Selecting Business Names and Intellectual Property Law

Whether a software license agreement is properly constructed for a transaction depends on a range of factors. Of course, management of intellectual property rights for the copyright owner is a key area for close consideration. This entails defining the territory – usually countries – for the use of the software.

Software Development Contracts

A key indicator for complexity is whether the software licence is or will be part of a larger agreement to develop software from scratch – that old-fashioned word bespoke may ring a few bells. When computer software is developed under a contract, the proper advice is that a document specifying what the software will do at the end of the day should be incorporated into the agreement. Whether it is referred to as the functional specification, functional requirements or the requirements document is immaterial. What is important is that it defines with reasonable clarity what the software will do; and of course on a functional level.

Packaged Software Contracts

On the other end of the spectrum is a software licence for packaged software. In this case, the software is not to be built to any person’s particular specification, but rather the software supplier has gone to trouble of identifying a need in a market and constructed the software to fill the gap in the market. Sometimes – and more frequently – niche software is built with configuration options to deal with a broad array of configurations to suit different flavours of businesses. So, an accountancy package may be tailored to businesses from 10 people to 1,000 people. The point is this: software of this nature is fundamentally packaged and is sold as it is. There may be a requirement for extended configuration to suit the particular client’s needs, but in the end it is packaged and not software built to anyone’s particular specification, as is the case with software development contracts.

The difference may be obvious in this regard, but time and time again the wrong contract is used due to misconception as to the fundamental nature of what is being delivered.

After determining the fundamental nature of the software, some of the other matters that are frequently dealt with in so called software license agreements are:

1. The provision of maintenance and support service

2. Installation and testing

3. Service level agreements, delivery of improvements (whether they are updates or upgrades, rather than hot fixes). The software related services may be agreed in a separate document or they may be incorporated into the same agreement as the software licence. We return to these below.

Intellectual Property Rights

Terms of License

Assuming that the software supplier does not intend to assign the copyright in the software to the licensee, the terms of the licence are of crucial importance to software suppliers’ further exploitation of the software.

On the most generic level, there are 3 types of licences that may be granted: non-exclusive licences, sole licences and exclusive licences. Licences though, as they are only ‘permissions’ may be framed in anyway the parties wish. A software supplier will often wish to licence their software to a number of clients. In this case, the licence will be a non-exclusive licence as the software supplier grants a non-exclusive right to the licensee to use the software. Sole licences do not appear too often, and they simply mean that the licensor (the software supplier) grants a single licence to a party to use the software, and they retain the right to use the software themselves. On the other end of the licensing spectrum is the exclusive licence. In the event that a software supplier wishes to grant the licensee the right to use the software to the exclusion of all others, an exclusive licence is granted. Some care needs to be taken when granting exclusive licences, as courts will look at the terms of the exclusive licence and decide whether it is in substance an assignment. If it is, then a court will order that the licence term was not at law a licence at all, but rather an assignment and thus divesting the software supplier of all rights in the software.

Here is a brief example of the complexity that can be introduced in granting licences.

Suppose a supplier designs and constructs software that manages couriering of documents from office to office of business. It is possible for the software supplier to grant non-exclusive licences to businesses in a particular trade, say banking to use the software. Those licences may be restricted to use in a particular geographic region such as the City of London. The software supplier may then grant non-exclusive licences to businesses in the financial sector in Manchester to use the software. Further, the software supplier may grant an exclusive licence to a person to develop the source code to perform additional functions. This exclusive licence would deprive the software supplier from further developing the source code himself. So licensors of software are able to flexibly grant permissions to use the software, and restrict its use geographically, by industry and any other basis that appeals to them.

Extensions of these types of licensing are non-transferable and non-assignable licences, which effectively prevent licensors from selling or licensing others to use the software. One of the exclusive rights of the copyright owner is the distribution right – the right to licence others to distribute software. This is the foundation of the reseller agreements, whereby third parties are authorised to licence software on the software suppliers’ behalf. Most software licences do not grant the licensee the right exercise the distribution right as it would allow them to sell licences for the software.

Furthermore licences may be set for a fixed term or the grant of licence may be perpetual – allowing the licensee to use the software forever subject to any other conditions imposed by the licensor.

Tracking Licences

When the software is licensed on a per use basis, it is a good idea to provide that a register be maintained of copies made of the software, in addition to monitoring software use by Active Directory on Windows systems. Such implementations facilitate denying software use by electronic means. If this is to be done however, the licensor must be informed in the contract document.

Intellectual Property Rights Indemnities

In software licence agreements, these indemnities are geared to protect the licensee from primary liability for infringement where their use of the developed software would infringe patent rights or copyright. As innocence is no defence to infringement, a user of the software infringes intellectual property rights simply by using it. It is worthwhile to note however that the innocence may be taken into account in the assessment of damages. These indemnities are becoming more important to licensees as an incidental effect of the popularity in obtaining patent rights. Patented inventions may be combined with other inventions, and although in patent cases infringement may be difficult to prove in the absence of great expense, the existence of patent rights in software is the best form of protection, because there is no defence that the software was independently created. That defence is only available in copyright infringement cases.

In order to claim the benefit of an indemnity, the indemnifier should require that they have conduct of the defence of the infringement defence proceedings and insist on the cooperation and assistance of the indemnified party in defending the claim. This to some extent allows the indemnifier to control their costs and run the defence in their best interests. The software supplier is in the best position to run the defence in any event due to their knowledge of the development of the software and the sources drawn on in developing it.

Usually accompanying intellectual property indemnities are provisions requiring the software supplier to replace infringing aspects of the source code and failing this, pay the expenses of the licensee in doing so.

Payment for Licences

Owing to the nature of the rights of the licensor in granting software licenses, the licensor is able to structure the payment for licences to build in flexibility to payment structures.

Restrictions may also be placed on the use of software over a network, per machine, single use, on specified equipment, per user, per site, worldwide, by territory or any combination of these.

The most basic form of licence seems to be a fixed sum for an organisation. Extensions of this form of licence may be for a set number of users with additional licences incurring an additional fee for a fixed period. For multifaceted software, different fees may be applied for different the types of licences required. For instance, an organisation may require additional administration licences or data processing licences each of which would attract a different price point.

Where licences granted are not intended to be perpetual, the timing of renewal payments should be set out and the method of calculation of the sum falling due. Properly drafted contracts should allow for price rises over the course of the licensing period together with price rises in materials and human resources. Also, the parties should consider whether they want the licence to renew automatically, or to automatically lapse.

It is worthwhile providing for interest rates where payments are late, but failing that the Late Payments of Commercial Debts (Interest) Act 1998 will apply for those late payments.

Other Payments

Where software has been commissioned, there may well be hardware requirements to host the software or other expenses such as staff costs, other materials and travel expenses that should be dealt with in the agreement. For clarity, whether the prices are inclusive or exclusive of VAT it should be made clear to avoid doubt as to who will be liable for the tax in the event it becomes payable in unexpected circumstances.

Additional Services and Improvements (Upgrade Services)

Provision may be made in software license agreements for further development and/or customisations by the software supplier. These are commonly dealt with in two ways. Firstly, the supplier may be required to provide a quote for the development services requested by the licensee or alternatively the software supplier may be granted entitlement to charge time and materials at published rates. It is rare in this day and age for suppliers to be given a blank cheque to perform further services for licensors wishing to improve the functionality of the software.

In packaged software and commissioned software licence agreements, especially in the case where the software is licensed on a non-exclusive basis and constantly improved and developed, licences often entitle the licensee to improvements for a fixed period. In the case that a licensor has uniquely funded the development but receives the software at a reduced price, more favourable rights to receive improvements are commonly encountered.

Change Control

Effective change control provisions are imperative to prevent scope creep, but in order to be effective, a functional specification or other document must be incorporated into the agreement to provide a point of reference for change control. Change Control provisions also allow an elegant mechanism for the software supplier to extend the delivery time scales. Where scope creep occurs, the supplier may not have a problem performing the additional work, but to perform the work in the same timeframe as original work is unrealistic. The focus in this sense is contract management: managing the deliverables, and when they are to be delivered. Change control is not to be underestimated.

Factory Acceptance Testing

In order for a software supplier to ensure their products are fit for purpose, factory acceptance testing must take place before a software product is released.

For off the shelf products the onus is solely on the software supplier to ensure the product meets the functional requirements and is bug free to avoid having to patch copies of software already released to market.

However, in more bespoke or customisable solutions the responsibility for successful factory acceptance testing prior to release falls on both parties. The majority of the responsibility falls on the software supplier to ensure that the product is tested in house prior to release.

Time pressure to deliver often reduces the actual time spent on this phase of software development to a minimum. This is a cause of a far greater number of faults being reported in the user acceptance testing phase which is a more costly exercise for both parties.

To ensure factory acceptance testing occurs and is performed adequately obligations must be placed upon the software supplier to deliver test documentation to the customer for review prior to the customer signing off to receive a release. The test results should contain certain numbers of test iterations across the whole software suite.

Obligations must also be placed upon the customer to deliver in a timely manner items such as a suite of test data and test scripts to the software supplier. Forcing this co-operation through contractual agreement creates a balance in the contract to focus the parties minds on the job in hand thereby reducing the time spent user acceptance testing on a customer’s site thereby reducing cost.

User Acceptance Testing

Released software invariably involves some degree of acceptance testing and the methods of conducting it are more or less onerous on the software supplier. To properly conduct acceptance testing, the purchaser should be given the opportunity to prepare their own test data and test scripts. The acceptance testing should be conducted in the presence of the software supplier so that instances of apparent defects may be dealt with immediately, and if the tests are successful obtain the acceptance certificate immediately, as acceptance certificates are the precursor to payment. Provision for retesting should be set out to allow a speedy process in the event that a genuine defect is identified during acceptance testing process. Warranty periods for software maintenance arising from defects should run from the acceptance date and not before.

Documentation Requirements

As businesses become more sophisticated in respect to the delivery of computer software, so does the requirement for cogent user documentation.

This is a minimum requirement for packaged and commissioned software. In the event that the intellectual property rights are to be assigned to the commissioner of the software, delivery of design documents, project management documents and user requirements documents are likely to be required to be delivered at the conclusion of the development project, to enable the commissioner of the software to develop the software in its own right.

Usually there is no commercial reason to grant rights to access these development documents where the software is subject to a package licence, or where the licensee is simply entitled to use the software.


Training may take a variety of forms. In the case of commissioned software, the software supplier may need to ‘train the trainer’ of the licensee as a minimum requirement, or for additional fees, conduct formal training sessions for end users. Much depends on the complexity of the software and computer literacy of the intended user base.

Escrow Arrangements

Escrow agreements are geared to protect the licensee paying a software supplier to design and construct software that meets their particular needs. These agreements are relied upon when the software house loses the means to continue to support the software whether through liquidation or lack of will. Escrow contracts are premised on the state of affairs that the licensee is never in possession of the source code, and to that extent, the licensee is exposed to the risk that if the software supplier or software house fails, they have recourse to the source to maintain and develop that source code. The conditions for release of the software to the licensee may be made as particular as the parties wish to make them. The more formal flavour of escrow agreements involves an independent trusted third party who specialise in providing escrow services. They take possession of the source code for the software, and undertake by contract to release the source code to the licensee only in the specified circumstances. The licensee gains some comfort in managing their risk in investing in the software development in the first instance.

Penalty Payments for Failure to Deliver

Rather than be forced to commence litigation in order to recover damages and to reduce the administrative cost of contract management, incorporation of penalty payments (liquidated damages) clauses into software license agreements is increasingly commonplace. Already, liquidated damages clauses are frequently used as the means for recovery for failure to meet agreed service levels. These liquidated damages payments come in the form of service level credits. The difficulty with liquidated damages clauses to setting the damages to be paid in the event of breach or non-performance to a level that does not qualify as a penalty or a forfeiture, which are unenforceable in the English legal system. The linchpin in determining whether a liquidated damages clause will be considered a penalty or forfeiture is whether the sum of liquidated damage is a genuine pre-estimate of the loss that will be suffered as a result of the breach that leads to the right for liquidated damages to be paid. Agreeing sums to be paid by way of liquidated damages however does not limit the payee to accept the specified or calculated sum in the event of a breach, as they may still sue for damages at large.


The two provisions that cater for termination in practically every professionally prepared document – where the parties have near equal bargaining power – are that either party may terminate in the event of a material breach or where one party enters liquidation or is otherwise insolvent.

Incorporating other rights to terminate largely relies on the nature of the services to be provided. Having right to terminate the contractual obligations assumes that there are continuing obligations under the contract. If the contract simply grants a perpetual software licence for a fixed fee, then it stands to reason that there is little need for rights to terminate. The modern style of contract drafting, even for packaged software (which are commonly instances of a perpetual licence grant ion) commonly exist in software licence agreements, and generally relate to the failure of the provider to meet specified minimum service levels.

Consequences of Termination

In the case of outsourced software services, exit management provisions are essential to ensuring a timely and professional handover of the outsourced services when terminating contracts. In the context of software developed and subsequently licensed, it may be that it is appropriate for the licensor to

1. Hand back user documentation

2. Delete all copies of the software residing on servers and workstations

3. Deliver up copies of the software on backup media and

4. Destroy confidential information.

Certificates of compliance may be used to obtain confirmation that the post-termination requirements of the contract have been adhered to.

On a related issue, this is where managing software licensing by electronic means is a useful tool to prevent use of the software. This is an under utilised measure by licensors to ensure that the computer software cannot be used.

Limitations of Liability

Limiting liability can be one of the most contentious issues in negotiating licence terms. The purpose of limitations of liability is to exclude or otherwise limit liability that arises in a party in the event of a breach of contract or negligence in performing the contract. Liability that cannot be excluded should be insured and there is a good case for employing other means to manage corporate liability and protect the assets of a company, which naturally includes intellectual property assets. Liability arising from negligence that causes personal injury or death cannot be limited or excluded in any case. The types of liability that may be excluded include property damage; loss of profits, business or revenue; consequential or incidental loss; loss of goodwill and the damage caused by the loss and destruction of data.

In technology contracts that use facilities such as the Internet that are outside the control of the parties, force majeure clauses may be used to absolve the parties of liability when something goes wrong. Force majeure clauses may refer to named events as well as a general type of event. The effect is to avoid the instance of a party being in breach where the events are outside their control.

The basic checklist for some of the provisions that are often sensibly incorporated into software license agreements is:

1. The Parties

2. The Price

3. Obligations of the Software Supplier

4. Obligations of the Licensee

5. User Acceptance Testing Procedures leading to Acceptance, including warranty periods that will apply thereafter

6. Additional Services

7. Change Control

8. Training Requirements

9. Escrow Agreement

10. Service Levels

11. Service Level Compensation

12. Liquidated Damages

13. User Documentation

14. Rights to Improvements

15. Confidentiality obligations

16. Intellectual Property Rights

a. Branding rights

b. Terms of licence

17. Confidentiality obligations

18. Termination clauses

19. Consequences of Termination

20. Limitations of Liability

How to Increase Your Law Practice Cash Flow By Helping Your Clients Choose Their Own Fees

One of the biggest reasons most lawyers struggle with the business end of law practice is because of the old, outdated, clients hate it and so do lawyers, practice of billing time on an hourly basis, often in six minute increments.

When I was working for large law firm, there was really no choice but to bill time. The managing partners had no way to track effectiveness of associates without it. And, frankly, it’s one of the reasons I left to start my own law practice.

As a corporate tax and estate planning associate, billing time just didn’t seem to work well. Clients weren’t communicating with us as often as they should because they knew they’d get a bill in the mail weeks later for the $67.50 email they sent and I would more often than not choose not to bill time for work performed because, honestly, I felt bad doing it when I was answering a quick question for a nonprofit or personal client.

When I hung my own shingle and started my law practice, I knew that I’d have to make the switch from hourly billing to something else, but I wasn’t sure how to do it or what the something else would be.

I found myself losing money because I wasn’t billing for the quick calls, the requests for referrals to other lawyers and the myriad of other little things that would come up that felt like billing would take more time and cost more than just writing off the time.

I was losing money, fast. And I could see it wasn’t sustainable.

So I made the shift to billing for my estate and business planning services on a flat fee basis. I looked at what other lawyers were doing based on their listserve posts and discussions and created my own flat fees.

But there was a problem… client’s weren’t signing up as often as I felt they should and I knew it all had to do with the fees.

I wasn’t explaining them properly. I almost considered switching back to the hourly model, which all clients could understand and, it seemed, almost expected.

Then, I engaged a client for a $5,500 trust package. Success! Except then it wasn’t…

Within 2 weeks they had called me back to cancel the planning. They had found another lawyer who would provide EXACTLY what I was providing for just $2,500. And while they said they would be happy to pay me $1,000 more for the additional service and relationship I provided, they couldn’t justify more than double.

I was devastated. I knew I was offering more than the lawyer who was charging just $2,500 for EXACTLY the same thing, but I didn’t know how to articulate that more.

So I let them out of our agreement. As I did so, I made a request. I said to the client, “okay, I understand what you are saying and I have a request. Would you please get back in touch with me after the planning with this other lawyer and share your experience with me?” He said yes and, frankly, I never expected to hear from him again.

But hear from him I did. And it was better than I could have ever hoped for. In fact, what he shared with me became the basis for a complete redesign of the way I charged for my legal services, explained them to clients and was most likely the #1 single thing most responsible for my being able to go on to build a million dollar a year plus law practice.

This client came back to me with a point by point analysis of my process and the other lawyer’s process and what I was able to see is that the plan the lawyer was delivering for $2,500 was not EXACTLY like the one I had quoted a $5,500 fee for.

In fact, for the plan that lawyer was delivering to his clients, I would have charged only $3,500, which was the exact amount the clients said they would have paid for my enhanced service and relationship offering.

In fact, I was including two additional items in my $5,500 plan that I could now let my clients choose whether to include or not and they could, in effect, choose their own fee!

Today, those $1,000 questions are the foundation of the fee quoting system I developed and have now taught to hundreds of lawyers who are using these questions to engage more clients and receive higher fees by clients who are happy to pay them.

While I cannot explain the $1,000 questions in full here, I can describe the starting place for making the shift from hourly services to packages your clients are happy to pay for.

First, identify three levels of outcomes or value you provide to your clients.

For example, in the estate planning practice, our Personal Family Lawyer members have a basic plan for families who don’t have assets that would go through probate, a mid-level plan for families with assets that would go through probate and a high level plan for families who want their lawyer to handle not only all the planning and documentation, but the transfer of their assets as well.

In the business planning practice, our Family Business Lawyers may have three packages focused on clients just starting up their business and need all the deliverables associated with a new startup, a package that is for the business owner who has been at it for some time and needs ongoing strategic support and finally a high-end package for the business owner who is ready to consider selling the business and wants to prep it for sale.

In a divorce practice, you may use stages, such as pre-divorce consultation and planning, filing of the complaint and all pre-litigation matters, mediation or collaboration of marital settlement agreement and then a whole separate set of packages if litigation is necessary.

Second, assign a value to these outcomes.

The value is not about the hours you will put into the outcome, but instead about the value of the outcome to the client.

For example, a startup client in the business side of a law practice may require far more hours than the strategic support for the ongoing business owner needs, but the start up client has less available assets and your package would be priced less with the intention that the start up work is just the beginning of a life-long relationship with the client that will net your law practice quite a lot of income over time – if you can support the business to get off the ground.

A client family with less assets at stake in the event of a death or disability would naturally want to pay less than a family who has assets that would go through probate or even be subject to estate tax.

Price your packages accordingly.

Third, create a fee schedule that lays these packages out clearly

I invested $10,000 to work with a consultant to design my packages and fee quoting system. Then I invested another $2,500 to visually represent the packages in a fee schedule.

That $12,500 was the best investment I ever made in my law practice because it took me from struggling to engage clients and command fees I knew I deserved to engaging just about every single client who came into my office and at higher fees than I ever had before.

The best part is my clients were happy to pay the fees because they were choosing the fee themselves. And, thanks to the $1,000 questions, in many cases, they were choosing to pay me $1,000-$2,000 more than they would have if I had just quoted a fee without the questions.

Are you ready to make this kind of shift in your practice? If so, why? If not, why not? What’s stopping you?

Write Your Own Business Letters and Contracts – Save a Fortune on Lawyers’ Fees

Small business owners can save a fortune in legal fees by searching online for boilerplate legal documents which cover anything from employment law to business letters, debt recovery to landlord and tenancy agreements for your property investments.

There are many free business letters and templates out there but do remember to read the document fully yourself before using it. You may need to adapt or remove some of the lines which don’t apply to your business or situation.

It can be intimidating to write a letter of complaint or send a reminder for a late-paying customer, but using a template can help you overcome the block of how to start your letter. A good letter template will be well structured and flexible enough that you can modify or remove portions to fit your circumstances.

For example in a sub-contracting agreement, it is important to be as specific as possible about the tasks or deliverables which the sub-contractor must deliver. In a supplier agreement be sure to check the penalties for late delivery are suitable for you or check how refunds for defective materials are handled. Especially useful template documents can be confidentiality agreements which you can produce easily prior to discussing a new project with a potential client or partner.

In complex scenarios you should consult qualified legal advice as the potential loss you can suffer from using an inappropriate template is more than the cost of the advice. Even in these cases, looking at template documents will help to familiarise you with the issues and parameters that you will be discussing with your lawyer, again helping you to target your lawyer’s high hourly rate more effectively.

Do remember also that verbal contracts are enforceable but it is always best to follow up a verbal agreement with a written document that clarifies what was discussed and what was agreed. Although this may seem cumbersome in the long run it keeps things clear and avoids potential misunderstandings later down the road.