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Industry
Experience
[This is a partial listing
of Alan S. Wernick's
practical transactional and dispute resolution
experience in adding value to clients’ businesses.]
Architects/Surveyors
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Representation of
architects and surveyors in infringement of their copyrighted works. |
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Representation of
architects and surveyors in prosecution and registration of copyright
rights. |
Authors
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Representation of international consulting
firm in management, protection, distribution, and licensing of their
numerous copyrighted works (e.g., books on various business topics). . |
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Representation of book
authors in contract negotiations with major publishing houses. |
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Representation of
authors in prosecution and registration of copyright rights. |
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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.
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Computer and Information
Industries
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Serving as an arbitrator or mediator in
numerous major computer user/vendor disputes, large system failures, and
licensing disputes. |
| 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. |
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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.
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Representation of large mail order computer
manufacturer in development of its standard distribution and licensing
agreements. |
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Representation of
businesses in content acquisition for various media including digital media,
Internet applications, and marketing applications. |
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Representation of software developer in
addressing questions about establishing source code escrow with user.
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Representation of buyer of technology
company in due diligence aspects of the acquisition. |
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Representation of software developer in
dispute over work made for hire ownership rights. |
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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. |
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Representation of computer software
developer in contract negotiation concerning the development of private
brand software distribution agreement. |
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Representation of software publisher in the
preparation of an agreement for obtaining rights in computer software to
market third parties' software. |
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Representation of large database provider
in developing software licenses, non-disclosure agreements and policies,
copyright registrations, shrink-wrap licenses and the like. |
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Representation of software developer in
setting up distribution channels for software utility product. |
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Representation of software developer in
negotiations and contract preparation with software distributor for various
rights to developer's software products. |
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Representation of owner of computer system
in developing a time sharing agreement allowing him to sell time on his
system to others. |
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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. |
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Representation of
users in litigation arising out of user/vendor disputes involving computer
system acquisitions. |
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Representation of
software publisher in dispute concerning one of its distributors.
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Participation as
arbitrator in major user/vendor dispute involving large custom software and
computer hardware acquisition. |
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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. |
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Representation of computer system user in
dispute with time share company over rights to the user's data.
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Representation of software developers in
obtaining temporary restraining orders and preliminary injunctions against
infringers of the developers' proprietary computer software. |
Financial Services and
Insurance
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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. |
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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. |
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Representation of company in $20 million
plus outsourcing of data processing department. |
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Providing in-house training on legal
compliance issues. |
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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. |
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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. |
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Representation of insurance company in $8
million plus dollar computer system acquisition. |
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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. |
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Representation of financial institution in
contract negotiations for ATM machines and related computer systems.
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Health care (hospitals, medical groups)
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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. |
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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
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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. |
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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. |
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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. |
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Representation of public library in packet
radio acquisition for data communication between bookmobile and the
library's CPU. |
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Representation of university in technology acquisition. |
Manufacturing and Distributing (e.g., MRP
systems, accounting, etc.)
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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. |
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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. |
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Representation of large food distributor in
acquisition of $500,000 plus computer system acquisition. |
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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. |
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Representation of manufacturer (user) in
$300,000 plus acquisition of manufacturing resource planning computer
system. |
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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. |
Professional and Trade
Associations
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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. |
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Representation of a large computer software
users' association in the negotiations with the vendor in the establishment
of a source code escrow. |
Real Estate
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Representation of clients in computer
system acquisitions for use in real estate and title companies.
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Representation of real estate developer in
trademark dispute over naming of a residential subdivision. |
Retail
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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. |
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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. |
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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. |
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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. |
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Representation of large national retailer
in organizing, obtaining, protecting, and managing their numerous Internet
domain names. |
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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. |
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Representation of clothing manufacture in
obtaining federal trademark protection for their trademarks. |
Service Companies
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Representation of an investor in a $1
million plus VOIP technology investment involving parties in the U.S. and
Israel. |
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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. |
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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. |
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Representation of international student
internship experiences company in obtaining federal trademark protection for
their trademarks. |
Standards Writing Organizations
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Representation of several international and
national standards writing organizations as Amicus Curiae clients in
a copyright infringement case before the United States Supreme Court.
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Representation of international standards
writing organization in prosecution and protection of its copyright and
trademark assets. |
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Representation of international standards
writing organization in licensing of the ISO’s intellectual capital assets
(e.g., its copyrights and trademarks). |
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