Tech & Sourcing @ Morgan Lewis

Following the success of the previous blog post “A Brief Overview of the Metaverse and the Legal Challenges It Will Present,” we are introducing a new feature for the Tech & Sourcing blog: “Future Watch.” Our Future Watch posts will focus on the most topical areas of the technology industry and will explore the associated legal challenges and potential future developments.

When two parties engage in a merger or acquisition, there are several processes that must take place before the transaction can be completed, including due diligence of the seller’s assets—and particularly the seller’s relevant and material intellectual property (IP).

When two parties come together to discuss a new idea or potential collaboration, the parties are usually operating under the protection of a non-disclosure agreement (NDA). If the parties decide to work together, they will most likely enter into a services agreement outlining their respective rights and obligations, including intellectual property (IP) ownership and commercialization rights. Occasionally, parties operating solely under an NDA may start collaborating in a way that’s not fully covered by the NDA prior to entering into a services agreement because they’re just not at that stage of the relationship yet. Regardless of whether the parties are ready to enter into such an agreement, if there is any potential for IP to be created in connection with such a collaboration (even if it’s fairly informal), the agreement between the parties needs to address the rights of each party with respect to any such IP.

The US Supreme Court is set to hear a case regarding fair use as it pertains to a photo of the universally known music artist, Prince. The nation’s highest court will hopefully clarify when and how artists can make use of the work of others.

Rights holders are almost always looking for ways to monetize the intellectual property (IP) that they own or license. For owners of rights in popular logos; characters from TV shows, movies, or video games; or similar IP, one way to generate a revenue stream is to enter into merchandise license agreements.

The Morgan Lewis M&A Academy continues on February 22 with the next presentation in “Track 2 | Getting the Deal Done – Specialists Matter” regarding key issues and considerations when companies are buying or selling technology assets. As technology and sourcing professionals, it is important to stay up to date on M&A market trends and deal issues relating to technology transfers.

Non-fungible tokens (NFTs) have exploded in popularity over the past year. Use cases for NFTs have been growing as more industries are realizing the benefits they present. A report by blockchain specialist Chainalysis found that almost $41 billion was spent on NFTs in 2021—a number that is likely to continue growing.

The UK government is considering responses to its proposed reforms to auto-subscription rules for consumer contracts, as part of a broader consultation on reforming UK competition and consumer policy.

As 2021 comes to a close, we have once again compiled all the links to our Contract Corner blog posts, a regular feature of Tech & Sourcing @ Morgan Lewis. In these posts, members of our global technology, outsourcing, and commercial transactions practice highlight particular contract provisions, review the issues, and propose negotiating and drafting tips.

The Court of Justice of the European Union (CJEU) has held in Case C-410/19 The Software Incubator Ltd v Computer Associates (UK) Ltd that the supply of software by electronic means, where accompanied by the grant of a perpetual user license in return for a fee, could constitute a “sale of goods” for the purpose of defining a commercial agent under the EU Commercial Agents Directive (the Directive).