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TechLaw Institute 2019: The Digital Evolution


Speaker(s): Anna Hsia, Dean W. Harvey, Eric Goldman, Genesis J. Alejandro, Huu Nguyen, Ilan Hornstein, James G. Snell, John C. Yates, Joseph V. DeMarco, Justin Chang, Kendra L. Basner, Kristie Chon, Lance Koonce, Laura C. Pirri, Lucian T Pera , Marc S. Roth, Philip Blum, Raymond H. Sheen, Robert S. Leach, Thomas N. Dahdouh, Tsan Abrahamson
Recorded on: Mar. 4, 2019
PLI Program #: 249518

Huu Nguyen is a deal lawyer with a strong technical background. He focuses his practice on commercial and corporate transactions in the technology and venture space, and counsels and assists clients with FinTech transactions, artificial intelligence matters, licensing, outsourcing, complex commercial arrangements, strategic relationships, financial regulatory matters, privacy and security matters, cyber law and intellectual property rights matters. He also helps his clients with accelerator and foundry formations and associated fund formations, mergers and acquisitions, corporate governance, corporate formation and other related matters. He currently serves as Vice-Chair of the Artificial Intelligence and Robotics Committee of the ABA.

About

Before practicing corporate, commercial and technology law, Huu focused on intellectual property litigation and patent prosecution. Prior to joining Squire Patton Boggs, Huu seconded as an in-house counsel with a global financial services company. Huu was a board member of the Vietnamese-American Bar Association of Washington and has also worked on IP and transactional matters pro bono for nonprofits.

Experience

Artificial Intelligence and Machine Learning

  • Assist a natural language processing company with its data and IP issues, and its
    technology and commercial transactions.
  • Counsel a predictive automotive routing technology provider with its joint ventures, consulting services and IP issues.
  • Assist a bio-informatics company with its commercial transactions.
  • Advise a digital image processing company operating in the fashion space with its IP and commercial issues.
    FinTech
  • Representing a global financial services company in regulatory review, structuring and negotiations of agreements related to a new card product, a consumer data monitoring service, a white labeling and co-branding relationships and mobile payment systems, and a loyalty program as a service product, including our client’s relationship with a payment system company for the servicing of the solution.
  • Representing a national property management in the acquisition and implementation of an integrated payment solution from a large financial institution.
  • Representing a retailer in the acquisition and implementation of digital wallet technology.

Commercial & Supply Chain Arrangements

  • Representing an international manufacturer of equipment in cross-border sale, resell and promotion of goods.
  • Representing an international distributor of beauty supplies in retail sales transactions.
  • Representing a foreign reseller with cross-border resale transactions of high technology equipment in the financial services industry.
  • Representing a large clothing retailer with various commercial arrangements.

Outsourcing & Technology Transactions

  • Representing a leading financial services institution in outsourcing and licensing transactions.
  • Representing a life sciences company in sourcing of ERP solutions.
  • Representing a software provider in data center agreements, IP licenses, EULA, collaboration agreements, financial data services/cloud computing agreements, and employment and developer agreements.

Software Licensing

  • Representing a consumer products company in manufacturing and development transactions.
  • Representing a large shipping terminal operator in software escrow agreements, consulting and software development agreements, IP licenses and terminal services-related transactions.
  • Representing software companies in connection with EULAs and employee, contractor, referral and reseller agreements.
  • Drafting a beta testing agreement for an enterprise software company.
  • Advising various clients regarding open source, shareware and freeware licensing risks.

Formations, Mergers & Strategic Alliances

  • Representing a start-up in the formation of an innovation program and associated funding vehicles.
  • Representing a multinational media company in the acquisition of interest in a US producer and distributor of television shows.
  • Representing a financial services software provider in connection with collaboration and strategic alliance transactions.
  • Representing and advising a microchip manufacturer in the wind down of a joint venture and in new merger transactions.
  • Representing a computer and electronics manufacturer in the acquisition of a high-tech company.

Privacy & Data Security

  • Counseling clients with GLBA and other consumer privacy-related matters.
  • Assisting clients with comprehensive written information security programs.
  • Drafting and advising on privacy policies and related FTC issues.

Internet & E-Commerce

  • Representing clients with their SaaS and other cloud computing arrangements, including e-commerce solutions.
  • Counseling online clients about user-generated content agreements, DMCA issues, terms of use and publicity releases.
  • Representing a start-up online music company in connection with music licenses and website terms of use.

Credentials

Education

  • University of California, Berkeley, J.D., 2005
  • The University of Texas at Austin, M.S., with honors, 1997
  • The University of Texas at Austin, B.S., with honors, 1992

Admissions

  • New York, 2007
  • Washington, 2005

Languages

  • English
  • Vietnamese

 


Genesis Alejandro is a Senior Practice Support Project Manager at Nossaman LLP where his focus has been on Electric Discovery and Litigation Support for the past 8 years. He has been in the Litigation Support/eDiscovery space for 16 years working at firms such as Thelen, Winston & Strawn, and Orrick prior. He possesses an EnCE certification in digital forensics and is also certified as a Project Manager Professional. He actively has served as the legal technology organization, ILTA, San Francisco Litigation Support representative for the past seven years. His experience spans across all aspects of Litigation Support and eDiscovery, including computer forensics, data processing, project management, database management, trial graphics, and courtroom technology.

 


Joseph V. DeMarco is a partner at DeVore & DeMarco LLP where he specializes in counseling clients on complex issues involving information privacy and security, theft of intellectual property, computer intrusions, on-line fraud, and the lawful use of new technology. His years of experience in private practice and in government handling the most difficult cybercrime investigations handled by the United States Attorney’s Office have made him one of the nation’s leading experts on Internet crime and the law relating to emerging technologies.

From 1997 to 2007, Mr. DeMarco served an Assistant United States Attorney for the Southern District of New York, where he founded and headed the Computer Hacking and Intellectual Property Program, a group of five prosecutors dedicated to investigating and prosecuting violations of federal cybercrime laws and intellectual property offenses. Under his leadership, cybercrime prosecutions grew from a trickle in 1997 to a top priority of the United States Attorney’s Office, encompassing all forms of criminal activity affecting e-commerce and critical infrastructures including computer hacking crimes; transmission of Internet worms and viruses; electronic theft of trade secrets; illegal use of “spyware”; web-based frauds; unlawful Internet gambling; and criminal copyright and trademark infringement offenses. As a recognized expert in the field, Mr. DeMarco was frequently asked to counsel prosecutors and law enforcement agents regarding novel investigative and surveillance techniques and methodologies, and regularly provided advice to the United States Attorney concerning the Office’s most sensitive computer-related investigations. In 2001, Mr. DeMarco also served as a visiting Trial Attorney at the Department of Justice Computer Crimes and Intellectual Property Section in Washington, D.C., where he focused on Internet privacy, gaming, and theft of intellectual property.

Mr DeMarco is on the panel of approved neutrals of the American Arbitration Association (AAA) where he focuses on resolving disputes between businesses involving data privacy, high-technology and commercial law issues.  He speaks frequently on the benefits of ADR in the area of data security and privacy litigation.

Since 2002, Mr. DeMarco has served as an Adjunct Professor at Columbia Law School, where he teaches the upper-class Internet and Computer Crimes seminar. He has spoken throughout the world on cybercrime, e-commerce, and IP enforcement. He has lectured on the subject of cybercrime at Harvard Law School, the Practicing Law Institute, the National Advocacy Center, and at the FBI Academy in Quantico, Virginia, and has served as an instructor on cybercrime to judges attending the New York State Judicial Institute.

Prior to joining the United States Attorney’s Office, Mr. DeMarco was a litigation associate at Cravath, Swaine & Moore in New York City, where he concentrated on intellectual property, antitrust, and securities law issues for various high-technology clients. Prior to that, Mr. DeMarco served as law clerk to the Honorable J. Daniel Mahoney, United States Circuit Judge for the Second Circuit Court of Appeals.

Mr. DeMarco holds a J.D. magna cum laude from New York University School of Law. At NYU he was a member of the NYU Law Review. He received his B.S.F.S. summa cum laude from the Edmund A. Walsh School of Foreign Service at Georgetown University.  Mr. DeMarco is active in numerous professional associations including the:

  • International Bar Association (Technology and Litigation Sections);
  • International Association of Korean Lawyers (Regional Governor, New York Region);
  • New York State Bar Association, ADR Section;
  • New York State Bar Association, Commercial and Federal Litigation Section (Co-chair, Internet and IP Committee, 2009-present);
  • Connecticut Bar Association;
  • Fairfield County (CT) Bar Association;
  • New Haven County (CT) Bar Association;
  • New York City Bar Association (Co-Chair, Information Technology Law Committee; Past
  • Member, Copyright Committee); and
  • The Copyright Society of the U.S.A.

Mr. DeMarco is a Martindale-Hubbell AV-rated lawyer for Computers and Software, Litigation and Internet Law, and is also listed in Chambers USA: America’s Leading Lawyers for Business guide as a leading lawyer nationwide in Privacy and Data Security. He has also been named as a “SuperLawyer” for his expertise and work in the area of Intellectual Property Litigation. He has published numerous articles and appeared on major news programs in his practice areas; is a member of the Professional Editorial Board of the prestigious Computer Law and Security Review (Elsevier); and serves on the Board of Advisors of the Center for Law and Information Policy at Fordham University School of Law.

Mr. DeMarco has received numerous professional awards, including the U.S. Department of Justice Director’s Award for Superior Performance, as well as the Lawyer of Integrity Award from the Institute for Jewish Humanities. In his spare time he enjoys parenting, golf, and listening to classical piano.


Lucian T. Pera focuses his practice on commercial litigation, media law, and legal ethics work.  His civil litigation practice has ranged widely and includes a variety of commercial, personal injury and intellectual property litigation, as well as numerous state and federal appeals. Lucian has represented many media outlets in matters ranging from claims for defamation or invasion of privacy to access to courtrooms, public records and meetings of government bodies.

His extensive bar association work in the field of legal ethics and professional responsibility has resulted in him being elected, both locally in Tennessee and nationally, to bar association leadership positions.  This work also makes him a go-to lawyer nationally in the field of legal ethics and professional responsibility.  He advises attorneys, law firms, their clients, and businesses who deal with lawyers about all aspects of the law. Recent assignments have included defense of lawyers in disciplinary investigations and proceedings, counseling clients with disciplinary complaints and other claims against lawyers, advising law firms about loss prevention and claims, defending and prosecuting motions to disqualify lawyers or for sanctions, and advising innovative start-ups in the legal business.

Lucian regularly provides expert witness testimony in matters concerning legal ethics, professional responsibility and the standard of care for lawyers and law firms.

Amid rapid changes in the business of law, Lucian also counsels law firms and other entities developing new business models for the delivery of legal services.  He also advises individuals and organizations seeking to do business with lawyers about how they may do so legally and ethically.


Ray Sheen represents policyholders in complex insurance recovery disputes. He has advised clients on insurance coverage for a wide range of claims and losses, including cyber liabilities, data breach and ‘phishing’ losses; product liability/consumer class actions and product recalls; securities class actions and derivative lawsuits; trade credit claims; copyright, trademark, and patent infringement; and trade secrets, antitrust, Telephone Consumer Protection Act, Fair Credit Reporting Act, and employment claims.

Ray assists policyholders with negotiating and maximizing their insurance assets, including directors and officers (D&O), cyberliability, and errors and omissions (E&O) policies. He has advised clients on insurance issues related to mergers and acquisitions and real estate transactions.

Ray served as a law clerk to the Honorable J. Spencer Letts of the U.S. District Court for the Central District of California and as an extern with the Honorable Thelton E. Henderson of the U.S. District Court for the Northern District of California.

He received his J.D. from Stanford Law School in 1997, where he was note editor for the Stanford Law Review, and a B.A., summa cum laude, from Amherst College in 1992.

Memberships and Affiliations

  • Fellow, Leadership Council on Legal Diversity (2016)


Dean W. Harvey, co-chair of Perkins Coie's Artificial Intelligence, Machine Learning & Robotics group, focuses his practice on technology related commercial transactions, product counseling and data privacy and security. He assists clients in acquiring and developing intellectual property, technology, software and other technology-related services. Dean has counseled FORTUNE 100 clients on AI and machine learning, product compliance, privacy and security, large software development projects; AI companies in negotiations with their clients, SaaS providers in establishing and operating their platforms; and technology companies in various data and technology licensing transactions.

Dean advises both providers and purchasers of machine learning solutions. He has represented both providers and buyers in establishing templates for negotiating machine learning and AI transactions. He has advised AI vendors in projects involving issues such as fraud detection, disease risk prediction, disease condition prediction, and image recognition and identification. He has assisted buyers in obtaining AI solutions in areas such as pricing optimization, claims editing, RPA and e-commerce site optimization.


Jim Snell is a partner in the Privacy & Security Group at Perkins Coie.  He represents clients in a broad range of complex commercial matters, including Internet and privacy issues, security issues, IP, false advertising, and class actions.  Jim’s experience includes, among other things, IoT, unmanned vehicles, wiretap and surveillance matters, AI and machine learning, the Communications Decency Act, biometrics, web scraping, data breach, and the Telephone Consumer Protection Act.

Jim is a Certified Information Privacy Professional (CIPP) as designated by the International Association of Privacy Professionals (IAPP).


Lance Koonce is a Partner in the New York, NY office of Davis Wright Tremaine LLP who specializes in intellectual property and media counseling and litigation for clients in the advertising, publishing, music, television/film, and consumer products fields. He has two decades of experience analyzing the implications of emerging technologies across various industries, especially in the context of the content industries.

Lance graduated with honors from the University of North Carolina Law School in 1996. Prior to joining Davis Wright Tremaine, he was an associate with the boutique IP law firm Kay, Collyer & Boose LLP, and started his career as an attorney at Dewey Ballantine LLP.

Lance writes and speaks frequently on IP and technology issues, including blockchains and other distributed technologies.  He leads DWT’s cross-disciplinary blockchain initiative, and is the founder of the Creative Blockchain blog.  He also serves as the co-chair of the Law & Technology Committee of the New York County Lawyers Associations.


Marc Roth works with clients to comply with state and federal laws and rules governing privacy, social media, sweepstakes, telemarketing, and advertising. He also counsels clients on transactional matters, and guides them through federal and state government investigations.

Previously chief compliance counsel for a Time Warner company and an FTC staff attorney, Marc draws upon decades of consumer advertising and marketing law experience when counseling clients. He frequently speaks and writes about privacy and telemarketing issues.

Marc drafts and amends online and offline privacy policies, and advises companies on how data may be collected, shared, and used in partner marketing arrangements. He also advises clients on laws governing data use and security. These include the Children’s Online Privacy Protection Act, the Gramm-Leach-Bliley Act, the Fair Credit Reporting Act, the Fair and Accurate Credit Transactions Act, the Video Privacy Protection Act, HIPAA, the CAN-SPAM Act, and the E.U. Data Protection Directive.

In the marketing arena, Marc counsels clients on how to develop and manage telemarketing programs that comply with the Telemarketing Sales Rule, the Telephone Consumer Protection Act, and applicable state laws. He also advises companies on how to develop and manage free trial, negative option, and continuity marketing programs in compliance with all applicable laws, regulations and credit card processing rules.

Additionally, Marc counsels clients preparing to conduct marketing campaigns through online social networks.


Mr. Yates is chair of the Corporate Technology Group of Morris, Manning & Martin in Atlanta. He is internationally recognized in the technology law and corporate finance fields. His firm represents technology companies in all stages of growth and is a leader in VC and private equity deals, IPOs and M&A transactions. Mr. Yates is co-founder of the Technology Association of Georgia, Southeastern Software Association, and Southeast Medical Device Association.  He has authored hundreds of articles and was cited by the U.S. Supreme Court in Kodak vs. Image Technical Services.

He received his B.A. and J.D. from Duke University and serves on the Board of Visitors at the Duke School of Law and Board of Trustees of Furman University.  Mr. Yates was chair of the 2013 NCAA Final Four Basketball Tournament in Atlanta in April 2013.


Tsan Abrahamson’s practice focuses on strategic counseling in the areas of social media, sweepstakes, intellectual property, advertising, trademark clearance, trademark and copyright prosecution, licensing, and other business transactions.  She also manages the adverse proceedings practice at the U.S. Patent and Trademark Office Trademark Trial and Appeal Board.  Tsan has an extensive practice in the area of marketing promotions, including social media promotions, gift card and gift certificate marketing, print and online sweepstakes, contests, give-aways, warranties, rebates, and coupon promotions.  Tsan completed her undergraduate work at Dartmouth College, and received both her JD and MBA from the UCLA School of Law and The Anderson Graduate School of Management.


Thomas Dahdouh is currently the Regional Director of the Federal Trade Commission’s Western Region, with offices in San Francisco and Los Angeles.  He served as Assistant Regional Director for the Western Region from 2012 to May 2013.  Before that, he worked for 14 years as a staff attorney in the San Francisco office, handling both consumer protection and antitrust matters.  Previously, he worked at the FTC’s Washington, D.C., headquarters for two Commissioners.  He has also served on the Executive Committee of the California State Bar’s Antitrust, UCL and Privacy Section since 2009, most recently serving as its Chair from 2014-2015.  He received his JD from Harvard Law School and his BA from Yale University.


Eric Goldman is a Professor of Law, and Co-Director of the High Tech Law Institute, at Santa Clara University School of Law. Before he became a full-time academic in 2002, he practiced Internet law for 8 years in the Silicon Valley. His research and teaching focuses on Internet, IP and advertising law topics, and he blogs on these topics at the Technology & Marketing Law Blog [http://blog.ericgoldman.org]. Managing IP magazine has twice named him to a shortlist of North American “IP Thought Leaders,” and he has been named an “IP Vanguard” by the California State Bar’s IP Section.


Justin S. Chang is Corporate Counsel at Digital Realty, where he manages global litigation and employment matters for the company. During his career, Mr. Chang has represented domestic and international clients on business and litigation matters. He has experience litigating disputes through jury trial, advising legal departments on litigation and other legal matters, preparing antitrust and anti-corruption compliance programs for multinational corporations, and representing individuals and companies in connection with SEC, DOJ, Department of Labor, and internal investigations.


Kristie Chon is responsible for privacy, resiliency, technology risk and compliance at PayPal.  As the VP & Chief Privacy Officer, Kristie is passionate about creating and implementing privacy programs focused on driving customer experience and trust, brand loyalty, and innovation.  Her specialties include data driven approach to privacy risk management and developing a framework approach to operationalizing privacy requirements, including data governance strategy, policies and procedures, training, privacy by design, third party risk assessment, and breach management.  Prior to PayPal, Kristie was the Chief Privacy Officer at HCL Technologies, leading an organization of experienced privacy professionals to develop and operationalize a compliance framework for privacy.  Kristie began her career advising technology outsourcing and consumer protection issues in law firms and regulatory agencies.