Technology Transactions
Benesch’s nationally recognized Intellectual Property Practice Group houses the firm’s Information Technology Transactions, Intellectual Property, and Global Data Security and Privacy practices, each of which is instrumental to our ability to effectively represent clients in the area of technology law, software, SaaS and other forms of BPO transactions, all of which requires a depth and breadth of experience in each of these critical areas.
Our Intellectual Property Practice Group includes approximately 30 professionals, several of whom are PhDs and have worked as scientists or engineers. Several of our Intellectual Property team members are CIPP/US certified as well. We regularly assist global companies with their needs as trusted outside legal counsel and provide counsel to our clients regarding complex, high-value technology transactions opposite the largest and most well-known technology, software, cloud, SaaS, IaaS, PaaS, and systems implementation and integration vendors in the world.
We have worked on the most sophisticated, high-value technology deals and have helped companies in the telecommunications industry in connection with their most significant “bet the company” technology transactions. Our work involves a wide range of BPO transactions involving SaaS, PaaS and IaaS platforms, SaaS based systems implementation and integration deals (including multi-site cloud ERP, CRM, VOIP and ECM implementation transactions), eCommerce, development, reseller, professional services, service level, telecommunications, network services, equipment purchases, support and maintenance, managed security services agreements, the preparation of EULAs, and the preparation of, and coordination with, privacy policies and records retention policies.
We believe that we work on more technology transactions including business process outsourcing (SaaS, IaaS and PaaS), and related agreements than competitor firms. We are most often called upon to take a holistic approach to our clients’ technology transactions needs, which necessitates that we understand and incorporate cybersecurity and data privacy into every transaction on which we work. Unlike most general practice firms, our data security and privacy practice is fully integrated into our IP and technology transactions practice and, as a result, we bring our extensive experience in the cybersecurity and data privacy areas to every BPO and other technology transactional engagement.
We have successfully negotiated numerous complex, high-value technology, BPO and other SaaS based systems implementation and integration transactions worth hundreds of millions of dollars in the aggregate for large private and publicly traded companies involving the world’s largest software and systems integration firms including transactions opposite Accenture, Deloitte, PwC, Cognizant, SAP, salesforce.com, KPMG, Tata Consultancy, Wipro, HealthEdge, Verizon, QAD, Sterling Commerce, Workday, Oracle, Netsuite, Involta, Amazon Web Services, Microsoft Azure, and many other national and international vendors of outsourced IT services.
At Benesch, we not only serve as a day-to-day resource on legal and technology issues, we assist clients in developing business plans, licensing models and intellectual property portfolio strategies that meet their short-term and long-term business objectives. We have handled countless licensing transactions involving the most advanced technologies. We are able to leverage our knowledge of intellectual property, technology, finance and corporate transactions to provide exceptional business-focused legal advice in relation to these complicated transactions.
Our technology transactions capabilities include:
- Negotiation of IT related agreements related to software licenses, software support, professional services, implementation services, master services, disaster recovery, data hosting, infrastructure services, and cloud technologies such as software as a service, platform as a service and infrastructure as a service.
- Due diligence and control audits related to the data security and privacy controls of third parties processing data.
- Negotiation and structuring of all elements of M&A transactions involving intellectual property and technology assets.
- Due diligence and assistance related to the transfer of IT assets and intellectual property in connection with corporate transactions
- Particular experience with complicated divestitures and spin-outs, patent sales, complex licenses for transferred and retained intellectual property rights, contract R&D arrangements, and rights of first refusal for retained technology and intellectual property assets.
- Co-marketing agreements, referral agreements, strategic alliance agreements, distribution agreements, manufacturing agreements, sales agreements and invention agreements.
- Extensive experience developing website and application (including mobile applications) terms of use and privacy policies.
Experience
- Represented Noble Rock Software in its strategic investment in Energy Worldnet, a leading provider of legally mandated Operator Qualification SaaS solutions for the gas pipeline, utility, and telecommunications industries.
- Handled transactions on behalf of clients with national and international hardware, software, systems and medical device/life sciences companies.
- Representing a major healthcare technology company in several information technology implementation transactions involving transformative systems with major national and international vendors.
- Represented Cleveland-San Jose Ballet regarding private equity investment and resolving various copyright issues, public television issues, and Musicians’ Union issues concerning staging of “Blue Suede Shoes”.
- Routinely negotiate publisher agreements, management agreements, record company agreements, producer agreements of all shapes and sizes.
- Assisted OverDrive, Inc. in rolling out music offering to all public libraries in network.
- Represented Elevation Group of Companies in producing a PBS documentary film about Irish music (features performances by six Grammy Award winners, Academy Award and Golden Globe winners, three Rock and Roll Hall of Fame music inductees).
- Represented Global Tel Link* Corporation in a number of music streaming and technology licensing agreements.
- Represented Internet music streaming consummate merger with a potential competitor.
- Represented Alternative Press in negotiating sponsorship agreements with major beverage company.
- Represented Belkin Productions consummate deal with Live Nation.
- Represented several companies in developing e-commerce and web site privacy policies/terms and conditions.
- Represented Vita-Mix Corporation in domain name and trademark infringement matters.
- Represented Elevation Group of Companies in various concert and personal management agreements (including Red Sun Rising and the Trinity Cathedral Concert series).
- Represented holding company of bakery goods and intellectual property in sale of company.
- Represented Fitness Question in book deal.
- Represented logistics software company in a number of licensing deals.
- Represented ringtone provider in clearing music rights for catalogue.
- Represented Turning Technologies in a number of licensing matters.
- Negotiated record deals and music publishing deals for several artists, with significant advances.
- Represented Sherwin-Williams in “App” development agreements.
- Represented Cleveland Public Library in connection with the licensing of software among a consortium of Ohio libraries.
- Represented a major production company in licensing music to Electronic Arts for use in Madden VII video game.
- Represented investment company in consummating deal with film company.
- Designed technology evaluation agreements for LCD technologies.
- Designed and implemented document retention programs for companies.
- Represented Elevation Group of Companies in consummating exclusive sponsorship agreements for its ORCHESTRA series (Jewel, Counting Crows, etc.).
- Served as lead outside counsel to a major international tire and diversified products manufacturer in connection with a multimillion dollar business process outsourcing transaction with Salesforce.com to provide and implement SaaS.
- Served as lead outside counsel to a major international polymer manufacturer in connection with a multimillion dollar business process outsourcing transaction with Sterling Commerce to provide and implement SaaS and IaaS.
- Served as lead outside counsel to a major, international tire and diversified products company in connection with a $180 million technology services transaction with Verizon for the provision of all network services in the western hemisphere.
- Served as lead outside counsel to a major, international, publicly traded manufacturer in connection with a multimillion dollar business process outsourcing transaction with SuccessFactors to provide IaaS for the storage of worldwide employee data.
- Served as lead outside counsel to a major international steel products company in connection with mobile application licensing on all major platforms (Amazon, Google and Apple).
- Served as lead outside counsel to a major, international, publicly traded manufacturer in connection with a large scale IaaS implementation transaction with Amazon Web Services.
- Served as outside counsel to a Cleveland-based electrical parts distribution company in connection with a major ERP software license transaction with a major international software vendor.
- Counseled clients on licensing and assignment issues.
- Successfully represented a regional concert promotion company in a sale of substantially all assets to a national concert promotion and radio company.
- Represented a concert promotion company in connection with drafting and consummating a multi-million dollar exclusive sponsorship agreement.
- Represented a client in the sale of its trade show division.
- Represented major energy drink product companies in the negotiated of various sponsorship agreements.
- Representation of several independent record companies in drafting form recording agreements and in negotiating and consummating recording agreements with both emerging and establishing musical artists.
- Representation of various music production companies in drafting, negotiating, and consummating agreements with musical artists.
- Representation of major consumer products company in negotiating various infomercial music composer agreements.
- Provided general business counseling to a variety of streaming media companies and other Internet technology companies.
- Representation of investment company in drafting, negotiating, and consummating stock purchase agreement for investment in film production company.
- Representation of major record labels in obtaining judicial approval of minority recording agreements for international recording artists.
- Representation of music publishing and record company in drafting, negotiating, and consummating Internet download and streaming licenses with major cable company for selling and streaming musical compositions and sound recordings.
- Representation of music publisher in completing intellectual property audit and attending to remedial issues uncovered by same.
- Representation of various Internet music, media, and entertainment companies in drafting streaming and distribution agreements, and in providing general copyright and trademark counseling.
- Representation of various music and media companies in drafting, negotiating, and consummating Internet web site development agreements.
- Representation of major musical artist in negotiating with symphony orchestra, concert promoter, and concert sponsor, concert performance agreement featuring musical artist and symphony orchestra (and recordings of same).
- Representation of major musical artist in negotiating product endorsement agreement with major telecommunications company.
- Representation of start-up orchestral print company in negotiating licenses from music publishing companies for "motif quoting" in symphonic works.
- Representation of music publishing company in early-stage discussions regarding Broadway production.
- Representation of orchestras in drafting, negotiating, and consummating orchestral concert performance agreements with contemporary musical artists.
- Representation of songwriter in procuring and negotiating worldwide music publishing deal with major music publishing company.
- Successfully obtained judicial approval of contracts with minors for several major labels.
- Representation of documentary film production company in negotiating rights and licenses for production of major musical artists' film documentaries, and public television broadcasts of same.
- Representation of musical artist management companies in drafting, negotiating, and personal management agreements with musical artists.
- Representation of several musical artists in negotiating and consummating recording agreements with independent and major recording labels.
- Representation of major musical artist in negotiating anniversary concert with major concert promoter.
- Representation of angel-financing funded music and media business with proprietary patent technologies in a general counsel capacity.
- Representation of investment group procuring and evaluating musical assets investment opportunities.
- Representation of major organizer, producer, and promoter of multiple live concert events in negotiating and consummating $5 million concert and television sponsorship agreement with corporate sponsor.
- Representation of major ballet company regarding obtaining private equity investment and resolving various copyright issues, public television issues, and Musicians' Union issues, concerning successful stage and video production.
- Quarterbacked launch of new beer affiliated with nationally-known rock singer.
- Representation of major music magazine regarding various licensing and co-branding deals with major music publishers and record companies, podcasting issues, freelance agreements, and libel and copyright issues.
- Representation of leading sports, entertainment, cultural and leisure sponsorship and event management agency in drafting major rock and roll institution anniversary concert.
