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Outsourcing 2015: Sourcing Critical Services


Speaker(s): Brad L. Peterson, David M. Ross, David P. Chameli, David Rabinowitz, Fayiaz Chaudhri, George Kimball, Gregg I. Goldman, Gregory Manter, John F. Delaney, Jon Lightman, Lynn Lugo, Marcelo Halpern, Mark W. Heaphy, Michael J. Cammarota, Michael S. Mensik, Peter R. George, Rebecca S. Eisner, William A. Tanenbaum
Recorded on: Oct. 29, 2015
PLI Program #: 59324

Mark Heaphy is the chair of Wiggin and Dana's Technology and Outsourcing Group and Co-Chair of the India Practice Group.  His practice focuses on all aspects of the sourcing and procurement process, from initial RFP through implementation and beyond.  Mark has broad experience across a variety of industry sectors, including financial services, healthcare, insurance, life-sciences, manufacturing, telecommunications and utilities.

Mark helps clients structure, negotiate and document domestic, near-shore and off-shore, commercial relationships related to complex, global, outsourcing strategies and the development, distribution, customization, implementation, support and management of technology solutions.  He has represented hundreds of customers and suppliers in sole-sourced and competitively-bid, sourcing transactions, including business-process and information technology outsourcing arrangements, software licensing and distribution transactions, technology development and systems integration agreements, software support and other professional services transactions, joint ventures and strategic alliances, cross-border technology transfers and electronic commerce and other internet-related matters.

Mark routinely assists clients in diverse industries navigate rapidly-evolving, domestic and international, privacy and security regulations, including HIPAA, GLBA and the EU Privacy Directive.  He frequently lectures on legal topics related to outsourcing, licensing and privacy issues and serves as an adjunct professor at the Quinnipiac School of Law, where he teaches computer law and the law of cyberspace.

Mark graduated Phi Beta Kappa from the College of William and Mary with a Bachelor of Arts degree in philosophy and international relations.  He earned a Master of Arts degree in international relations from Yale University and a Juris Doctor degree from the University of Virginia School of Law.  He is a member of the American Bar Association's sections of International Law and Practice, Intellectual Property Law, and Science and Technology.


Primary Areas of Practice: Sourcing Advisory

Law School/Graduate School: University of the West of England, Bristol

Work History:

Mr. Lightman heads up ISG's Life Sciences practice.  He advises ISG clients on all aspects of the services lifecycle from initial strategy through design and build of governance organizations.  As a qualified English attorney he initially focused on the transactional activities and still maintains deep SME knowledge relating to structuring and negotiation of contracts.  His experience includes over 50 ISG engagements whose scope comprised ITO, BPO, FSO and KPO elements and has also assisted clients in developing enterprise vendor management functions, in many cases on a global basis.  He has supported clients in over 10 countries and is based in New York City.


Brad Peterson is a co-chair of PLI’s outsourcing program in Chicago leads the Technology Transactions practice at Mayer Brown.  His practice focuses on outsourcing, data, digital services, and software transactions.

Brad has been ranked as a Band 1 individual for several years in both Chambers Global (Global – US Outsourcing category) and Chambers USA (Illinois Technology and the National Outsourcing categories) (“the gold standard of legal advisers on IT outsourcing and contracts”).  Best Lawyers named Brad as the Information Technology Law "Lawyer of the Year" for Chicago" for 2017.   Legal 500 has for several years named Brad as a Leading Lawyer ("singled out for praise“).

Brad earned an MBA from the University of Chicago Graduate School of Business and a JD from Harvard Law School. Prior to law school, he worked for years as a computer programmer and an IBM Marketing Representative.


George Kimball is a member of the outsourcing and technology practice at Wiggin and Dana LLP.

Before joining his present firm, he was an Associate General Counsel at HP, where his responsibilities included negotiation of major outsourcing engagements; teaching, training and practice tools for HP lawyers, sales executives and account executives; and legal support for cloud and security businesses.

Earlier in his career, he spent more than 30 years in private practice in California, including partnerships at Latham & Watkins, Arnold & Porter, Baker & McKenzie and a Los Angeles technology boutique, Kimball & Weiner LLP.

Since the early 1990s, he has advised clients concerning contracts to outsource information technology and business processes in a wide range of industries. He is author of Outsourcing Agreements: A Practical Guide (Oxford 2010). He has been ranked as a leading outsourcing lawyer by Chambers Global, Chambers USA and Legal 500.

A native of Southern California and resident of Ann Arbor, Michigan, George is a graduate of UCLA, University College London and the University of Michigan Law School, where he teaches as an adjunct lecturer. He is a member of the Bar in California, Michigan and New York and has been admitted to practice before the US Supreme Court.


Marcelo Halpern is the firmwide Co-Chair of Perkins Coie’s Technology Transactions & Privacy practice and focuses his practice on complex commercial transactions involving the development, deployment and distribution of technology in a wide variety of industries. Marcelo regularly works with clients in the blockchain industry, advising on technology and platform issues, structuring token offerings, digital currency issues, tokenization of assets, and the development and operation of blockchain based collaborative platforms. In addition, he has advised on the formation and operation of several blockchain consortiums. 

Marcelo provides practical counsel in connection with emerging technologies, including those related to big data analytics, artificial intelligence, fintech and blockchain, internet of things, smart cities, mobile, cloud computing and “as a service” platforms, hardware and e-commerce, as well as the overall interplay of interoperability, industry standards and IP licensing approaches. He has a strong focus on complex strategic alliances and licensing transactions, outsourcing and ERP implementation, digital strategies—including open source licensing, data security, data use and privacy issues—and other marketing and distribution strategies.

Marcelo counsels multinational FORTUNE 100 companies, startups, emerging growth companies, governments and nonprofits on structuring and negotiating collaboration, development, distribution, license and service agreements. He also frequently advises clients on intellectual property and technology issues arising in the context of mergers and acquisitions, industry alliances and consortia, joint venture arrangements, financings, data management and tech transfer transactions. 

Marcelo was honored by U.S. News - Best Lawyers as the Chicago “Lawyer of the Year” in the technology law category and has been listed since 2004 as one of “America’s Best Lawyers” for technology law by Chambers USA in its annual guide of leading business lawyers.

 


Rebecca Eisner is a member of the Global Management Committee for the firm and previously served as a member of the Global Partnership Board and as Partner-in-Charge of the Chicago office.  She has over 25 years of experience representing clients in hundreds of matters in three main areas: outsourcing, emerging technologies, and data privacy and security.

In outsourcing, Rebecca has represented clients in many industries in complex global technology and business process outsourcing transactions of all types. She also has experience with re-structuring and re-negotiating outsourcing transactions, in-sourcing, managing acquisitions and divestitures in outsourcing transactions, and termination of outsourcing arrangements, and other strategic sourcing relationships. In emerging technologies, Rebecca has advised clients negotiating with emerging technology providers on private and public cloud SaaS, PaaS and IaaS agreements and on appropriate regulatory, risk management, privacy, data protection, data use and analytics and licensing terms for cloud contracts. She has also represented clients in data acquisition and data analytics agreements. In traditional technology transactions, Rebecca has extensive experience in software development, robotic process automation and artificial intelligence agreements, database licensing and use agreements, ERP implementations, systems integrations, hosting and data center agreements and hardware acquisition and maintenance agreements. In security and data privacy, Rebecca regularly advises clients in global data transfers and privacy issues, privacy assessments, privacy compliance, and appropriate security and privacy measures in supply chain and third party contracting. She also advises on e-commerce issues, such as electronic contracting and signatures, and web site design and review. Rebecca is recognized as one of the leading lawyers in the outsourcing field by Chambers Global (“1” ranking in Outsourcing), Chambers USA (“1” ranking in “Nationwide: Outsourcing” and “Illinois: Technology & IT Outsourcing”) and Legal 500 (recognized in “Technology Outsourcing”). Best Lawyers named Rebecca as its Chicago Technology Lawyer of the Year for 2015. Profiles in Diversity Journal have named her a “Woman Worth Watching”.


Greg Manter represents clients in a wide variety of information technology and business process outsourcing transactions and other information technology licensing and development transactions.

He has represented customers in numerous software implementation agreements, including several large ERP implementation agreements.

Chicago and San Diego Offices (not admitted in California)

Experience

  • Represented a major mortgage industry services and data company in an enterprise-wide outsourcing of its data center operations, in a deal valued at US$300 million
  • Represented a leading provider of private label and commercial credit cards in an enterprise-wide outsourcing of its data center and network operations, in a 5-year deal valued at US$175 million
  • Represented a major multinational bank in connection with an outsourcing agreement for network field services, with an anticipated deal value of approximately US$150 million
  • Advised a major global chemicals company in the negotiation of an implementation services agreement for an SAP-based system in connection with a joint venture with a Saudi-based company for a multibillion-dollar Middle East manufacturing operation
  • Represented a large Canadian frozen food and produce manufacturer for an enterprise-wide license to SAP software and a separate services agreement for the global implementation of that software, awarded to a systems implementer following a competitive process in a deal valued at US$100 million
  • Represented a market-leading global information services and publishing company for the outsourcing of its North American IT operations to an outsourcing vendor and negotiated a hosting agreement with a separate hosting provider for the operation and maintenance of its customer-facing tax/finance software
  • Represented a major multinational bank for two service agreements in support of its global call centers
  • Represented a private label food corporation for a services agreement in connection with its company-wide implementation of SAP
  • Negotiated a series of SAP implementation projects in the US, Europe and Asia for the world's largest apparel company with a systems implementer
  • Represented a global hardware store company for an enterprise-wide license for SAP software and an implementation services agreement with a systems implementer
  • Negotiated a long-term outsourcing services agreement for a consumer products company in connection with its global finance and accounting operations
  • Represented a natural gas company in connection with an outsourcing agreement for finance and accounting services from an outsourcing vendor

Admissions

  • Illinois
  • New York

Education

  • LL.M., Duke University
  • J.D., Duke University
  • B.A., University of Virginia (with distinction)


John Delaney advises clients ranging from startups to FORTUNE 500 companies on licensing, intellectual property and technology-related matters. John’s experience includes negotiating complex IT and business process outsourcing contracts and service level agreements, joint ventures, software and content development agreements and licenses and similar transactions. John routinely advises clients on matters relating to social media, mobile apps, cloud computing, AI, big data analytics, smart contracts, blockchain and other emerging technologies. 

John also assists clients in identifying online liability issues and developing risk-reduction strategies, including in connection with data scraping, online marketing campaigns, user-generated content, voice platforms and interactive products and services.   

In the media space, John has extensive experience with the licensing of music, TV, film and other content for transmitting, streaming or downloading through traditional distribution channels and online platforms. 

In the social media space, John is highly knowledgeable of the rapidly evolving law of social media, social influencers and interactive marketing. He drafts and helps implement social media policies and guidelines, advises on compliance with the Digital Millennium Copyright Act (DMCA) and Communications Decency Act (CDA) safe harbors, and assists with online tracking and issues in connection with corporate blogs, third-party social media platforms and mobile applications.

John is a frequent author, blogger and lecturer on technology and intellectual property law developments.


Mike supervises a team of lawyers that facilitate ease of doing business in deal shaping and negotiations with clients in North America. Responsibilities include supervising and occasionally participating in the drafting and negotiating of technology and business process licensing, outsourcing, reseller, confidentiality and numerous other types of agreements with commercial and public-sector entities; antitrust analysis; dealing with issues pertaining to employment and contract law, intellectual property, general corporate, mergers and acquisition, and tax; supervising outside counsel on contracting matters.  Mike is also the legal department’s lead for legal community in North America.

Prior to joining Accenture in 2005, Mike held various positions in IBM’s legal department.  His responsibilities included antitrust analysis, contract drafting and negotiation of all types of customer and supplier contracts, dealing with issues pertaining to employment law, intellectual property, general corporate, mergers and acquisition and tax and supervising outside counsel on litigation.

Mike received a BA from St. John’s University in 1982 and graduated from St. John’s University School of Law in 1985, where he was a St. Thomas More Scholar and a published member and editor of the Law Review. 

Mike has volunteered with various charitable groups, including the Maryknoll Lay Missioners (http://www.mklm.org/) in Bolivia, Bangladesh, El Salvador, and Nepal, and Mike serves on the Board of Directors of MKLM. Mike is also on the Board of Directors of Search for Change, (http://www.searchforchange.org/), a nonprofit organization that has been a pioneer in the mental health community for more than 35 years with a reputation for providing quality rehabilitative services to individuals with mental illness. Mike is also an elected official who sits on the Board of Finance for the town of New Fairfield CT.


Mr. George practices international commercial law and regularly advises clients, both on the buyer and supplier side, on domestic and multi-jurisdictional sourcing and supply transactions, and complex business services transactions involving procurement, human resources, finance and accounting and engineering services. Mr. George is a recognized leader in the areas of outsourcing, system design and implementation, licensing, cloud contracting, robotic process automation, Internet of Things and other disruptive technologies. He regularly advises clients on the issues these technologies raise, both domestically and from a global perspective. Mr. George also helps clients manage the complex intellectual property and data rights issues that these technologies raise.

Practice focus

Mr. George advises clients in the areas of cross-border and domestic sourcing and supply transactions, data and technology transfers and licensing transactions.

Representative clients, cases or matters

SaaS Agreements - Represented technology services provider with respect to international structure and drafting of template cloud contracting and storage services agreements.

Cloud Computing - Represented Fortune 50 medical products and pharmaceutical distribution company with respect to template SaaS contracts and playbook for reviewing and negotiating third party service provider contracts for cloud based solutions.

System Procurement and Implementation - Represented chemical company with respect to procurement and implementation of global enterprise resource planning system, including structuring pricing and liquidated damages provisions to align incentives of provider and client.

Digital Platform - Advised global energy company on regulatory compliance, privacy, security and contractual issues related to digital supply chain platform.

Education

Northwestern University School of Law (J.D., cum laude) (1997)

University of Michigan (B.A.) (1992)

Admission

Illinois~United States (1997)


William A. Tanenbaum is an IP, technology, data and cybersecurity lawyer and the Co-Chair of the Health Care Technology & Innovation Group in the New York office of the AmLaw 100 firm Polsinelli  PC.  Bill is highly ranked by Chambers, Legal500 and Who’s Who Legal in IT & Outsourcing in the U.S. and internationally.   He was named as “Lawyer of the Year” in IT in New York by US News & World Report;  as one of 6 U.S. lawyers in Best Data Lawyers, Who’s Who Legal: Data 2018;  as one of the Top 5 IT lawyers in the country by Who’s Who Legal; and as one as one of the World’s 300 Leading IP Strategists.  

Those legal ranking researchers find that “he has expertise in technology transactions that puts him at the very top tier of the market [and] he is a font of knowledge on creating new IT structures and has strong litigation experience;  that he has “formidable expertise in cybersecurity and data licensing and is considered one of the leading names in the domestic market;” and that he “brings extremely high integrity, a deep intellect, fearlessness and a practical, real-world mindset to every problem.”   Bill is a graduate of Brown University (Phi Beta Kappa) and Cornell Law School and the Bob Bondurant School of High Performance Driving.      


DAVID M. ROSS is an assistant general counsel with the Intellectual Property and Global Technology Unit of the General Corporate Law Section at MetLife.  David’s responsibilities focus on global strategic IT issues including intercompany platform development and integration, IT security and cybersecurity, IT policies and standards, business and technology process migration, and telecommunications matters.  He also has extensive experience in negotiating complex third-party outsourcing agreements, as well as software licenses, data licenses, and other forms of vendor agreements.

He has been on the faculty of the Practicing Law Institute in prior years, was the founding chair of the Committee on Telecommunications Law of the Association of the Bar of the City of New York and also served as the Association’s Administrative Law Committee chair.

Prior to MetLife, David had various legal positions at Lehman Brothers, Guardian Life, Kramer, Levin and Fried, Frank.

David received his B.A. from the University of Illinois, an M.A. in political philosophy from McGill University in Montreal, Canada, and his J.D. from the NYU School of Law.


David P. Chameli is Vice President, General Counsel of Heritage - Crystal Clean, LLC (NASDAQ: HCCI), a leading provider of hazardous and non-hazardous waste transportation and processing services. David has over 24 years of experience in transportation and international and domestic supply chain law as well as significant experience with procurement, strategic sourcing and compliance.  Most recently, David was the Vice President, General Counsel for SIRVA, Inc. Moving Services Worldwide, parent company for Allied Van Lines, Inc. and North American Van Lines, as well its Chief Compliance Officer, where he focused on corporate governance, compliance and SIRVA’s recent IPO effort.  Prior to SIRVA, David was corporate counsel in various senior legal position within Sears Holdings Corporation (NASDAQ: SHLD), parent company for Sears, Roebuck and Co. and Kmart Corporation where he was responsible for its supply chain, procurement and IT legal portfolio, in addition to supporting strategic merchandising contracts.  Prior to Sears, David was in private practice in St. Paul, Minnesota with a focus on transportation contracts and litigation.  David has an undergraduate degree in History from the State University of New York (SUNY) at Buffalo (Amherst, NY), a law degree from William Mitchell College of Law (St. Paul, MN) and an MBA in Marketing, Management Strategy and Entrepreneurship from Northwestern University – Kellogg School of Management (Chicago, IL). David is also involved in various non-profit organizations especially those supporting breast cancer awareness and prevention as well as children’s life issues. He grew up in upstate New York and currently resides in the northwestern suburbs of Chicago with his wife and two college-aged children.


David Rabinowitz is co-head of the Litigation Department and a member of the Intellectual Property Department and Legal Ethics and Law Firm Practice Department at Moses & Singer, where he has been a partner since 1985.  He handles civil commercial cases of all kinds and in particular both litigates and advises clients on financial industry and intellectual property matters.  He is a frequent speaker on ethical issues concerning negotiations.  Mr. Rabinowitz has appeared in state and federal courts and in arbitrations throughout the United States.

Mr. Rabinowitz has lectured and participated on panels before the Bar Association of the City of New York, the American Bar Association, the Practicing Law Institute, the Institute of International Banking Law, the Copyright Society of the United States, the New Jersey Intellectual Property Law Association, the National Association of Recording Manufacturers, the Licensing International annual convention, the Professional Education Broadcast Network and the Massachusetts Software Council.  He has taught Copyright Law at Seton Hall Law School.  He is a member and former trustee of the Copyright Society of the United States.  Mr. Rabinowitz has published numerous articles which have appeared in Advertising Age, Entertainment Law Reporter, The Entertainment Publishing and the Arts Handbook, The Bulletin of the Copyright Society of the United States American Lawyer's Corporate Counsel Magazine and The Practical Lawyer.

Education

  • Columbia University School of Law, J.D., 1976, Harlan Fiske Stone Scholar, 1973-1976
  • Massachusetts Institute of Technology, S.B., 1972

Articles

  • "New York Resolves In-House Counsel Bar Admission Problem"
  • "Up Close and Professional with New York’s Engagement Letter Rules"
  • "Communications Decency Act"
  • "Non-Traditional Fee Arrangements and Doing Business with Clients"
  • "Everything You Ever Wanted To Know About the Copyright Act Before 1909"
  • "Web Site Story 6-Breakaway Employees Beware"
  • "Web Site Story 5-Emerging Limits to Out-of-State Jurisdiction over Web Sites"
  • "Web Site Story 4-Nationwide Internet Jurisdiction is not Ended by Blue Note"
  • "Web Site Story 3-The Emerging Tort of Domain Name Infringement"
  • "Web Site Story 2-Finding Yourself Subject to Jurisdiction Far, Far Away"
  • "Web Site Story-A Legal Primer for Web Site Owners and Designers"
  • "Copyright Preemption: New York State's Erroneous Interpretation"
  • "Copyright and Trademark Infringement: Current Techniques for Plaintiffs and Defendants"

Presentations – (last 10 years - most recent year for series)

  • 2017 Practicing Law Institute program, "Ethics for the Negotiating Lawyer"
  • 2017 Practicing Law Institute program, "Advanced Licensing Agreements"
  • 2016 Institute of International Banking Law Standby and Guaranty Forum and Law Summit, “Recent Letter of Credit Cases”
  • 2016 Practicing Law Institute program, "Understanding The Intellectual Property License"
  • 2016 New Jersey Intellectual Property Law Association, “Cases in Negotiation Ethics”
  • 2015 Practicing Law Institute program, “Outsourcing 2015: Sourcing Critical Services”
  • 2014, 2012, 2007 Copyright Society of the U.S.A., “Show Me the Money: The Essentials of Valuation of Copyrights in Transactions and Litigation,” "Basic Ethics for the Negotiating Lawyer," "Non-Traditional Fee Arrangements and Doing Business with Clients"
  • 2013 National Association of Recording Manufacturers, “Negotiation Ethics”
  • 2010 Professional Education Broadcast Network, “Ethics in Negotiations”
  • 2008 Licensing International - "Winning Ethics in Licensing"
  • 2007 Practicing Law Institute program, "Internet Law Institute"
  • 2007 CMJ Music Marathon and Film Festival, “Games Without Frontiers”
  • 2001-2004 Adjunct Professor, Copyright Law, Seton Hall Law School


Fayiaz Chaudhri manages the Infosys commercial legal team for the Americas. He has been working as a technology lawyer for the last 16 years and has worked and managed lawyers in a number of multinational organizations.  His vast experience in IT outsourcing is multi-jurisdictional. Having also completed an engineering degree, he is uniquely qualified to be able to comprehend and explain the practical realties of delivering IT services. During his career he has also been an industry representative in meetings with the government discussing proposed legislation affecting the IT industry.


Lynn Lugo is a Senior Corporate Attorney with QuintilesIMS, a leading integrated information and technology-enabled healthcare provider with approximately 50,000 employees conducting worldwide operations in more than 100 countries. 

Lynn joined QuintilesIMS in 2010 and is the lead technology transactions Attorney heading up the company’s global technology transactions practice providing support to corporate functions and commercial teams across the globe. She works with executives in support of strategic initiatives involving technology transactions and manages all legal aspects of technology transactions with providers, vendors and strategic partners.

Prior to joining QuintilesIMS, Lynn practiced with several top national law firms including Morgan Lewis and Dewey & LeBoeuf. She received her B.A. in Political, Legal and Economic Analysis from Mills College and a J.D. from the University of California, Berkeley School of Law (Boalt Hall), where she was an Editor for the Berkeley Technology Law Journal.  Lynn is licensed in NJ and FL and is a member of the ABA.

Lynn speaks Spanish, Russian, German and French, and served in the US Army, Military Intelligence Corps.


Michael Mensik is a partner with Baker & McKenzie LLP and a founding member of the firm’s Global Information Technology/Communications Law practice. Ranked as a leading Technology and Outsourcing attorney by Chambers, Mr. Mensik is described as “an expert in a variety of topics and knows the best person in every office around the world for your situation.” In 2009, he was inducted into the International Association of Outsourcing Professionals’ “Outsourcing Hall of Fame.”

Mr. Mensik was born in Buenos Aires, Argentina, and resided in Rio de Janeiro, Brazil, until 1964. He attended Stanford University (B.A., Economics, with distinction, 1976) and the University of California at Berkeley, Boalt Hall (J.D. and M.A., Economics, 1980). While a student, Mr. Mensik attended Pontificia Universidad Católica del Per? in Lima, Peru. He spent several years working at the firm's Madrid office in the 1980's. He is admitted to practice law in Illinois.


Gregg is currently the Global Head of Regulatory Relations, Compliance & Legal in Group Sourcing at UBS AG.  Previously, he was the Global Head of Outsourcing Legal, as well as the Americas regional lead for Data Management, Privacy, and IP litigation,  and served as the head of legal for UBS's captive service center in Nashville. Prior to joining UBS, Gregg practiced in the Patent and Litigation groups at Proskauer Rose in NY.  Gregg holds a B.S. in Electrical Engineering and Applied Mathematics from the University of Buffalo, and a J.D. from the George Washington University.  He is admitted to practice in NY and TN, and is registered to practice before the U.S. Patent & Trademark Office.