36 Perpetual License

Desired Result:

All licenses should explicitly state the time frame or circumstances in which they Agreement will expire to avoid ambiguity. The desired result of this clause is to ensure that the Licensee will retain rights to view and use the Licensed Materials in perpetuity, according to the usage terms set forth in the Agreement, in the event the publisher ever stops providing access to certain materials. Not all e-resource licenses will contain this language, since many will be provided on a subscription basis only and will, subsequently, not be made available if the Licensee cancels their subscription or the publisher goes out of business. For those cases in which a perpetual license is desired, the term and rights of access need to be clearly specified, because in the event of a dispute, courts will not infer that a perpetual term was the intended outcome of the original contract. While irrevocability is typically considered to be implicit in contracts with an expiration date, irrevocability must be made explicit in order to be enforceable ^[1]. Furthermore, if the contract does not specify a termination date, then courts can decide that the Agreement shall be terminated within a reasonable time, or in some cases, even at will by either party at any given time ^[2]. What constitutes “reasonable” will be determined by the courts based on what they believe to be the, but in the absence of a termination date for the license right, many legal cases provide precedent that a “license should be for the length of the applicable intellectual property right” ^[3].

Desired Language:

“Notwithstanding anything else in the Agreement, Licensor grants to Licensee a nonexclusive, royalty-free, systemwide perpetual license to use any Licensed Materials that were subscribed to or for which a perpetual license fee has been paid during the term of this Agreement. Such use shall be in accordance with the provisions of this Agreement, which provisions shall survive any termination of this Agreement. The means by which Licensee shall have access to such Licensed Materials shall be in a manner and form substantially equivalent to the means by which access is provided under this Agreement. If the Licensor’s means of access is not available, the Licensee may provide substantially equivalent access to the Licensed Materials by use of an archival copy or by engaging the services of third-party trusted archives (such as Portico) and/or participating in collaborative archiving endeavors to exercise its perpetual use rights.” (CDL Model License)

Tricks and Traps:

This clause should work hand-in-hand with any subsequent clauses regarding archival copies and/or third party archival services. Obtaining perpetual rights is only as useful as it is practical – so the license needs to have a plan in place for ensuring there are methods for equivalent continued access to the Licensed Materials. For example, many publishers will specify that they participate in digital preservation services, such as CLOCKSS or LOCKSS, and others may simply specify that the Licensee has the right to create a physical/digital copy of their own volition. While the third party archiving clauses will set forth the right to create an archival copy and/or use third-party services, as well as specify any specific limitations on creation and use of those archives, the perpetual license provision should establish the Licensee’s right to use these archival methods in the first place, were the Licensor ever unable to provide continued access to the Licensed Materials.

Importance and Risk:

Perpetual license rights are important to establish in a contract, because they will determine whether the Licensee has longstanding access to the Licensed Materials, as well as the terms and conditions under which the Licensee may access and use said materials. This provision is not particularly risky in terms of the Licensee breaching the contract, but does provide risk regarding the Licensee’s return on its investment of time negotiating the contract and money spent, if the Licensee becomes unable to access the Licensed Materials down the road. Additionally, specifying that specific usage rights in the Agreement shall prevail in perpetuity can help dispel any future third party claims regarding intellectual property rights or infringement, as the Licensee will have documentation of the rights that have been legally granted to them.