TECHNOLOGY LAW

TECHNOLOGY LAW

The MWH Technology Law Group brings together attorneys with deep and diverse practice backgrounds and legal expertise. The Technology Group lawyers understand challenges that businesses experience and provide sensible advice designed for this rapidly evolving technological media driven and legal landscape. By using an interdisciplinary approach, our attorneys are able to offer comprehensive solutions to a variety of legally challenging technology opportunities. Our clients range from small startups to large, established Fortune 500 Corporations, many of which seek to develop, exploit, or use new and emerging technologies. We understand that each client has unique needs, and we tailor our services to meet those needs efficiently and effectively.

The Technology Group’s practice covers all aspects of technology-related and Internet-related legal matters, such as creation, licensing, and use of software (including open source software), mobile apps, websites, host services and cloud computing, use of social media and user generated content, distribution of online content, technology systems, technology “work-made-for-hire” arrangements, SaaS, outsourcing, insourcing, e-Commerce, online advertising, sponsorship agreements, E-SIGN/UETA arrangements, online sweepstakes and promotions, and due diligence for technology in M&A and securitization transactions.

SCOPE OF SERVICES

LICENSING & TECHNOLOGY

Structure, negotiate and draft a wide variety of licenses, terms and agreements for creation, use and distribution of new and existing software and content for mobile apps, websites, social media and other uses of technology protected by patent, copyright, trademark and trade secrets laws, as well as End User License Agreements (EULAs) for distribution of mobile apps, joint development agreements, technology evaluation and test agreements, developer terms, and terms for licensing Application Programming Interfaces (APIs), and relevant terms for enforcement of licenses in bankruptcy under Section 365n.

OPEN SOURCE SOFTWARE

Represent and advise companies on open source software (OSS) issues relating to utilizing OSS in mobile apps and proprietary product offerings, acquisition of companies and product lines, product development, and integration of open source software in compliance with OSS license terms including obligations regarding use versus distribution of OSS.

COMPLEX TRANSACTIONS

Provide advice, negotiate and draft, and revise complex technology transactions including Master Services Agreements, Engagement Letters and Statements of Work, as well as cloud computing, SaaS and outsourcing agreements,and related Service Level Agreements (SLAs) and credits, governance and dispute resolution terms, reps and warranties, indemnities and limitations on liabilities, IP terms, audit provisions, and co-location of employees, for BPO and managed services out-sourcing arrangements and other complex arrangements, for companies in a wide range of industries from global container shipping logistics to financial services and consumer products.

DUE DILIGENCE

Conduct technology asset audits and due diligence reviews in support of corporate transactions, such as mergers, acquisitions, securitizations, and private offerings of equity and debt securities, regarding proprietary and third party licensed technology, and including key vendor agreements and use of open source software.

LICENSING & TECHNOLOGY

Structure, negotiate and draft a wide variety of licenses, terms and agreements for creation, use and distribution of new and existing software and content for mobile apps, websites, social media and other uses of technology protected by patent, copyright, trademark and trade secrets laws, as well as End User License Agreements (EULAs) for distribution of mobile apps, joint development agreements, technology evaluation and test agreements, developer terms, and terms for licensing Application Programming Interfaces (APIs), and relevant terms for enforcement of licenses in bankruptcy under Section 365n.

OPEN SOURCE SOFTWARE

Represent and advise companies on open source software (OSS) issues relating to utilizing OSS in mobile apps and proprietary product offerings, acquisition of companies and product lines, product development, and integration of open source software in compliance with OSS license terms including obligations regarding use versus distribution of OSS.

COMPLEX TRANSACTIONS

Provide advice, negotiate and draft, and revise complex technology transactions including Master Services Agreements, Engagement Letters and Statements of Work, as well as cloud computing, SaaS and outsourcing agreements,and related Service Level Agreements (SLAs) and credits, governance and dispute resolution terms, reps and warranties, indemnities and limitations on liabilities, IP terms, audit provisions, and co-location of employees, for BPO and managed services out-sourcing arrangements and other complex arrangements, for companies in a wide range of industries from global container shipping logistics to financial services and consumer products.

DUE DILIGENCE

Conduct technology asset audits and due diligence reviews in support of corporate transactions, such as mergers, acquisitions, securitizations, and private offerings of equity and debt securities, regarding proprietary and third party licensed technology, and including key vendor agreements and use of open source software.

REPRESENTATIVE EXPERIENCE

COMPLEX CONTRACTING
  1. Drafted and negotiated confidentiality and non-disclosure agreements, non-compete and non-solicitation agreements and IP-related provisions involving trade secrets, ownership of IP rights, scope of services, exclusivity of use, and indemnification in agreements involving technology, research, and development, advertising, and marketing, sponsorships, entertainment, employees and consultants, franchise distribution, media content, licensing, and joint ventures.
  2. Worked with IT and legal counsel at client to support and implement a major upgrade to and revision of business processes, including customer service activities, and impacts on new and existing vendor agreements for software, support and facilities service.
  3. Advised, negotiated, conducted diligence, drafted, and closed agreements related to software development, “Software-as-a-Service” and cloud computing, and licensing and support arrangements, including use of open source software and source code escrow, bankruptcy issues; master technology, software license, and development and consulting agreements, to run operations of various companies, from auto insurance to global container shipment logistics.
  4. Served as lead outside counsel for a Fortune 100 financial services company in an outsourcing arrangement with various vendor service providers for a new business and technology center, including negotiating, drafting and closing complicated personnel co‐location and IT services agreements, and advising on employment matters, contractual liability issues, and other related matters.
  5. Acted as lead counsel for a variety of matters for a U.S.-based manufacturer, including Master Supply Agreements for all parts purchased for development and manufacturing; Standard Purchase Order terms and conditions; Service Agreements for maintenance, testing, installations and certifications at multiple facilities; Voluntary Submissions under the Critical Infrastructure Information Act of 2002; Professional Services Agreements; RFQs/RFPs for various purchases and procurements; Bills of Sale for equipment and tooling; Commercial Lending Agreements; Entertainment and Travel Services Agreements; and Special Event Agreements.
LICENSING TECHNOLOGY
  1. Provided client counseling and technology licensing expertise, including complex transactions involving open source software, outbound licenses, cross licenses, OEM software licensing, litigation settlements, acquisitions, and joint development agreements.
  2. Provided advice and counsel regarding multi-million dollar software and technology licensing agreements for asset acquisition, including advice regarding risks and obligations related to ownership, indemnification, assignment, change of control, IP infringement, warranty, and limitation of liability provisions, for a global management consulting and technology services organization.
  3. Negotiated, drafted and closed license agreements for software development and distribution for web-based and mobile applications, including remotely hosted/cloud content.
  4. Review and draft terms for use of Software Development Kits (SDKs) and APIs, and distribution and use of resulting apps and programs by developers.
  5. Drafted legal disclaimers, terms and conditions of use and IP rights notices in connection with websites, user-generated content and mobile apps.
  6. Drafted terms of use, privacy policies, screen notices, license terms and disclaimers, terms regarding collection and use of personal data for client websites, software downloads, intranets, mobile apps, activities on social media sites and e-Commerce.
  7. Represented consulting company in the preparation of joint venture agreements, licensing agreements, and independent contractor agreements.
COMPLEX BPO OUTSOURCING
  1. Structured, negotiated and drafted global business process outsourcing development, installation and services agreements for large public companies in financial services, including for consumer credit card distribution, activation and processing.
DUE DILIGENCE
  1. Planned, managed, supervised, and completed information technology and related intellectual property due diligence on software and vendor agreements for insurers of a multi-billion dollar securitization of a global information services company.
  2. Evaluated legal risks and compliance for social media policies, as well as promotional games, sweepstakes, and contests.
OPEN SOURCE SOFTWARE
  1. For a global consumer electronics manufacturer, we advise on OSS issues, including Black Duck report analyses, and drafting required disclosures for OSS used in various mobile applications and installed in OEM and consumer devices, including use of digital rights management software, access to object and source code, allowable uses and effects of modifications and applicable notices.
  2. We review and revise OSS disclosure documents for updates to apps as well as software installed on devices, and review vendor-generated OSS disclosures and next steps for non-compliant vendor materials.
  3. For a Fortune 100 global consumer products company, we advise on and draft revisions and updates to their corporate Policy and Procedures for Use of Open Source Software, including legal issues related to use of specific OSS programs.
  4. For a Fortune 100 global financial services company, we updated their list of approved/unapproved OSS licenses and have advised on legal issues related to use of specific OSS programs and updates to their OSS Contribution Policy and Procedures.
  5. For a major US manufacturing company, we analyzed and advised on guidelines for disclosures required in consumer advertising that mention features of OpenSSL software.
  6. For a Fortune 100 financial services company, we advised on key terms of relevant OSS licenses, and provided a spread-sheet for easy reference and for review and approval/rejection of proposed use of OSS programs based on relevant license terms and acceptable risk levels.
DIGITAL DISPUTE RESOLUTION
  1. Managed, advised, and resolved disputes regarding online content, personal information, and copyright (under the DMCA, CDA, FTC Act, FTC Blog and Endorsement rules, COPPA and other laws and regulations), for global insurance, financial services, and e-Commerce companies.
SOURCE CODE AS TRADE SECRET
  1. Served as expert advisor to a NY State Supreme Court Justice providing findings and recommendations related to claims of trade secret misappropriation of source code.
COMPLEX CONTRACTING
  1. Drafted and negotiated confidentiality and non-disclosure agreements, non-compete and non-solicitation agreements and IP-related provisions involving trade secrets, ownership of IP rights, scope of services, exclusivity of use, and indemnification in agreements involving technology, research, and development, advertising, and marketing, sponsorships, entertainment, employees and consultants, franchise distribution, media content, licensing, and joint ventures.
  2. Worked with IT and legal counsel at client to support and implement a major upgrade to and revision of business processes, including customer service activities, and impacts on new and existing vendor agreements for software, support and facilities service.
  3. Advised, negotiated, conducted diligence, drafted, and closed agreements related to software development, “Software-as-a-Service” and cloud computing, and licensing and support arrangements, including use of open source software and source code escrow, bankruptcy issues; master technology, software license, and development and consulting agreements, to run operations of various companies, from auto insurance to global container shipment logistics.
  4. Served as lead outside counsel for a Fortune 100 financial services company in an outsourcing arrangement with various vendor service providers for a new business and technology center, including negotiating, drafting and closing complicated personnel co‐location and IT services agreements, and advising on employment matters, contractual liability issues, and other related matters.
  5. Acted as lead counsel for a variety of matters for a U.S.-based manufacturer, including Master Supply Agreements for all parts purchased for development and manufacturing; Standard Purchase Order terms and conditions; Service Agreements for maintenance, testing, installations and certifications at multiple facilities; Voluntary Submissions under the Critical Infrastructure Information Act of 2002; Professional Services Agreements; RFQs/RFPs for various purchases and procurements; Bills of Sale for equipment and tooling; Commercial Lending Agreements; Entertainment and Travel Services Agreements; and Special Event Agreements.
LICENSING TECHNOLOGY
  1. Provided client counseling and technology licensing expertise, including complex transactions involving open source software, outbound licenses, cross licenses, OEM software licensing, litigation settlements, acquisitions, and joint development agreements.
  2. Provided advice and counsel regarding multi-million dollar software and technology licensing agreements for asset acquisition, including advice regarding risks and obligations related to ownership, indemnification, assignment, change of control, IP infringement, warranty, and limitation of liability provisions, for a global management consulting and technology services organization.
  3. Negotiated, drafted and closed license agreements for software development and distribution for web-based and mobile applications, including remotely hosted/cloud content.
  4. Review and draft terms for use of Software Development Kits (SDKs) and APIs, and distribution and use of resulting apps and programs by developers.
  5. Drafted legal disclaimers, terms and conditions of use and IP rights notices in connection with websites, user-generated content and mobile apps.
  6. Drafted terms of use, privacy policies, screen notices, license terms and disclaimers, terms regarding collection and use of personal data for client websites, software downloads, intranets, mobile apps, activities on social media sites and e-Commerce.
  7. Represented consulting company in the preparation of joint venture agreements, licensing agreements, and independent contractor agreements.
COMPLEX BPO OUTSOURCING
  1. Structured, negotiated and drafted global business process outsourcing development, installation and services agreements for large public companies in financial services, including for consumer credit card distribution, activation and processing.
DUE DILIGENCE
  1. Planned, managed, supervised, and completed information technology and related intellectual property due diligence on software and vendor agreements for insurers of a multi-billion dollar securitization of a global information services company.
  2. Evaluated legal risks and compliance for social media policies, as well as promotional games, sweepstakes, and contests.
OPEN SOURCE SOFTWARE
  1. For a global consumer electronics manufacturer, we advise on OSS issues, including Black Duck report analyses, and drafting required disclosures for OSS used in various mobile applications and installed in OEM and consumer devices, including use of digital rights management software, access to object and source code, allowable uses and effects of modifications and applicable notices.
  2. We review and revise OSS disclosure documents for updates to apps as well as software installed on devices, and review vendor-generated OSS disclosures and next steps for non-compliant vendor materials.
  3. For a Fortune 100 global consumer products company, we advise on and draft revisions and updates to their corporate Policy and Procedures for Use of Open Source Software, including legal issues related to use of specific OSS programs.
  4. For a Fortune 100 global financial services company, we updated their list of approved/unapproved OSS licenses and have advised on legal issues related to use of specific OSS programs and updates to their OSS Contribution Policy and Procedures.
  5. For a major US manufacturing company, we analyzed and advised on guidelines for disclosures required in consumer advertising that mention features of OpenSSL software.
  6. For a Fortune 100 financial services company, we advised on key terms of relevant OSS licenses, and provided a spread-sheet for easy reference and for review and approval/rejection of proposed use of OSS programs based on relevant license terms and acceptable risk levels.
DIGITAL DISPUTE RESOLUTION
  1. Managed, advised, and resolved disputes regarding online content, personal information, and copyright (under the DMCA, CDA, FTC Act, FTC Blog and Endorsement rules, COPPA and other laws and regulations), for global insurance, financial services, and e-Commerce companies.
SOURCE CODE AS TRADE SECRET
  1. Served as expert advisor to a NY State Supreme Court Justice providing findings and recommendations related to claims of trade secret misappropriation of source code.
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