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ACI : Conference-Papers : 2004 : Software Licensing Agreements

The Practical and Tactical Approach to the Art of the Deal in

Software Licensing Agreements

Negotiating and Drafting Sophisticated Agreements in an Increasingly Complex, High Stakes Arena

Monday, June 14, 2004

About

In this tougher economic climate, software vendors and resellers have been forced to retrench and rework their business models. End-users are scrutinizing agreements at a level never seen before. Every single clause - and every single dollar - counts. This climate of heightened care is complicated further by the challenges of global transactions and new legal and regulatory developments on the international front. In this complex arena, creating an airtight agreement that satisfies your client and avoids disputes and litigation down the road is a challenge for even the most experienced attorney. In-house and outside attorneys, executives and managers alike must be armed with the right information and strategies to succeed in this high-stakes environment.

American Conference Institute has custom tailored this publication to provide you with the practical tactics you need to make your software licensing agreements and relationships into winning ventures. This publication brought together leading attorneys and executives from software manufacturers, resellers, end-users and distributors including America Online, Apache Software Foundation, Cendant Corporation, Computer Associates International, Computer Sciences Corporation, Digidesign, Reuters America, Siebel Systems, Sun Microsystems and Time Warner. They provided valuable information on:

  • Negotiating strategies and tactics
  • Key performance standards and service level agreements
  • What to keep in mind when drafting the license grant for use in foreign jurisdictions
  • Pricing outsourcing transactions and the relationship between price, scope and terms and conditions
  • When and whether insurance should be required to back up the indemnification provisions of the licensing agreement
  • How to use revenue recognition rules to maximize contract license benefit

Protect your client's interests by gaining the knowledge you need to negotiate and draft agreements to your company's greatest advantage and avoid disputes down the road.

Contents & Contributors

About

In this tougher economic climate, software vendors and resellers have been forced to retrench and rework their business models. End-users are scrutinizing agreements at a level never seen before. Every single clause - and every single dollar - counts. This climate of heightened care is complicated further by the challenges of global transactions and new legal and regulatory developments on the international front. In this complex arena, creating an airtight agreement that satisfies your client and avoids disputes and litigation down the road is a challenge for even the most experienced attorney. In-house and outside attorneys, executives and managers alike must be armed with the right information and strategies to succeed in this high-stakes environment.

American Conference Institute has custom tailored this publication to provide you with the practical tactics you need to make your software licensing agreements and relationships into winning ventures. This publication brought together leading attorneys and executives from software manufacturers, resellers, end-users and distributors including America Online, Apache Software Foundation, Cendant Corporation, Computer Associates International, Computer Sciences Corporation, Digidesign, Reuters America, Siebel Systems, Sun Microsystems and Time Warner. They provided valuable information on:

  • Negotiating strategies and tactics
  • Key performance standards and service level agreements
  • What to keep in mind when drafting the license grant for use in foreign jurisdictions
  • Pricing outsourcing transactions and the relationship between price, scope and terms and conditions
  • When and whether insurance should be required to back up the indemnification provisions of the licensing agreement
  • How to use revenue recognition rules to maximize contract license benefit

Protect your client's interests by gaining the knowledge you need to negotiate and draft agreements to your company's greatest advantage and avoid disputes down the road.

Contents & Contributors

WHAT DO YOU NEED IN YOUR LICENSE GRANT?
Jim E. Bullock, Sun Microsystems, Inc.

SOFTWARE LICENSE AGREEMENTS: GETTING WHAT YOU NEED – A STRUCTURED, PROCEDURAL APPROACH
Jeffrey L. Brandt, JLB Consulting, Inc.

STRATEGIES FOR ALLOCATING RISK WITH WARRANTIES, INDEMNIFICATION AND LIMITATIONS OF LIABILITY
Carolyn H. Blankenship, Reuters America, LLC
James R. Bramson, America Online, Inc.

INSURING RISK ALLOCATION PROVISIONS IN SOFTWARE LICENSE AGREEMENTS
William R. Denny, Potter Anderson & Corroon LLP

FUNCTIONAL WARRANTIES, PERFORMANCE STANDARDS AND ACCEPTANCE TESTING PROCESSES (FROM A BUYER'S PERSPECTIVE)
Dennis J. Gallitano, Piper Rudnick LLP

ENHANCING THE SOFTWARE LICENSE WITH MAINTENANCE AND SUPPORT AGREEMENTS
Howard Benard, Cendant Corporation

SOFTWARED MAINTENANCE AGREEMENT CHECKLIST
Adam Ruttenberg, Colley Godward

THE PRACTICAL AND TACTICAL APPROACH TO THE ART OF THE DEAL IN SOFTWARE LICENSING AGREEMENTS (AN INTERNATIONAL PERSPECTIVE)
Virginia Quijada-Tirado, Oracle Corporation, Latin America Division

MANAGING THE NEGOTIATION PROCESS: A PRACTICAL GUIDE FOR SOFTWARE DEALS
Mark Grossman, Becker & Poliakoff, P.A.

AVOIDING SOFTWARE LICENSING DISPUTES
Heather Rafter, Digidesign

AVOIDING SOFTWARE LICENSING DISPUTES
William Coats, Orrick, Herrington & Sutcliffe LLP

DON'T JUDGE A SALE BY ITS LICENSE: SOFTWARE TRANSFERS UNDER THE FIRST SALE DOCTRINE IN THE UNITED STATES AND THE EUROPEAN COMMUNITY
Lothar Determann, Baker & McKenzie
Aaron Xavier Fellmeth, Bryan Cave LLP

LICENSING SOFTWARE INTERNATIONALLY: TIPS AND TRAPS FOR NEGOTIATING AND STRUCTURING AGREEMENTS IN FOREIGN JURISDICTIONS
Sam Kramer, Baker & McKenzie

TIPS AND TRAPS: FOREIGN CORRUPT PRACTICES ACT, EXPORT LICENSING, AND PRIVACY COMPLIANCE
Andrew H. Lupu

NON-DISCLOSURE AGREEMENTS AND OTHER SAFEGUARDS FOR LICENSED IP
James Gould, Morgan & Finnegan, L.L.P.
Walter Hanchuk, Morgan & Finnegan, L.L.P.
John Kheit, Morgan & Finnegan, L.L.P.

OUTSOURCING IN 2004: A BRIEF OVERVIEW
Peter M. Lefkowitz, Oracle Corporation

ASP ISSUES
Paul Rothstein, Fried, Frank, Harris, Shriver & Jacobson

SOFTWARE REVENUE RECOGNITION FOR LAWYERS
Jeffrey Jones, KPMG, LLP

UNDERSTANDING THE UNIFORM COMPUTER INFORMATION TRANSACTIONS ACT (UCITA) AND ITS IMPACT ON THE VALIDITY AND ENFORCEABILITY OF CLICK-WRAP AND SHRINK-WRAP AGREEMENTS
Walter G. Hanchuk, Morgan & Finnegan, LLP
Charles M. Fish, Time Warner, Inc.

GNU GENERAL PUBLIC LICENSE
Robyn Wagner, Apache Software Foundation