Appendix One

Model Ownership and Licensing Clauses

This appendix includes recommended clauses for implementing the ownership and licensing options described in the body of these Guidelines.

The clauses come in three versions:

• Short form For use in low value and low risk transactions.
• Medium form For use if the short form or long form is not appropriate.
• Long Form For use in high value or high risk transactions.

Each version includes the three ownership and licensing options referred to in the body Guidelines, namely:

• Option 1 Customer Agency owns all new intellectual property in the deliverables, with no licence back to the Supplier.
• Option 2 Customer Agency owns all new intellectual property in the deliverables, with a licence back to the Supplier for its commercial exploitation.
• Option 3 Supplier owns all new intellectual property in the deliverables, and provides a licence to the Customer and other State Services agencies for any purpose other than commercial exploitation.

To use the clauses, select the appropriate version (short, medium or long) then delete the options that are not required in accordance with the Guidelines, as well as any highlighted notes and illustrations in square brackets. Clause numbering, clause cross references, and the names of the parties (currently referred to as Customer and Supplier), will need to be modified as required. When inserting the clauses into other documents, it is best to use the "Edit/Paste Special" command and insert the clauses as "Unformatted Text".

Relevant definitions are included for insertion into one's wider agreement. A confidentiality clause is also included as the IP clauses cross-refer to a confidentiality clause.

The provision of these model clauses does not constitute legal advice nor are any express or implied warranties given as to the suitability of the clauses for a given transaction. Independent legal advice may be required to ensure that the definitions fit properly within the remainder of one's agreement and that the selected clauses are otherwise appropriate in the wider context of that agreement.

Part A: SHORT FORM

A.1 Definitions

A.1.1 In this Agreement, unless the context requires otherwise:

A.1.1.1 Deliverables means all tangible and intangible property, including software, hardware, and documentation, provided or to be provided under this Agreement by or on behalf of Supplier, including [eg Purchased Product, Reports, etc].

A.1.1.2 Intellectual Property Rights means any patents, trade marks, trade names, service marks, registered designs and all goodwill rights associated with such works, copyright, circuit layouts, domain names, symbols, logos and all other all intellectual property rights and interests in any jurisdiction.

A.1.1.3 Pre-existing Intellectual Property Rights means Intellectual Property Rights developed prior to the date of this Agreement or outside the scope of this Agreement, but does not include later modifications, adaptations or additions to such Intellectual Property Rights.

A.1.1.4 Services means the services provided or to be provided under this Agreement by or on behalf of [Supplier], including [eg the Managed Services, etc].

A.1.1.5 State Services Agency means:

1. any New Zealand public service and non-public service department;
2. any Crown Entity under the Crown Entities Act 2004;
3. any organisation listed on the Fourth Schedule to the Public Finance Act 1989;
4. the Reserve Bank of New Zealand.

A.2 Confidentiality

A.2.1. Confidentiality. Each party (the recipient) agrees that at all times, including after this Agreement, it will hold in confidence, and will not, other than for purposes of this Agreement or to obtain the intended benefit of the Services and Deliverables, use or disclose to any third party any information in any form relating to the other party (the owner) which becomes known to or is created by the recipient in connection with this Agreement, excluding any information to the extent the recipient can show the relevant information:

A.2.1.1. may be used or disclosed as agreed by the owner;

A.2.1.2. becomes public knowledge otherwise than by the other party's own disclosure;

A.2.1.3. is already in the unrestricted possession of the recipient prior to disclosure;

A.2.1.4. has been independently developed by the recipient (as evidenced by its records);

A.2.1.5. is not intended to be confidential as evidenced by the owner'€™s written agreement; or

A.2.1.6. legally must be disclosed.

Check that this adequately covers any known confidential information.

A.2.2. Official information. Regardless of any other provision of this Agreement, Supplier acknowledges that its information held by Customer may be official information under the Official Information Act 1982 and, in accordance with that Act, may be released to the public.

A.3 Intellectual Property

[Option 1: New IP in Deliverables owned by Customer with no licence back to Supplier]

A.3.1 Customer owns new IP. Exclusive ownership of and title to any Intellectual Property Rights in the Deliverables, other than Pre-existing Intellectual Property Rights which will remain vested in their current owner, will immediately and directly vest in Customer upon their creation. To the extent such ownership does not so vest, Supplier irrevocably assigns such Intellectual Property Rights to Customer.

For some IPRs, such as New Zealand registered design rights, the present assignment recorded above will only give Customer beneficial ownership of the new IP, not legal ownership. To perfect Customer's legal ownership in such cases, further action will be required by Supplier after the property has come into existence. Because most ICT contracts only involve copyright, which can be presently assigned under section 116 of the Copyright Act, such further action to perfect title will usually not be required. But if the requirement for such further action is a possibility, a "further assurances" clause should be added to these short form clauses. A sample further assurances clause can be found in the medium and long form clauses.

A.3.2 Licence to Customer. Supplier grants Customer and all other State Services Agencies a perpetual, non-exclusive and irrevocable license to exercise for any purpose all Intellectual Property Rights in a Deliverable that are not owned by Customer or otherwise licensed to Customer under this Agreement. This license includes the right to use, copy, modify and distribute the Deliverable.

If intellectual property is licensed elsewhere in this Agreement (eg there may be separate software licences) then this clause will not apply to that intellectual property.

A.3.3 Supplier indemnity. Supplier indemnifies Customer from any expenses, damage or liability incurred by Customer arising out of any third party claim that the supply of the Services or Deliverables to Customer or Customer's exploitation of them in accordance with this Agreement infringes a third party's rights.

[Option 2: New IP in Deliverables owned by Customer with licence back to Supplier]

A.3.4 Customer owns new IP. Exclusive ownership of and title to any Intellectual Property Rights in the Deliverables, other than Pre-existing Intellectual Property Rights which will remain vested in their current owner, will immediately and directly vest in Customer upon their creation. To the extent such ownership does not so vest, Supplier irrevocably assigns such Intellectual Property Rights to Customer.

For some IPRs, such as New Zealand registered design rights, the present assignment recorded above will only give Customer beneficial ownership of the new IP, not legal ownership. To perfect Customer's legal ownership in such cases, further action will be required by Supplier after the property has come into existence. Because most ICT contracts only involve copyright, which can be presently assigned under section 116 of the Copyright Act, such further action to perfect title will usually not be required. But if the requirement for such further action is a possibility, a "further assurances" clause should be added to these short form General Terms. A sample further assurances clause can be found in the medium and long form General Terms.

A.3.5 Licence to Customer. Supplier grants Customer and all other State Services Agencies a perpetual, non-exclusive and irrevocable license to exercise for any purpose all Intellectual Property Rights in a Deliverable that are not owned by Customer or otherwise licensed to Customer under this Agreement. This license includes the right to use, copy, modify and distribute the Deliverable.

Note that if intellectual property is licensed elsewhere in this Agreement (eg there may be separate software licences) then this clause will not apply to that intellectual property

A.3.6 Licence to Supplier. Customer grants Supplier [Option 1…a non-exclusive] [Option 2…the sole] [Option 3…the exclusive] licence to exercise for commercial purposes all Intellectual Property Rights in a Deliverable that are owned by Customer. This licence is perpetual, [Optional…non-transferable,] irrevocable and fully paid-up (ie not subject to any licence fees, royalties or other charges). To the extent permitted by law, Customer disclaims all implied conditions, representations and warranties in relation to the licence.

Non-exclusive means Customer may license other parties to commercialise the intellectual property and may commercialise it itself. Sole means Customer may not license any third party to commercialise the intellectual property, but may commercialise it itself. Exclusive means Customer may not commercialise the intellectual property itself or license a third party to do so. None of these licenses restricts Customer's ability to license third parties for non-commercial purposes.

A.3.7 Supplier indemnity. Supplier indemnifies Customer from any expenses, damage or liability incurred by Customer in connection with any third party claim that the supply of the Services or Deliverables to Customer or Customer's exploitation of them infringes a third party's rights.
[Option 3: New IP in Deliverables owned by Supplier with licence back to Customer and other State Services Agencies]

A.3.8 Supplier owns new IP. Subject to clause A.2.1 (Confidentiality), exclusive ownership of and title to any Intellectual Property Rights in the Deliverables, other than Pre-existing Intellectual Property Rights which will remain vested in their current owner, will immediately and directly vest in Supplier upon their creation.

If Supplier needs to use any of Customer's intellectual property on an ongoing basis, in order to commercialise the intellectual property it will own under this clause, consider a separate licence of that intellectual property from Customer to Supplier.

A.3.9 Licence to Customer. Supplier grants Customer and all other State Services Agencies a perpetual, non-exclusive and irrevocable license to exercise for any non-commercial purpose all Intellectual Property Rights in a Deliverable that are not owned by Customer or otherwise licensed to Customer under this Agreement. This license includes the right, for Customer, other State Service Agencies and contractors on their behalf, to use, copy, modify and distribute the Deliverable.

Note that if intellectual property is licensed elsewhere in this Agreement (eg there may be separate software licences) then this clause will not apply to that intellectual property.

A.3.10 Supplier indemnity. Supplier indemnifies Customer from any expenses, damage or liability incurred by Customer in connection with any third party claim that the supply of the Services or Deliverables to Customer or Customer's exploitation of them infringes a third party's rights.

Part B: MEDIUM FORM

B.1 Definitions

B.1.1 In this Agreement, unless the context requires otherwise:

B.1.1.1 Deliverables means all tangible and intangible property, including software, hardware, and documentation, provided or to be provided under this Agreement by or on behalf of Supplier, including [eg Purchased Product, Reports, etc].

B.1.1.2 Intellectual Property Rights means any patents, trade marks, trade names, service marks, registered designs and all goodwill rights associated with such works, copyright, circuit layouts, domain names, symbols, logos and all other all intellectual property rights and interests in any jurisdiction.

B.1.1.3 Pre-existing Intellectual Property Rights means Intellectual Property Rights developed prior to the date of this Agreement or outside the scope of this Agreement, but does not include later modifications, adaptations or additions to such Intellectual Property Rights.

B.1.1.4 Services means the services provided or to be provided under this Agreement by or on behalf of [Supplier], including [eg the Managed Services, etc].

B.1.1.5 State Services Agency means:

1. any New Zealand public service and non-public service department;
2. any Crown Entity under the Crown Entities Act 2004;
3. any organisation listed on the Fourth Schedule to the Public Finance Act 1989;
4. the Reserve Bank of New Zealand.

B.2 Confidentiality

B.2.1. Confidentiality. Each party (the recipient) agrees that at all times, including after this Agreement, it will hold in confidence, and will not, other than for purposes of this Agreement or to obtain the intended benefit of the Services and Deliverables, use or disclose to any third party any information in any form relating to the other party (the owner) which becomes known to or is created by the recipient in connection with this Agreement, excluding any information to the extent the recipient can show the relevant information:

B.2.1.1. may be used or disclosed as agreed by the owner;

B.2.1.2. becomes public knowledge otherwise than by the other party's own disclosure;

B.2.1.3. is already in the unrestricted possession of the recipient prior to disclosure;

B.2.1.4. has been independently developed by the recipient (as evidenced by its records);

B.2.1.5. is not intended to be confidential as evidenced by the owner'€™s written agreement; or

B.2.1.6. legally must be disclosed.

B2.2. Responsibility for third parties. Each party will be liable for any use or disclosure of Confidential Information by any person in possession of Confidential Information through that party as if such use or disclosure was by that party.

B2.3. Publicity. Supplier will not, without Customer's prior written consent which may be withheld, or granted on such conditions, as Customer determines:

B.2.3.1. make any public statement in relation to this Agreement, including making press releases or naming Customer on any customer list; or

B.2.3.2. offer any customer reference in relation to this Agreement.

B.2.4. Official information. Regardless of any other provision of this Agreement, Supplier acknowledges that its information held by Customer may be official information under the Official Information Act 1982 and, in accordance with that Act, may be released to the public.

Check that this adequately covers any known confidential information.

B.3 Intellectual Property

[Option 1: New IP in Deliverables owned by Customer with no licence back to Supplier]

B.3.1 Customer owns new IP. Exclusive ownership of and title to any Intellectual Property Rights in the Deliverables, other than Pre-existing Intellectual Property Rights which will remain vested in their current owner, will immediately and directly vest in Customer upon their creation. To the extent such ownership does not so vest, Supplier irrevocably assigns such Intellectual Property Rights to Customer.

For some IPRs, such as New Zealand registered design rights, the present assignment recorded above will only give Customer beneficial ownership of the new IP, not legal ownership. To perfect Customer's legal ownership in such cases, further action will be required by Supplier after the property has come into existence. The requirement for Supplier to take that further action is contained in clause B.4 (Further assurances).

B.3.2 Licence to Customer. Supplier grants Customer and all other State Services Agencies a perpetual, non-exclusive and irrevocable license to exercise for any purpose all Intellectual Property Rights in a Deliverable that are not owned by Customer or otherwise licensed to Customer under this Agreement. This license includes the right to use, copy, modify and distribute the Deliverable.

If intellectual property is licensed elsewhere in this Agreement (eg there may be separate software licences) then this clause will not apply to that intellectual property.

B.3.3 License to Supplier. Customer grants Supplier a non-exclusive licence to exercise, only for the Term and to the extent necessary to provide the Services and Deliverables, all Intellectual Property Rights provided by or on behalf of Customer under this Agreement.

B.3.4 Supplier warranty. Supplier represents and warrants that:

B.3.4.1. the exercise in accordance with this Agreement of any Intellectual Property Right vested in or licensed to Customer under this Agreement will not infringe the rights of any third party; and

B.3.4.2. it has obtained and/or will make available to Customer all licences, clearances, consents and authorisations necessary for the use of the Services and Deliverables in accordance with this Agreement.

B.3.5 Supplier indemnity. Supplier indemnifies Customer from any expenses, damage or liability incurred by Customer arising out of any third party claim that the supply of the Services or Deliverables to Customer or Customer's exploitation of them in accordance with this Agreement infringes a third party's rights (each a Claim). In the event of any Claim, Customer will:

B.3.5.1. promptly notify Supplier in writing of the Claim and not make any admission or purport to settle any Claim without Supplier's prior written consent, which will not be unreasonably withheld or delayed;

B.3.5.2. at Supplier's request and expense, allow Supplier to conduct and/or settle all negotiations and litigation resulting from the Claim, provided that Customer will be entitled to be represented at, and be consulted on, all such negotiations and litigation; and

B.3.5.3. at Supplier's request, provide reasonable assistance with such negotiations or litigation, and Supplier must reimburse Customer its fully loaded staff costs and expenses of so doing.

[Option 2: New IP in Deliverables owned by Customer with licence back to Supplier]

B.3.6 Customer owns new IP. Exclusive ownership of and title to any Intellectual Property Rights in the Deliverables, other than Pre-existing Intellectual Property Rights which will remain vested in their current owner, will immediately and directly vest in Customer upon their creation. To the extent such ownership does not so vest, Supplier irrevocably assigns such Intellectual Property Rights to Customer. Supplier will ensure all moral rights in such Intellectual Property Rights are waived before provision of the Deliverables to Customer.

For some IPRs, such as New Zealand registered design rights, the present assignment recorded above will only give Customer beneficial ownership of the new IP, not legal ownership. To perfect Customer's legal ownership in such cases, further action will be required by Supplier after the property has come into existence. The requirement for Supplier to take that further action is contained in clause B.4 (Further assurances).

B.3.7 Licence to Customer. Supplier grants Customer and all other State Services Agencies a perpetual, non-exclusive and irrevocable license to exercise for any purpose all Intellectual Property Rights in a Deliverable that are not owned by Customer or otherwise licensed to Customer under this Agreement. This license includes the right to use, copy, modify and distribute the Deliverable. Each State Services Agency that is not a party to this Agreement is entitled to the benefit of and may enforce this licence as if it were a party to this Agreement. The parties may vary the terms of this license at any time by agreement in writing.

Note that if intellectual property is licensed elsewhere in this Agreement (eg there may be separate software licences) then this clause will not apply to that intellectual property

B.3.8 Licence to Supplier. Customer grants Supplier:

B.3.8.1. a non-exclusive licence to exercise, only for the Term and to the extent necessary to provide the Services and Deliverables, all Intellectual Property Rights provided by or on behalf of Customer under this Agreement; and

B.3.8.2. [Option 1…a non-exclusive] [Option 2…the sole] [Option 3…the exclusive] licence to exercise for commercial purposes all Intellectual Property Rights in a Deliverable that are owned by Customer. This licence is perpetual, [Optional…non-transferable,] irrevocable and fully paid-up (ie not subject to any licence fees, royalties or other charges). To the extent permitted by law, Customer disclaims all implied conditions, representations and warranties in relation to the licence.

Non-exclusive means Customer may license other parties to commercialise the intellectual property and may commercialise it itself. Sole means Customer may not license any third party to commercialise the intellectual property, but may commercialise it itself. Exclusive means Customer may not commercialise the intellectual property itself or license a third party to do so. None of these licenses restricts Customer's ability to license third parties for non-commercial purposes.

B.3.9 Supplier warranty. Supplier represents and warrants that:

B.3.9.1. the exercise in accordance with this Agreement of any Intellectual Property Right vested in or licensed to Customer under this Agreement will not infringe the rights of any third party; and

B.3.9.2. it has obtained and/or will make available to Customer all licences, clearances, consents and authorisations necessary for the use of the Services and Deliverables in accordance with this Agreement.

B.3.10 Supplier indemnity. Supplier indemnifies Customer from any expenses, damage or liability incurred by Customer in connection with any third party claim that the supply of the Services or Deliverables to Customer or Customer's exploitation of them infringes a third party's rights.

[Option 3: New IP in Deliverables owned by Supplier with licence back to Customer and other State Services Agencies]

B.3.11 Supplier owns new IP. Subject to clause B.2.1 (Confidentiality), exclusive ownership of and title to any Intellectual Property Rights in the Deliverables, other than Pre-existing Intellectual Property Rights which will remain vested in their current owner, will immediately and directly vest in Supplier upon their creation. To the extent such ownership vests in the Customer, Customer irrevocably assigns such Intellectual Property Rights to Supplier.

B.3.12 Licence to Customer. Supplier grants Customer and all other State Services Agencies a perpetual, non-exclusive and irrevocable license to exercise for any non-commercial purpose all Intellectual Property Rights in a Deliverable that are not owned by Customer or otherwise licensed to Customer under this Agreement. This license includes the right, for Customer, other State Service Agencies and contractors on their behalf, to use, copy, modify and distribute the Deliverable. Each State Services Agency that is not a party to this Agreement is entitled to the benefit of and may enforce this licence as if it were a party to this Agreement. The parties may vary the terms of this license at any time by agreement in writing.

Note that if intellectual property is licensed elsewhere in this Agreement (eg there may be separate software licences) then this clause will not apply to that intellectual property.

B.3.13 Licence to Supplier. Customer grants Supplier a non-exclusive licence to exercise, only for the Term and to the extent necessary to provide the Services and Deliverables, all Intellectual Property Rights provided by or on behalf of Customer under this Agreement.

If Supplier needs to use any of Customer's intellectual property on an ongoing basis, in order to commercialise the intellectual property it will own under this clause, consider a separate licence of that intellectual property from Customer to Supplier.

B.3.14 Supplier warranty. Supplier represents and warrants that:

B.3.14.1. the exercise in accordance with this Agreement of any Intellectual Property Right licensed to Customer under this Agreement will not infringe the rights of any third party; and

B.3.14.2. it has obtained and/or will make available to Customer all licences, clearances, consents and authorisations necessary for the use of the Services and Deliverables in accordance with this Agreement.

B.3.15 Supplier indemnity. Supplier indemnifies Customer from any expenses, damage or liability incurred by Customer in connection with any third party claim that the supply of the Services or Deliverables to Customer or Customer's exploitation of them infringes a third party's rights (each a Claim). In the event of any Claim, Customer will:

B.3.15.1. promptly notify Supplier in writing of the Claim and not make any admission or purport to settle any Claim without Supplier's prior written consent, which will not be unreasonably withheld or delayed;

B.3.15.2. at Supplier's request and expense, allow Supplier to conduct and/or settle all negotiations and litigation resulting from the Claim, provided that Customer will be entitled to be represented at, and be consulted on, all such negotiations and litigation;

B.3.15.3. at Supplier's request, provide reasonable assistance with such negotiations or litigation, and Supplier must reimburse Customer its fully loaded staff costs and expenses of so doing.

B.4. FURTHER ASSURANCES

B.4.1 Each party undertakes, at its own expense, to execute and deliver any document and to do all things as may reasonably be required in order to assist, in respect of matters within that party's control, the other party to obtain the full benefit of this Agreement according to its true intent [Optional if Customer is to own any new IP… , including assisting Customer to register as proprietor of, and to perfect Customer's title to, any Intellectual Property Right owned by Customer under this Agreement].

Part C: LONG FORM

C.1 Definitions

C.1.1 In this Agreement, unless the context requires otherwise:

C.1.1.1 Confidential Information of a party means:

1. in the case of Customer:
   • all electronic data stored in any computer of Customer; or
   • all information created by Supplier in connection with this Agreement;
2. all information:
   • designated as confidential, commercial-in-confidence, budget sensitive or by some similar designation;
   • relating to the affairs of that party and, in the case of Customer, any other state, regional or local government body or agency; or
   • otherwise treated as confidential at law, which is made available by that party, or otherwise obtained by or on behalf of the other party, under or in connection with this Agreement; or
3. all information developed, obtained or derived from that party’s Confidential Information.

C.1.1.2 Deliverables means all tangible and intangible property, including software, hardware, and documentation, provided or to be provided under this Agreement by or on behalf of Supplier, including [eg Purchased Product, Reports, etc].

C.1.1.3 Intellectual Property Rights means any patents, trade marks, trade names, service marks, registered designs and all goodwill rights associated with such works, copyright, circuit layouts, domain names, symbols, logos and all other all intellectual property rights and interests in any jurisdiction.

C.1.1.4 Pre-existing Intellectual Property Rights means Intellectual Property Rights developed prior to the date of this Agreement or outside the scope of this Agreement, but does not include later modifications, adaptations or additions to such Intellectual Property Rights.

C.1.1.5 Services means the services provided or to be provided under this Agreement by or on behalf of [Supplier], including [eg the Managed Services, etc].

C.1.1.6 State Services Agency means:

1. any New Zealand public service and non-public service department;
2. any Crown Entity under the Crown Entities Act 2004;
3. any organisation listed on the Fourth Schedule to the Public Finance Act 1989;
4. the Reserve Bank of New Zealand.

C.2 Confidentiality

C.2.1. Restrictions. Except to the extent set out in this clause C.2.(Confidentiality) or otherwise expressly permitted in this Agreement, each party holding the other party’s Confidential Information (the Receiving Party):

C.2.1.1. will use the Confidential Information only for the purposes of this Agreement (which, in the case of use by Customer, will include obtaining the full benefit of this Agreement and all rights granted under it) or otherwise for the purpose for which it was disclosed by the other party;

C.2.1.2. will keep the Confidential Information confidential and not, without first obtaining the written consent of the other party, disclose it to any third party or in the presence of any person other than its Personnel or advisors permitted under this clause C.2.(Confidentiality);

C.2.1.3. may disclose the Confidential Information to the Receiving Party’s Personnel to the extent they need to know the Confidential Information for the purpose of this Agreement, provided that:

1. the Personnel have been made aware of the need to keep such information confidential [Optional, if likely to be complied with in practice… and, if requested by the disclosing party, have agreed in writing to obligations of confidentiality and use that are no less protective of the Confidential Information than this clause C.2 (Confidentiality)]
2. the Receiving Party ensures that such Personnel comply with those obligations
3. the Receiving Party is responsible for the acts and omissions of its Personnel in relation to the Confidential Information;

C.2.1.4. may disclose the Confidential Information to its professional advisors only if such disclosure is necessary for the purposes of receiving professional advice and those professional advisors are subject to a duty of confidentiality that covers that information; and

C.2.1.5. must take all action reasonably necessary to secure the Confidential Information against theft, loss or unauthorised disclosure.

C.2.2. Exceptions A party is not required to comply with clause C.2.1 (Restrictions) to the extent that the relevant Confidential Information is:

C.2.2.1. already in its unrestricted possession, without an obligation of confidentiality, at the time of receipt of the Confidential Information;

C.2.2.2. independently developed without the benefit or use of any other Confidential Information;

C.2.2.3. generally known and available to the public through no fault of that party;

C.2.2.4. disclosed to the party by a third party, who has the right to make such disclosure, without an obligation of confidentiality; or

C.2.2.5. required to be disclosed by law or under the rules of any stock exchange.

C.2.3. Intellectual Property not affected. Nothing in this clause C.2.(Confidentiality) will limit Customer in any way from exercising or enjoying any Intellectual Property Rights that it owns or that are, or are to be, licensed or granted to it by Supplier or any third party under or in relation to this Agreement.

C.2.4. Publicity. Supplier will not, without Customer's prior written consent which may be withheld, or granted on such conditions, as Customer determines:

C.2.4.1. make any public statement in relation to this Agreement, including making press releases or naming Customer on any customer list; or

C.2.4.2. offer any customer reference in relation to this Agreement.

C.2.5. Official information. Regardless of any other provision of this Agreement, Supplier acknowledges that its information held by Customer may be official information under the Official Information Act 1982 and, in accordance with that Act, may be released to the public.

Check that this adequately covers any known confidential information.

C.3 Intellectual Property

[Option 1: New IP in Deliverables owned by Customer with no licence back to Supplier]

C.3.1 Customer owns new IP. Exclusive ownership of and title to any Intellectual Property Rights in the Deliverables, other than Pre-existing Intellectual Property Rights which will remain vested in their current owner, will immediately and directly vest in Customer upon their creation. To the extent such ownership does not so vest, Supplier irrevocably assigns such Intellectual Property Rights to Customer. Supplier will ensure all moral rights in such Intellectual Property Rights are waived before provision of the Deliverables to Customer.

For some IPRs, such as New Zealand registered design rights, the present assignment recorded above will only give Customer beneficial ownership of the new IP, not legal ownership. To perfect Customer's legal ownership in such cases, further action will be required by Supplier after the property has come into existence. The requirement for Supplier to take that further action is contained in clause C.4 (Further assurances).

C.3.2 Licence to Customer. Supplier grants Customer and all other State Services Agencies a perpetual, non-exclusive and irrevocable license to exercise for any purpose all Intellectual Property Rights in a Deliverable that are not owned by Customer or otherwise licensed to Customer under this Agreement. This license includes the right to use, copy, modify and distribute the Deliverable. Each State Services Agency that is not a party to this Agreement is entitled to the benefit of and may enforce this licence as if it were a party to this Agreement. The parties may vary the terms of this license at any time by agreement in writing.

If intellectual property is licensed elsewhere in this Agreement (eg there may be separate software licences) then this clause will not apply to that intellectual property.

C.3.3 License to Supplier. Customer grants Supplier a non-exclusive licence to exercise, only for the Term and to the extent necessary to provide the Services and Deliverables, all Intellectual Property Rights provided by or on behalf of Customer under this Agreement.

C.3.4 Supplier warranty. Supplier represents and warrants that:

C.3.4.1. it has full right and title to vest Intellectual Property Rights in Customer in accordance with clause C.3.1.(Customer owns new IP);

C.3.4.2. it is authorised to licence Intellectual Property Rights to Customer in accordance with clause C.3.2.(License to Customer);

C.3.4.3. the exercise in accordance with this Agreement of any Intellectual Property Right vested in or licensed to Customer under this Agreement will not infringe the rights of any third party; and

C.3.4.4. it has obtained and/or will make available to Customer all licences, clearances, consents and authorisations necessary for the use of the Services and Deliverables in accordance with this Agreement.

C.3.5 Supplier indemnity. Supplier indemnifies Customer from any expenses, damage or liability incurred by Customer arising out of any third party claim that the supply of the Services or Deliverables to Customer or Customer's exploitation of them in accordance with this Agreement infringes a third party's rights (each a Claim). In the event of any Claim, Customer will:

C.3.5.1. promptly notify Supplier in writing of the Claim and not make any admission or purport to settle any Claim without Supplier's prior written consent, which will not be unreasonably withheld or delayed;

C.3.5.2. at Supplier's request and expense, allow Supplier to conduct and/or settle all negotiations and litigation resulting from the Claim, provided that Customer will be entitled to be represented at, and be consulted on, all such negotiations and litigation; and

C.3.5.3. at Supplier's request, provide reasonable assistance with such negotiations or litigation, and Supplier must reimburse Customer its fully loaded staff costs and expenses of so doing.

C.3.6 Customer’s remedies. If any Claim prevents or threatens to prevent the supply or exploitation of a Service or Deliverable then Supplier must, at the request of and at no cost to Customer:

C.3.6.1. obtain for Customer the right to continue the supply or exploitation;

C.3.6.2. modify the Service or Deliverable so it becomes non-infringing; or

C.3.6.3. replace the Deliverable with another non-infringing item,
provided that Supplier must ensure that the remedy does not materially affect the Service or Deliverable or Customer’s exploitation of it. Without prejudice to any right or remedy, Customer may terminate this Agreement if Supplier is unable to remedy the Claim in accordance with this clause within [two months] of Customer’s request.

[Option 2: New IP in Deliverables owned by Customer with licence back to Supplier]

C.3.7. Customer owns new IP. Exclusive ownership of and title to any Intellectual Property Rights in the Deliverables, other than Pre-existing Intellectual Property Rights which will remain vested in their current owner, will immediately and directly vest in Customer upon their creation. To the extent such ownership does not so vest, Supplier irrevocably assigns such Intellectual Property Rights to Customer. Supplier will ensure all moral rights in such Intellectual Property Rights are waived before provision of the Deliverables to Customer.

For some IPRs, such as New Zealand registered design rights, the present assignment recorded above will only give Customer beneficial ownership of the new IP, not legal ownership. To perfect Customer's legal ownership in such cases, further action will be required by Supplier after the property has come into existence. The requirement for Supplier to take that further action is contained in clause C.4 (Further assurances).

C.3.8 Licence to Customer. Supplier grants Customer and all other State Services Agencies a perpetual, non-exclusive and irrevocable license to exercise for any purpose all Intellectual Property Rights in a Deliverable that are not owned by Customer or otherwise licensed to Customer under this Agreement. This license includes the right to use, copy, modify and distribute the Deliverable. Each State Services Agency that is not a party to this Agreement is entitled to the benefit of and may enforce this licence as if it were a party to this Agreement. The parties may vary the terms of this license at any time by agreement in writing.

Note that if intellectual property is licensed elsewhere in this Agreement (eg there may be separate software licences) then this clause will not apply to that intellectual property

C.3.9 Licence to Supplier. Customer grants Supplier:

C.3.9.1. a non-exclusive licence to exercise, only for the Term and to the extent necessary to provide the Services and Deliverables, all Intellectual Property Rights provided by or on behalf of Customer under this Agreement; and

C.3.9.2. [Option 1…a non-exclusive] [Option 2…the sole] [Option 3…the exclusive] licence to exercise for commercial purposes all Intellectual Property Rights in a Deliverable that are owned by Customer. This licence is perpetual, [Optional…non-transferable,] irrevocable and fully paid-up (ie not subject to any licence fees, royalties or other charges). To the extent permitted by law, Customer disclaims all implied conditions, representations and warranties in relation to the licence.

Non-exclusive means Customer may license other parties to commercialise the intellectual property and may commercialise it itself. Sole means Customer may not license any third party to commercialise the intellectual property, but may commercialise it itself. Exclusive means Customer may not commercialise the intellectual property itself or license a third party to do so. None of these licenses restricts Customer's ability to license third parties for non-commercial purposes.

C.3.10 Supplier warranty. Supplier represents and warrants that:

C.3.10.1. it has full right and title to vest Intellectual Property Rights in Customer in accordance with clause C.3.1.(Customer owns new IP);

C.3.10.2. it is authorised to licence Intellectual Property Rights to Customer in accordance with clause C.3.2.(License to Customer);

C.3.10.3. the exercise in accordance with this Agreement of any Intellectual Property Right vested in or licensed to Customer under this Agreement will not infringe the rights of any third party; and

C.3.10.4. it has obtained and/or will make available to Customer all licences, clearances, consents and authorisations necessary for the use of the Services and Deliverables in accordance with this Agreement.

C.3.11 Supplier indemnity. Supplier indemnifies Customer from any expenses, damage or liability incurred by Customer in connection with any third party claim that the supply of the Services or Deliverables to Customer or Customer's exploitation of them infringes a third party's rights (each a Claim). In the event of any Claim, Customer will:

C.3.11.1. promptly notify Supplier in writing of the Claim and not make any admission or purport to settle any Claim without Supplier's prior written consent, which will not be unreasonably withheld or delayed;

C.3.11.2. at Supplier's request and expense, allow Supplier to conduct and/or settle all negotiations and litigation resulting from the Claim, provided that Customer will be entitled to be represented at, and be consulted on, all such negotiations and litigation; and

C.3.11.3. at Supplier's request, provide reasonable assistance with such negotiations or litigation, and Supplier must reimburse Customer its fully loaded staff costs and expenses of so doing.

C.3.12 Customer’s remedies. If any Claim prevents or threatens to prevent the supply or exploitation of a Service or Deliverable then Supplier must, at the request of and at no cost to Customer:

C.3.12.1. obtain for Customer the right to continue the supply or exploitation;

C.3.12.2. modify the Service or Deliverable so it becomes non-infringing; or

C.3.12.3. replace the Deliverable with another non-infringing item,
provided that Supplier must ensure that the remedy does not materially affect the Service or Deliverable or Customer’s exploitation of it. Without prejudice to any right or remedy, Customer may terminate this Agreement if Supplier is unable to remedy the Claim in accordance with this clause within [two months] of Customer's request.

[Option 2: New IP in Deliverables owned by Customer with licence back to Supplier]

C.3.13. Supplier owns new IP. Subject to clause C.2.(Confidentiality), exclusive ownership of and title to any Intellectual Property Rights in the Deliverables, other than Pre-existing Intellectual Property Rights which will remain vested in their current owner, will immediately and directly vest in Supplier upon their creation. To the extent such ownership vests in the Customer, Customer irrevocably assigns such Intellectual Property Rights to Supplier.

C.3.14 Licence to Customer. Supplier grants Customer and all other State Services Agencies a perpetual, non-exclusive and irrevocable license to exercise for any non-commercial purpose all Intellectual Property Rights in a Deliverable that are not owned by Customer or otherwise licensed to Customer under this Agreement. This license includes the right, for Customer, other State Service Agencies and contractors on their behalf, to use, copy, modify and distribute the Deliverable. Each State Services Agency that is not a party to this Agreement is entitled to the benefit of and may enforce this licence as if it were a party to this Agreement. The parties may vary the terms of this license at any time by agreement in writing.

If intellectual property is licensed elsewhere in this Agreement (eg there may be separate software licences) then this clause will not apply to that intellectual property

C.3.15 Licence to Supplier. Customer grants Supplier a non-exclusive licence to exercise, only for the Term and to the extent necessary to provide the Services and Deliverables, all Intellectual Property Rights provided by or on behalf of Customer under this Agreement.

If Supplier needs to use any of Customer's intellectual property on an ongoing basis, in order to commercialise the intellectual property it will own under this Agreement, consider a further licence of that intellectual property from Customer to Supplier.

C.3.16 Supplier warranty. Supplier represents and warrants that:

C.3.16.1. it is authorised to licence Intellectual Property Rights to Customer in accordance with clause C.3.14 (License to Customer);

C.3.16.2. the exercise in accordance with this Agreement of any Intellectual Property Right licensed to Customer under this Agreement will not infringe the rights of any third party; and

C.3.16.3. it has obtained and/or will make available to Customer all licences, clearances, consents and authorisations necessary for the use of the Services and Deliverables in accordance with this Agreement.

C.3.17 Supplier indemnity. Supplier indemnifies Customer from any expenses, damage or liability incurred by Customer in connection with any third party claim that the supply of the Services or Deliverables to Customer or Customer's exploitation of them infringes a third party's rights (each a Claim). In the event of any Claim, Customer will:

C.3.17.1. promptly notify Supplier in writing of the Claim and not make any admission or purport to settle any Claim without Supplier's prior written consent, which will not be unreasonably withheld or delayed;

C.3.17.2. at Supplier's request and expense, allow Supplier to conduct and/or settle all negotiations and litigation resulting from the Claim, provided that Customer will be entitled to be represented at, and be consulted on, all such negotiations and litigation;

C.3.17.3. at Supplier's request, provide reasonable assistance with such negotiations or litigation, and Supplier must reimburse Customer its fully loaded staff costs and expenses of so doing.

C.4. FURTHER ASSURANCES

C.4.1 Each party undertakes, at its own expense, to execute and deliver any document and to do all things as may reasonably be required in order to assist, in respect of matters within that party's control, the other party to obtain the full benefit of this Agreement according to its true intent [Optional if Customer is to own any new IP… , including assisting Customer to register as proprietor of, and to perfect Customer's title to, any Intellectual Property Right owned by Customer under this Agreement].

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