Adding corporate flexibility to IT-related commercial contracts can make seemingly unrelated mergers and acquisitions (M&A) transactions a bit less complex. Although many contracting parties already consider assignment rights and restrictions in relation to certain successor scenarios, the divestiture scenario—where contractual rights are not simply transferred in whole—deserves a closer look.
NEWS FOR LAWYERS AND SOURCING PROFESSIONALS
In a prior series of posts, we discussed issues relating to intellectual property indemnification, including some exceptions, remedies, and allocation of liability. Given that these provisions often involve taxing negotiations and that many technologies have become intertwined, below we explore some nuanced—and frequently sticky—issues regarding third-party products and how they can be resolved.
There are two primary models by which vendors will make software available to customers (1) software as a service (SaaS); and (2) on premise. In a SaaS model, the vendor provides, maintains, and hosts (either itself or through a hosting SaaS vendor) the desired software, and grants the customer access to the software functionality via the internet. In an on-premise model, however, the vendor will deliver the software (either physically or through a file transfer system) for the customer to install on its servers behind the customer’s firewall.
The terms “reseller” and “distributor” are often used interchangeably to describe entities that purchase goods or services from a manufacturer and then distribute or resell such goods or services to retailers and consumers. However, there are some key differences between a distributor and a reseller and important issues to consider in agreements with resellers and distributors.
Please join us for the next installment of the Morgan Lewis Life Sciences Growth Webinar series, which will focus on university licensing. Topics to be discussed include:
- Academia/industry perspective differences
- Overarching academic policies and laws
- Specific academic licensing terms
- Post-licensing action items
This webinar will be hosted by Benjamin H. Pensak, a partner in our San Francisco office and Stephen L. Altieri, a partner in our Boston office. This event will take place on November 5, 2019, from 12:30 pm to 1:30 pm (ET). Registration and additional information for the event can be found here.
CLE credit: CLE credit in CA, FL, IL, NJ, NY, PA, TN, TX, and VA is currently pending approval for live viewings only. Credit in NJ is via reciprocity.View past and upcoming presentations.
As mentioned in our recent blog post, the National Collegiate Athletic Association (NCAA) had been steadfast in its opposition to California’s recently enacted Senate Bill 206, known nationally as the “Fair Pay to Play Act,” which aims to allow collegiate student athletes to benefit financially from the use of their name and likeness and enter into licensing contracts.
On Tuesday, however, in a stunning reversal of course, the NCAA released a statement that their board of governors "voted unanimously to permit students participating in athletics the opportunity to benefit from the use of their name, image, and likeness in a manner consistent with the collegiate model." This concession by the NCAA has opened the door for student athletes to earn millions of dollars through license and endorsement deals.
California has become the first state to allow collegiate student athletes to benefit financially from the use of their name and likeness and to enter into licensing contracts by recently passing Senate Bill 206, a bill known nationally as the “Fair Pay to Play Act.” But, we recommend holding off on preparing templates for student athlete license and promotional agreements for now; the legislation will undoubtedly face zealous resistance from the National Collegiate Athletic Association (NCAA) in the time before the law takes effect.
On September 30 the California Senate enacted Senate Bill 206, which would effectively end amateurism for NCAA athletes and therefore is a game changer for the NCAA, which currently prohibits college athletes from receiving compensation. The California law does not require colleges to pay athletes a wage, but it allows athletes to procure business and sponsorship deals.
Ed Hansen, Val Gross, and Morgan Richman will run a highly interactive two-part program, “How to Make Complex Contracts and Negotiations Work: Tips and Practices You Can Use Today,” at the Eastern Regional SIGnature Event. The program will guide attendees through complex contracting and collaborative negotiating, providing actionable strategies that can be used in real-world scenarios right away.
In the first session, the team will define and deconstruct "complex" contracts. Attendees will learn techniques to simplify contracts and will learn how to transform a "bad" contract into a user-friendly document that constituents will want to use. The second session will focus on hardcore collaborative negotiating techniques. Using a scenario-based approach, participants will learn the hard skills necessary for building a collaborative negotiating environment, including how to avoid barriers to collaboration, how to achieve alignment, and how to address FUD—fear, uncertainty, and doubt.
Open source programs are becoming a best practice in the technology, telecom/media, and financial services industries. Companies are establishing open source best practices to streamline and organize the way their employees use open source, focusing on long-term business plans. Since open source, a collaborative development process, varies so greatly from traditional software practices (i.e., proprietary and closed), companies are creating their own open source programs and policies to manage how it is used and how it can work best for the company’s long-term goals. Naturally, large technology companies are leading the way in establishing open source best practices, but open source is becoming commonplace for both tech and non-tech companies.
Open source programs are typically created by a company’s software engineering or development department for informal use and then eventually grow to a “formal” program with a collection of policies and guidelines. These policies may include open source contributions, a list of acceptable licenses, and the use of OS code.
When an inventor of technology who is also a university employee wants to commercialize university-developed technology, it is customary for the university and the inventor to “spin out” the technology via a license agreement to a newly created company (a licensee company) that sets forth the terms of the license, including any necessary milestones for advancing the technology, restrictions on the use of the technology, and the royalties and other financial terms applicable to the licensing and commercialization of the technology.