A lert E-Commerce MAY 2001 Top T en Legal Issues in T echnology and Ten Technology E-Commerce Outsourcing Contracts Despite recent changes in the economyand perhaps because of themmany companies are relying on outside vendors to provide e-commerce and technology services. Outsourcing these services has been, and will continue to be, an important part of the business plan for many of our clients. subcontractors of the vendor, and consider what contractual controls may be necessary with respect to any such third parties. #2 Who Owns (or Will Own) What? Identify the intellectual property to be supplied to the project by the vendor, the vendee and any third parties. Provide appropriate licenses or sublicenses for the vendor and the vendee to use the IP. Be very clear who will own the project deliverables and any new IP created in the course of the project, which might include business processes or modifications or customizations of existing software applications or programs. State the rights of the vendee to receive and use future releases and versions of software. For projects involving receipt or transmission of personal user data, be very clear on the ownership and use rights in such data. #3 Privacy, Security and Confidentiality of Data and Information. The vendor should agree (1) to maintain and protect the privacy and security of any personally identifiable data consistent with the vendees policies and with applicable law (including specifically the data privacy and security regulations promulgated by various federal agencies under the Gramm-Leach-Bliley Financial Services Modernization Act of 1999); (2) to maintain commercially reasonable data privacy, security and recovery measures, including a disaster recovery program, physical facilities security, server firewalls, data encryption, and hacking detection and prevention measures; and (3) to maintain the confidentiality of the vendees proprietary and confidential data, plans and information. If the parties or end user customers are to have online access to data or information in connection with the project, provide for user ID, biometric or other access controls and be clear as to the responsibilities of the parties in their administration. In this Alert we present a Top 10 list of legal issues to be considered in e-commerce and technology outsourcing contracts. This list was prepared by our firm-wide e-commerce practice group, which is a key part of K&L TEC, the firms technology, e-commerce and emerging growth company practice. K&L TEC consists of more than 100 corporate and e-commerce lawyers who work with clients and other K&L attorneys in a variety of disciplines to provide comprehensive legal services and advice. We hope you will find this list helpful for any outsourcing contract projects you may have. We have substantial experience in preparing and negotiating technology and e-commerce outsourcing contracts, and we would welcome the opportunity to assist you in this area. We also have a comprehensive capacity to prepare and negotiate licensing, development and other types of contracts used in the e-commerce and technology sectors generally, as well as to review and audit existing e-commerce and web-related contractual infrastructures. Please visit www.kl.com/PracticeAreas/E-Commerce for more information about our capabilities, and let us know if we can be of any assistance. #1 Who Will Be Doing What, and When? Describe (perhaps in an attached statement of work) the vendors obligations, the contract deliverables, the schedule for completion of the vendors obligations, and whether the vendors performance depends on the vendees delivery of any content, materials or intellectual property (IP). State whether the vendors obligations are to be performed only by the vendor or may be performed by affiliates or Kirkpatrick & Lockhart LLP #4 #5 #6 Performance and Warranty Standards and Testing of Deliverables. Provide clear standards for the vendors performance. These can be very objective (e.g., meets or exceeds XYZ industry standard), somewhat objective (e.g., professional and workmanlike manner) or more subjective (e.g., to vendees reasonable satisfaction). Tie them to clear, quantified specifications and parameters for the project deliverables or services. Provide for a vendor warranty that the deliverables will comply with the agreed-upon specifications and standards. In an ongoing services contract, consider including fee reductions, rebates or other economic disincentives to discourage the vendor from failing to meet agreed-upon standards of performance. Where feasible, deliverables and services should be subject to real-time and worst-case-scenario testing and quality checks before being accepted. Vendee and End User Training and Support. Describe the level, amount and availability of vendee and customer end user training and support to be provided by the vendor, including installation support and user documentation, as well as the additional cost, if any, of such training and support. For web or application hosting contracts, consider attaching to the contract a schedule that provides for escalating vendor response obligations as the severity of problems increases. Consider which obligations should be included in the outsourcing contract and which might be better as part of an ongoing maintenance contract. Risk Management (Term, Termination, Indemnity, Liability Limits, Insurance). Provide term and termination provisions that give the vendee the flexibility to take advantage of the contract over an initial term and extensions of that term if so desired, but that also permit the vendee to terminate the contract on relatively short notice and without penalty if the vendors performance is inadequate. Provide that the vendor will indemnify the vendee against third party claims, including particularly IP-related claims, arising from the vendors performance or breach. Generally limit the respective liability of the parties to direct and actual damages, although certain of the vendors indemnity obligations, such as those for third party IP-related claims and claims for breach of data-related contract provisions, should not be so limited. Provide for the vendor to maintain insurance in commercially reasonable amounts on its business and operations, including insurance against e-commerce risks. #7 Fees and Payment Terms. Clearly describe all fees and costs to be paid by the parties, including taxes, and when and by whom they are to be paid. Consider scheduling milestone or progress payments tied to the project schedule to encourage the vendor to meet the schedule. #8 Project Administration, Reporting and Audit Rights. Identify and provide contact information for the vendors representatives who will have knowledge of and be responsible for the administration of the project. Depending on the nature of the project, include a requirement that the vendor provide regular project status and web or application usage and metrics reports. Give the vendee a reasonable right to audit the vendors books and records regarding the contract and the vendors performance. In data processing and other mission critical outsourcing contracts for vendees in regulated industries such as banking and financial services, include an acknowledgment and agreement by the vendor that it and its performance under the contract may be subject to regulatory oversight and examination by the vendees regulator. #9 Transition of Services or Deliverables at End of Contract. For contracts under which the vendee will own or be a continuing licensee of deliverables that are not in the vendees possession, provide for the transfer of the deliverables (or related work in process) to the vendee or its designee upon the termination or expiration of the contract. For services contracts, provide for the orderly transition of the services by the vendor to a new service provider designated by the vendee. #10 Dispute Resolution. Consider providing for an initial informal resolution mechanism between project managers or senior executives of the parties. Reflect any agreement by the parties to refer disputes to arbitration, mediation or other forms of alternative dispute resolution (ADR), including the rules and procedures that will govern the ADR, the venue for the ADR, and whether the result of the ADR will be final and binding. To the extent the parties contemplate possible resort to the courts, consider including a choice of forum and an agreement to be subject to the jurisdiction of the chosen forum. BRUCE H. NIELSON bnielson@kl.com 202.778.9256 BOSTON n DALLAS n HARRISBURG n LOS ANGELES n MIAMI n NEWARK n NEW YORK n PITTSBURGH n SAN FRANCISCO n WASHINGTON ......................................................................................................................................................................... This publication/newsletter is for informational purposes and does not contain or convey legal advice. The information herein should not be used or relied upon in regard to any particular facts or circumstances without first consulting with a lawyer. © 2001 KIRKPATRICK & LOCKHART LLP. ALL RIGHTS RESERVED.