We recently handled a matter for an engineering firm based in San Jose that was negotiating a deal to provide consulting and training services to the customers of a large software company based in San Francisco. The customers, who were scattered all over the globe, needed training and technical assistance on how to use the suite of complex software products offered by the software provider.
Our client asked for assistance negotiating the terms of the consulting and training agreement with the software company. Upon reviewing the proposed agreement, we were amazed to discover the software company was trying to use a form contract to license the software to our client rather than entering into a consulting agreement under which our client would provide technical assistance and training services to the software company’s customers who licensed the software. In particular, the proposed agreement required our client to indemnify the software company for acts of infringement committed by the software company’s customers, a party over which our client had absolutely no control.
We managed to negotiate a change to the indemnification provision that completely eliminated any indemnification obligations by our client for any parties or third persons. In fact, we secured indemnification rights for our client in the event the software company’s licensees infringed on any parties’ or third person’s intellectual property rights, and our client someone got named in a subsequent law suit. Moreover, the indemnification obligation survives expiration and termination of the consulting agreement, which is important to our client because infringement suits may not rear their ugly heads for years after the contract had expired. Our client was quite pleased with the results.
So remember at least two things from this blog: (1) Always read the contract in its entirety before you sign anything to make sure it’s appropriate for the transaction you’re thinking of entering into, and (2) always contact Finkel Law Group, P.C. for assistance with your technology licensing needs, whether its software or some other cool technology.
You can reach us at (415) 252-9600, or info@finkellawgroup.com.