My Toughest Case: Jumping into the cannabis industry, beginning with licensing from Willie Nelson

Suzette Toledano

Intellectual Property and Entertainment Law

Toledano Entertainment and Arts Law

40 years in practice

J.D. Tulane University Law School

With a clientele that includes rappers and musicians, Suzette Toledano has received a sort of “street cred” in the entertainment industry in her four decades of practicing intellectual property and entertainment law – which includes copyright, trademark and licensing.

During one unexpected phone call four years ago, however, Toledano was launched into a new, unexpected arena – the cannabis industry.

“I’m sitting in my office by myself minding my own business,” she says, “and I get a phone call from a lawyer in Colorado.” For two hours this lawyer spoke with Toledano about her background in copyright and trademark that ended with one question Toledano will never forget; “Well, would you be interested in licensing everything to do with cannabis from Willie Nelson?”

It was an opportunity Toledano described as falling from heaven.

Given the nature of the subject, her new client, a Colorado- and Washington-based cannabis branding company, threw Toledano into a situation that had many moving parts. “It was extremely challenging because cannabis is still a federally controlled substance,” says Toledano. “I had to take great care not to inadvertently draft an illegal contract.”

Worried not only about the legality of the contract, Toledano says additional attention to detail had to be administered when including internal state laws, defined territories, party waivers of rights and boilerplate provisions.

“The agreement had to be extremely flexible because the internal state laws on cannabis are ever-evolving,” she says. “Cannabis cannot cross state lines, but the licensing of brands, trademarks, and know-how can. Creative contractual accommodations had to be made. For example, something usually as clear as specifying a territory as ‘worldwide’ had to be painstakingly defined as a territory rolling out in stages as state and country laws on legality, product types, and forms of use, etc. changed. Essentially, I had to turn every clause upside down and shake it out.”

Though challenging, the step into this new industry has opened many doors for Toledano by widening her network of associates. She now represents and provides legal services to companies invested in the cannabis industry, speaks at cannabis-related events and conferences, and serves as an area representative for the National Cannabis Bar Association.

The one thing she says doesn’t change about this burgeoning industry is that there’s always more to learn.

“The more knowledgeable a lawyer is about her client’s industry,” she says, “the more effectively she can serve her clients.”