The SIIA is delighted to introduce the newest member to join SIIA’s Software & Services Division, Neff Law Firm, a technology law firm specializing in international law, technology, intellectual property transactions, trademark. I had a chance to sit down with Richard Neff, President of Neff Law Firm. Please find my interview below.
Rhianna: Tell us a little about Neff Law Firm and what makes your firm unique.
Some sample transactions include:
- We served essentially as outside general counsel to Lynda.com for various years, now part of LinkedIn, which is being acquired by Microsoft. A key part of this position, other than helping to design templates for content deals with authors, and for distribution of the Lynda online library, was providing day-to-day copyright counseling to the film/video production team
- For nearly a decade we handled all Latin American transactions/matters for the Brazilian and Mexican subsidiaries of Informatica Corp. of Redwood City, a publicly owned data software company, drafting and negotiating deals and license transactions in Spanish and Portuguese.
- For nearly a decade we supported the Cloud team at Informatica, handling more than 100 Cloud deals for the inhouse Cloud lawyers, and preparing templates for use
- For many years we have handled Latin American transactions for Logitech, as well as international warranty issues under worldwide warranty and consumer laws
- We have handled various successful international M&A transactions for European clients in the technology and media space, including selling the largest European online poker platform in a very complex transaction to Bally Technologies, and selling a top European games app developer to Zynga
- We have managed an internal software audit for a client that is an international arbitration and mediation organization, under audit by a large enterprise software company, to a successful resolution
- Various startup formations and rounds of financing for startups
Rhianna: Why are anti-piracy programs so important for software companies conducting business overseas? And what strides has Neff Law Firm made in this area?
Richard: Neff Law Firm is known as a leader in antipiracy efforts, in part because its predecessor firm, Neff Law Group, managed most Latin American antipiracy programs from 1992-2005 for the Business Software Alliance on behalf of Microsoft, Symantec, Adobe, Autodesk, Apple, Novell and many other companies. We managed much of the litigation in the region, and also played a leading role in many policy issues, from drafting and lobbying for copyright and software laws to protect the technology industries, with amazing success, to meeting with governments at the Cabinet and Sub-Cabinet levels to obtain government legalization of their software throughout government agencies. We also ran significant antipiracy programs for the Association of American Publishers (AAP) in various Latin countries, and for the Interactive Digital Software Association, the precursor to ESA. During this time period, the legitimate software market in Latin America went from a tiny number to a billion-dollar industry. So we were at the forefront of one of the most successful antipiracy efforts in history, not only using both carrots and sticks to ensure respect for intellectual property rights, but changing the laws and ensuring the success of the US technology industry on a global basis.
While times have changed, and we have not recently run a major country antipiracy program, we have assisted various companies on anti-piracy issues. For example, we handled many matters for Lynda.com, including international UDRP proceedings, and successful DMCA notification and takedown proceedings against infringing websites and content. We have done DMCA proceedings for a number of technology and media customers. So we maintain our effectiveness in various aspects of copyright and trademark antipiracy.
Rhianna: How important is intellectual property knowledge for software businesses, namely start-ups?
Richard: On Neff Law Firm’s website, www.nefflaw.com, the Blog contains a very useful entry called “Startups need to Protect Intellectual Property” which was also published throughout California in the Daily Journal. It explains that the right IP checklist can prevent serious and costly problems down the road. For example, why obtain a domain name you love, if you cannot obtain the trademark rights to the name? In this situation, once you obtain some value and recognition in the name, you are likely to face a cease and desist letter from the trademark owner. Therefore, if a startup wishes to plan for success, it needs to make some intelligent IP moves right from the start. Microsoft went from being a garage startup to a blockbuster in part because it purchased ownership of what became MS-DOS, and then refused to give mighty IBM an exclusive license to it. And without Nondisclosure Agreements, your groundbreaking concept might be at risk of being stolen or imitated. We handle all of these details for startups, if they are able to pay for the initial steps that can ensure future success.
It is worth mentioning that a big change in the software industry over the past several decades has been the rise of open source or “free” software. Many of my clients offer OSS software, plus paid support, or software that combines open source and proprietary components. Another development has been the rise of Cloud computing (SaaS/PaaS, etc.), and of subscription license models instead of perpetual software licenses.
Rhianna: How has managing trademark portfolios and trademark and service mark registrations changed with the move to SaaS solutions and cloud solutions.
Richard: Trademark databases required for searching trademarks and proposed trademarks and obtaining necessary information for advising clients is much more accessible today, in part because of the proliferation and ease of use of Cloud-based solutions. This has very much accelerated the rate at which trademark counseling and prosecution can be done.