So if you are a licensee of a software service or product, which you use internally or you sell (sub-license) to end users, you’ll want to be sure that there is no interruption in service for the term of the license provided you pay the license fees. Interruptions in access to the software can come in many forms, sometimes the licensor has issues with the software or its delivery (such as hosting provider’s downtime), and sometimes the licensor is acquired by a larger company that doesn’t pay as much attention to the particular software, or worse, the licensor has financial troubles and either ceases to operate as a going concern or files bankruptcy. You as a licensee, who needs the software to keep your operations steady or to keep your stream of revenue uninterrupted, will want to ensure that there is no break in the access to the software. Read more
Category: Intellectual Property
Software License Agreements I – Scope of the License
We’ll be looking at the typical items addressed in a business to business software license agreement (as compared to an end user license agreement). The purpose of a software license between two companies are generally for the licensor, who has valuable software, to set forth how that software may be used by a licensee and the compensation and other items applicable to the licensee’s use. Read more
Is your Trademark License Agreement really a Franchise Agreement? In New York the answer is “Yes”
Most companies licensing the use of their trademarks would not think that a simple license agreement, which provides nothing more than use of the trademark in exchange for a fee, would for legal purposes be treated as a franchise agreement. But if the trademark licensor is in New York then what it thought was a simple trademark license agreement relationship is likely really a franchise arrangement. Read more
Famous Last Words: “The Shorter the Better”
Over the years, I’ve lost track of the number of times I’ve sat with or been on the phone with a client and we went over the deal they were trying to close (or more often some part of the overall deal), where they said “We just need something short to memorialize this, preferably a one page agreement.” Read more
Trademark Consent Agreements
When filing a trademark application, if the USPTO Examining Attorney issues an initial refusal because he or she finds that there is a substantial likelihood of confusion with a pre-existing mark, this can be an issue with respect to getting the application registered. One way around this is to enter into a Consent Agreement with the holder of the pre-existing filed trademark. Read more
Clickwrap License Cases: Patterson v. Compuserve
Compuserve v. Patterson, 89 F.3d 1257 (6th Cir. 1996).
Patterson, a resident of Texas (a lawyer and software programmer), sold his own software to third parties over Compuserve’s system, pursuant to the terms of a clickwrap agreement (where he had to type “I Agree” into various sections of the agreement).
Compuserve began to sell its own software that was similar to Patterson’s and Patterson demanded Compuserve pay him $100,000 as a settlement. Compuserve then filed a declaratory judgment action in Federal court in Ohio.
Patterson moved to dismiss the action due to alleged lack of personal jurisdiction, claiming he never visited, did business in, or consented to suit in Ohio.
The Sixth Circuit found that making Patterson subject to suit in Ohio due to his acceptance of the clickwrap agreement, a Shareware Registration Agreement, did not violate the due process clause of the United States Constitution.
The Court reasoned that Patterson personally availed himself to do business with Compuserve, and made money doing so, and could therefore have reasonably expected he’d have to defend himself in Ohio due to the terms of the agreement.
The “Godfather” of the Shrinkwrap Cases: ProCD v. Zeidenburg
This is the seminal case in the shrinkwrap realm, which paved the way for the rise of the browsewrap and shrinkwrap cases. Upholding the software license as normally provided to purchasers, to get around the First Sale Doctrine under U.S. Copyright Law. Cite, facts and holding are below. Read more
Clickwrap and Browsewrap Agreements Kickoff
I’ve been involved in drafting numerous versions of online agreements, including privacy policies, service agreements, pricing policies, various other policies and last but not least both browsewrap and clickwrap agreements. I’ve done a quick post on case law with respect to browsewrap and clickwrap agreements in the past, and was recently asked to speak for a webinar entitled Drafting Clickwrap and Browsewrap Agreements: Advanced Strategies for Enforceable Online Contracts held by Strafford. If you’d like to listen to the webinar email me or contact them.
I feel that more and more contracting is going to be done over the Internet in the future and I am going to start a series of blog posts on drafting these types of browsewrap and clickwrap agreements as well as case law in the area, which serves to let corporate lawyers know how they have to draft the agreement, and have the users accept it. Read more
Enforcing Online Terms of Use: Clickwrap vs. Browsewrap Agreements
I’ve discussed why every website owner needs to have an effective Terms of Use and/or Service Agreement (also called an End User License Agreement, but you can call it what you want). Now I want to briefly hit on how the provisions of the Terms of Use can be enforced under New York Law. Read more
The Basics of Copyright Protection
Copyright protection was first introduced in way back in 1790, and it has changed a lot over the years. Despite substantial revisions today’s copyright laws still protect owners of original works, however, it is now applied to many different types of works (i.e. websites, source code, etc) than existed hundreds of years ago. Luckily the creators of the copyright protection drafted it so that an original espression in any “fixed medium” is protected. This allows the law to evolve as does technology. Read more