Meet the Speakers of ACI's Software Agreements Forum

Meet the Speakers

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Mr. Lothar Determann
Co-Chair
Partner
Baker & McKenzie LLP

Lothar Determann practices and teaches international technology,
commercial and intellectual property law.
As a partner with Baker & McKenzie LLP in Palo Alto, California, Lothar
Deter-mann’s practice covers counseling companies on taking their
products, data, intellectual property and contracts international, as well as
related commercial and compliance matters. Dr. Determann is admitted
to practice in Germany and California. He is recognized as one of the top
10 Copyright Attorneys / Top 25 Intellectual Property Attorneys in
California by the San Francisco / Los Angeles Daily Journal (2008 and
2010 respectively), listed in the World’s 250 Leading Patent and
Technology Li-censing Practitioners by the Intellectual Asset
Management (IAM) Magazine and ranked as a leading lawyer in
Chambers USA, Legal 500 USA and California Super Lawyers.
Prof. Determann has been a member of the Association of German
Public Law Professors since 1999 and he teaches Data Privacy Law,

Computer Law and Internet Law at UC Berkeley School of Law (Boalt
Hall, since 2004), Hastings College of the Law (since 2010), Freie
Universität Berlin (since 1994) and Stanford Law School (in 2011). He
frequently presents on international and intellectual property law topics
and he has authored more than 80 articles and treatise contributions as
well as 4 books, including Determann’s Field Guide to International
Data Privacy Law Compliance (2012) –
www.bakermckenzie.com/BKDetermanGuidetoPrivacyLawAug12/.
Tell us about yourself.
Besides practicing law, I try to keep fit with endurance sports and
finished the San Francisco marathon twice, the 2012 Vineman (full Iron
distance) and the 2013 Ironman Coers d’Alene. I love music and
frequently play piano, saxophone and guitar at Baker & McKenzie
functions. I also hold a German commercial and US private pilot’s
license and have logged more than 1400 hours as pilot in command
since 1994. I am also involved in academia and currently teach
Computer Law, Privacy Law, Internet Law and other subjects on the
intersection of technology and international law in Berkeley (Boalt Hall –
since 2004), Berlin (Free University – since 1994) and Hastings College
of the Law (since 2010). I have authored more than 90 articles and
treatise contributions and four books, including Determann’s Field Guide
to International Data Privacy Law Compliance.
What is a day like in your field?
Every day is different - which keeps my practice interesting.
I advise U.S. companies on their international expansion,
which brings about many diverse questions and projects,


What would you change in the industry?
I believe that the legal education system in the United States, in
particular costs for students and preparation for practice have to
change. Hastings’ Dean, Frank Wu, has published (and implemented)
good proposals.
including international regulatory surveys, structuring of distribution
models, localizing website documentation and dealing with various
disputes. In addition, I mentor students in the U.S. and Berlin, including
currently three doctorate students, and frequently organize, chair and
speak at legal conferences.

What do you like about working at your company?
My law firm, Baker & McKenzie, is truly global. We have offices in 45
countries and 75 cities. I enjoy working across geographies and legal
disciplines.
My law schools are top performers internationally: The Free University of
Berlin was founded to promote free legal studies and research at a time
when the City of Berlin was divided after World War 2. When I worked
on my doctorate and post doctorate thesis, I became enamored with
research from Berkeley - in particular the great Hans Kelsen. When I
moved to San Francisco in 1999, I lived a few blocks from Hastings
College of the Law and admired the focus on public policy and public
interest - and wanted to teach there; I taught at University of San
Francisco and Berkeley School of Law first, though, and moved 30 miles
away from Hastings to the Peninsula first before an opportunity to
contribute at Hastings arose; now I am happily teaching at Hastings, too,
and joined Hastings’ Innovation Law Institute as a founding member.

What is the tip/best practice you would like to share with your
peers?
The cloud and the move to service-based software commercialization
models are rapidly changing the landscape. Lawyers and companies
have to adapt. One topic where laws in the USA and Europe diverge is
what software transactions qualify as sales. In the United States, the
software industry has largely prevailed with its position that the
distribution of software copies does not qualify as a sale or trigger
exhaustion if an accompanying software license agreement is clear that
a sale is not intended. In the EEA, however, the European Court of
Justice held in July 2012 that software transactions involving a
permanent transfer of software copies for a fixed fee qualify as a sale
regardless of the terms of an accompanying license agreement (See
Importing Software and Copyright Law by Lothar Determann ).
It remains to be seen how the diverging positions on sales and
international exhaustion in Europe and the United States will affect
software distribution. Software manufacturers, distributors and platform
operators have to prepare for the unauthorized cross-border sale of
software copies that are licensed-only for US purposes yes
possibly sold in Europe.


necessarily affect the copyright owner’s reproduction rights - a position
that might concern access to software graphic user interfaces online in
the context of cloud offerings.

One way to avoid the associated uncertainties surrounding domestic
and international exhaustion is the move to service-based models.
Software-as-a-Service (SaaS) and other “cloud” offerings do not
typically involve sales-like terms and should not trigger exhaustion
under intellectual property laws anywhere. Cloud offerings will also not
usually pull the ‘distribution’ trigger in most commonly used open
source license agreements. Moreover, software that is locked away on
servers subject to very limited and restricted remote access cannot
easily be reverse engineered by competitors or pirated by
counterfeiters. Companies that offer their software functionality only as
a cloud service can also control interoperability quite effectively with
other software.
In the more traditional distribution model, courts around the world
applied various legal theories to allow copying, modification and
combination of software programs based on statutory carve-outs and
defenses such as the ‘fair use doctrine’ in the United States. In the
cloud context, however, software companies can fend off undesirable
combinations in reference to laws that prohibit unauthorized computer
access and interference as well as laws that prohibit the circumvention
of technical protection measures - given that any cloud combination will
involve access to servers running the software functionality. Of
particular interest in this respect is a recent decision in the United
Kingdom holding that accessing a webpage via the internet does not

Companies will have to adapt to the dynamics created by the cloud for
copyrights and its delicate balance of exclusion and public access rights
in the interest of furthering and commercializing information technology
innovations. A review of business models, technical protection measures
and contract terms is in order in light of clouds on the horizon for software
copyrights.


Mr. Adam Ruttenberg
Partner at Cooley
Business Dept.

ADAM RUTTENBERG is a partner in the Cooley Business department
and the head of the Firm's Technology Transactions Group. He joined
the Firm in 2000, and is resident in the Firm's Washington, DC and
Reston offices. Mr. Ruttenberg advises a number of leading technology
companies regarding the exploitation of their intellectual property
assets. His practice focuses on all aspects of technology transactions,
including counseling, structuring and negotiating such deals. Mr.
Ruttenberg has broad experience representing emerging companies
and large corporate clients in technology and intellectual property
matters. His strategic counseling experience includes developing
commercialization distribution and pricing strategies for companies. In
2006 - 2009 the Washington Business Journal recognized Mr.
Ruttenberg as one of the DC area's top technology transactions
lawyers.
From 2006 - 2013, Mr. Ruttenberg was named one of the Best

Lawyers in America. The Legal 500named Mr. Ruttenberg as a leading
lawyer in the field of technology transactions in 2008 - 2013. Mr.
Ruttenberg is currently listed as one of the world's leading patent and
technology licensing lawyers in the IAM Licensing 250 and the IAM
Patent 1000.
Prior to joining Cooley, Mr. Ruttenberg was the Vice President of
Contracts and Sales Operations of MicroStrategy Incorporated.
Previously, he had been in private practice representing technology
companies in information technology and biotechnology matters. Mr.
Ruttenberg received a JD in 1992 from Washington University in St.
Louis where he was a member of the Order of the Coif. He received a
BS in Genetics, Microcell Biology and the Philosophy of Science from
the University of Minnesota in 1989. Mr. Ruttenberg has published
numerous articles on business transactions, technology transfer,
intellectual property and internet law. He is also a frequent speaker on
these topics. Mr. Ruttenberg is a member of the bars of the
Commonwealth of Virginia and the District of Columbia.
Tell us about yourself:
I was born in Washington, D.C. and grew up in the Midwest. I went to
the University of Minnesota for my undergraduate studies and then went
on to Washington University in St. Louis Law School. I have been
practicing law in the Washington, D.C. area since 1992.

Each day for me is different and that is what I love about my
job. Some days I will be dealing with nuanced intellectual
property issues, others I will be dealing with the CEO of a

I am lucky tin that I get to work with many clients that share this
philosophy, but I know that this is not a universal view.

start-up on licensing models and still other days I will be in negotiations
all day. I get to deal with all types of technology and media, people and
size of companies.
Being at Cooley gives me access to some of the brightest and best
attorneys in the worlds. Working with these individuals along
with the culture of the firm dedicated to working with technology based
companies is unique and the support I get is what really makes working
at Cooley great.

What is the tip/best practice you would like to share with your peers?
An understanding that the allocation of intellectual property is sometimes
a complex exercise and that if people think through the ramifications of
the buzzwords carefully they will realize that they can have unintended
consequences. It is important to think through all of the implications of a
given ownership structure and make sure it aligns with the business
purposes of the parties.

If I could change one thing about the industry it would be the expectation
of speed. It was not that long ago that attorneys did not use cell
phones, e-mail and computers. I believe that while the use of these new
technologies is critical and helps bring efficiencies to clients, they also
bring a downside and that is a loss of civility and an expectation of 24X7
access and zero turnaround time. If everyone would slow down I think it
would bring back civility and attorneys and clients could take more time
to ensure that the relationship was as proactive as it should be. Not
everything is an emergency and not everything has to be done
yesterday. Sometimes, a slower and more thoughtful approaches better.

Mr. Kaminski is graduate of New York University with a B.A. degree in
Economics, and a graduate of Fordham University’s joint J.D./M.B.A
program. He is a member of the New York and New Jersey Bars.

Mr. Bert Kaminski
Assistant General Counsel
Oracle USA, Inc.

Bert Kaminski is a member of Oracle’s North America Legal
Department, and is the lead attorney globally for Oracle’s cloud
computing, software-as-a-service, outsourcing, and information
technology managed services businesses. Mr. Kaminski advises all
levels of business and executive management on a broad range of
technology-related legal issues, structures and negotiates complex IT
licensing and services transactions, and assists with the development
of global corporate practices for various lines of business.
Prior to joining Oracle in 2000, Mr. Kaminski was associated with
Rosenman & Colin (now Katten Muchin Rosenman LLP) in New York
City.
Mr. Kaminski is a member of the board of directors of the New Jersey
Corporate Counsel Association, and is co-chair of its Technology Law
Committee.

Tell us about yourself.
I’m a native New Yorker, having lived, worked and been educated in
and around New York City for most of my life. I like to be active in my
spare time, such as playing with my tennis group every weekend,
running in local 5K races, and hiking and biking with the kids locally and
in national parks during family vacations. My family and I make it a
point to visit some of the world’s natural wonders, having in recent
years been to the Yellowstone, Denali, Grand Canyon and Yosemite
national parks, as well as the Austrian and Italian Alps. One of my
favorite recent destinations was Halong Bay in Vietnam. This summer I
enjoyed playing a mix of classical, jazz and rock with a guitar
ensemble. Occasionally I will stay seated and read a book, having
recently finished Born to Run by Christopher McDougall.
I manage a team of attorneys across the United States that specializes
in cloud computing. We counsel all levels of Oracle executive
management, product development, sales and business operations on a
broad range of cloud related information technology and business law
matters. The team supports everything from the negotiation of
commercial transactions, to the preparation of cloud computing related
contract and policy templates, to helping senior management
develop global business practices for cloud computing.
Privacy and security issues are some of the hot topics that


we encounter in our practice area.

Oracle is a highly dynamic company, which means that my in-house
legal practice is similarly in a state of continual change and growth.
Although already one of the largest technology companies in the world,
not a month goes by without Oracle adding to its broad portfolio of
enterprise software, hardware, cloud and professional service offerings,
especially in the areas of software-as-a-service (SaaS), platform-as-aservice (PaaS), and infrastructure-as-a-service (IaaS). As the lead
attorney globally for Oracle’s cloud computing businesses, this highly
dynamic change and growth is what I like best about working at the
company.
Although the cloud computing industry is still in its early years,
companies are rapidly adopting cloud as part of their information
technology strategies. But as more companies move beyond their initial,
limited cloud deployments to implement a wider variety of services from
a number of cloud providers, cloud integration is posing an increasing
business challenge. Recent studies indicate that some 40% of
companies rely on custom coding to integrate their various cloud
applications and another 33% simply do not integrate their cloud

platforms. The lack of greater integration capability among major cloud
offerings in the market can introduce significant complexity in cloud
deployments, and therefore may increase the level of legal and
contractual risk between cloud customers and their vendors. This
increased risk may involve contractual and liability issues regarding
service warranties, service level compliance, data security and
availability, regulatory compliance, and application integration, scalability
and upgrades.
However, recent announcements of collaboration between cloud vendors
(such as between Oracle and Salesforce.com, Microsoft and Netsuite)
foretell a trend towards greater integration capability and cross-cloud
vendor support that will reduce complexity and risk in the cloud industry.
One practice tip I’d like to convey is that cloud computing is not IT
outsourcing. The major value proposition of cloud computing is that it
enables customers to access industry-leading technology and innovation
as a standardized service based on predefined platforms and
applications. This benefits cloud customers in a variety of ways, such as
through reduced IT complexity, lower upfront and total costs, rapid
implementation and deployment, greater elasticity and scalability, and
reduced requirements for operational and (if any) infrastructure
management. Although a cloud system is often highly configurable, it
generally consists of a common platform and infrastructure that is shared
across the cloud vendor’s customer base. The standardized nature of
cloud generally does not permit the service to be
customized to meet individual requirements of any one
customer. Cloud contracts reflect the standardization of the

service and therefore are not normally as open for negotiation as may
be the case with a contract for IT outsourcing services. Contracts for
IT outsourcing services are often highly negotiated given that such
services are typically custom built solutions that are specifically
designed to meet unique customer requirements.
If a prospective cloud customer is seeking to purchase highly
customized services under a heavily negotiated contract, the customer
may want to consider acquiring IT outsourcing services instead of
cloud, or consider acquiring a different type of cloud service that is
more suited to the customer’s needs. The cloud industry offers a wide
spectrum of choices for customers, including a variety of public, private
and hybrid clouds and mix of software-, platform-, and infrastructure-asa-service offerings.


Flip regularly speaks on various IP and IT topics and has published
several articles. He is on the editorial board of IRDI and is chief editor
of RABG, two leading Belgian law journals. Flip is member of various
national and international IP associations, including INTA and
MARQUES.
Mr. Flip Petillion
Partner at Crowell
& Moring Brussels

Flip Petillion is a litigation partner at Crowell & Moring Brussels. With
more than 25 years of experience, Flip's practice has been devoted to
IP, IT, media and communication, with a heavy emphasis on
International Dispute Resolution, IP litigation and counseling for corporate
clients in various industries.
Flip co-chairs the TLD and Domain Names practice that advises on TLD
applications and represents clients in disputes on new extensions. Flip
is arbitrator and panelist with WIPO, NAF, CAC (Czech Arbitration Court)
and CEPANI (Belgium's Arbitration and Mediation Center). He is an
official mediator with Cepina and WIPO.
Flip received his J.D. from K.U.Leuven University, magna cum laude, in
1987 and was admitted to the Brussels bar in 1988. Flip also obtained
postgraduates in international economic law, Dubrovnik University, 1988;
in telecommunications law, K.U.Leuven University, 1998; in
telecommunications, strategy and regulation, Ghent University, 1999.

Tell us about yourself:
I received my J.D. from K.U.Leuven University, magna cum laude, in
1987. I also obtained postgraduates in international economic law, in
telecommunications law, in telecommunications, strategy and regulation.
I regularly lecture on various IP and IT topics and have published
several articles. I am on the editorial board of IRDI and is chief editor of
RABG, two leading Belgian law journals.
In my spare time, I like to play golf and enjoy a nice glass of wine in my
garden. Once a year, I try to take a week off to discover beautiful
landscapes across Europe.
There’s no such thing as a ‘typical’ day in my field. Not a single day is
the same. As the Chair of the Brussels IP practice, I regularly have
meetings with my team members about ongoing matters in a variety of
fields. I regularly have conference calls with clients and study files in
which I act as counsel or arbitrator. In the evening I try to work on
publications and presentations. Today, I’m speaking at ACI’s conference
about license termination and contract re-negotiation.
Tomorrow, I’ll review my colleagues’ contributions to a
publication on my flight back to Brussels.

As I just pointed out, no single day is the same and this variety is exactly
what appeals to me the most.
Crowell & Moring Brussels has a strong Belgian and European client
base, and our US offices give me the opportunity to cross the ocean for
professional purposes. My colleagues are all outstanding legal
practitioners and there’s a good atmosphere between the people in
Brussels, London and the US.
The industry is constantly changing. Nowadays, we witness that parties
are becoming more and more litigation adverse, while being increasingly
demanding. This sometimes creates tension between contracting parties.
If agreements are not rightly balanced, parties often spend too much
effort in patching up a deal gone bad, rather than in focusing on the
underlying frustrations. Such can be avoided by focusing on balanced
and pragmatic escalation clauses.

better be prepared for that day. Termination clauses are often
neglected during contract negotiations, because everyone is excited
about starting with the new project. However, it is much easier to
agree on escalation procedures at the start of a project than when a
deal has gone bad and parties are positioning themselves in their
trenches.

Therefore, the first question that I ask myself when negotiating a deal
is: “How will I ensure continuity when the deal ends?” This is often
more important than defining the exact scope of the agreement at the
start of the agreement. Indeed, a contracting party will more easily
agree to add more services to a deal than to grant you more rights
when you want to walk away.
Therefore, don’t sign a deal if you don’t know how to walk away from
it.

My best practice is related to this, namely plan for termination when
negotiating the deal. This may seem counter-intuitive, but in a rapidly
changing society, everybody knows that a contract will end one day. You

ACI’s 17th Annual
The Practical and Tactical Art of the Deal in
Software Agreements - Cloud, SaaS, Open Source &
Licensing

Meet the Speakers of ACI's Software Agreements Forum

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