15TH ANNUAL

SOFTWARE LICENSING AGREEMENTS

Tuesday, October 06, 2009

About

Companies on both sides of the table in software license negotiations are being increasingly confronted with challenges relating to the use and licensing of proprietary products that contain or otherwise incorporate open source code. Coupled with the other core challenges presented by the negotiation of software licensing agreements – IP infringement, warranties, limitations on liability, indemnification, revenue recognition, product development and maintenance, and contract termination, it is imperative to a successful negotiation that one has a process in place to preemptively anticipate, address and quickly resolve these issues when they arise.

To provide you with specific insights into how to confront these and other contentious issues, ACI has assembled an exceptional faculty, including in-house representatives from the major players in this industry who will provide you with the tactical and strategic insights you need to negotiate more lucrative, airtight agreements – whether acting as the licensor or the licensee.

Last year’s delegates expressed overwhelming satisfaction with the interactive approach of the event, including the live mock negotiation between an experienced IP attorney and a senior-level licensing executive, which will provide a real-time demonstration of how common contract stumbling blocks can be addressed and resolved when you’re at the table.

Expanding upon last year’s highly successful event, ACI has added additional features to further increase the coverage at this year’s conference:

  • Expanded coverage of contractually addressing concerns relating to software as a service agreements
  • Timely coverage of current practices to effectively address recession-related business issues in the contract
  • Increased focus on global contracting practices for dealing with foreign entities

Add value to your experience by attending one or more of the following in-depth workshop sessions:

Software Licensing Boot Camp – A basic training licensing primer that takes a Software Licensing 101 approach, specifically designed for contract professionals and attorneys new to software licensing.

Negotiating, Drafting and Streamlining Your Software Licenses – A Master Class, led by a diverse panel of experienced attorneys and contract professionals who will lead you through various factual scenarios designed to present real world issues and drafting challenges commonly encountered during licensing negotiations.

Open Source Software Licenses – An in-depth master class that will examine actual clauses and terms contained in different types of open source licenses. With the use of open source code continuing to spread and beginning to permeate the entire licensing environment, this class will enable you to successfully navigate a very complex area.

Contents & Contributors

About

Companies on both sides of the table in software license negotiations are being increasingly confronted with challenges relating to the use and licensing of proprietary products that contain or otherwise incorporate open source code. Coupled with the other core challenges presented by the negotiation of software licensing agreements – IP infringement, warranties, limitations on liability, indemnification, revenue recognition, product development and maintenance, and contract termination, it is imperative to a successful negotiation that one has a process in place to preemptively anticipate, address and quickly resolve these issues when they arise.

To provide you with specific insights into how to confront these and other contentious issues, ACI has assembled an exceptional faculty, including in-house representatives from the major players in this industry who will provide you with the tactical and strategic insights you need to negotiate more lucrative, airtight agreements – whether acting as the licensor or the licensee.

Last year’s delegates expressed overwhelming satisfaction with the interactive approach of the event, including the live mock negotiation between an experienced IP attorney and a senior-level licensing executive, which will provide a real-time demonstration of how common contract stumbling blocks can be addressed and resolved when you’re at the table.

Expanding upon last year’s highly successful event, ACI has added additional features to further increase the coverage at this year’s conference:

  • Expanded coverage of contractually addressing concerns relating to software as a service agreements
  • Timely coverage of current practices to effectively address recession-related business issues in the contract
  • Increased focus on global contracting practices for dealing with foreign entities

Add value to your experience by attending one or more of the following in-depth workshop sessions:

Software Licensing Boot Camp – A basic training licensing primer that takes a Software Licensing 101 approach, specifically designed for contract professionals and attorneys new to software licensing.

Negotiating, Drafting and Streamlining Your Software Licenses – A Master Class, led by a diverse panel of experienced attorneys and contract professionals who will lead you through various factual scenarios designed to present real world issues and drafting challenges commonly encountered during licensing negotiations.

Open Source Software Licenses – An in-depth master class that will examine actual clauses and terms contained in different types of open source licenses. With the use of open source code continuing to spread and beginning to permeate the entire licensing environment, this class will enable you to successfully navigate a very complex area.

Contents & Contributors

Drafting Contracts that Meet Current Business Needs
Brian Di Silvestro, Director, Business Development and Licensing, EMC Software (Pleasanton, CA)
Terence N. Church, Of Counsel, Silicon Valley Law Group (San Jose, CA)
Mark H. Wittow, Partner , K&L Gates LLP (Seattle, WA)

Negotiating and Drafting Clear License Terms and Protecting the Use of the License

David Keenan, Managing Counsel, Nationwide Mutual Insurance Company (Columbus, OH)
Jack Khouri, Senior Corporate Counsel, Altera Corporation (San Jose, California)
William I. Schwartz, Partner, Morrison & Foerster LLP (San Francisco, CA)

Industry Insights: What You Need to Know Before Evaluating and Choosing Open Source Licenses
Karna J. Nisewaner, Patent Counsel, Intuit Inc. (Mountain View, CA)
Mario J. Madden, Open Source Licensing Counsel, Microsoft Corporation (Redmond, WA)
Elizabeth Hewitt, Senior Corporate Counsel, Adobe Systems Inc. (San Jose, CA)
Andrew T. Pham, Associate General Counsel, Global Intellectual Property, Verint Systems Inc. (Santa Clara, CA)
Moderator:
Jason B. Wacha
, Vice President of Corporate Affairs & General Counsel, MontaVista Software, Inc. (Santa Clara, CA)

Custom-Made and Modified Software: Eliminating Doubt by Identifying Rights and Crafting Specific Terms in the License Agreement
James A. Kovacs, Licensing Counsel, Intel Corporation (Santa Clara, CA)
Michael R. Graif, Partner, Curtis, Mallet-Prevost, Colt & Mosle LLP (New York, NY)
Jim Markwith, Of Counsel, Greenberg Traurig LLP (Silicon Valley, CA)

Strategies for Avoiding Common Stumbling Blocks: Live Mock Negotiation
For the Licensor:
Joseph Yang
, VP & General Counsel, Cryptography Research, Partner, PatentEsque Law Group, LLP (Menlo Park, CA)
For the Licensee:
Mark Grossman
, Partner, Grossman Law Group (New York, NY)

Software as a Service: Avoiding Pitfalls in Contracts for Hosted Applications
Deborah Chapnick, Corporate Attorney, Microsoft Corporation (Redmond, WA)
Mark Grech, Senior Corporate Counsel, Oracle Corporation (Redwood Shores, CA)
Peter Tennent, IP Counsel, IBM Almaden Research Center, IBM Corporation, (San Jose, CA)

Navigating the Global Software Market: Implementing Best Practices Across Foreign Jurisdictions
Lothar Determann, Partner, Baker & McKenzie LLP (San Francisco, CA)
Bijesh Thakker, Managing Partner, Thakker & Thakker (Mumbai, India)

Securing Adequate Terms Addressing Software Installation, Support and Maintanence
Michael P. Bennett, Partner, Wildman Harrold LLP (Chicago, IL)
Sean Garrison, Partner, Lewis & Roca LLP (Phoenix, AZ)
David L. Hayes, Co-Chair, Technology Commerce Group, Dorsey & Whitney LLP (Irvine, CA)

Eliminating Ambiguity on Revenue-Related Terms Early-On By Determining When and How Software Revenue Will Be Recognized by Each Party
Dean Scotch, Vice President & Controller, MontaVista Software Inc. (Santa Clara, CA)
Larry Bercovich, Vice President & General Counsel, ZipRealty, Inc.(Emeryville, CA)

Providing the Maximum Amount of Protection by Enhancing Your Data Security in the Software License Agreement
Stephen Gold, Partner, McGuireWoods LLP (Chicago, Illinois)


DOCUMENT TYPES: PPT ZIP PPTX DOC PDF PPS PRESENTATIONS AVAILABLE: 13

8:30
Registration and Continental Breakfast
9:00
Co-Chairs' Opening Remarks
Mr. Jason B. Wacha
Vice President of Corporate Affairs & General Counsel
MontaVista Software‚ Inc.
Mr. Mark H. Wittow
Partner
K&L Gates LLP
9:15
Drafting Contracts that Meet Current Business Needs
Mr. Brian Di Silvestro
Director‚ Business Development and Licensing
EMC Corporation
1 file
DRAFTING SOFTWARE CONTRACTS THAT MEET CURRENT BUSINESS NEEDS
289.5 KB 20 pages Presentation
PPT - DRAFTING SOFTWARE CONTRACTS THAT MEET CURRENT BUSINESS NEEDS
Mr. Terence N. Church
Of Counsel
Silicon Valley Law Group
1 file
DRAFTING SOFTWARE CONTRACTS THAT MEET CURRENT BUSINESS NEEDS
289.5 KB 20 pages Presentation
PPT - DRAFTING SOFTWARE CONTRACTS THAT MEET CURRENT BUSINESS NEEDS
Mr. Mark H. Wittow
Partner
K&L Gates LLP
1 file
DRAFTING SOFTWARE CONTRACTS THAT MEET CURRENT BUSINESS NEEDS
289.5 KB 20 pages Presentation
PPT - DRAFTING SOFTWARE CONTRACTS THAT MEET CURRENT BUSINESS NEEDS
10:15
Morning Refreshement Break
10:30
Negotiating and Drafting Clear License Terms and Protecting the Use of the License
Mr. David C. Keenan
AVP/Associate General Counsel
Nationwide Mutual Insurance Company
1 file
Negotiating and Drafting Clear License Terms and Protecting the Use of the License
235.5 KB 19 pages Presentation
PPT - Negotiating and Drafting Clear License Terms and Protecting the Use of the License
Mr. Jack Khouri
Senior Corporate Counsel
Altera Corporation
1 file
Negotiating and Drafting Clear License Terms and Protecting the Use of the License
235.5 KB 19 pages Presentation
PPT - Negotiating and Drafting Clear License Terms and Protecting the Use of the License
Mr. William I. Schwartz
Partner
Morrison & Foerster LLP
1 file
Negotiating and Drafting Clear License Terms and Protecting the Use of the License
235.5 KB 19 pages Presentation
PPT - Negotiating and Drafting Clear License Terms and Protecting the Use of the License
11:15
Industry Insights: What You Need to Know Before Evaluating and Choosing Open Source Licenses
Ms. Karna J. Nisewaner
Patent Counsel
Intuit Inc.
1 file
Industry Insights: What you need to know before evaluating and choosing open source licenses
3.4 MB 10 pages Presentation
ZIP - Industry Insights:What you need to know before evaluating and choosing open source licenses
Mr. Mario J. Madden
Open Source Licensing Counsel‚ Intellectual Property & Licensing
Microsoft Corporation
1 file
Industry Insights: What you need to know before evaluating and choosing open source licenses
3.4 MB 10 pages Presentation
ZIP - Industry Insights:What you need to know before evaluating and choosing open source licenses
Ms. Elizabeth Hewitt
Senior Corporate Counsel
Adobe Systems Inc.
1 file
Industry Insights: What you need to know before evaluating and choosing open source licenses
3.4 MB 10 pages Presentation
ZIP - Industry Insights:What you need to know before evaluating and choosing open source licenses
Mr. Andrew T. Pham
Associate General Counsel‚ Global Intellectual Property
Verint Systems Inc.
1 file
Industry Insights: What you need to know before evaluating and choosing open source licenses
3.4 MB 10 pages Presentation
ZIP - Industry Insights:What you need to know before evaluating and choosing open source licenses
Mr. Jason B. Wacha
Vice President of Corporate Affairs & General Counsel
MontaVista Software‚ Inc.
1 file
Industry Insights: What you need to know before evaluating and choosing open source licenses
3.4 MB 10 pages Presentation
ZIP - Industry Insights:What you need to know before evaluating and choosing open source licenses
12:45
Networking Lunch
13:45
Eliminating Ambiguity and Minimizing Risk with Warranty‚ Limitations of Liability‚ and Indemnification Provisions
Ms. Ruth E. Gaube
General Counsel
Samsung Information System America
Mr. Vakil Bijal
Partner
White & Case LLP
Mr. Karl Kronenberger
Partner
Kronenberger Bugoyne LLP
Mr. Mark Grossman
Counsel
Tannenbaum Helpern Syracuse & Hirschtritt
14:45
Afternoon Refreshment Break
15:00
Custom-Made and Modified Software: Eliminating Doubt by Identifying Rights and Crafting Specific Terms in the License Agreement
Mr. James A. Kovacs
Licensing Counsel
Intel Corporation
1 file
Contracting for Custom/Modified Software and Implications of New Business Models
1.7 MB 50 pages Presentation
PPTX - Contracting for Custom/Modified Software and Implications of New Business Models
Mr. Michael Graif
Partner
Curtis Mallet-Prevost‚ Colt & Mosle LLP
1 file
Contracting for Custom/Modified Software and Implications of New Business Models
1.7 MB 50 pages Presentation
PPTX - Contracting for Custom/Modified Software and Implications of New Business Models
Mr. Jim Markwith
Of Counsel
Greenberg Traurig LLP
1 file
Contracting for Custom/Modified Software and Implications of New Business Models
1.7 MB 50 pages Presentation
PPTX - Contracting for Custom/Modified Software and Implications of New Business Models
16:00
Strategies for Avoiding Common Stumbling Blocks: Live Mock Negotiation
For the Licensee: Mr. Joseph Yang
Founding Partner
PatentEsque Law Group LLP
1 file
License Agreement Negotiation Tactics
237 KB 12 pages Presentation
PPT - License Agreement Negotiation Tactics
Mr. Mark Grossman
Counsel
Tannenbaum Helpern Syracuse & Hirschtritt
1 file
Classen, Practical Guide to Software Licensing, 3rd edition, Chapter 22, Form 22.B.1
222.9 KB 100 pages White Paper
DOC - Classen, Practical Guide to Software Licensing, 3rd edition, Chapter 22, Form 22.B.1
17:00
Conference Adjourns to Day 2
8:30
Registration and Continental Breakfast
9:00
Co-Chairs' Opening Remarks
9:15
Software as a Service: Avoiding Pitfalls in Contracts for Hosted Applications
Ms. Deborah Chapnick
Corporate Attorney
Microsoft Corporation
Mr. Mark Grech
General Counsel
MATRIXX Software, Inc.
Mr. Peter Tennent
IP Counsel
IBM Corporation
1 file
Software as a Service: Avoiding Pitfalls in Contracts for Hosted Applications Cloudy Topics
232.8 KB 30 pages Presentation
ZIP - Software as a Service: Avoiding Pitfalls in Contracts for Hosted ApplicationsCloudy Topics
10:30
Morning Refreshement Break
10:45
Navigating the Global Software Market: Implementing Best Practices Across Foreign Jurisdictions
Mr. Lothar Determann
Partner
Baker & McKenzie LLP
1 file
Tackling the Globalization of Software Licensing: Best Practices and Hazards to Avoid
448 KB 20 pages Presentation
PPT - Tackling the Globalization of Software Licensing: Best Practices and Hazards to Avoid
Mr. Bijesh Thakker

Thakker & Thakker
1 file
Navigating Global Software Market: Best Practices for India
267 KB 38 pages Presentation
PDF - Navigating Global Software Market: Best Practices for India
12:15
Networking Lunch
13:30
Securing Adequate Terms Addressing Software Installation‚ Support and Maintanence
Mr. Michael P. Bennett
Partner
Wildman Harrold LLP
1 file
Securing Terms
103.5 KB 30 pages Presentation
PPS - Securing Terms
Mr. Sean Garrison
Partner
Lewis & Roca LLP
1 file
Securing Terms
103.5 KB 30 pages Presentation
PPS - Securing Terms
Mr. David L. Hayes
Partner
Dorsey & Whitney LLP
1 file
Securing Terms
103.5 KB 30 pages Presentation
PPS - Securing Terms
14:30
Afternoon Refreshment Break
14:45
Eliminating Ambiguity on Revenue-Related Terms Early-On By Determining When and How Software Revenue Will Be Recognized by Each Party
Mr. Dean Scotch
VP‚ Controller
MontaVista Software‚ Inc.
1 file
Revenue Accounting Briefing
569.7 KB 45 pages Presentation
ZIP - Revenue Accounting Briefing
Mr. Larry Bercovich
Senior Legal Counsel
Epicor Software Corporation
2 files
Structuring Unambiguous Terms for Product Development in the License Agreement
196 KB 20 pages Presentation
PPT - Structuring Unambiguous Terms for Product Development in the License Agreement
Revenue Accounting Briefing
569.7 KB 45 pages Presentation
ZIP - Revenue Accounting Briefing
15:45
Providing the Maximum Amount of Protection by Enhancing Your Data Security in the Software License Agreement
Mr. Stephen Gold
Partner
McGuire Woods LLP
1 file
Data Security and Protection Issues in Software License Agreements
0 bytes 3 pages Presentation
 - Data Security and Protection Issuesin Software License Agreements
16:45
Conference Concludes