Chad A. Rutkowski

Partner

Philadelphia
T +1.215.564.8910
F +1.215.568.3439

Overview

Chad Rutkowski helps clients protect their technology by leveraging the full array of intellectual property laws and through creative licensing techniques. Clients rely on him to help identify their IP, to build internal processes for its management, and to create licensing programs that enable full value realization. He further protects that value in disputes and litigation, whether through enforcing his clients' IP rights or fending off attacks by competitors. Giving special attention to categories of IP that are under-utilized by technology companies, Chad writes and presents regularly on the robust protections afforded by copyright law to software, data and related innovations. He counsels clients on creating a blanket of IP protection that includes, but does not rely exclusively on, patents, and he has helped his clients protect innovations in smart cities, population health management and online consumer lending.

Chad’s interest in the ways IP law has adapted to the internet and digital media began with the issues he faced as a founder and business manager of the digital media publisher that created the Ulysses Seen website and app. He contributes regularly to the firm’s Copyright, Content, and Platform blog, and is an active member of the Copyright Society of the USA. Chad is AV-rated by Martindale-Hubbell and has been voted by his peers as a Pennsylvania Super Lawyer and Rising Star.

Select Experience

Digital Media and Content Delivery
  • Serves as intellectual property counsel for 2U, Inc., a rapidly expanding young company that provides distance learning platforms and services for prestigious higher education institutions. In addition to helping 2U protect its intellectual property platform, he has helped draft and review numerous complex licensing deals.

Technology Platform Protection
  • Conducted an audit of client’s business practices to identify IP in technology firm enabling population health management, and designed best practices for IP development and management.

Intellectual Property Licensing Litigation
  • Developed copyright infringement and trade secret misappropriation claims against hold-over software licensee for unauthorized modifications to client’s virtual workspace software.

Intellectual Property Indemnification Recovery
  • Spearheaded the indemnification recovery efforts of a large wireless carrier in more than 100 patent infringement lawsuits since 2010. Helped develop processes to ensure timely notice and case updates to more than 200 potential indemnitors; established complex but transparent formulae for the allocation of responsibility across multiple technology fields; and increased both indemnitor tender acceptances and post-loss reimbursements for his client.

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Experience

Digital Media and Content Delivery
  • Serves as intellectual property counsel for 2U, Inc., a rapidly expanding young company that provides distance learning platforms and services for prestigious higher education institutions. In addition to helping 2U protect its intellectual property platform, he has helped draft and review numerous complex licensing deals.

  • Defended a client in copyright litigation against claims that photographs were used without permission on an audiovisual content menu guide.

  • Drafted licensing deal between audiovisual production company and retail brand client for development of over the top platform distribution.

  • Assisted video hosting company with development of content management best practices and DMCA compliance.

  • Helped client reach a favorable settlement in a copyright infringement assertion against an advertising agency that created an auto dealership marketing campaign on YouTube.

  • Successfully negotiated the resolution of an infringement claim by Facebook against a client, a provider of webpage layout services that allows users to customize their Facebook pages.
Technology Platform Protection
  • Conducted an audit of client’s business practices to identify IP in technology firm enabling population health management, and designed best practices for IP development and management.

  • Drafted multiple IP and IT licensing contracts for client’s provision of learning management system and student drop/fail/withdraw analytics software.

  • Drafted IP and IT licensing contracts for client’s development of smart cities project.

  • Drafted IP and IT licensing contracts for client’s retail data analytics and reporting software platform utilizing Tableau and other software products.

  • Pursued CFAA and breach of contract claims against data scraping company for losses experienced by client’s retail ecommerce website.

  • Assisted in client’s protection of IP assets in acquisition of technology-enabled consumer credit analysis firm.

Intellectual Property Licensing Litigation
  • Developed copyright infringement and trade secret misappropriation claims against hold-over software licensee for unauthorized modifications to client’s virtual workspace software.

  • Pursued trademark infringement claims against hold-over licensee for unauthorized uses of nutraceutical trademarks.

  • Pursued trade secret misappropriation and unfair competition claims on behalf of value added reseller of software solutions against competitor that engaged in corporate raiding activities.

  • Defended client against hold-over licensee claims of copyright infringement relating to alleged use of photographs in marketing and promotion of home improvement goods.

  • Obtained a high seven-figure settlement in a patent licensing dispute involving technology for the location of cell phone users over wireless networks.

  • Pursued International Chamber of Commerce arbitration proceedings in London relating to a breach of an exclusive trademark license agreement for the licensee's asserted failure to properly promote and increase the value of licensed nutraceutical trademark.

Intellectual Property Indemnification Recovery
  • Spearheaded the indemnification recovery efforts of a large wireless carrier in more than 100 patent infringement lawsuits since 2010. Helped develop processes to ensure timely notice and case updates to more than 200 potential indemnitors; established complex but transparent formulae for the allocation of responsibility across multiple technology fields; and increased both indemnitor tender acceptances and post-loss reimbursements for his client.

  • Successfully defended multiple clients against indemnification assertions, including a supplier of equipment used in polishing and finishing semiconductor wafers and the supplier of voltage metering equipment.

Recognitions and Memberships

Recognitions

  • Martindale-Hubbell: AV Preeminent
  • Pennsylvania "Super Lawyer" (2013 to 2014)
    • "Rising Star" (2010 to 2011)

Memberships

  • Copyright Society of the USA
    • Trustee and Executive Committee (2013 to present)
    • Philadelphia Chapter: former Chair (2012 to 2013)

Emerging Issues

Admissions

  • U.S. District Court, Eastern District of Pennsylvania
  • U.S. District Court, District of New Jersey
  • Pennsylvania
  • New Jersey

Education

  • J.D., Rutgers University School of Law, 1996
  • B.A., Rutgers University, 1993

Blog

In The Blogs

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Copyright, Content, and Platforms
Does Copyright Now Cover Functionality?
By Chad A. Rutkowski
March 24, 2017
On March 22, 2017, the U.S. Supreme Court decided the case of Star Athletica, L.L.C. v. Varsity Brands, Inc. regarding the scope of copyright protection for “pictorial, graphic or sculptural features” that have been added to useful...
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Copyright, Content, and Platforms
The Making Available Right Gets Transmitted to the U.S.
By Chad A. Rutkowski
December 15, 2016
In what appears to be the first instance of an express recognition of a “making available” right under the U.S. Copyright Act, a D.C. district court in Spanski Enters. v. Telewizja Polska S.A., Civ. Action No. 12-cv-957 (TSC), 2016 U.S...
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Copyright, Content, and Platforms
Not Dat Function, Dis Function
By Chad A. Rutkowski
October 5, 2016
  When we talk these days about the role of functionality in determining the copyrightability of a useful article, we are generally talking about the 10 different separability tests currently duking it out at the Supreme Court in the...
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Copyright, Content, and Platforms
Can Software Be Created As a Work-for-Hire?
By Chad A. Rutkowski
March 1, 2016
In early February a decision out of the Southern District of New York added another layer of dicta supporting the notion that software created by an independent contractor can qualify as a work-for-hire. In Stanacard, LLC v. Rubard, LLC...
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Copyright, Content, and Platforms
The Monkey in the Machine
By Chad A. Rutkowski
February 3, 2016
In 2011, a Celebes crested macaque took a shot that was heard ’round the world. In a jungle in Indonesia, it depressed the remote trigger button of a photographer’s camera, effectively taking a selfie. The “monkey selfie” has ignited a...
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