1 Grant of License

Desired result

After connecting with a licensor, you will negotiate specific terms to access the materials they control. When you license materials, you need to ensure that you have permission, i.e., a license, to the exact materials that you seek.

It is important to specify the materials to be licensed in the agreement so that it is clear to both parties. For the licensor, whether they control one type or many types of materials, they will want to make sure the material at issue is content they control and that they can permit others to use or access. For the licensee, particularly if they are paying for access to the material, it should be clear what they will have access to and under what circumstances or terms.

If the content is not clearly outlined, it might be hard to determine what the licensor is granting permission to use or access and for the licensee to know what exactly, and under what circumstance, they are able to access or use.

Additionally, pay attention to the verbiage of the grant, as some specify “access” instead of “use.” Seek the broadest set of rights possible to meet the needs of your stakeholders.

What it means

You may hear license, contract, or agreement used interchangeably. Separating these terms is beneficial because it is important to recognize the differences. A license is permission to make limited use of copyright holder’s (or persons or entities authorized to act on their behalf) exclusive rights. Exclusive rights include the right to reproduce, create derivatives, distribute, publicly perform, and publicly display the copyrighted works.^[1] A contract or an agreement should include the license as well as terms and clauses that address promises, obligations, representations, warranties, prices, indemnifications, governing law, and accessibility at a minimum.

If a dispute arises, the first place to look is the agreement. Courts will consider the language of the documents and determine what content is at issue and what limitations, obligations, and rights are available to the parties.

Desired language

(This language has been modified from the Northeast Research Libraries (NERL) model license.)

The materials that are the subject of this Agreement shall consist of [list of electronic materials published or otherwise made available by Licensor, OR “as detailed in Appendix X” (if needed)] (hereinafter referred to as the “Licensed Materials”).

Licensee acknowledges that, as between Licensor and Licensee, the copyright and title to the Licensed Materials and any trademarks or service marks relating thereto remain with Licensor and/or its suppliers. Licensee shall have no right, title or interest in the Licensed Materials except as expressly set forth in this Agreement.

Licensor hereby grants to Licensee non-exclusive and non-transferable use of the Licensed Materials and the right to provide the Licensed Materials to Authorized Users in accordance with this Agreement.

Tricks and traps

Include a statement describing the content or listing of the licensed materials in the agreement or in an appendix. If the content is listed in an appendix, make sure the appendix is referenced in the agreement.

As time passes, you may be interested in additional or different content from the licensor. If new material is being added, this content should be explicitly listed on any renewal documents, such as an addendum. If material is being removed, this should also be noted. In certain circumstances, it may make more sense to negotiate a new contract that includes an updated list of materials subject to the agreement.

As you negotiate terms it might be useful to negotiate a copyright exceptions savings clause.

Sample language:

Licensee and Authorized Users may make all use of the Licensed Materials as consistent with the United States Copyright Act of 1976 as amended including all limitations on and exceptions to the exclusive rights as granted therein.

Lastly, some content offered by the licensor may be bundled with materials that are in the public domain. You might consider negotiating with the licensor for broader uses of the public domain materials.

Importance and risk

It is critical to specify the content that is covered and included in the grant of license within the terms of the contract or agreement. The risk of not including the items that are subject to the license is a lack of clarity on what is included within and subject to the agreement.