1. A Litigator’s View of Software License Agreements
Dylan J. Steinberg

2. A Litigator’s View of Contracts
Almost always already a dispute
What are the key contract terms?
How do they address the issues in dispute?
Is there an ongoing business relationship?
Other agreements?
What tools are available to change the playing field?
Nearly all cases settle

3. Early Litigation Mechanics
Any preliminary relief?
Forum
Arbitration
State or Federal Court
Venue
Applicable Law
Who files first?
Declaratory judgment
Choose forum

4. Discovery
What is discovery likely to tell us about the issues in dispute?
Communications between the parties
Internal communications

5. SPECIFIC ISSUES

6. Technical Issues
Technical issues arise frequently in software license litigation
Integration with proprietary or other vendor software
Who provided installation and support?
If there were customizations, who provided them?
IP issues

7. Additional Complexity
Experts
Protective Orders and Secrecy Protections
May limit ability of client to review key documents

8. Indemnity
Licensee is generally going to want an indemnity for IP issues
Particularly for customer-facing software
Potentially large numbers of users
Integration can make this complex
What is covered by indemnity?
How is software designed to be used?

9. Competition Issues
What happens if licensee and licensor are in related businesses?
Limitations on competition generally disfavored
Significant variation across jurisdictions

10. Limitation of Liability
Scope
Does intended use create possibility of consequential damages?
Does limitation amount offer sufficient protection?
Will limitation be enforced?

11. Assignment Can licensor assign support and maintenance obligations?
Any opportunity for due diligence
Is licensor liable for any breach of assignee?
Can licensee assign use
Related companies
Has there been an assignment?
What notice required?
Bankruptcy implications

12. Third Parties Manufacturer vs. Reseller Third party support
Source of remedy
Dispute between manufacturer and reseller
Third party support
Third party integrators

13. Multiple Agreements Master Licensing Agreement
Insertion Order / Purchase Order
Which agreement controls in case of a conflict?
Treated as single agreement for some purposes, but not all
In a bankruptcy, do the agreements need to be assumed together or can they be assumed individually?

14. Venue and Choice of Law Home field advantage Reasons for choice of law
What do we know about the local jurisdiction?
Will there be access to federal court?
Reasons for choice of law
Certainty
Specific provisions

15. Arbitration Control costs? Speedier resolution?
Can limit home field advantage
May permit finder of fact with relevant expertise

16. Warranty and Support Discontinuation of software or support
Does limitation of liability apply?
Any protection for solvency issues?
Source code escrow

17. Termination Issues Licensor’s right to terminate
Opportunity to find substitute software
Licensee’s right to terminate
Provisions to ensure software is not used after termination

18. QUESTIONS?

19. Evaluation and Materials
Take this time to go the conference app find this class, and fill out evaluation.
If you need the PowerPoint, it’s on your thumbdrive