The following contract language may be incorporated into a (RFP) Request for Proposal or final contract language where it is in the best interest of the State of Connecticut to retain the copyright on software being developed by outside contractors.

A. That [the Second Party/Contractor] shall transfer to [the First Party/Agency/State], as part of the consideration for this Agreement, any and all copyright rights or other proprietary interests which [the Second Party/Contractor] may be in materials ["Work Products"] produced by it under the terms of this Agreement; and that [the Second Party/Contractor] shall, whenever so requested by [the First Party], sign (with proper notarization or other lawful acknowledgement of its signature) and deliver to [the First Party] a letter agreement, in form and content satisfactory to [the First Party], stating that [the Second Party/Contractor] thereby irrevocably transfers to [the First Party] all of its copy-right and other proprietary rights in the Work Products designated by [the First Party] in its related request.

That, if deemed appropriate by [the First Party] in its sole discretion, [the Second Party/ Contractor] shall agree that any or all Work Products shall be deemed a work of joint authorship by [the First Party] and [the Second Party/Contractor] for copyright purposes, and shall be registered as such with the United States Copyright Office. [The Second Party/Contractor] hereby waives any right to oppose or object to such a claim of joint authorship or to such related copyright registration. [The First Party] shall determine, in its sole discretion, the appropriate division between [the First Party] and [the Second Party/Contractor] of any profits made by either party from exploitation of the Work Products. Such division shall be based largely on the respective investments and involvement of the parties in the creation of the Work Products.

B. That [the Second Party/Contractor] shall not engage or allow any party ("Other Party") other than itself or [the First Party] to contribute directly to the creation of any Work Product unless [the Second Party/Contractor] has first obtained from said Other Party a written agreement containing essentially the same terms as Section A above; i.e., that the Other Party:

Shall agree to transfer to [the First Party] any and all copyright or other proprietary rights said Other Party may have in designated Work Products, or, if [the First Party] so requests, shall agree to deem any such Work Product a work of joint authorship by [the First Party] and by the Other Party, and, if appropriate, by [the Second Party/Contractor] also; and

Shall agree to sign (with proper notarization or other lawful acknowledgment of its signature) and deliver to [the First Party] any letter agreement ("Letter Agreement") of the kind described in Section A above which [the First Party] shall request from it. The aforesaid agreement ("Secondary Agreement") between [the Second Party/Contractor] and an Other Party shall provide expressly that any such Letter Agreement shall be addressed and delivered by the Other Party to [the First Party], that such Letter Agreement shall be directly enforceable by [the First Party], and that such delivery and enforceability are part of the consideration for the Secondary Agreement.

C. That [the Second Party/Contractor] hereby warrants and represents that it knows of no third party which has any copyright or other proprietary interest in the Work Products and that [the Second Party/Contractor] has not assigned, pledged, or encumbered such rights or entered into any agreement that would derogate or conflict with any such rights granted to [the First Party] herein, and will not do any such things to encumber such rights; that [the Second Party/ Contractor] has the full right, power and authority to enter into this Agreement and to grant the rights granted herein; that, except for materials of others, permission for use of which has been or will be obtained by [the First Party], the Work Products are original, previously unpublished, and not in the public domain; that the Work Products do not contain any material that violates any right of privacy or which is libelous; and that no material in the Work Products plagiarizes any other work or infringes on any copyright or other proprietary right. [The Second Party/ Contractor] shall indemnify and hold [the First Party], its officers, directors, employees, other agents, and licensees harmless from any loss, damage, payment or other expense (including reasonable attorneys' fees and disbursements) arising from any claim, demand, recovery, suit, civil or criminal proceeding which is based upon facts contrary to or inconsistent with any of the representations and warranties stated herein.

That [the Second Party/Contractor] shall, at its expense, defend any suit instituted against [the First Party] and indemnify [the First Party] against any award of damages and costs made against [the First Party] by a final judgment of a court of last resort based on the claim that any of the products or services furnished by [the Second Party/Contractor] under this Agreement constitutes an infringement of any patent or copyright of the United States or proprietary rights of others; provided [the First Party] gives [the Second Party/Contractor] reasonable notice in writing of such a claim, permits [the Second Party/Contractor] to defend the suit, and gives [the Second Party/Contractor] available information, reasonable assistance, and necessary authority in that connection. If any of the products or services furnished hereunder is in any such suit held to constitute infringement and if its use is enjoined, [the Second Party/Contractor] shall also, if possible, at its own expense: (a) procure for [the First Party] the right to continue using the same; or (b) replace the same or modify the same so that it becomes non-fringing; or (c) remove the same and discontinue its use and any future charges or royalties pertaining thereto. [The First Party's] acceptance of any of these measures, while they may mitigate [the First Party's] damages, will not constitute a waiver of any of [the First Party's] other rights or remedies with respect to a breach of this Agreement.

That [the First Party] reserves the right to have transferred to other storage media of [the First Party] any data stored on any product of [the Second Party/Contractor] finally adjudicated to be in default of or infringing on any patent, copyright, license or proprietary rights, by whatever means [the First Party] selects, prior to releasing said product to [the Second Party/Contractor]. [The Second Party/Contractor] will bear all costs caused by such transfer.

That [the Second Party/Contractor] shall, however, have no liability to [the First Party] under this Section if any patent or copyright infringement is based upon or arises out of: (a) compliance with designs, plans, or specifications furnished by [the First Party] as to the products or services; (b) alterations of the products or services by [the First Party]; (c) failure of [the First Party] to use updated products or services in combination with apparatus or devices not delivered by [the Second Party/Contractor]; (d) use of products or services in a manner for which the same was not designed, and which was not reasonably intended or contemplated by [the First Party] at the time of its entry into this Agreement; or (e) a patent or copyright in which [the First Party] or any affiliate or subsidiary of [the First Party] has any direct ownership interest.

[SECTION D BELOW IS FOR INCLUSION ONLY IN CONTRACTS FOR COMPUTER SERVICES OR PRODUCTS.]

D. That the term "Documentation," as used herein, means the then current, generally distributed data provided by [the Second Party/Contractor] for use by its customers within units of equipment or software programs.

That the term "Program Product," as used herein, means a computer control program and associated Documentation which contains Proprietary Information of [the Second Party/Contractor] and which [the Second Party/Contractor] announces for use with its equipment and which is available for license to its customers at a separately stated charge, as listed in the Product Schedule.

That the term "Proprietary Information," as used herein, means any data, information, programs or intelligence, including corrections, modifications, versions and copies thereof, whether in machine-readable or visually-readable form, containing information which is the property of, and is confidential to, [the First Party]. Title to [the First Party's] Proprietary Information shall remain with [the First Party], and [the Second Party/Contractor] shall keep in confidence the Proprietary Information and shall protect the same (a) from any use not authorized or necessarily contemplated by this Agreement, and (b) from disclosure to third parties.

 

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