Practice Strengths

The management of information technology is central to our clients’ successful businesses. At BakerHostetler, our national team of lawyers practicing in information technology law offers practical and timely advice to our clients who operate in all sectors of the economy. Our lawyers, who are recognized as leaders in their fields, offer decades of experience in advising on all types of information technology (IT) matters, e-commerce and media-related transactions. We were recognized as a top firm for technology and outsourcing in New York in the 2012 edition of Chambers USA: America’s Leading Lawyers for Business.

Our IT and Transactions Team is international in scope, providing counseling, negotiation, drafting and due diligence services with regard to mergers and acquisitions and joint ventures; non-disclosure agreements (NDAs); licenses; website terms, linking agreements and policies; joint development, contractor, supply, employment and escrow agreements; transfers; assignments; portfolio acquisitions; distribution agreements; appearance and location agreements; appearance releases; encrypted communications; Software as a Service (SaaS); cloud computing; open source audits and other IP and IT transactions involving businesses, government entities and academic institutions.

Our Team has negotiated, drafted and administered domestic and international IP agreements in such diverse areas as software, computer and semiconductor technology, consumer products, industrial tools and equipment, databases, industrial products and services, consumer goods, aeronautic equipment, pharmaceuticals, music, film, television programming, advertisements, printed and digital media, cartoon characters and architectural works. We have negotiated the sale and purchase of valuable domain names for our clients and advised on online advertising methods.

Our Team counsels on legal and regulatory harmonization and risk assessment of cloud computing. We help design and draft Acceptable Use Policies (AUPs) and website terms and conditions, as well as Internet content licenses. We are regularly called upon by general M&A lawyers to conduct the IP asset portion of the due diligence for large acquisitions. We perform due diligence related to the transfer of IP assets pursuant to stock and asset acquisitions, divestitures, mergers and licensing arrangements. We also handle negotiations with respect to such transfers of IP and draft appropriate grant language for inclusion in the sale agreement. We structure assignment documentation to transfer the IP assets involved in such transactions and record documentation in various patent and trademark offices worldwide, the U.S. Copyright Office and other appropriate forums. We draft ancillary agreements in connection with the transfer of IP pursuant to an acquisition or divestiture, such as licenses, outsourcing and independent contractor agreements, joint development agreements, joint venture agreements, supply agreements and distribution agreements.

We counsel both content- and distribution-sector clients on related issues beyond the transaction itself, including user-generated content, authors’ rights of recapture, chain of title issues, personal data transfer, rights of privacy, terms of use, the DMCA hosting exemption, open source matters and regulatory compliance.

Our Team focuses on the core of an outsourcing transaction, including service agreements and statements of work, as well as less tangible aspects such as risk assessment, vendor relationships and market trends. Our attorneys provide guidance through all phases of the transaction, including:

• Identifying onshore, near-shore and offshore options
• Analyzing marketplace conditions and situational risks
• Developing requests for proposals (RFPs)
• Vendor selection
• Contract negotiation/modification
• Contract termination
• Vendor transition

Recognizing the complexity of these transactions, we have assembled a team of experienced practitioners well-versed in the areas of law that are most relevant to outsourcing deals, including corporate, employment, tax and regulatory.

The widespread use of the Internet and electronic data transfers in daily life has caused heightened concern over data privacy and security. Our lawyers regularly advise clients on privacy and data security compliance, draft data security and privacy policies, and assist in planning for data security breach events. We advise clients in complying with the Digital Millennium Copyright Act for those whose websites accept user-generated content, as well as the Children’s Online Privacy Protection Act for those websites oriented to children.

Internet- and Technology-Related Disputes

The complexity of technology systems and the high value of the intellectual property underlying software applications, domain names and content often lead to industry disputes. We bring years of experience to the analysis and evaluation of these conflicts. Rather than reflexively pulling a litigation trigger, our lawyers offer thoughtful strategies as to possible early settlement and fair resolutions of disputes. If court proceedings or trials are called for, we offer skilled and tested advocacy in state and federal courts across the United States and in private mediations or arbitrations. Our lawyers have represented clients in disputes relating to software, domain names, Internet content ownership, failed outsourcing transactions, defective computer equipment or components and theft of trade secrets. We have argued landmark cases that have shaped the field of computer industry contracts. Our litigation teams are lean, efficient and industry savvy.

Multi-Source Agreements

BakerHostetler has strong experience counseling clients on the development of a variety of technology-related contracts and agreements. We ensure that agreements with other parties are carried out in a manner that protects our clients’ interests while still encouraging growth and innovation through beneficial affiliations and relationships.

Offshore Transactions

In conjunction with our outsourcing work, we have handled numerous offshore transactions and have strategic alliances with law firms and other jurisdictions to assist on these matters as necessary.

Software as a Service (SaaS)—Licensing and Maintenance Transactions

Our Team advises, negotiates and drafts software licensing and maintenance agreements; consulting and development agreements; and SaaS Agreements. Our lawyers represent licensee/purchasers and licensor/vendors in IT transactions, giving them unique insight into transactional practices and potential adverse strategies and allowing them to counsel clients in negotiations and best practices. Our attorneys have developed a collection of forms for many of the standard IT transactions, thus avoiding the need to “reinvent the wheel” for each transaction.

Cloud Computing

Our lawyers are familiar with the transactional documents and unique legal issues relating to Cloud Computing. We have the experience to negotiate agreements for SaaS, Platform as a Service (PaaS) and Infrastructure as a Service (IaaS). We are also able to counsel clients on the unique privacy and data transfer issues relating to Cloud Computing.

Open Source

BakerHostetler attorneys regularly advise clients on the implications of using open source software as part of their IT solution. Our attorneys have experience with the most commonly used open source agreements, including the GNU General Public License, Apache, BSD and the MIT forms.