Book Review: A Practical Guide to Software Licensing for Licensees and Licensors (Fourth Edition)

Thursday, December 15, 2011 - 16:24
Micro Focus
Michael Yang

The latest edition of H. Ward Classen’s A Practical Guide to Software Licensing for Licensees and Licensors (Model forms and annotations included in print and on CD-Rom, Chicago: American Bar Association, 4th ed. 2011 $129.95, pp. 987, ISBN: 978-1-61632-813-9) is a practical reference manual that combines the most useful aspects of treatise, textbook and form book.  The fourth edition has been updated with some of the latest developments in software licensing, including sections on UCITA “bomb shelter” legislation, cloud computing and software as a service (SaaS) models, and privacy issues under HIPAA and HITECH.  Going beyond a mere discussion of licensing matters, the book provides guidance on areas that have significant influence on the licensing process, including topics such as the negotiation process, intellectual property law, export issues, bankruptcy issues, and the use of additional documents related to the license agreement, such as master agreements, service level agreements, confidentiality agreements, and escrow agreements.

Most practitioners when looking for reference books on software licensing are likely to be seeking sample contract language and form contracts, and this book does not disappoint in that regard.  At nearly 1,000 pages in length, the book is split nearly 50/50 between substantive chapters and model forms.  Those using A Practical Guide solely as a form book will find that it is more than sufficient in providing sample language for most software licensing circumstances a practitioner might face (made particularly handy by the included CD containing a slew of model forms), but it is much more than just a form book. 

A Practical Guide is well organized and includes a table of contents, a table of cases, and an index to guide the reader. Both experienced and inexperienced practitioners alike should find A Practical Guide to be a useful text.  Written in an easy-to-understand manner, the book contains numerous annotations as well as the occasional URL directing the reader to Internet resources where additional information may be found.   One caveat: those looking for international licensing considerations will likely need to supplement what is found in the book as while the book does briefly discuss certain international law issues, such discussions are not extensive. 

The book begins with an overview of the negotiation process (including the use of RFIs, RFPs and letters of intent) before providing a brief overview of software licensing itself.  From there, the book moves on to chapters on general licensing concepts and provisions, and for those unfamiliar with license agreements, the author includes discussions of typical license provisions, such as representations and warranties, indemnities, and the use of best efforts language.  In addition, the discussion of best practices for contract drafting is a chapter that contains advice that any contract drafter should find useful in reducing contractual risk. 

The bulk of the chapters relate, of course, to the types of software and services agreements that are common to the software industry.  Statements of work and technical specifications, the use of change orders, service level agreements, and disaster recovery provisions (with corresponding forms and language contained in the CD of model forms) are among the many types of agreements discussed in the book, and the provided explanations should be useful for those unsure of how such agreements fit into the software licensing process while also serving as a checklist for going through the licensing process.

Roughly a third of the model forms section is composed of a single sample software license and services agreement that has been annotated by the author.  The sample agreement is very lengthy and thorough and contains most of the typical (and even some atypical) items that one might encounter in a software license.  The annotations are written to provide information and advice from both licensor and licensee perspectives, which will be useful both as a model agreement and as a quick reference due to the many explanations and discussions scattered throughout.  Additionally, certain other form agreements included in the book are also annotated and are similarly useful. 

One small gripe: in some instances, the author provides a form that is written from one perspective (e.g., the customer), but does not also provide a form written from the opposite perspective, and it would be useful to have such a competing form as it would be instructive to see how the differing perspectives affect the contract language.

Minor quibbles aside, the latest edition of H. Ward Classen’s A Practical Guide to Software Licensing for Licensees and Licensors is a well-written, thorough guide to software licensing from a knowledgeable and experienced practitioner and is an indispensable and accessible reference for any software licensing professional.

Michael Yang is in-house counsel with Micro Focus, a UK-based company that provides innovative software that allows companies to develop, test, deploy, assess and modernize business-critical enterprise applications.  Prior to joining Micro Focus, Mr. Yang was in private practice in Baltimore, Maryland with a concentration in intellectual property and licensing matters.  For nine years, Mr. Yang also served as an Adjunct Professor teaching Technology Licensing at the University of Baltimore School of Law.  The views and opinions stated in this review are solely those of the author and do not represent those of Micro Focus or its affiliated entities.