Excerpt:

TABLE OF CONTENTS

1. INTRODUCTION 3
WHO ARE YOUR CLIENTS? – THE EXAMPLES 5

2. WHY LICENSE? – ANATOMY OF A SHRINK-WRAP LICENSE 8

3. DRAFTING STYLE 15
VERBS 15
VERBS AND OTHER LANGUAGE IN CONTRACT DRAFTING 17
VERBS 17
OTHER LANGUAGE IN CONTRACT DRAFTING 20

4. THE UNIVERSE OF DEALS 23
SOFTWARE DISTRIBUTION AGREEMENTS 27
WHO MAKES COPIES? – RESELLERS VERSUS PUBLISHERS 27
WHOSE BRAND? – RESELLERS VERSUS OEMS 28
VARIATIONS ON A THEME – VARS 30
WHO TAKES TITLE? – RESELLERS VERSUS SALES REPRESENTATIVES 31
ALL OTHER MANNER OF CREATURE – DISTRIBUTORS VERSUS NONDESCRIPT SPECIES 31
ARRANGEMENT 31
FLOW OF RIGHTS, FLOW OF GOODS 32
HOW TO NAVIGATE THE DISTRIBUTION FAMILY TREE 34
DISCUSSION OUTLINE FOR COMMERCIAL AGREEMENTS 34

5. OWNERSHIP AND TRANSFER OF INTELLECTUAL PROPERTY 37
HOW AND WHEN OWNERSHIP ARISES 37
"WORK FOR HIRE" AND RELATED MATTERS 38
COPYRIGHTS 39

6. PRIVITY AND INTEGRATION 42
THREE PARTY AGREEMENTS 42
WHEN IS A CORPORATION NOT A CORPORATION? DIVISIONS AND DEPARTMENTS. 44
NON-COMPETITION COVENANTS 45
THIRD PARTIES AND PURCHASE AGREEMENTS 46

7. CONFIDENTIALITY AND NON-DISCLOSURE 48
USE AND "OWNERSHIP" OF DATA 50
NON-DISCLOSURE AGREEMENT CHECKLIST 52

8. LICENSE GRANTS 56

9. BANKRUPTCY AND ESCROWS 62
CONTINUATION OF RIGHTS 62
BANKRUPTCY LAW SUMMARY 62
SECTION 365(N) 64
ESCROWS: ACCESS TO SOURCE CODE AND TECHNOLOGY 65
THE FLOW-DOWN PROBLEM 68
ASSIGNMENTS AND BANKRUPTCY 68

10. ROYALTIES 69
AVOIDING ANTITRUST VIOLATIONS 69

11. INTERNATIONAL ISSUES 70

12. FEAR OF WARRANTIES: A PRIMER ON WARRANTIES, INDEMNITIES AND LIMITATIONS OF LIABILITY IN INTELLECTUAL PROPERTY LICENSES 71
WARRANTY 71
INDEMNITIES 72
LIMITATIONS OF LIABILITY 74
WARRANTY DISCLAIMERS 76
ADVANCED TOPIC – INTELLECTUAL PROPERTY WARRANTIES 78

13. SUBSTANTIVE REVIEW: MISCELLANEOUS CONTRACT LAW 90
INDEPENDENT CONTRACTORS 90
INTEGRATION, SEVERABILITY 90
CHOICE OF LAW AND VENUE 90
DISPUTE RESOLUTION 90
COUNTERPARTS 90
ASSIGNMENT 90
WAIVER 90

14. APPENDIX – FORM AGREEMENTS 91

15. FORM 1: "SHRINK WRAP" TYPE END USER LICENSE 91

16. FORM 2: "OEM" SOFTWARE DISTRIBUTION AGREEMENT 91

17. FORM 3: MARKETING AND DISTRIBUTION AGREEMENT 91

Author BIO: Heather Meeker is an attorney in private practice at Wilson Sonsini Goodrich & Rosati, the premier law firm in Silicon Valley, and specializes in drafting and negotiating intellectual property transactions for software and other technology clients. She also serves as an adjunct professor at Hastings College of the Law, teaching a seminar in intellectual property licensing, for which this textbook was developed. Ms.

Meeker has degrees from Yale College and Boalt Hall School of Law. She clerked for United States Circuit Judge John Porfilio of the Tenth Circuit. Ms. Meeker has published numerous law review articles and practice-oriented articles in the area of law and technology. She also worked for many years in the entertainment and computer industries, prior to her work as an attorney.

A PRIMER ON INTELLECTUAL PROPERTY LICENSING is a compact, practical guide to one of the most dynamic and popular areas of legal practice today -- intellectual property licensing. Developed by an attorney in private practice who specializes in Silicon Valley technology licensing, this guide presents the basic rules of law you need to know for a licensing practice, along with helpful examples of contractual language, practice tips, and insights on custom and practice in the industry.