Software License Agreement Territory
A well-drafted license agreement must explicitly identify all registered IP addresses, pending or unregistered IP addresses, unpublished IP addresses, or trade secrets. You may get into trouble with this because some customers don`t really know what their trade secrets are and have to spend time and effort trying to figure it out. France – FI How do you protect yourself from selling outside the territory? I have problems with the territory. When I grant an IP license for an outing in the United States, I can`t stop distributors from exporting it to Latin America or around the world. However, for some transactions, acceptance tests may be appropriate, for example. B if significant adjustments are made (see below) so that Licensee can use the Software or integrate it into its entire IT environment. When acceptance testing is used, performance and compliance guarantees, as well as support and maintenance fees, come into effect upon acceptance rather than performance of the software license agreement. Another option is per capita licensing, that is; For example, they have the right to operate in the region depending on the size of the population. Service-based IP addresses, such as franchises. B, often use this definition of territory in their license agreements, it also depends on the distribution system you have. If there is selective distribution within the EU and Switzerland, you must allow your licensees to sell across all borders under such a selective distribution system.
In some cases, timing is a factor, and quarterly or year-end reporting periods can affect a licensor`s willingness to negotiate certain conditions. For other transactions, the type or intended use of the software is appropriate for a negotiated agreement. This is more often the case when a licensee views the transaction as a material of the size, the software as “business-critical” or when there are less viable alternatives on the market. With regard to online sales, we only use the combination of limiting the delivery address to the relevant territory and restricting the use of credit cards issued outside the relevant territory. This seems to work well to protect the delimitation of license rights. A software license agreement checklist can help simplify the process of creating and negotiating a software license agreement or preparing a software license agreement template. The development of such an agreement or model involves the planning and eventual handling of a variety of technical, economic and legal issues. Questions or comments? Others, such as seminars and workshops, are best allowed on a localized basis because the provision of these types of IP addresses is done to a single client or event. You must specify that authorized products, services or processes may only be used for defined purposes, products or uses. For trademarks, specify that the trademark may only be used in conjunction with defined goods or services.
Also specify the geographic area or industry and whether the license is exclusive or non-exclusive. Most licensors will want compensation and additional measures to serve as the licensee`s exclusive remedy for intellectual property infringement and claims. Some licensees do not accept exclusive remedies with respect to infringement matters and expect their full range of remedies under the Software License Agreement. Some things you need to pay attention to when evaluating these regulations: UNITED STATES – Oklahoma PM It is prohibited by the definition of geography. We define the territory and if it is exclusive, it is limited to a certain state or territory and they do not have the right to sell outside that territory. The Licensor then undertakes and promises not to allow any other licensee to sell in this territory. It is a mutual exclusivity agreement limited to a specific state or territory. It depends on what you mean by distributors.
If these are distributors for your licensee and you have not specified any rights for Latin America, your licensee is violating your contract. If this is the case, your licensee must stop its distributors and if not, you can terminate your contract. France – FI A question for our American colleagues. Is it possible to obtain a license in some states and not in all of the United States? Can a licensee be granted the right to market products in certain States? We work with our clients to create a plan to monitor licensing agreements, and we focus on training business people and suppliers to be able to identify unauthorized goods. We then create a process for them to report this to management. Although you can say that German licensees can only sell in Germany, you cannot prohibit them from selling to another company in the same system within the EU and EEA, including Switzerland. In cases where the content of the intellectual property right is assigned to the licensed product or by the will of the licensor and the licensee a very strict national or regional character, a thorough analysis is carried out on a case-by-case basis in order to determine the content and impact of the restriction. Determine whether Licensor should provide Licensee with compensation with respect to the intellectual property and materials provided by Licensor.
Note that Licensees often require additional compensation from Licensors, including compensation for personal injury and property damage, particularly if Licensor`s personnel provide services on Licensee`s site. For example, there was the well-known judgment of the Court of Justice of the European Union in the Premier League case, which excludes the restriction imposed on licensees in certain EEA territories on the sale of set-top boxes accessible from anywhere in the EEA and considers such a sales restriction as a restriction by object under Article 101 TFEU. Territorial restrictions may include restrictions on active sales and open up the possibility of effective tracking. However, the claim and the ability to pursue the existence of passive sales are prohibited by European law, as mentioned by François and Sergio. However, this is a limitation that is very likely to be found in licensing agreements. Another hypothesis that raises antitrust issues related to the delimitation of territories would be that of trademark licenses if the licensor and the licensee are competitors on the relevant market. The delineation of access and authorised personnel in relation to the licensed product are contractual measures that should be considered in order to ensure that an exchange or sharing of information does not lead to infringements of competition law. Do you have any comments on the information presented? Have you thought about other things that should be covered in this software license agreement checklist or in a software license agreement template? Let me know and I would be happy to answer your thoughts in an updated version. Ultimately, a software license agreement can be the product of substantial negotiations between the licensor and the licensee.
This is more likely to be the case if a licensee has more influence or if the licensor has a strong economic interest in entering into the licensing transaction. Whether it is a patent, trademark, copyright or trade secret; There are different types of rights associated with different types of licensed ip assets. Romania – MH Although the licensed rights must be clearly defined in terms of content, safeguards, geography, a very strong territorial demarcation and export restrictions could be considered anti-competitive under certain conditions in the European market and implicitly in Romania. If a licensor is willing to indemnify third party claims for intellectual property infringement, a licensor will generally offer closer compensation and will agree to take certain action if an injunction against a licensee`s use of the Software is sought or obtained. Active sales can be managed because the agreement may include a provision that licensees must respect territorial rights. However, with passive sales, it`s easy for a licensee to call a customer in another territory and say, “I`m not going to market the products in your territory, but please make me a request by email and ask me about the price and I`ll sell you. An interesting reflection on the content of active sales would focus on the principle of exhaustion, which prevents the control of copyrighted products after their first sale. Recent case law of the CJEU has stated that the principle of exhaustion in copyright matters applies not only to physical products, as previously assumed, but also to digital software. You can also license a limited geographic area before expanding it to a broader market based on performance milestones. I used this strategy with a client who had invented a new flexible connecting cord (i.e. a better elastic cord). They introduced it to the market, immediately aroused the interest of international distributors.
We structured a two-part agreement – initially as an exclusive distributor to test the market. .