Background | Industry Experience | ADR & Litigation Experience

Industry Experience - Representative Transactions

Architects/Surveyors	Authors	Computer and Information Industries
Financial Services and Insurance	Health care (hospitals, medical groups)	Libraries, Educational, and Research Institutions
Manufacturing and Distributing	Professional and Trade Associations	Real Estate
Retail	Service Companies	Standards Writing Organizations

Architects/Surveyors

Representation of architects and surveyors in infringement of their copyrighted works.
Representation of architects and surveyors in prosecution and registration of copyright rights.

Authors

Representation of international consulting firm in management, protection, distribution, and licensing of their numerous copyrighted works (e.g., books on various business topics).
Representation of book authors in contract negotiations with major publishing houses.
Representation of authors in prosecution and registration of copyright rights.
Representation of family of famous author in protecting their copyrights against an infringer who placed author's work on the Internet. Obtained Temporary Restraining Order ("TRO") against the infringer, then obtained permanent injunction against the infringer. Also represented the family concerning their prosecuting, licensing, publishing, and assigning their copyright assets.

Computer and Information Industries (including software developers, computer hardware manufacturers, and data aggregators)

Representation of video streaming technology developer concerning compliance with privacy law including California Consumer Privacy Act.
Representation of electronic game developer including preparation of beta-test user agreement; End-User License Agreement ("EULA"); review and advise regarding mobile online delivery systems/platforms distribution agreements; Non-disclosure agreement; privacy policy; privacy compliance.
Serving as an arbitrator or mediator in numerous major computer user/vendor disputes, large system failures, and licensing disputes.
Representation of website developers in preparing and negotiating their customer facing agreements (including, without limitation, their Master Services Agreement), their independent contractor facing agreements, and the protection of their intellectual property assets.
Representation of mobile app developers including preparing their End User License Agreements, compliance matters, privacy agreements/policies, and protecting their intellectual property assets.
Representation of companies in preparation of agreements related to their website(s) including preparation of the website terms and conditions, EULAs, privacy statement/policy, compliance matters, and protection of their intellectual property assets (including their domain name).
Representation of network architecture firm in contract negotiations with cloud computing platform (e.g., “Software as a Service” or “SaaS”) provider and preparation of client’s master services agreement for use with its customers in delivery of client’s software on said third party SaaS platform, in addition to drafting and negotiating their software development and licensing agreements, independent contractor agreements, NDAs, and dispute resolution.
Representation of e-commerce software developer/vendor handling all "back room" e-commerce processing in the development of cloud computing (SaaS) agreements for vendor's customers.
Representation of large mail order computer manufacturer in development of its standard distribution and licensing agreements.
Representation of businesses in content acquisition for various media including digital media, Internet applications, and marketing applications.
Representation of software developer in addressing questions about establishing source code escrow with user.
Representation of buyer of technology company in due diligence aspects of the acquisition.
Representation of software developer in dispute over work made for hire ownership rights.
Representation of software developers in developing software license agreements, software maintenance agreements, trademark registrations, distribution agreements, source code escrow agreements, and incorporation of their businesses.
Representation of computer software developer in contract negotiation concerning the development of private brand software distribution agreement.
Representation of software publisher in the preparation of an agreement for obtaining rights in computer software to market third parties' software.
Representation of large database provider in developing software licenses, non-disclosure agreements and policies, copyright registrations, shrink-wrap licenses and the like.
Representation of software developer in setting up distribution channels for software utility product.
Representation of software developer in negotiations and contract preparation with software distributor for various rights to developer's software products.
Representation of owner of computer system in developing a time sharing agreement allowing him to sell time on his system to others.
Representation of numerous user clients from various industries in the preparation and negotiation of software license agreements, software maintenance agreements, hardware purchase agreements and source code escrow agreements.
Representation of users in litigation arising out of user/vendor disputes involving computer system acquisitions.
Representation of software publisher in dispute concerning one of its distributors.
Representation of large retailer in mediation concerning a failed system acquisition; obtained settlement which included remediation and damages paid by the vendor to the retailer.
Representation of user who desired to cancel order for $1.6 million hardware and software acquisition. Hardware vendor claimed binding contract. Negotiations involved letter of intent interpretation and related matters. Persuaded vendor to issue letter acknowledging cancellation.
Representation of computer system user in dispute with time share company over rights to the user's data.
Representation of software developers in obtaining temporary restraining orders and preliminary injunctions against infringers of the developers' proprietary computer software.
Representation of a provider of live chat and mobile texting services concerning TCPA compliance.
Representation of a global hosted infrastructure and cloud computing services provider in resolving trademark and copyright infringement claims alleged by a large online business locator service provider for consumers. Result: matter resolved without client having to pay any damages.
Representation of software developer in addressing questions about establishing source code escrow with user.

Financial Services and Insurance

Representation of outsourcing company to the trading industry in preparation of their master services agreement and contract negotiations on behalf of the outsourcing company with clients in the trading industry.
Representation of computer programming & network services company (independent contractor) to a bank when company's on-site employee installed company's proprietary software onto the bank's development server without permission.
Representation of company in $20 million plus outsourcing of data processing department.
Providing in-house training on legal compliance issues.
Representation of high-performance trading software developer in review of company's computer contracts used in the licensing and distribution of the company's software.
Representation of clients in addressing legal issues involving the Internet including web site development agreements, web site hosting agreements, framing and linking legal concerns, content acquisition and protection, applications service provider agreement.
Representation of insurance company in $8 million plus computer system acquisition (and which system interacted with underwriting, policy creation, claims, accounting, etc.).
Representation of an insurance company in settling a dispute over a claim by an insured (user) for licensed technology that was damaged in a fire.
Representation of financial institution in contract negotiations for ATM machines and related computer systems.

Health Care (hospitals, medical groups)

Representation of large medical practice group manager in user/vendor dispute with software provider which resulted in software provider paying client in excess of $1 million, plus royalty free license on replacement software, plus reduced cost for support, plus free hardware to run the replacement software.
Representation of various doctor’s offices in acquisition of computer systems for their medical practices including attention to privacy and confidentiality issues.

Libraries, Educational, and Research Institutions

Representation of numerous private and public entities in computer system acquisitions including a public institution (user) in a $2.5 million plus custom software development project involving multiple vendors and a foreign software developer. This matter also involved complex computer contract negotiations for license arrangement and distribution agreement.
Representation of clients in the presentation of lectures to groups of employees of the clients regarding intellectual property rights, computer crime, personal liabilities for breach of proprietary rights, and the like.
Representation of a large contract research organization in examining government rights to technical data developed by the research organization and exploring legal considerations in the marketing of software.
Representation of public library in packet radio acquisition for data communication between bookmobile and the library's CPU.
Representation of university in technology acquisition.

Manufacturing and Distributing

Representation of a manufacturer who experienced a business email compromise ("BEC"). Cybercriminal monitored and then intervened in a transaction between manufacturer and manufacturer's customer, and instructed customer to change the wire-transfer instructions to a different bank than what manufacturer originally identified. Customer proceeded to wire-transfer funds in excess of $110,000 to the cybercriminal's bank account. Customer then claimed through its counsel that manufacturer was at fault for its loss. Result achieved in this instance: manufacturer did not have to reimburse customer for customer's loss.
Representation of manufacturer who experienced a ransomware attack on one of its many servers, coordinated engagement of forensic technology firm, assisted as an interface between client and the forensic technology firm to help them communicate effectively, reviewing of forensic technology firm's report on its forensic investigation of client's ransomeware attack and discussing same with clients including advising on remediation and cyber-risk preparedness.
Representation of manufacturer that experienced cybersecurity events including counselling on engagement of digital forensic expert; strategies for addressing response to the cybersecurity events; and cyber-insurance claims submission.
Representation of manufacturer who sold some of its products directly to its customers via its website, and which manufacturer's website host experienced a data breach that compromised some of the manufacturer’s customer’s data (e.g., name, address, e-mail, credit card information) from customers in several different states. Counselled client through the forensic investigation and notification compliance process (including notification to customers and offices of the Attorney General in several states) concerning the breach.
Representation of manufacturer who has been in business more than 55 years, had registered in the USPTO its trademark rights, but failed to renew the registrations and allowed the registrations to lapse nearly thirty years earlier. In the interim, during the lapse in the USPTO registration, other businesses had registered similar marks in the USPTO. Result: successful in obtaining a new USPTO registration for their trademarks for the client's goods.
Representation of clients in addressing legal issues involving the Internet including web site development agreements, web site hosting agreements, framing and linking legal concerns, content acquisition and protection, applications service provider agreement.
Representation of a leading partner with pharmaceutical and biotechnology companies in the $250,000 plus acquisition of an enterprise software package to handle numerous business processes including the company’s accounting and research functions.
Representation of large food distributor in acquisition of $500,000 plus computer system acquisition.
Representation of clients in the presentation of lectures to groups of employees of the clients regarding intellectual property rights, computer crime, personal liabilities for breach of proprietary rights, and the like.
Representation of manufacturer (user) in $300,000 plus acquisition of manufacturing resource planning computer system.
Representation of manufacturer (user) in $425,000 plus acquisition of manufacturing resource planning computer system. Hardware acquired from one source and software from another. Contracts needed to tie the two together.
Representation of a large Canadian computer hardware reseller concerning protection of their U.S. intellectual property assets and handling intellectual property due diligence in mergers and acquisitions.
Representation of large privately held manufacturer in review and audit of their outside intellectual property law firms' billings for patent related legal services and drafting of a standard engagement letter for the manufacturer's general counsel to use for the manufacturer in engaging outside legal counsel for their intellectual property patent related legal services.

Professional and Trade Associations

Representation of large state bar association in acquisition of minicomputer for use in managing the association's business computing needs. Hardware acquired from one source and software acquired from another. Contracts needed to tie the two together.
Representation of a large computer software users' association in the negotiations with the vendor in the establishment of a source code escrow.
Representation of software industry trade association in addressing software piracy.

Real Estate

Representation of clients in computer system acquisitions for use in real estate and title companies.
Representation of real estate developer in trademark dispute over naming of a residential subdivision.
Representation of popular real estate portal concerning their intellectual property assets including a large portfolio of trademark assets and copyright assets.

Retail

Representation of large clothing manufacturer with over 400 retail stores in contract negotiations/drafting to obtain business critical enterprise system to manage inventory control, point of sales data, and other functionality; plus contract negotiations/drafting to obtain satellite communications link to connect all retail stores with headquarters.
Represented respondent (business investor in start-up clothing manufacturer and distributor) in arbitration against a demand for over $23 million by claimants (represented by a top 100 law firm) against respondent concerning a business dispute alleging, among other things, breach of contract, breach of covenant of good faith and fair dealing, tortious interference with contract. Result: obtained dismissal with prejudice of the demand.
Representation of retailer franchisor in response to a credit card data breach at several of its retail locations in several states, including coordinating the forensic investigations at the various locations, counselling client on its obligations concerning the merchant agreement with its credit card processor, and notification compliance obligations.
Representation of multimedia digital content provider/developer for retailers in contract negotiations with large international retailer for placement of video content and related retailer’s advertisements into the retailer’s stores; and contract negotiations with third party video equipment and distribution platform provider for delivery of client’s content into the retailer’s stores.
Representation of retail clients in addressing legal issues involving the Internet including web site development agreements, web site hosting agreements, framing and linking legal concerns, content acquisition and protection, applications service provider agreement.
Representation of major brand clothing manufacturer in negotiations and contract development with a major on-line retailer to add manufacturer to the virtual shopping mall developed by the on-line retailer.
Representation of large clothing manufacturer/retailer in acquiring satellite communications system, equipment and services, to connect all of its retail stores in the United States.
Representation of large national retailer in organizing, obtaining, protecting, and managing their numerous Internet domain names.
Representation of large clothing manufacturer/retailer in dispute with its web hosting/web development company; results included a full refund of all monies paid by client.
Representation of clothing manufacture in obtaining federal trademark protection for their trademarks.
Representation of retailers in response to a credit card data breach.
Representation of large international fast food franchisor in obtaining the company's primary domain name from another entity who had registered the domain name before the fast food franchisor attempted to register it. Result: obtained transfer of the domain name to the fast food franchisor.

Service Companies

Representation of Professional Services Management company that experienced a cybersecurity event (unauthorized access of the company's clients materials hosted on a third-party website), handled the engagement, oversight of, coordination with, forensic technology firm to do the forensics, negotiated with third-party website in-house counsels to provide access to forensic evidence, coordination with forensic technologist to confirm containment and remediation, handled reporting with client's cyber-insurance provider and was accepted by insurer to handle the client's investigation and response, counselled client on reporting obligations and notifications.
Representation of an investor in a $1 million plus VOIP technology investment involving parties in the U.S. and Israel.
Representation of clients in addressing legal issues involving the Internet including web site development agreements, web site hosting agreements, framing and linking legal concerns, content acquisition and protection, applications service provider agreement.
Representation of an organization (that relies heavily on computer software to do truck tariff tracking and third party payment) in negotiations and settlement of dispute with an independent consultant over the rights to certain computer software.
Representation of international student internship experiences company in obtaining federal trademark protection for their trademarks.

Standards Writing Organizations

Representation of several international and national standards development organizations ("SDOs") as Amicus Curiae clients in a copyright infringement case before the United States Supreme Court.
Representation of international standards development organization in prosecution and protection of its copyright and trademark assets.
Representation of international standards development organization in licensing of the SDO’s intellectual capital assets (e.g., its copyrights and trademarks).
Representation of SDO in support of legislation before a legislative body.