Alan is Chair of the firm's Global Intellectual Property & Technology Practice. An experienced business lawyer focused on commercial transactions with significant intellectual property and technology issues, Alan brings a practical, business-oriented approach to advising companies as they expand their use of new leading-edge technologies. He advises clients in connection with transactions involving the development, acquisition, disposition and commercial exploitation of intellectual property with an emphasis on technology-related products and services.
Alan also represents a wide variety of companies in connection with IT and business process outsourcing arrangements, strategic alliance agreements, commercial joint ventures and licensing matters. He has particular experience in Internet and electronic commerce issues and has been involved in many of the major policy issues surrounding the commercial development of the Internet. Alan has advised foreign governments and multinational corporations in connection with these issues and is a frequent speaker at major industry conferences and events around the world.
Areas of Concentration
· Intellectual property
- Worldwide intellectual property protection programs
- Patent, copyright and trademark licensing
- Trademark selection, registration and maintenance
- Copyright registration and protection strategies
- Protection of trade secrets
- Intellectual property due diligence in mergers, acquisitions, and financings
- Obtaining, recording and perfecting security interests in intellectual property
- Intellectual property audits
· Outsourcing Arrangements
- RFP preparation, response and assessment
- Service Level Agreements
- Data center operations
- Business process outsourcing
- Facilities management
- Offshoring issues
· Computer law
- Software protection and licensing
- Systems integration
- Software development agreements
- OEM, VAR and dealer agreements
- Joint and collaborative projects
· Internet and new media law
- Electronic publishing
- Privacy and defamation issues
- Online commercial ventures
- Taxation of online activity
- Domain name/trademark disputes
· Advertising, Marketing and Promotion matters
- Promotional games and contests
- Advertising review and compliance
- Advertising and promotional agency agreements
Professional & Community Involvement
· Board Member, International Technology Lawyers Association
· Vice Chair, Technology Committee, Inter-Pacific Bar Association
· Active participant in the 1996 international copyright treaty negotiations at the World Intellectual Property Organization in Geneva, Switzerland
· Chair, Internet Gambling Subcommittee of the American Bar Association Subcommittee on Cyberspace's Internet Jurisdiction Project
· Author of numerous articles
· Regular speaker to industry and bar association groups worldwide
· Frequently featured and cited in national newspapers and magazines on legal issues related to the Internet
· Member, Computer Law Association
· Member, New York New Media Association
· Member, American Bar Association
· Member, International Association of Privacy Professionals
· Member, Certified Information Privacy Professional (CIPP)
Awards & Recognition
· Listed, The Best Lawyers in America, Information Technology Law; Technology Law, 2005-2014
· Listed, Managing IP Magazine's World IP Handbook and Survey, "IP Stars," 2013
· Listed, Super Lawyers magazine, New York Super Lawyers, 2006-2013
· Listed, World Trademark Review, "WTR 1000"
- Ranked Bronze in New York, Prosecution and Strategy, 2013
· Listed, Chambers USA Guide, 2011-2013
· Team Member, U.S. News - Best Lawyers "Law Firm of the Year," Entertainment Law - Music, 2011-2012
· Recognized, IAM Licensing 250: The World's Leading Patent and Technology Licensing Practitioners, Intellectual Asset Management (IAM) Magazine, 2010
· Represented multinational corporations in complex domestic and international licensing transactions.
· Served as lead counsel in numerous IT and business process outsourcing transactions for major multinational corporations.
· Advised leading companies in connection with software development transactions, OEM, VAR and Dealer Agreements, and information services contracts.
· Counseled multinational corporations on various cutting-edge liability issues facing those doing business on the Internet, including electronic commerce, copyright infringement, domain name trademark disputes, defamation and privacy issues.
· Advised clients in the United States, Europe, Asia and Latin America in connection with online commercial ventures and multimedia electronic publishing.
· Advised governments and private stakeholders in connection with proposed electronic commerce legislation, including significant projects for the Government of India and the Hashemite Kingdom of Jordan.
· Represented numerous significant brand owners in connection with trademark and unfair competition issues, including selection and registration of marks, prosecution and defense of opposition proceedings before the U.S. Patent and Trademark Office and trademark and trade dress infringement actions in the federal courts.
· Advised both company and agency clients in the area of advertising, marketing and promotion law, including sweepstakes and other sales promotions.
· Reviewed national advertising and promotional marketing programs for a wide range of national and multi-national corporations.