality and trade secret matters, and evaluate the abilities of intellectual property portfolios to shelter investments in products and markets. Our lawyers handle the regulatory and antitrust implications as well as the patent or trademark application issues. That means protecting clients' intellectual property rights in development, research, confidentiality and trade secret agreements.

We insure that all patents, trademarks, copyrights and publicity rights are fully secured before structuring the deal. We prepare the appropriate agreements, fully documenting all the terms of complex ownership and royalty issues and handling all the details of domestic and foreign distribution. That includes agreements covering all aspects of product distribution, including arrangements with distributors, sales representatives, value-added resellers (VARs) and franchisees.

Few firms come close to Mayer Brown's global experience at representing our clients as both sellers and purchasers of commercial licensing rights in patents, manufacturing designs, trademarks, digital content, technical know-how and trade secrets. Our goal in all such transactions is to work with our clients to ensure that the license meets the client's intellectual asset management strategy.

Because licensing agreements are often transnational, the tax treatment of royalties, dividends and interest generated by the arrangement receives our particular attention. Working in concert with our nationally ranked tax practice, we recommend optimum strategies involving corporate structure and operation and their effect on investment.

Our representative experience includes:

• A consumer and foodservice/food packaging company's sale of its packaging businesses for $530 million, involving 24 companies in 14 countries
• A specialty chemical manufacturer’s $1.8 billion combination with another chemical company to create the third-largest publicly traded US specialty chemicals company
• A global food manufacturer’s $2.6 billion purchase of all of the assets of a frozen food manufacturer, including well known food products
• A bakery’s $1.77 billion acquisition of a food manufacturer, including numerous well-known brands
• A private investment firm’s EUR 660 million sale of the champagne, wine and sparkling wine businesses
• A manufacturer of consumer electronics in the negotiation of re-seller agreements with a global electronics company, pursuant to which our client will have the right to sell DVD players employing patented technology owned by three electronics companies. After execution of these agreements, our client became the first consumer electronics company to enter into these innovative re-seller agreements for the importation and sale of DVD players from Chinese manufacturing plants.
• A global chemical company in its $11.67 billion stock-for-stock merger with a chemical manufacturer
• A surfacing materials manufacturer in its $427 million corporate restructuring
• A specialty pharmaceutical company in its $23 million acquisition of a medical device firm