Information Technology and Electronics
Technology licensing is frequently a core element of our clients’ strategies. We assist clients with hundreds of licenses each year, both from the perspective of the licensor and the licensee, and in nearly every technological field. We routinely advise clients on the licensing of patents, computer software, digital content, technical know-how, trademarks, trade secrets, copyrights and most other forms of intellectual property. We have significant experience in the area of software and content "shrink-wrap” and "click-wrap” agreements, and successfully represented the plaintiff in the landmark case ProCD v. Zeidenberg, in which a federal appeals court held for the first time that shrink-wrap license agreements are enforceable contracts.
We also represent some of the most prominent providers of information technology, systems integration and consulting services. We advise these clients on issues ranging from software and website development agreements to strategic and management re-engineering to the engagement of leading scientific and technical advisors.
In 2005, we represented:
- Analog Devices in negotiating domestic and international product development, OEM and license agreements
- Avid Technology in negotiating key licensing, distribution and supply agreements for Avid and its Digidesign division
- Columbia University in licensing LCD technology to major Asian electronics manufacturers
- RSA Security in negotiating an agreement with Aladdin Knowledge Systems for security token devices
- Starent Networks in negotiating international distribution and licensing relationships
Internet and E-commerce
We have negotiated agreements on behalf of several leaders in this industry, including:
- AOL—various payment processing agreements for online transactions
- IMLogic—agreements for instant messaging software
- SmartBargains—online marketing referral agreement with LinkShare
Open source software has become increasingly popular among software developers for a variety of reasons. Some developers support the communal philosophy of the open source movement, while others believe that the use of open source software increases the efficiency and quality of software. Information technology personnel within large and small enterprises are attracted to the low cost of obtaining and implementing open source solutions. Although everyone has his or her own definition of open source code, the terms of open source licenses vary greatly. Analyzing the implications of the use of open source code requires a deep understanding of both the technology and the law.
Our TTL attorneys have advised clients on open source issues for years. We advise organizations that are well-known proponents of the open source model, such as Red Hat, as well as proprietary software vendors who need to understand the pros and cons of adopting open source code in their development projects. We also advise chief technology officers and corporate counsel about the use of open source code within their organizations and help them determine whether certain open source code products are right for their needs. During acquisitions, we review the use of open source software and advise companies and investors about the impact of open source software on the technology being acquired and about ways to manage any risk.
Sometimes the only way to achieve a goal is for multiple participants to work together. Whether the goal is setting an industry-wide standard, developing a new product that requires more expertise—or involves more expense—than any one company can bear, or providing a service whose output will be dedicated to the public, a consortium or other joint venture among multiple parties might be the best—or the only—way to accomplish that goal.
WilmerHale has developed a comprehensive, interdisciplinary approach to the representation of industry consortia and standards organizations. The central focus of many industry consortia is the combination of resources to develop or advance a technology for the benefit of the group or the public. The agreements governing the development of technology or intellectual property within consortia are critical and often involve complex commercial and technological considerations. Our attorneys, many of whom hold advanced degrees in areas as diverse as computer engineering, physics, molecular biology, chemical engineering and immunology, are experienced in combining legal, commercial and technical expertise to structure and negotiate such arrangements.
Our firm has helped to structure and form numerous industry consortia, representing major public-private and industrial initiatives. We have also advised clients, such as Yahoo!, wishing to join or contribute to standards setting bodies and other broad industry consortia, and have advised companies in forming highly-focused joint ventures.
We have represented numerous clients in the formation and operation of industry consortia in many different disciplines, including:
- The SNP Consortium Ltd. We were involved in the formation of the SNP Consortium, a not-for-profit collaboration of leading pharmaceutical and bioinformatics companies formed for the purpose of identifying and mapping irregularities in the human genome.
- Internet Engineering Task Force (IETF). We represent IETF, the leading international Internet standards organization.
- The Open Software Foundation. We represented this open standards body.
- SI² Silicon Integration Initiative. We negotiated a license of technology for an electronic design automation industry standardization initiative.
Technology is a core asset of our nanotechnology clients. Our lawyers leverage technical knowledge, business acumen and legal experience to structure, prepare and negotiate a range of licenses and other technology transactions. We assist clients with thousands of licensing transactions each year, from the perspective of both the licensor and the licensee and in nearly every technological field. We have significant experience in licensing key technology acquisitions for startups and existing companies. We routinely advise clients on the licensing of patents, copyrights, trademarks, computer software, biological compounds, manufacturing designs, technical know-how, trade secrets and most other forms of intellectual property. We also deal extensively in commercial arrangements relating to technology products and services such as product distribution and sale, contract manufacturing, professional services, technology escrow and business process outsourcing.
Licensing transactions and strategic alliances often mean the difference between success and failure in a highly competitive industry. Leveraging technical knowledge, business acumen and legal experience, we structure, negotiate and draft all types of licensing, distribution, product development, joint venture and strategic alliance agreements for telecom and wireless clients. In completing these transactions, we often draw on the experience of our regulatory, intellectual property, business and tax lawyers.