Summary of David W. Tollen's The Tech Contracts Handbook

Everest Media

Description

Please note: This is a companion version & not the original book.
Sample Book Insights:
#1 A license grants the customer rights to copy software or to exploit it in other ways. It leaves ownership with the vendor. A license is like a rental agreement. The customer gets to use the software, but not share it or modify it.
#2 The customer should always get the right to use the software. Reproduction rights, on the other hand, are not always necessary. If the vendor delivers ten copies and the customer only needs ten, the license does not need the right to reproduce.
#3 The license for client-server software allows a fixed number of users, not individuals. It may allow 60 users at a time, but it means 15 designated users can access the software.
#4 The end user license should list certain rights not granted. The customer shouldn’t be able to distribute, modify, or publicly display or perform the software. The customer shouldn’t be able to sublicense its rights to anyone else.

Sujets

• Financial
• Droit et juridique
• Business
• Law

Informations

• Publié par: Everest Media LLC
• Date de parution: 30 avril 2022
• Nombre de lectures: 1
• EAN13: 9781669395959
• Langue: English
• Poids de l'ouvrage: 1 Mo

Extrait

Insights on David W. Tollen's The Tech Contracts Handbook
Contents Insights from Chapter 1 Insights from Chapter 2 Insights from Chapter 3
Insights from Chapter 1

#1

A license grants the customer rights to copy software or to exploit it in other ways. It leaves ownership with the vendor. A license is like a rental agreement. The customer gets to use the software, but not share it or modify it.

#2

The customer should always get the right to use the software. Reproduction rights, on the other hand, are not always necessary. If the vendor delivers ten copies and the customer only needs ten, the license does not need the right to reproduce.

#3

The license for client-server software allows a fixed number of users, not individuals. It may allow 60 users at a time, but it means 15 designated users can access the software.

#4

The end user license should list certain rights not granted. The customer shouldn’t be able to distribute, modify, or publicly display or perform the software. The customer shouldn’t be able to sublicense its rights to anyone else.

#5

A distributor is a person or company that receives software and distributes it to third parties. The contract should clearly define the Software or Licensed Product being licensed - usually in a separate definitions section.

#6

Provided that the Distributor complies with the restrictions set forth in Section __ (Software Restrictions), the Vendor hereby grants the Distributor a non-exclusive, worldwide license to exploit the Software as follows: to distribute the Software, to reproduce and use the Software for sales and marketing purposes, and to the extent necessary to provide technical support to customers of the Distributor’s Product.

#7

The right to distribute may be exclusive or nonexclusive. If it’s exclusive, no one, not even the vendor itself, has the right to distribute within the territory. Some distribution licenses grant the distributor limited rights to reproduce and use the software.

#8

The third example in the clause box above is a sales representation clause, rather than a distribution clause. The distributor markets the software in the territory, but does not distribute it. The vendor signs contracts with the distributor's customers and distributes the software to them.

#9

The distributor should not receive any rights to the software other than those specifically granted in this Section __. The vendor should clarify that it still owns the software and that the distributor receives only the rights specifically granted.

#10

The distributor must exercise commercially reasonable efforts to market and sell the software. If the distributor fails to achieve gross revenues of $_____ from software distribution during any calendar year, the vendor may terminate the agreement by written notice to the distributor.

#11

Software licensing is a game of mix and match. You list the customer’s rights and then match them with the appropriate scope terms. You should always start by clearly defining the Software or Licensed Product.

#12

A software license is a copyright license. The license should list the rights granted, and for the vendor's sake, it should also list the rights that are not granted so there is no confusion.

#13

The vendor grants the customer a license to use the software, to publicly perform it on the internet, and to reproduce the software as necessary for such purposes. The customer must comply with the restrictions set forth in Subsection (Restriction on Software Use).

#14

The vendor grants the customer a license to use the software, provided the customer complies with the restrictions set forth in this Section. The customer may not distribute, modify, publicly perform or publicly display the software, and may not reproduce the software except as necessary to install it and to create one backup copy.

#15

The right to sublicense is sometimes confused with the right to distribute. Distribution rights allow the customer to hand out copies, not to transfer rights. However, sublicensing rights are sometimes implied by distribution rights, when the distributor gives its customers the right to reproduce the software.

#16

Vendors should be sure their customers or distributors stop reproducing, distributing, using, and otherwise exploiting the software when the agreement terminates. The law hasn't clearly defined the type of restrictions that can be considered license conditions, so you should use the provided proviso for restrictions closely related to the right to exploit the software.

#17

The most typical scope terms are exclusivity, territory, and duration. Exclusivity restricts the customer from distributing the software to others. Territory defines where the customer can distribute the software, and may be defined by industry.

#18

A license is an agreement between a vendor and a customer that allows the customer to use the vendor’s software. The license may be revocable, which means the vendor can take it away if the customer breaches the contract.

#19

If your contract requires restrictions on use, don’t hesitate to get creative about drafting them. For instance, the following would be perfectly legitimate: Customer agrees not to use the Software on the first Monday of any calendar month, not to install the Software on any computer used to process pet food inventories, and not to permit access to the Software by anyone other than a podiatrist certified to practice in the State of Maryland.

#20

An unrestricted license throws in the kitchen sink. The vendor grants all the rights of copyright holders, with a broad scope. The customer is allowed to do just about anything with the software, but the vendor still owns it and can grant licenses to third parties.

#21

The example license above does not include the provided language, which states that the license is conditional on the customer's compliance with the contract's various restrictions. If the vendor cares about copyright remedies, it should add this language.

#22

An ownership clause provides that the customer will own software created by the vendor, particularly intellectual property rights in software. It may give the customer other assets too, like user manuals, schematics, designs, and logos.

#23

A work-for-hire clause transfers ownership from the vendor to the customer. The law assumes that the author of a writing owns it, but work-for-hire status applies to two fact patterns: when the author is actually the customer's employee and writes the software within the scope of his or her duties.

#24

The second fact pattern allows work-for-hire treatment through a written contract, even if the person doing the programming isn't an employee working in the scope of his or her employment. However, this clause only works if the deal fits one of copyright law's nine eligible categories.

#25

Ownership of work product is addressed in this chapter. The more limited type of ownership clause gives the customer copyright ownership but not patents or other forms of IP. It leaves preexisting assets with the vendor.

#26

The clause box above transfers copyright ownership upon payment, which is best for the vendor. But some clauses transfer ownership immediately, even for software to be created in the future.