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, intellec-tual property and contracts international, as well as related commercial and compli-ance 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 Pro-fessors 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 Com-pliance (2012) –
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, 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 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.
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.
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 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.
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.
For a list of past intellectual property conference proceedings:Click Here
Tags: Cloud, Licensing Forum, Meet the Speaker, Open Source, SaaS