What is the test for an affirmative defense in a licensing agreement?

Gil v. Mansano (2004) 121 Cal.App.4th 739, does not require a different result. In that case, one owner of a business sued another owner of the business for fraud. The defendant alleged an affirmative defense based on a release the parties had previously signed. The release contained an attorney's fee provision that stated, "In the event action is brought to enforce the terms of this [Release], the prevailing party shall be paid his reasonable attorney [] fees and costs incurred therein." (Id. at p. 742.) Attorneys fees were awarded to the defendant after he prevailed on summary judgment and the court of appeal reversed, holding that the attorney's fees clause did not apply to fees incurred in defending against a tort claim. (Id. at p. 743.) It reasoned, "Where a contract authorizes an award of attorney fees in an action to enforce any provision of the contract, a defense to a tort action based on a provision of the contract may have the effect of enforcing the provisions of the contract. [Citations.] However, the assertion of a defense does not constitute the bringing of an action to accomplish that goal. [Citations.] Raising a defense may not be equated with bringing an action. [Citation.] The language `brings an action to enforce the contract' is quite narrow. [Citation.]" (Id. at pp. 743-744.)

In the present case, the licensing agreement allows for an award of attorney fees, "In the event of any dispute under this Agreement, or if it becomes necessary for a party to bring legal action to enforce its rights under this Agreement . . . ." Unlike the plaintiff in Gil v. Mansano, supra, ATECO did not assert the licensing agreement as a defense to a tort claim filed against it by appellants. Instead, it brought this action to enforce its ownership rights to the materials disclosed pursuant to the licensing agreement. The trial court properly concluded that the attorney's fee provision extends to fees incurred in connection with both the contract and the non-contract claims.