A brief overview of the various aspects of IP that affect state-to-state licensing of Cannabis and Cannabis products.

1. LICENSING ISSUES IN THE
MARIJUANA INDUSTRY
Managing Risk
Tsan Abrahamson, Cobalt LLP

2. WHAT WE’LL COVER
• PROTECTING YOUR IP
– Copyrights
– Trademarks, Trade Dress
– Patents
• WHAT IS A LICENSE
– SHOULD YOU LICENSE
– SHOULD YOU FRANCHISE (hint: NO)
• TOP CONSIDERATIONS

3. We’re in Uncharted Territory
BUT FIRST, A WORD OF
CAUTION

4. •
•
•
•
•
•
Recipes
Databases
Textual Works
Websites
Artwork
Architectural
works
• Software

5. TRADEMARKS
•
•
•
•
Logos
Brand Names
Sounds
Non-functional
smells
• Non-functional
packaging
• Trade Dress

6. You can’t get broad protection for something EVERYONE uses
SERIOUSLY? ANOTHER LEAF
AND CROSS?

7. Um… NO!
Trademark Infringement. Period.

8. YES!
• SUGGESTIVE,
BUT NOT
DESCRIPTIVE
• STYLIZED
VERSION OF A
LEAF
• EASY TO POLICE
• RECOGNIZEABLE
• EASY TO
PRONOUNCE
• CONVEYS
QUALITY

9. DON’T STOP THERE
THINK BROADLY
•
•
•
•
•
•
•
Packaging shapes
Store Designs
Product Shapes
Colors
Holograms
Smells
Designs
Yes, it’s protected!

10. Penny Wise is Pound Foolish: Don’t Skimp on Protection
PROTECTION MEANS RIGHTS

11. LICENSING
What is it? What Does it Guarantee?

12. ELEMENTS OF A LICENSE
•
•
•
•
•
•
•
Right to Use Various Properties
For a Limited Time Period
On an exclusive or non-exclusive basis
In a specific territory
With an understanding of obligations
During and after the license period
Entered Into Under State Law, and with
terms mutually agreeable by both parties

13. ELEMENTS OF A FRANCHISE
• Required disclosures to state and franchisee
• Dictated by state law, not necessarily mutual
party agreement
• Involves Federal law
• Allows significant control, not just quality
control
• Franchisees have significant state and
registration requirements

14. It’s Not a License Just Because
You Want it to Be

15. TOP CONSIDERATIONS
5 Steps to Successful Licensing

16. Strategic Thinking Means Long Term Planning
1. PROTECT YOUR IP

17. PLAN FOR THE LONG TERM
2. LOOK FOR STRATEGIC
PARTNERS

18. WHAT’S A STRATEGIC
PARTNER?

19. Motivate Licensees to the Do the Right Thing… Carry a big Stick
3. SET REASONABLE TERMS
AND INCENTIVES

20. Each State is Different. Understand Your Obligations
4. KNOW THE LAW

21. Outline Terms to Help Get Your Property Secured
5. PREPARE FOR BREACH

22. QUETSTIONS? CALL US
Tsan Abrahamson
tsan@cobaltlaw.com