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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Commercial Law

Date & Time
  • event Date

    Tuesday, June 11, 2024

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$297.00
CLE
ALL

This CLE webinar will discuss two recent cases from government contract tribunals that evaluate the limits on enforceability of software end user license agreements (EULAs) incorporated into government contracts. The panel will explore the ramifications of these decisions and the lessons for contractors licensing software to the federal government.

Faculty

Scott A. Felder
Partner
Wiley Rein LLP

Mr. Felder’s practice focuses on the complex intellectual property issues confronted by government contractors, including patent rights and rights in technical data and computer software, with emphasis on the aerospace, defense, and intelligence sectors. He routinely represents clients in intellectual property disputes and negotiations with the government. As the head of the firm’s Patent Prosecution practice, Mr. Felder also represents clients before the United States Patent and Trademark Office, including the Patent Trial and Appeal Board. He is a frequent speaker and author on intellectual property issues, and currently serves as a Vice-Chair of the Intellectual Property and Technology Committee of the American Bar Association’s Section of Public Contract Law.

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Paul F. McQuade
Shareholder
Greenberg Traurig LLP

Mr. McQuade focuses his practice on intellectual property law and government contracts, counseling both commercial and federal sector clients on improving their competitive position through technology development, IP licensing, and patent procurement. He conducts due diligence in acquisitions and prepares and negotiates licensing, research and development, joint development and collaborative agreements between private parties and with government agencies. Mr. McQuade has litigated patent infringement and trade secret cases in a number of jurisdictions and has lectured and appeared in articles concerning intellectual property enforcement, data rights and software licensing.

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Description

Government contractors that sell or license software to the federal government, either directly or indirectly through a reseller agreement, frequently attempt to preserve and protect their intellectual property rights by incorporating commercial licensing terms from an EULA into their government contracts. Two recent cases shed light on the enforceability of EULAs in federal government contracts and the steps software licensors can take to protect their IP enforcement rights.

In Avue Technologies Corp. v. Secretary of Health and Human Services, the Federal Circuit ruled that software manufacturers may seek to enforce EULAs against federal agencies if the EULAs qualify as "procurement contracts." Specifically, the Federal Circuit found Avue's allegation that its EULA combined with the prime contract qualified as a "procurement contract" sufficiently "nonfrivolous" to establish jurisdiction before the Civilian Board of Contract Appeals (CBCA). What the court left undecided was whether Avue's master services agreement/EULA qualified on the merits as a "procurement contract" enabling direct enforcement under the Contract Disputes Act and what role resellers must play in bringing claims before the CBCA.

In another case, 4DD Holdings L.L.C. v. United States, the U.S. Court of Claims ordered the government to pay millions of dollars in damages to a software developer for copyright infringement. This opinion, which determined that a Department of Defense contractor made thousands of unauthorized copies of the plaintiff's software, highlights the risks to both the government and contractors of misunderstanding software copyright requirements in federal contracts.

Listen as our authoritative panel reviews the holdings in these cases and the important lessons they provide for contractors licensing software to the federal government. The panel will provide tips and best practices for counsel representing software companies to ensure that their client's IP rights are protected from unauthorized use on the front end of the contract.

Outline

  1. Overview: EULAs in government contracts
  2. Review of two recent cases from government contract tribunals and what their holdings mean for licensing software to the federal government
    1. 4DD Holdings L.L.C. v. United States
    2. Avue Technologies Corp v. U.S. Department of Health and Human Services
  3. Key terms to examine in an EULA
    1. Reviewing IP clauses in the Federal Acquisition Regulations to ensure compliance and negotiating specific exceptions to the standard requirements
    2. Tracking the government's software license use
    3. Reseller agreement terms--requiring partner to submit pass-through or sponsor claims the software company may have against the federal government
    4. Special compliance requirements for software developed with AI tools and software that delivers AI-based capabilities
  4. Other issues
  5. Key takeaways

Benefits

The panel will address these and other key issues:

  • What are the key considerations for contractors licensing software to the federal government?
  • How can government contractors that sell software to the federal government protect their IP rights in EULAs?
  • What do the two recent cases say regarding the enforceability of EULAs in government contracts?
  • What are steps software licensors can take now to protect their IP enforcement rights against the federal government?