EXPERIENCE

Major Practice Areas:

  • Technology/Software Licensing and Transactions
  • Internet and eCommerce Counseling and Transactions
  • Data Protection and Privacy including GDPR, CCPA, Privacy Shield
  • Mergers & Acquisitions, Dispositions, Asset Sales
  • Intellectual Property Counseling and Transactions
  • International Law and Issues [sometimes using international network]
  • Start-ups, Early Stage & Emerging Growth Companies: Formation, Growth
  • Trademark Registration and Counseling, Docket Management, Applications, International Registration & Portfolios, Disputes
  • Latin American Legal Issues and Expansion
  • Copyright, Fair Use, Content and Antipiracy

For a more detailed breakdown and description of the areas of law in which we practice:

MERGERS & ACQUISITIONS

  • 2019-20: Neff Law Firm worked with Rimon Law Firm to help complete the sale of data cataloging software publisher Waterline Data Software to Hitachi Vantara (asset sale), which closed In January 2020.
  • 2019: Neff Law Firm represented Avantica Technologies of Mountain View, California and its international affiliates (Costa Rica, Peru, Panama, Colombia) in this acquisition by Indecomm Corporation and affiliates (represented by Wilson Sonsini), giving Indecomm a major footprint in Latin America in the work-for-hire development of technology, a deal which closed in December 2019.
  • 2019: Neff Law Firm was US counsel to 231 Play GmbH, a German games developer, working with CMS Hasche Sigle (Berlin) in the representation and sale of 231 Play GmbH to Los Angeles-based Jam City, represented by Taylor Wessing (Berlin), a deal which closed in April 2019
  • Neff Law Firm assisted lynda.com in the 2014 acquisition of the media assets of Gainshare dba Interface TT, and with the license agreement regarding certain assets not being acquired.
  • Neff Law Firm represented his German games/App developer client, Gamedoctors, which was the creator of Zombie Smash, the Number 2 grossing App on Apple’s App Store, in the sale of the company to Zynga, and employment of key Gamedoctors developers by Zynga in Germany and the United States. The deal involved both cash and stock, and various complex issues were triggered by its international aspects.
  • Neff Law Firm represented its client Alexandre Dreyfus, perhaps the leading light in the European online gaming/poker world, and his companies Chilipay Limited of Malta and Mediarex Internacional of Costa Rica, in the sale of Mediarex’s proprietary B2B igaming software platform to Bally Technologies of Las Vegas, Nevada.  Certain other assets also were sold to Bally, and numerous employees of Dreyfus’ companies accepted employment with Bally Technologies, either overseas or in Nevada.  This cross-border transaction had considerable complexity arising from the laws of the various jurisdictions that were involved, including Malta, France, Costa Rica and Nevada. 
  • Neff Law Firm represented Alexandre Dreyfus and his company Zokay Investments Ltd. in the purchase of the world’s top poker ranking system, Global Poker Index (GPI) and related intellectual property, from Pinnacle Entertainment of Las Vegas.  In the transaction, Pinnacle obtained certain license and marketing rights.  The GPI ranks the top 300 live poker tournament players in the world, and is updated weekly.  Dreyfus plans to enhance the GPI and expand it into various awards categories.  GPI had recently acquired GPI in a Maryland bankruptcy auction from Federated Sports & Gaming, in which Zokay also participated, represented by Neff Law Firm. 

DATA PROTECTION AND PRIVACY

Over the past several years, with the growing awareness of international privacy requirements as well as more stringent US legislation, privacy and data protection have become a key component of our practice. We are very involved on behalf of our clients in the following issues:
  • GDPR (European Union’s General Data Protection Regulation), which affects all companies which collect the personally identifiable information (“personal data”) of European residents; we have assisted many US clients to become GDPR-compliant, including updating their Privacy Policies.
  • Privacy Shield Frameworks: European Union-U.S. and Swiss-U.S. Privacy Shield Frameworks, agreed between the US Government and administered by the Department of Commerce/International Trade Administration: we have taken numerous companies into Privacy Shield, including JAMS/Endispute, eSalon.com, V-MODA and SnapLogic, which facilitates the onward transfer of personal data from Europe to the United States. Now we are handling annual renewals for most of them.
  • Data Processing Agreements (DPAs): We have worked on many DPAs when required by clients or by parties in a contractual relationship with our clients, which enable personal data transfer between Europe and companies in the United States.
  • California Consumer Privacy Act (CCPA): We have been asked by many clients to update their Privacy Policies to cover California’s tough personal data law, which took effect on January 1, 2020. In some key respects it differs from GDPR, although both give new rights to personal data subjects.
  • Other Countries Privacy Laws: We have helped various multinational companies comply with other countries’ legislation, not merely doing surveys of worldwide laws, but updating Privacy Policies and practices to meet the requirements of such laws as Mexico’s Federal Law on the Protection of Personal Data Held by Private Parties (“LFPDPPP”) and Brazil’s new General Data Protection Law “LGPD”), inspired by GDPR, which effective in August, 2020.

LICENSING, TECHNOLOGY AND MEDIA TRANSACTIONS

  • SnapLogic, Inc. (San Mateo, CA): Handled many platform licensing and international distribution/reseller and OEM agreements for this big data integration software platform for software and apps from spring 2017 until the present, including with medium and large enterprises in the United States and Europe. Successfully resolved several disputes and collection issues.
  • Spatial Systems, Inc. (New York, NY): Principal external counsel for this revolutionary Augmented Reality software company that facilitates collaboration at work and elsewhere, 2019 to the present, handling a variety of license deals.
  • Waterline Data Software, Inc. (Mountain View, CA): Handled virtually all licensing deals for this data cataloging software company from the fall of 2015 through 2019, including with such enterprises as Airbus SAS, US Bank, Westpac Banking Corp. (Australia), Commerzbank AG, Mars, Nordea Bank, McDonald’s, Experian, Sun Trust Bank, Fannie Mae, Royal Bank of Canada, Kaiser Permanente, Honeywell, Creditsafe, Wyle Labs/NASA, Bayer, AIG, GSK, DXC Technology, New York Life. Also completed various OEM and VAR Agreements, and numerous distribution agreements.
  • Associated Production Music: APM Music: For world’s largest production music library, prepare most music licensing templates and negotiate various music license, genre/search deals, synchronization license and distribution deals with a variety of companies since 2012:
    • Roblox: Handled complex music license for synchronization by this massively multiplayer online video game and game creation system;
    • Music Reports: Helped draft and negotiate a Platform License Agreement to facilitate generation and management of music cue sheets.
    • SearchCo: subscription agreement with music search service; Cumulus/Radio Networks Music License Deal for one of largest radio networks; Music Showcase Agreement with proTunes to offer online access to Omnicom Group, its affiliates and agencies to obtain musical compositions for use; CometAds Use and Synchronization Agreement; Fox Sports/Cable Music Library Agreement
  • Informatica Corporation of Redwood City, CA: Handled all of Latin American transactions mostly in Spanish and Portuguese for over five years, supporting Informatica’s Brazilian and Mexican subsidiaries. Transactions include a variety of professional services (development) deals, software license transactions and support services agreements and distribution deals with a who’s who of Latin American companies, including:
    • BRAZIL: HP Lease Financing (negotiated HP software lease financing documents for use in Brazil); Banco Volkswagen; Claro; Embratel; CAIXA EconômicaFederal; Cielo; Vale; Accenture; Oi-Telemar; Brasil Telecom; MetLife Brasil; Wal-Mart Brasil; TV Globo; Rede Globo; Alelo; Banco Santander; Liberty Mutual Seguros; Usiminas; ArcelorMittal; Bradesco; Telefonica-VIVO; Xerox Brasil; Odebrecht
    • MEXICO: HP Lease Financing; Volkswagen de México; MetLife México, PricewaterhouseCoopers México; Banco Santander; Grupo Elektra; Corporativo Bimbo; Grupo Salinas; Government of State of México; Government of State of Guanajuato; Coca Cola Sucursal
    • OTHER: BBVA Venezuela; Equifax Centroamérica
  • Informatica Corporation: Handled numerous Cloud Agreements; Software-as-a-Service: Informatica Cloud Service: helped prepare some of the template subscription service agreements used by Informatica for its highly successful Cloud Service, and negotiated Cloud deals, some also involving software licenses, including with:
    • CVS; Dow Jones; Quest Diagnostics; American Express; ING North America Insurance; Boehringer Ingelheim; CIBC; Amazon; The Weather Channel; Prudential; Bechtel; Nike; Bank of Tokyo; Johnson & Johnson; AIG
  • Logitech: advise Logitech on its reseller and distribution deals in Latin America, and other Latin American matters, including deals with: RadioShack Mexico; Liverpool Mexico; OfficeMax México; Office Depot México
  • Box.com: Drafted Distribution and Service Agreement with HP
  • Nativ Limited: For UK software publisher of MioEverywhere, a media logistics platform that enables management of end-to-end content processes, negotiated license agreement with Vubiquity, and OEM and reseller agreement with Ooyala.
  • Associated Production Music: APM Music: For world’s largest production music library, prepare most music licensing templates and negotiate various music license, synchronization license and distribution deals with:
    • SearchCo: subscription agreement with music search service; Cumulus/Radio Networks Music License Deal for one of largest radio networks; Music Showcase Agreement with proTunes to offer online access to Omnicom Group, its affiliates and agencies to obtain musical compositions for use; CometAds Use and Synchronization Agreement; Fox Sports/Cable Music Library Agreement
  • Video Copilot: Draft and negotiate Action Movie FX App production deal with Bad Robot Entertainment; Prepare technology license agreement for VideoCopilot.net website; Negotiate software license with Industrial Light & Magic, a division of Lucasfilm Entertainment
  • Irvine Company: Negotiate digital film projection Master Administration Agreement with Sony Electronics on behalf of Island Cinema
  • Avantica: international software development company for technology companies: helped draft and negotiated master services agreements with: Paciolan, salesforce.com,
  • National TeleConsultants: for this market leader in IT design, consulting and implementation services for media and entertainment industry giants:
    • Negotiated elaborate new material and services agreement with AT&T
    • Negotiated professional services agreement with PBS/NPR.
  • lynda.com: world’s leading video training producer and website: license and employment transaction with Page Lab dba Before & After.
  • Handled legal aspects of a complex licensing scheme for a prominent studio, which implemented a system to transmit movie trailers over an extranet to those recipients with the requisite permissions.
  • StrongLoop: negotiated, drafted software license and services agreement with TD Bank.
  • Negotiated employment agreement for computer graphics designer with Bad Robot Productions
  • Negotiated a software licensing deal between a software company based in Northern California and the German branch of one of the world’s largest banks.
  • Settled a professional services dispute between a large Silicon Valley software company and a federal financial institution.

ECOMMERCE

  • For Informatica Corporation of Silicon Valley, drafting the Terms of Use of Informatica Marketplace, where developers will be able to post their tools and add-ons to Informatica software products for sale to others, as well as the contest terms to help launch Marketplace.
  • For major Silicon Valley software company, negotiated deal with Amazon World Services whereby the company’s software would be made available in the Amazon Cloud for paid hourly usage by businesses.
  • For major Silicon Valley software company, worked to ensure that online website administered by Digital River did not violate resale price maintenance provisions of antitrust law under European Union laws.
  • APM Music: the country’s largest production music library, an “iTunes” for the film, television and videogames industries, handled various website development deals as it perfected its web-based Interface:
    • Negotiated a deal with Unity Asset Store to offer APM’s songs for download, primarily for sync with videos/productions; Negotiated a Portal license and development agreement, for South By Southwest; Also drafted and helped negotiate several major partner deals in which APM would license indie music to expand its offerings for synchronization with audio and video productions, or in which APM would offer its tracks on a hip partner music site for audio-video sync purposes by consumers.
  • Proxio of Santa Clara, whose platform internationalizes the real estate MLS service for global online use, draft/negotiate a license, services and marketing agreement with Lennar Homes.
  • Roland Corp., leader in electronic keyboards, advised on display advertising for Google Analytics, and how it impacts privacy policy.
  • For South Carolina company, draft agreement to facilitate purchase of apps and partial interests in apps and enhance their promotion.
  • Dailymotion: Advise this French user-generated video blockbuster website, on the U.S. legal status of the practice of placing advertising next to user-generated content.
  • Share Magnet, a leading online shopping rebate company through its Social Rebate website: prepare Terms of Use for both Merchants and for Users/consumers, and for developers and partners to refer business.
  • Informatica: Terms of Use: Prepare and revise terms of use for websites Informatica Marketplace and Informatica Communities
  • PriceGrabber.com: Handled many of the transactions and drafted many of the agreements that this ecommerce website used as it grew into a price comparison powerhouse on the Internet.
  • Drafted Terms of Use and Privacy Policies for a wide variety of Internet sites and companies including Adlink, a leader in cable TV advertising, eSalon.com, an online haircare company, SafeCorp, a single site for managing all of one’s online accounts and log-ins, bds mktg’s RetailAccess.com product training site, Share Magnet’s website and its Social Rebate website, and Gether LLC’s iPhone and iPad app.
  • Negotiated Internet portal or website development deals for a variety of web-based companies, including ChildrenInFilm.com, an Internet site focused on the advancement of child actors.

INTERNATIONAL

  • Informatica Corporation: Handle all Latin American transactions (license, support, professional services, distribution), mostly in Spanish and Portuguese, for this data software company.
  • Logitech: Helped negotiate build-out agreement and office lease of the Mexico City office of a $4 billion Northern California- based computer peripheral and consumer electronics company.
  • Proxio, Inc. of Santa Clara, the global leader in digital real estate marketing solutions for agents, brokers and developers, which offers a platform that extends the multiple listing service internationally (in many languages and currencies): provided legal counsel to a joint venture with a Mexican company to offer Proxio software in Mexico, and establish a Mexican SAPI entity for the joint venture, and also provided legal counsel for joint venture with Base in Brazil.
  • Jawbone: handled several distribution agreements (including online resale) in Brazil, with Mobimax and Netshoes.
  • glu mobile, a Northern California-based mobile games publisher: negotiated most of the mobile games download deals with many of the largest wireless carriers in Latin America, many of which are affiliates of América Movil, which were completed in Spanish, and worked on the corporate and tax structure of this publisher in Latin America.
  • Logitech Inc., one of the world’s leading computer peripheral and electronics manufacturers: represented company in the development of an international warranty for use throughout the world, and more recently, completed a Latin American warranty spreadsheet to ensure compliance, particularly in Brazil and Mexico, and reviewed Canadian and provincial warranty requirements.
  • Martin Outdoor of Southern California: handled a Mexican sourcing contract for bus bench manufacturing.
  • Symantec Corp.: conducted a survey in more than 25 Latin American countries on whether automatic renewal, and charging a customer’s credit card is permissible in the context of annual antivirus online subscription.
  • Handled worldwide and Latin America-wide product recalls for two major Northern California consumer electronics companies.
  • Negotiated a vendor deal that enabled a large Colombian chocolate manufacturer to be able to offer its product at Trader Joe’s; all client contact in Spanish.
  • Business Software Alliance: Managed many years of copyright (and trademark) enforcement anti-piracy programs overseas for this important trade association for the computer software industry, as well as similar programs for the Association of American Publishers and for major software and games publishers (e.g., for Bentley Systems, and for IDSA, the forerunner of the Entertainment Software Association).
  • Over the past two years, have represented clients based in France, Canada, Belgium, Sweden, Switzerland, Japan, United Kingdom, Germany, Brazil, Mexico, Belarus and Chile.

INTELLECTUAL PROPERTY AND COPYRIGHT

  • lynda.com: Advise the Content group, responsible for approving the content for training and other videos of the world’s leading video training library and website, on copyright, trademark and publicity rights issues as they arise, including frequent advice on applicability of copyright fair use principles, and advice on defamation law. Advise on such issues as using video clips from films, famous graphic images/art, other website content, use of images of famous persons.
  • lynda.com: Manage various antipiracy matters that arise for the world’s leading online video training site, including filing and winning an international trademark dispute (UDRP proceeding) to seize a domain name from an internet pirate that was infringing on lynda.com’s rights. Also achieved various takedowns pursuant to Section 512 of the Digital Millennium Copyright Act, including forcing the removal of 13 courses that plagiarized and infringed lynda.com courses from the Udemy.com video training site, and takedown of lyndapakistan.com pirate website.
  • Handled IP due diligence in a large number of acquisitions and dispositions, most recently for the acquisition of all assets of a Hong Kong and California-based webhosting company by a large Massachusetts-based company that has been acquiring numerous webhosting companies.
  • eSalon.com, advised this leading online hair color and hair products website on a variety of intellectual property issues, including defamation and trade libel, cyberstalking, secondary copyright liability.
  • For an online investment diamond exchange, register its website with the US Copyright Office.
  • For important App producer, dealt with Apple regarding loss of key brand name on the App Store.
  • Managed overseas antipiracy (copyright enforcement) programs for three of the world’s major copyright-based trade associations, Business Software Alliance, Association of American Publishers, and Interactive Digital Software Association, the precursor of the Entertainment Software Association.
  • Logitech Inc.: advised this large company on various copyright issues relating to Google TV, and assisted with legal and intellectual property aspects of theft of inventory in Mexico.
  • Advised major publisher on rights and issues regarding use of stock photos and images in marketing materials.
  • Informatica Corporation: Handled many compliance issues when large corporate customers exceeded their license parameters.