BILL ANALYSIS SENATE JUDICIARY COMMITTEE Senator Ellen M. Corbett, Chair 2009-2010 Regular Session AB 224 Assemblymember Portantino As Amended August 25, 2009 Hearing Date: August 26, 2009 Commercial Code GMO:jd SUBJECT Uniform Commercial Code: Security Interest in Intangible Property DESCRIPTION Existing law provides that a licensee in ordinary course of business takes its rights under a nonexclusive license free of a security interest in the intangible property created by the licensor and takes its leasehold interest free of a security interest in the goods created by the lessor, as specified. This provision of the Uniform Commercial Code is scheduled to sunset on January 1, 2010. This bill would extend the sunset date of that provision to January 1, 2011. The bill is an urgency measure. BACKGROUND Article 9 of the Uniform Commercial Code (UCC) covers security interests in personal property. It was rewritten and modernized by the Uniform Law Commission (ULC, formerly the National Conference of Commissioners on Uniform State Laws) in the late 1990s and in the process the ULC addressed security interests in general intangible property (such as intellectual property). Every state has adopted Article 9 as revised, and became effective in California on July 1, 2001. The 1999 revisions to Article 9 of the UCC created rights for licensees of general intangibles such as intellectual property comparable to the rights of buyers of goods in the ordinary (more) AB 224 (Portantino) Page 2 of ? course of business. (U. Com. Code Sec. 9321.) When California was considering adoption of the revised Article 9 of the UCC, the Directors Guild of America, Inc. and the Screen Actors Guild expressed concerns about how the proposed revision to Section 9321 would affect their operations. According to these groups, exclusive licenses granted to investors and others who may have perfected security interests or rights to proceeds from a film production (employees, for example) may end up with diminished rights to security interests in the goods (the film) that may be asserted by nonexclusive licensees (for example, DVD rental stores). The Senate Judiciary Committee analysis of SB 45 (Sher, Ch. 991, Stats. 1999) states: The Screen Actors Guild is concerned about the application of this rule to their industry. They say that with the rapidly developing technology in their industry, it is difficult for them at this time to forego the value of a perfected security interest from a licensee, even if the license is a nonexclusive license. Example is given of an actor's residuals from movie rights to a film rented out by Blockbuster Video, a nonexclusive licensee. Technology may develop such that they should be able to enforce their security interest against a nonexclusive licensee they say, in three years or so, and therefore suggest that this particular provision sunset in three years, subject to reenactment. The drafters of Article 9 resist this vigorously. They state that a nonexclusive licensee will not "take free" of a security interest created by the licensor to its sublicensor if the first license was "exclusive." While the ULC assured them at the time that the then-proposed language of Section 9321 would not have a negative impact in practice, the groups asked for time to evaluate the impact of the new Section 9321 on their actual operations. The Legislature agreed to then limit the operative effect of the new Section 9321 to a sunset date of January 1, 2004, which was subsequently extended twice, to January 1, 2007 and finally to January 1, 2010. CHANGES TO EXISTING LAW Existing law provides that a licensee in ordinary course of business takes its rights under a nonexclusive license free of a security interest in the general intangible created by the AB 224 (Portantino) Page 3 of ? licensor, even if the security interest is perfected and the licensee knows of its existence. This provision, as well as a definition of "licensee in ordinary course of business" would sunset on January 1, 2010. This bill would change the sunset date for these provisions to January 1, 2011. This bill contains an urgency provision. COMMENT 1. Stated need for the bill The sponsor of AB 224, the Directors Guild of America, Inc., believes that another sunset extension is necessary to maintain the status quo regarding Section 9321. According to both the UCL and the sponsors of this bill, the extension is also necessary in order to allow the involved parties to evaluate the effect of Section 9321 on exclusive and nonexclusive licensees in the context of existing and continually evolving technology to deliver goods (e.g., such as "streaming media to cell phones"). However, since the bill has been amended, the stakeholders (the UCL and the sponsors of the bill), have come to the conclusion that they need more than the one-year extension currently in the bill, and would prefer the originally proposed three year extension. They state that the time is needed in order to flesh out the need to further refine the statute or draft a new one in light of the advances in technology and new, creative licensing agreements that may have evolved since this issue was last revisited. Suggested amendments: On page 2, line 21, strikeout "2011" and insert: 2013 On page 2, line 23, strike out "2011" and insert: 2013 On page 2, line 33, strike out "2011" and insert: 2013 2. AB 244 is an urgency measure Because of the sponsor's "inattention" to seeking an extension of the sunset date earlier in the session, AB 244 is now an urgency bill, so that any potential impact of the sunset taking effect on all licensees of intellectual property may be averted AB 224 (Portantino) Page 4 of ? for one more year (three more years if the amendment suggested above is taken). Support : Uniform Law Commission Opposition : None Known HISTORY Source : Directors Guild of America, Inc. (sponsor) Related Pending Legislation : None Known Prior Legislation : AB 2303 (Judiciary, Ch. 567, Stats. 2006) extended the sunset date to January 1, 2010. SB 283 (Sher, Ch. 235, Stats. 2003) extended the sunset date to January 1, 2007. SB 45 (Sher, Ch. 991, Stats. 1999) enacted Section 9321 as part of a revision of Article 9 of the Uniform Commercial Code. Prior Vote : N/A **************