Most of the value of companies today is found in the technology – preeminently software – that they have either created or that others created and they use. There is also substantial value in brands, the distinctive marks that give businesses market power. Companies commercialize software and other technology and brands by out- or in-licensing what they have created or use, respectively. These technology and trademark licenses are among the most complex forms of contracting, with mutually inter-dependent provisions related to use and royalties, warranties and various forms of liability. This program will provide you with an intermediate-level discussion of the most important provisions of software and trademark licenses, including scope of use, royalties, warranties, indemnity, the limitation of liability, and remedies.
Day 1 – October 1, 2013:
Understanding the major elements of a software, technology and trademark licenses
Defining the scope of the license – usage, territory, time and updates
Royalties – different structures and audits
Warranties in licensing – implied and express
Protecting the exchange of confidential information – employee issues and trade secrets
Day 2 – October 2, 2013:
Remedies on breach – financial liability and specific performance
Indemnity – scope of obligation, exclusions, mechanics, remedies/triggers
Limits of liability – forms liability and failure of essential purpose
Risk management – diligence, insurance, escrow, force majeure
IP diligence – what to look for and red flags
Peter J. Kinsella is a partner in the Denver office of Perkins Coie, LLP, where he has an extensive technology law practice focusing on advising start-up, emerging and large companies on technology-related commercial and intellectual property transaction matters. Prior to joining his firm, he worked for ten years in various legal capacities with Qwest Communications International, Inc. and Honeywell, Inc. Mr. Kinsella has extensive experience structuring and negotiating data sharing agreements, complex procurement agreements, product distribution agreements, OEM agreements, marketing and advertising agreements, corporate sponsorship agreements, and various types of patent, trademark and copyright licenses. Mr. Kinsella received his B.S. from North Dakota State University and his J.D. from the University of Minnesota Law School.