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Lowenstein Sandler LLP

Bryan Sterba

Bryan Sterba

Associate

Expertise

  • Blockchain Technology & Digital Assets
  • Intellectual Property Litigation
  • Patent Counseling & Prosecution
  • Seed Stage Investing & Startups

WSG Practice Industries

Activity

Lowenstein Sandler LLP
New Jersey, U.S.A.

Profile

Bryan offers intellectual property, technology, and data security-related advice and counsel to clients across a broad spectrum of industries, including the financial, media, and advertising sectors. He works diligently with clients on the full range of intellectual property issues that arise in M&A and licensing contracts, as well as counsels global and national funds (including private equity, hedge, and distressed funds) and other clients on the IP and IT issues involved in complex public and private asset or stock acquisitions, LBOs, and divestitures. He also advises clients on transition and long-term services agreements in connection with carve-out transactions for seamless transitions at closing.

Bryan negotiates the intellectual property provisions of M&A/private equity transactional documents. He also negotiates, drafts, and reviews technology licensing and master service agreements, collaborating closely with clients and vendors to craft such contracts. Bryan’s work on both the licensor and licensee side of transactions gives him a broad perspective and allows him to craft creative solutions to meet client needs.

His background also includes drafting license agreements, Uniform Domain Name Dispute Resolution Policy (UDRP) complaints, trademark applications, statements of use, consent agreements, and cease-and-desist letters. He has also performed trademark searches and managed client trademark portfolios.

Bryan’s data security and privacy experience includes counseling clients on an array of cybersecurity and privacy issues. This advice includes SEC-mandated data security and cybersecurity vendor management practices and policies, U.S. and EU standards for processing personally identifiable information (PII), requirements governing data scraping and other data access practices, and appropriate responses to data breaches involving the release of PII.

Bar Admissions

    New Jersey
    New York

Education

Benjamin N. Cardozo School of Law (J.D. 2014), cum laude; Dean's Merit Scholarship; Intellectual Property Colloquium Fellow
Binghamton University, State University of New York (B.S. 2011), Dean's List
Areas of Practice

Blockchain Technology & Digital Assets | Intellectual Property Litigation | Patent Counseling & Prosecution | Seed Stage Investing & Startups | Technology & Media Transactions | The Tech Group | Trademarks, Copyrights & Trade Secrets | Venture Capital & Tech M&A

Articles

Some Going Concerns: A Primer on Intellectual Property Issues in Bankruptcy for Licensors and Licensees
Lowenstein Sandler LLP, June 2020

Westlaw Journal Bankruptcy Much has been written on the myriad of legal issues emanating from the global COVID-19 pandemic: the constitutionality of the lockdowns, liability for stores that open, the process of obtaining PPP loans, and the applicability of force majeure clauses, to name a few. As intellectual property and bankruptcy practitioners, we are fielding more questions regarding the impact of bankruptcies (both actual and potential) on the rights of licensors and licensees...

Additional Articles

This is the second in a regular series that the Intellectual Property Group at Lowenstein Sandler will produce relating to common IP mistakes early-stage companies make when building a business.

One of the most frequent concerns raised by early-stage companies is the need to protect their proprietary intellectual property. As most venture-backed deals rely on the scalability of some form of intellectual property, this is not surprising. What tends to surprise founders is that the special, proprietary, and valuable development that they have created and plan to base their business on may not be the sort of intellectual property protectable through a patent issuance from the United States Patent and Trademark Office. In fact, many of our successful clients have found that their most valuable intellectual property is best protected via internal practices and contracting. This allows the company to protect items such as software code and business methods through a combination of copyright, trade secret, and contract law.

The best advice for an early-stage company looking to protect its nonpatentable intellectual property is to maintain good corporate hygiene, including the maintenance of employee nondisclosure and invention assignment agreements (NDIAAs), confidentiality agreements for prospective new business relationships, a strong intellectual property protection policy, and to the extent applicable, an open source code usage policy. Three common missteps made by companies that do not incorporate these methods into practice, as well as solutions to avoid these missteps, are below.

  • Mistake: Many companies rely on the premise that any intellectual property developed by employees or contractors on behalf of the company will automatically be owned by the company. This is not true. Although copyrightable intellectual property developed in the scope of an employee’s employment would be owned by the employer, employees may retain certain “shop rights” in patentable intellectual property, leaving the company’s rights encumbered in a manner that could frustrate the goals of investors or acquirers. Additionally, the default rule for independent contractors is that the contractor will own the intellectual property, unless such intellectual property is specifically deemed “work-made-for-hire.”
    • Solution: By maintaining form employee NDIAAs and intellectual property assignment language for inclusion in contractor agreements, companies can avoid the headache of needing to chase down former employees or contractors who have developed material intellectual property used in the business, when inevitably asked to do so in future financing transactions. By clearly laying out the ownership rights of the company at the start of an employment or engagement, companies will avoid any confusion or unexpected claims in the future from a potential disgruntled former colleague.
  • Mistake: Software is subject to copyrights in the object code, source code, and expression of the functioning software that is output on a computer. Therefore, copying a portion of source code, or working around the use of particular source code to achieve the same output, may in each case create a copyright violation. If your company provides services on behalf of customers, you must ensure you retain all intellectual property rights to your developments that are necessary to continue operations of the business.
    • Solution: Companies that are not in the practice of developing intellectual property on behalf of their customers, but are still engaged in providing software-related services, should include intellectual property ownership provisions clarifying that the customer shall not obtain any ownership rights in any developed intellectual property. Companies that are engaged in such development on behalf of customers may be required to assign ownership rights of certain developed intellectual property to their customers. Such ownership rights granted to the customer should be tailored as narrowly as possible, and should apply only to entirely new intellectual property specifically requested by the customer. Additionally, the company should seek to maintain an irrevocable and perpetual license to continue using such assigned intellectual property in its own business of providing services to customers. When negotiating agreements such as these, the company will need to be forward looking in determining whether the intellectual property they plan to assign will be needed for future customers, rather than relying on a belief that they can find a work-around to provide similar intellectual property to others while avoiding infringement claims.
  • Mistake: Open source software is often available free of charge, but there are usually restrictions associated with the licenses for such software that must be followed. Failing to review and adhere to the license terms prior to integration into a proprietary code-base may result in a violation of the underlying source code’s copyright, or worse, could lead to a requirement to release proprietary source code to the public on the same license terms as those of the applicable open source license, including for free.
    • Solution: A company that’s value proposition relies on the provision of software to its customers should maintain a robust open source software usage policy. Such policy should include a process for review of open source licenses and acceptable usage, as well as regular code reviews to maintain code-base and license integrity.

This Legal Guide for Direct Brands provides a concise overview of legal issues often confronted by companies, particularly direct brands. Direct brands are companies characterized by their direct connections to consumers and are disrupting the business model of market-leading companies. This guide covers:

  • Why founder and equity agreements are vital for direct brands and the documents necessary for such investment transactions.
  • How commercial and intellectual property issues and privacy policies and terms can ensure companies retain all rights in the intellectual property of their businesses.
  • The essentials of privacy, advertising, and marketing law for direct brands.
  • The various types of product liability claims, legal defenses for product liability, and potential product liability claims for software that direct brands face.

This guide is intended to help companies spot issues that should be discussed with counsel and is not a substitute for legal advice.

A merger or acquisition is often one of the most important decisions a company will ever make. M&A activity can completely change the trajectory of a company's future and has the capacity to spectacularly fail or succeed.

Consider some of the most profitable (e.g., Disney and Pixar, Disney and Marvel, Exxon and Mobil, and Google and Android) and some of the most unsuccessful deals ever (e.g., America Online and Time Warner, and Sprint and Nextel).

Despite a strong U.S. economy, there have been fewer global mergers and acquisitions in 2019 compared to prior years. 

With fewer (but often higher-priced) deals, the stakes are greater than ever to consummate the right deal at a proper valuation. Accordingly, due diligence has taken on increased importance in the M&A deal-making process.

This article focuses on the legal due diligence process, and certain best practices for the management thereof, in transactions involving private sellers. We will provide a high-level review of some of the pain points in the legal diligence process and identify several techniques for the management of information flows through a specialist-fueled legal deal team.

We will also briefly touch on the impact that the advent of representation and warranty insurance policies has had on the due diligence process and what an insurance company may expect to receive prior to underwriting a policy.

The collaborative nature of open source software development has shaped the way in which technologists create revolutionary tools. 

From the most agile blockchain, health care, and telecommunications startups, to the world’s largest banks, automotive and insurance companies, open source software is an omnipresent factor in virtually every technology-enabled organization.

However, the risks of using open source software should be recognized along with its advantages.

Particularly for technology companies seeking an exit event — be that through a merger, acquisition, initial public offering or other means — an understanding of potential open source software risks should be considered early in the development stage, lest the presence of an unanticipated or “infectious” license affect their future valuation.

In this commentary, we delve into open source software considerations and their potential impact in the context of a mergers and acquisitions deal.


Blogs

Capital Markets Litigation
Lowenstein Sandler LLP 

Litigation News for the Global Financial Community

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