John Cummerford focuses his practice on the legal and business needs of established and emerging growth companies, with an emphasis on software, Internet, hardware and related businesses. He advises a wide range of clients in regard to technology-related transactions, including software licensing, product development, e-commerce, co-marketing, OEM and other arrangements. He has broad experience in complex licensing, manufacturing, distribution, development, due diligence and intellectual property audit transactions.
Prior to joining the firm, John was a principal in his previous firm and also managed that firm's information technology transfer practice. John also served as Vice President & General Counsel of Kaleida Labs, an Apple/IBM multimedia joint venture, and as Vice President & General Counsel of Candle Corporation, a large mainframe software company. He began his career as corporate counsel for IBM, responsible for handling licensing, development and marketing matters for the IBM personal computer and outsourcing lines of business. John's in-house legal experience has included a wide variety of practice areas, including antitrust, commercial, bankruptcy, corporate and employment law.
Areas of Concentration
· Intellectual property law
· Computer law
· Internet law
· Technology licensing
Professional & Community Involvement
· Board of Directors, Arizona Technology Council
· Board of Directors, Arizona Academic Decathlon Association, Inc.
· Board of Directors, Make-A-Wish Foundation of Arizona
· Board Secretary, Frank Lloyd Wright Foundation
Awards & Recognition
· Listed, The Best Lawyers in America, Copyright Law; Patent Law; Trademark Law, 2003-2014
- Named, "Phoenix Trademark Lawyer of the Year," 2012
· Listed, Managing IP Magazine's World IP Handbook and Survey, "IP Stars," 2013
· Listed, Super Lawyers magazine, Southwest Super Lawyers, 2007-2013
· Listed, Arizona's Finest Lawyers, 2011
· Recognized, Intellectual Asset Management (IAM) magazine, "IAM Licensing 250: The World's Leading Patent and Technology Licensing Practitioners," 2010
· Rated, AV Preeminent® 5.0 out of 5
· Advised on investment in RoseStreet Labs Energy, Inc. by Sumitomo Chemical.
· Advised on acquisition of IC Services by FlipChip International, LLC.
· Advised on stock sale of Dora Technologies International, Inc. by Fas-Co Coders, Inc.
· Advised on leveraged buy-out by Texas Pacific Group of Paradyne from Lucent Technologies.°
· Advised on intellectual property issues on numerous venture capital financings, private placements and IPOs.
° The above representations were handled by Mr. Cummerford prior to his joining Greenberg Traurig, LLP.
Publications & Presentations
Articles, Lectures & Publications
· Co-Author, "Keeping Your Secrets Secret: A Practical Guide to Company Security," BizAZ Magazine, July/August 2007
· Author, "Due Diligence: Getting it Done Before it's Due," BizAZ Magazine, May/June 2007
· Author, "How To Protect Your Products (and Do it Right)," BizAZ Magazine, March/April 2007
· Author, "What's in a Name? The Dos and Don'ts of Picking the Right Trademark (Without Breaking the Bank)!" BizAZ Magazine, November/December 2006
· Author, "If I'd Only Known...10 Popular Misconceptions About Intellectual Property to Learn Before it's too Late," BizAZ Magazine, September/October 2006
· Author, "Oodles of Googles...Cybersquatting is Down But Not Out Yet," BizAZ Magazine, July/August 2006
· Author, "Legal Blog Mines," BizAZ Magazine, May/June 2006
· Author, "Employee Blogs are Latest Web-based HR Issue," The Business Journal, March 3, 2006
· Author, "To Shred, or Not to Shred," BizAZ Magazine, November/December, 2002
· Author, "Danger Zone," Arizona Journal, State Bar Convention Supplement, June, 2001
· Author, "No Secrets," Arizona Journal, State Bar Convention Supplement, June, 2000
· Author, "Sig Alert on the Information Superhighway," BizAz Magazine, November/December, 1999
· Author, "Songs Online," Arizona Journal, July 19, 1999
· Author, "My Turn," (Law Gives House Key to Government), Arizona Republic Column, September 15, 1999
· Speaker, "IP Agreements for the Emerging Company," Arizona State Bar Association, Business Law Committee, May 2003
· Speaker, "Controlling Damages in Technology Cases," Arizona State Bar Association, Technology Law Committee, March 2003
· Speaker, PLI Advanced Licensing Agreements for the New Economy, New York, San Francisco, 2001
· Speaker and Co-Chair, National Business Institute: The Law of the Internet, Phoenix, AZ, 2000
· Speaker, Write Smart, 47th Annual State Convention, Arizona Press Women's Association, Scottsdale, AZ, 2000
· Speaker, PLI Advanced Seminar on Licensing Agreements, San Francisco, CA, 1999