Meet the Speakers of ACI's Software Agreements Forum


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Meet the Speakers of ACI's Software Agreements Forum

  1. 1. Meet the Speakers Produced by: #ACISoftwareLicensing
  2. 2. Mr. Lothar Determann Co-Chair Partner Baker & McKenzie LLP Lothar Determann practices and teaches international technology, commercial and intellectual property law. As a partner with Baker & McKenzie LLP in Palo Alto, California, Lothar Deter-mann’s practice covers counseling companies on taking their products, data, intellectual property and contracts international, as well as related commercial and compliance matters. Dr. Determann is admitted to practice in Germany and California. He is recognized as one of the top 10 Copyright Attorneys / Top 25 Intellectual Property Attorneys in California by the San Francisco / Los Angeles Daily Journal (2008 and 2010 respectively), listed in the World’s 250 Leading Patent and Technology Li-censing Practitioners by the Intellectual Asset Management (IAM) Magazine and ranked as a leading lawyer in Chambers USA, Legal 500 USA and California Super Lawyers. Prof. Determann has been a member of the Association of German Public Law Professors since 1999 and he teaches Data Privacy Law, Computer Law and Internet Law at UC Berkeley School of Law (Boalt Hall, since 2004), Hastings College of the Law (since 2010), Freie Universität Berlin (since 1994) and Stanford Law School (in 2011). He frequently presents on international and intellectual property law topics and he has authored more than 80 articles and treatise contributions as well as 4 books, including Determann’s Field Guide to International Data Privacy Law Compliance (2012) – Tell us about yourself. Besides practicing law, I try to keep fit with endurance sports and finished the San Francisco marathon twice, the 2012 Vineman (full Iron distance) and the 2013 Ironman Coers d’Alene. I love music and frequently play piano, saxophone and guitar at Baker & McKenzie functions. I also hold a German commercial and US private pilot’s license and have logged more than 1400 hours as pilot in command since 1994. I am also involved in academia and currently teach Computer Law, Privacy Law, Internet Law and other subjects on the intersection of technology and international law in Berkeley (Boalt Hall – since 2004), Berlin (Free University – since 1994) and Hastings College of the Law (since 2010). I have authored more than 90 articles and treatise contributions and four books, including Determann’s Field Guide to International Data Privacy Law Compliance. What is a day like in your field? Every day is different - which keeps my practice interesting. I advise U.S. companies on their international expansion, which brings about many diverse questions and projects, #ACISoftwareLicensing
  3. 3. What would you change in the industry? I believe that the legal education system in the United States, in particular costs for students and preparation for practice have to change. Hastings’ Dean, Frank Wu, has published (and implemented) good proposals. including international regulatory surveys, structuring of distribution models, localizing website documentation and dealing with various disputes. In addition, I mentor students in the U.S. and Berlin, including currently three doctorate students, and frequently organize, chair and speak at legal conferences. What do you like about working at your company? My law firm, Baker & McKenzie, is truly global. We have offices in 45 countries and 75 cities. I enjoy working across geographies and legal disciplines. My law schools are top performers internationally: The Free University of Berlin was founded to promote free legal studies and research at a time when the City of Berlin was divided after World War 2. When I worked on my doctorate and post doctorate thesis, I became enamored with research from Berkeley - in particular the great Hans Kelsen. When I moved to San Francisco in 1999, I lived a few blocks from Hastings College of the Law and admired the focus on public policy and public interest - and wanted to teach there; I taught at University of San Francisco and Berkeley School of Law first, though, and moved 30 miles away from Hastings to the Peninsula first before an opportunity to contribute at Hastings arose; now I am happily teaching at Hastings, too, and joined Hastings’ Innovation Law Institute as a founding member. What is the tip/best practice you would like to share with your peers? The cloud and the move to service-based software commercialization models are rapidly changing the landscape. Lawyers and companies have to adapt. One topic where laws in the USA and Europe diverge is what software transactions qualify as sales. In the United States, the software industry has largely prevailed with its position that the distribution of software copies does not qualify as a sale or trigger exhaustion if an accompanying software license agreement is clear that a sale is not intended. In the EEA, however, the European Court of Justice held in July 2012 that software transactions involving a permanent transfer of software copies for a fixed fee qualify as a sale regardless of the terms of an accompanying license agreement (See Importing Software and Copyright Law by Lothar Determann ). It remains to be seen how the diverging positions on sales and international exhaustion in Europe and the United States will affect software distribution. Software manufacturers, distributors and platform operators have to prepare for the unauthorized cross-border sale of software copies that are licensed-only for US purposes yes possibly sold in Europe. #ACISoftwareLicensing
  4. 4. necessarily affect the copyright owner’s reproduction rights - a position that might concern access to software graphic user interfaces online in the context of cloud offerings. One way to avoid the associated uncertainties surrounding domestic and international exhaustion is the move to service-based models. Software-as-a-Service (SaaS) and other “cloud” offerings do not typically involve sales-like terms and should not trigger exhaustion under intellectual property laws anywhere. Cloud offerings will also not usually pull the ‘distribution’ trigger in most commonly used open source license agreements. Moreover, software that is locked away on servers subject to very limited and restricted remote access cannot easily be reverse engineered by competitors or pirated by counterfeiters. Companies that offer their software functionality only as a cloud service can also control interoperability quite effectively with other software. In the more traditional distribution model, courts around the world applied various legal theories to allow copying, modification and combination of software programs based on statutory carve-outs and defenses such as the ‘fair use doctrine’ in the United States. In the cloud context, however, software companies can fend off undesirable combinations in reference to laws that prohibit unauthorized computer access and interference as well as laws that prohibit the circumvention of technical protection measures - given that any cloud combination will involve access to servers running the software functionality. Of particular interest in this respect is a recent decision in the United Kingdom holding that accessing a webpage via the internet does not Companies will have to adapt to the dynamics created by the cloud for copyrights and its delicate balance of exclusion and public access rights in the interest of furthering and commercializing information technology innovations. A review of business models, technical protection measures and contract terms is in order in light of clouds on the horizon for software copyrights. #ACISoftwareLicensing
  5. 5. Mr. Adam Ruttenberg Partner at Cooley Business Dept. ADAM RUTTENBERG is a partner in the Cooley Business department and the head of the Firm's Technology Transactions Group. He joined the Firm in 2000, and is resident in the Firm's Washington, DC and Reston offices. Mr. Ruttenberg advises a number of leading technology companies regarding the exploitation of their intellectual property assets. His practice focuses on all aspects of technology transactions, including counseling, structuring and negotiating such deals. Mr. Ruttenberg has broad experience representing emerging companies and large corporate clients in technology and intellectual property matters. His strategic counseling experience includes developing commercialization distribution and pricing strategies for companies. In 2006 - 2009 the Washington Business Journal recognized Mr. Ruttenberg as one of the DC area's top technology transactions lawyers. From 2006 - 2013, Mr. Ruttenberg was named one of the Best Lawyers in America. The Legal 500named Mr. Ruttenberg as a leading lawyer in the field of technology transactions in 2008 - 2013. Mr. Ruttenberg is currently listed as one of the world's leading patent and technology licensing lawyers in the IAM Licensing 250 and the IAM Patent 1000. Prior to joining Cooley, Mr. Ruttenberg was the Vice President of Contracts and Sales Operations of MicroStrategy Incorporated. Previously, he had been in private practice representing technology companies in information technology and biotechnology matters. Mr. Ruttenberg received a JD in 1992 from Washington University in St. Louis where he was a member of the Order of the Coif. He received a BS in Genetics, Microcell Biology and the Philosophy of Science from the University of Minnesota in 1989. Mr. Ruttenberg has published numerous articles on business transactions, technology transfer, intellectual property and internet law. He is also a frequent speaker on these topics. Mr. Ruttenberg is a member of the bars of the Commonwealth of Virginia and the District of Columbia. Tell us about yourself: I was born in Washington, D.C. and grew up in the Midwest. I went to the University of Minnesota for my undergraduate studies and then went on to Washington University in St. Louis Law School. I have been practicing law in the Washington, D.C. area since 1992. What is a day like in your field? Each day for me is different and that is what I love about my job. Some days I will be dealing with nuanced intellectual property issues, others I will be dealing with the CEO of a #ACISoftwareLicensing
  6. 6. I am lucky tin that I get to work with many clients that share this philosophy, but I know that this is not a universal view. start-up on licensing models and still other days I will be in negotiations all day. I get to deal with all types of technology and media, people and size of companies. What do you like about working at your company? Being at Cooley gives me access to some of the brightest and best attorneys in the worlds. Working with these individuals along with the culture of the firm dedicated to working with technology based companies is unique and the support I get is what really makes working at Cooley great. What is the tip/best practice you would like to share with your peers? An understanding that the allocation of intellectual property is sometimes a complex exercise and that if people think through the ramifications of the buzzwords carefully they will realize that they can have unintended consequences. It is important to think through all of the implications of a given ownership structure and make sure it aligns with the business purposes of the parties. What would you change in the industry? If I could change one thing about the industry it would be the expectation of speed. It was not that long ago that attorneys did not use cell phones, e-mail and computers. I believe that while the use of these new technologies is critical and helps bring efficiencies to clients, they also bring a downside and that is a loss of civility and an expectation of 24X7 access and zero turnaround time. If everyone would slow down I think it would bring back civility and attorneys and clients could take more time to ensure that the relationship was as proactive as it should be. Not everything is an emergency and not everything has to be done yesterday. Sometimes, a slower and more thoughtful approaches better. #ACISoftwareLicensing
  7. 7. Mr. Kaminski is graduate of New York University with a B.A. degree in Economics, and a graduate of Fordham University’s joint J.D./M.B.A program. He is a member of the New York and New Jersey Bars. Mr. Bert Kaminski Assistant General Counsel Oracle USA, Inc. Bert Kaminski is a member of Oracle’s North America Legal Department, and is the lead attorney globally for Oracle’s cloud computing, software-as-a-service, outsourcing, and information technology managed services businesses. Mr. Kaminski advises all levels of business and executive management on a broad range of technology-related legal issues, structures and negotiates complex IT licensing and services transactions, and assists with the development of global corporate practices for various lines of business. Prior to joining Oracle in 2000, Mr. Kaminski was associated with Rosenman & Colin (now Katten Muchin Rosenman LLP) in New York City. Mr. Kaminski is a member of the board of directors of the New Jersey Corporate Counsel Association, and is co-chair of its Technology Law Committee. Tell us about yourself. I’m a native New Yorker, having lived, worked and been educated in and around New York City for most of my life. I like to be active in my spare time, such as playing with my tennis group every weekend, running in local 5K races, and hiking and biking with the kids locally and in national parks during family vacations. My family and I make it a point to visit some of the world’s natural wonders, having in recent years been to the Yellowstone, Denali, Grand Canyon and Yosemite national parks, as well as the Austrian and Italian Alps. One of my favorite recent destinations was Halong Bay in Vietnam. This summer I enjoyed playing a mix of classical, jazz and rock with a guitar ensemble. Occasionally I will stay seated and read a book, having recently finished Born to Run by Christopher McDougall. What is a day like in your field? I manage a team of attorneys across the United States that specializes in cloud computing. We counsel all levels of Oracle executive management, product development, sales and business operations on a broad range of cloud related information technology and business law matters. The team supports everything from the negotiation of commercial transactions, to the preparation of cloud computing related contract and policy templates, to helping senior management develop global business practices for cloud computing. Privacy and security issues are some of the hot topics that #ACISoftwareLicensing
  8. 8. we encounter in our practice area. What do you like about working at your company? Oracle is a highly dynamic company, which means that my in-house legal practice is similarly in a state of continual change and growth. Although already one of the largest technology companies in the world, not a month goes by without Oracle adding to its broad portfolio of enterprise software, hardware, cloud and professional service offerings, especially in the areas of software-as-a-service (SaaS), platform-as-aservice (PaaS), and infrastructure-as-a-service (IaaS). As the lead attorney globally for Oracle’s cloud computing businesses, this highly dynamic change and growth is what I like best about working at the company. What would you change in the industry? Although the cloud computing industry is still in its early years, companies are rapidly adopting cloud as part of their information technology strategies. But as more companies move beyond their initial, limited cloud deployments to implement a wider variety of services from a number of cloud providers, cloud integration is posing an increasing business challenge. Recent studies indicate that some 40% of companies rely on custom coding to integrate their various cloud applications and another 33% simply do not integrate their cloud platforms. The lack of greater integration capability among major cloud offerings in the market can introduce significant complexity in cloud deployments, and therefore may increase the level of legal and contractual risk between cloud customers and their vendors. This increased risk may involve contractual and liability issues regarding service warranties, service level compliance, data security and availability, regulatory compliance, and application integration, scalability and upgrades. However, recent announcements of collaboration between cloud vendors (such as between Oracle and, Microsoft and Netsuite) foretell a trend towards greater integration capability and cross-cloud vendor support that will reduce complexity and risk in the cloud industry. What is the tip/best practice you would like to share with your peers? One practice tip I’d like to convey is that cloud computing is not IT outsourcing. The major value proposition of cloud computing is that it enables customers to access industry-leading technology and innovation as a standardized service based on predefined platforms and applications. This benefits cloud customers in a variety of ways, such as through reduced IT complexity, lower upfront and total costs, rapid implementation and deployment, greater elasticity and scalability, and reduced requirements for operational and (if any) infrastructure management. Although a cloud system is often highly configurable, it generally consists of a common platform and infrastructure that is shared across the cloud vendor’s customer base. The standardized nature of cloud generally does not permit the service to be customized to meet individual requirements of any one customer. Cloud contracts reflect the standardization of the #ACISoftwareLicensing
  9. 9. service and therefore are not normally as open for negotiation as may be the case with a contract for IT outsourcing services. Contracts for IT outsourcing services are often highly negotiated given that such services are typically custom built solutions that are specifically designed to meet unique customer requirements. If a prospective cloud customer is seeking to purchase highly customized services under a heavily negotiated contract, the customer may want to consider acquiring IT outsourcing services instead of cloud, or consider acquiring a different type of cloud service that is more suited to the customer’s needs. The cloud industry offers a wide spectrum of choices for customers, including a variety of public, private and hybrid clouds and mix of software-, platform-, and infrastructure-asa-service offerings. #ACISoftwareLicensing
  10. 10. Flip regularly speaks on various IP and IT topics and has published several articles. He is on the editorial board of IRDI and is chief editor of RABG, two leading Belgian law journals. Flip is member of various national and international IP associations, including INTA and MARQUES. Mr. Flip Petillion Partner at Crowell & Moring Brussels Flip Petillion is a litigation partner at Crowell & Moring Brussels. With more than 25 years of experience, Flip's practice has been devoted to IP, IT, media and communication, with a heavy emphasis on International Dispute Resolution, IP litigation and counseling for corporate clients in various industries. Flip co-chairs the TLD and Domain Names practice that advises on TLD applications and represents clients in disputes on new extensions. Flip is arbitrator and panelist with WIPO, NAF, CAC (Czech Arbitration Court) and CEPANI (Belgium's Arbitration and Mediation Center). He is an official mediator with Cepina and WIPO. Flip received his J.D. from K.U.Leuven University, magna cum laude, in 1987 and was admitted to the Brussels bar in 1988. Flip also obtained postgraduates in international economic law, Dubrovnik University, 1988; in telecommunications law, K.U.Leuven University, 1998; in telecommunications, strategy and regulation, Ghent University, 1999. Tell us about yourself: I received my J.D. from K.U.Leuven University, magna cum laude, in 1987. I also obtained postgraduates in international economic law, in telecommunications law, in telecommunications, strategy and regulation. I regularly lecture on various IP and IT topics and have published several articles. I am on the editorial board of IRDI and is chief editor of RABG, two leading Belgian law journals. In my spare time, I like to play golf and enjoy a nice glass of wine in my garden. Once a year, I try to take a week off to discover beautiful landscapes across Europe. What is a day like in your field? There’s no such thing as a ‘typical’ day in my field. Not a single day is the same. As the Chair of the Brussels IP practice, I regularly have meetings with my team members about ongoing matters in a variety of fields. I regularly have conference calls with clients and study files in which I act as counsel or arbitrator. In the evening I try to work on publications and presentations. Today, I’m speaking at ACI’s conference about license termination and contract re-negotiation. Tomorrow, I’ll review my colleagues’ contributions to a publication on my flight back to Brussels. #ACISoftwareLicensing
  11. 11. What do you like about working at your company? As I just pointed out, no single day is the same and this variety is exactly what appeals to me the most. Crowell & Moring Brussels has a strong Belgian and European client base, and our US offices give me the opportunity to cross the ocean for professional purposes. My colleagues are all outstanding legal practitioners and there’s a good atmosphere between the people in Brussels, London and the US. What would you change in the industry? The industry is constantly changing. Nowadays, we witness that parties are becoming more and more litigation adverse, while being increasingly demanding. This sometimes creates tension between contracting parties. If agreements are not rightly balanced, parties often spend too much effort in patching up a deal gone bad, rather than in focusing on the underlying frustrations. Such can be avoided by focusing on balanced and pragmatic escalation clauses. better be prepared for that day. Termination clauses are often neglected during contract negotiations, because everyone is excited about starting with the new project. However, it is much easier to agree on escalation procedures at the start of a project than when a deal has gone bad and parties are positioning themselves in their trenches. Therefore, the first question that I ask myself when negotiating a deal is: “How will I ensure continuity when the deal ends?” This is often more important than defining the exact scope of the agreement at the start of the agreement. Indeed, a contracting party will more easily agree to add more services to a deal than to grant you more rights when you want to walk away. Therefore, don’t sign a deal if you don’t know how to walk away from it. What is the tip/best practice you would like to share with your peers? My best practice is related to this, namely plan for termination when negotiating the deal. This may seem counter-intuitive, but in a rapidly changing society, everybody knows that a contract will end one day. You #ACISoftwareLicensing
  12. 12. ACI’s 17th Annual The Practical and Tactical Art of the Deal in Software Agreements - Cloud, SaaS, Open Source & Licensing