It is not often that there is a reported case specifically addressing exclusive software licensing, so I thought I would share 3 takeaways from this 2011 case (HyperQuest vs N’Site Solutions).
I will definitely not bore you with the long and detailled facts in this case, so let’s get to it.
1) If you want copyright law to protect you, then use copyright wording in your exclusive license grant.
- Ok that was a mouthful, so let me explain. There are generally 6 exclusive rights a copyright owner has (ie. reproduce, distribute, create derivative works, publicly display and perform, etc.) and these rights need to be used or refered to in the license grant, to seek protection under the copright act.
2) If too many rights are retained, then you may not receive an exclusive software license.
- This actually happended in this case, as the court decided that too many rights were retained by the grantor for an exclusive license to be granted. This makes a lot of sense, as if a party says I grant you an exclusive license but then retains rights that are inconsistent with exclusivity, then the exclusive license should not work.
3) Typically exclusive licenses are granted for certain territories, fields of use, or media.
- Yes, typically exclusive rights are granted for certain territories (example, US only), fields of use (example, for only the insurance industry), or media (example, print) so think of drafting them this way.
So next time you are working on an exclusive software license, you may want to review this case, as how the exclusive license grant is drafted really matters.
Disclaimer: This post is for informational and educational purposes only, and is not legal advice. You should hire an attorney if you need legal advice, which should be provided only after review of all relevant facts and applicable law.