Alan S. Wernick is an experienced business transactions attorney, advocate and arbitrator/mediator handling legal matters for businesses in the areas of information technology, privacy/cybersecurity and intellectual property law (copyright, trademark, trade secrets, licensing).
Alan is a trusted leader and advisor, having worked in large law firms, as in-house counsel and as counsel to and advocate for middle market, Fortune 500, Fortune 100 and startup clients. He is recognized by peers and clients for his extensive track record advising organizations acquiring, using and selling/licensing technologies and related services, including the drafting and negotiation of a variety of technology and commercial agreements; data privacy/cybersecurity compliance and remediation, including responding to data breaches; IP protection; mergers and acquisitions due diligence; compliance processes, procedures and policies; and dispute resolution, including breach of contract claims and IP infringement claims.
Since 1982 Alan has been in private practice building upon his extensive, multidisciplinary background in law, business, accounting, auditing, computer science, the information technology industry and Alternative Dispute Resolution (“ADR”) as an analytical foundation for his understanding of the technology and business drivers underlying business agreements, complex transactions and disputes in these areas of the law. He uses this experience to help clients meet their business objectives and manage their legal strategies and risks. He is a seasoned legal counselor and advocate, arbitrator/mediator, author and lecturer, and a bridge builder among the business, technology and intellectual property communities.
Alan also handles litigation matters and represents businesses that have suffered a data breach. He is an advocate in the federal, state and appellate courts for client disputes concerning information technology and intellectual property, and also an advocate in dispute resolution through arbitration and mediation.
For more than 35 years, Alan has worked as an arbitrator/mediator in ADR in both private settings and for the U.S. federal courts. He has arbitrated and mediated cases involving business-critical computer user and vendor disputes, technology disputes (including e-commerce and outsourcing), website development disputes, licensing disputes, software ownership and intellectual property disputes. He is a member of several neutrals panels for the American Arbitration Association, including Commercial, Technology, Intellectual Property (Licensing), Cyber Security and Large Complex Cases.
Alan is experienced in representing businesses in a variety of industries, including architectural, information technology, financial services, insurance, health care, manufacturing and distributing, publishing, real estate and retail, as well as educational and research institutions and professional and trade associations. A sampling of his representations includes:
- Representation of an international consulting firm in management, protection, distribution and licensing of their numerous copyrighted works (e.g., books on various business topics).
- Representation of website developers in preparing and negotiating their customer facing agreements (including, without limitation, their Master Services Agreement), their independent contractor facing agreements, and the protection of their intellectual property assets.
- Representation of mobile app developers, including preparing their End User License Agreements, compliance matters, and protecting their intellectual property assets.
- Representation of companies in preparation of agreements related to their website(s), including preparation of the website terms and conditions, EULAs, privacy statement/policy, compliance matters, and protection of their intellectual property assets, including domain name.
- Representation of network architecture firm in contract negotiations with cloud computing platform (e.g., “Software as a Service” or “SaaS”) provider and preparation of client’s master services agreement for use with its customers in delivery of client’s software on said third party SaaS platform, in addition to drafting and negotiating their software development and licensing agreements, independent contractor agreements, NDAs and dispute resolution.
- Representation of computer programming and network services company (independent contractor to a bank) when company's on-site employee installed company's proprietary software onto the bank's development server without permission.
- Representation of high-performance trading software developer in review of company's computer contracts used in the licensing and distribution of the company's software.
- Representation of an insurance company in settling a dispute over a claim by an insured (user) for licensed technology that was damaged in a fire.
- Representation of numerous private and public entities in computer system acquisitions, including a public institution (user) in a $2.5 million-plus custom software development project involving multiple vendors and a foreign software developer. This matter also involved complex computer contract negotiations for license arrangement and distribution agreement.
- Representation of manufacturer who sold some of its products directly to its customers via its website, and which manufacturer's website host experienced a data breach that compromised some of the manufacturer’s customer’s data (e.g., name, address, e-mail, credit card information) from customers in several different states. Counselled client through the forensic investigation and notification compliance process (including notification to customers and offices of the Attorney General in several states) concerning the breach.
- Representation of popular real estate portal concerning their intellectual property assets, including a large portfolio of trademark assets and copyright assets.
- Represented respondent (business investor) in arbitration against a demand for more than $23 million by claimants against respondent concerning a business dispute alleging, among other things, breach of contract, breach of covenant of good faith and fair dealing, tortious interference with contract. Result: obtained dismissal with prejudice of the demand.
- Represented various other users in user/vendor disputes involving failed computer systems acquisitions. Results included settlement of disputes resulting in damages payments to clients and/or remediation by vendor of the failed systems.
- Represented network architecture firm in dispute resolution involving its products and services. Results included negotiated amicable settlement of disputes.
- Represented software developer in dispute over work made for hire ownership rights. Results included retention of client’s rights to software.
- Represented software publisher in dispute concerning one of its distributors. Result included negotiated amicable settlement of dispute.
- Represented computer system user in dispute with time share company over rights to the user’s data. Results included clarification of user’s ownership of its data.
- Represented insurance company in settling a dispute over a claim by an insured (user) for licensed technology that was damaged in a fire. Results included negotiated amicable settlement of dispute.
- Represented large clothing manufacturer/retailer in dispute with its web hosting/web development company. Results included a full refund of all monies paid by client to the web hosting/web development company.
- Represented real estate developer in trademark dispute over naming of a residential subdivision.
- Represented a logistics company, which relies heavily on computer software to do truck tariff tracking and third-party payment, in negotiations and settlement of dispute with an independent consultant over the rights to certain computer software. Result: obtained transfer of rights to client.
- Represented amicus curiae in support of Plaintiffs. American Society for Testing and Materials d/b/a ASTM International, National Fire Protection Association, Inc., American Society of Heating, Refrigerating, and Air-conditioning Engineers, Inc., v. Public.Resource.Org, Inc., 1:13-cv-01215-TSC, (USDC, District of Columbia, 2016).
- Represented Doe defendant in a copyright infringement lawsuit. Result: dismissal of plaintiff’s lawsuit. – Patrick Collins, Inc. vs. John Does, et al., Case No.: 1:12-cv-06678 (USDC, ND, IL, 2013).
- Represented building code standards developing organizations (SDO) in copyright infringement lawsuit. Result: prevailed against motion for summary judgment, which motivated an amicable settlement of dispute – International Code Council v. National Fire Protection Association, 2006 U.S. Dist. LEXIS 13783 (USDC, ND, IL, 2006).
- Represented several software publishers in a copyright infringement lawsuit against a copyright infringer. Result: settled – Adobe Systems Inc., et al. vs. Green; Case No. 2:96-cv-00882-EAS-NMK (USDC, SD, OH 1998).
- Represented the owner of the copyrights to the works of Dr. Abraham Maslow against an infringer of Dr. Maslow’s copyrights. Result: obtained Temporary Restraining Order and then Permanent Injunction – Kaplan vs. Cannon; Case No. 2:97-cv-00970-JLG-MRA (USDC, SD, OH, 1997).
- Represented building code standards developing organization (SDO) (as amicus curiae for appellees) in copyright infringement lawsuit on appeal from trial court – Veeck v. Southern Building Code Congress International, 293 F.3d 791 (USCA, 5th Circuit, 2002), 123 S. Ct. 650 (US Supreme Court, 2003).
- Represented large medical practice group manager in user/vendor dispute with software provider, which resulted in software provider paying client in excess of $1 million, plus royalty free license on replacement software, plus reduced cost for support, plus free hardware to run the replacement software.
- Represented building code standards developing organizations (SDO) in copyright infringement lawsuit. Result: obtained amicable settlement of dispute – Building Officials & Code Administrators, Inc. v. Anderson Publishing Company, Case No. 98cv04977 (USDC, ND, IL, 2000).
- Represented home builder (appellee) in action by homebuyers (appellants) for alleged breach of warranty. Result: appeals court affirmed judgment of trial court in favor of client. Cain v. Homewood Corporation, 1981 Ohio App. LEXIS 12872 (Court of Appeals, 10th Appellate District, Franklin County, Ohio, 1981).
- Represented multifamily apartment developer and apartment manager (appellees) in landlord/tenant dispute. Result: court of appeals affirmed trial court’s judgment. Koscik v. Olentangy Development Company and Deerwood Management Company, 1979 Ohio App. LEXIS 10900 (Court of Appeals, 10th Appellate District, Franklin County, Ohio, 1979).
- Licensing dispute between a large international online content provider licensee and large content aggregator licensor. (Chair of Arbitration Panel)
- Technology license dispute between technology patent licensor and licensee regarding patent license renewal. (Chair of Arbitration Panel)
- Computer systems failure dispute between a hospital system and a software developer/distributor of proprietary accounting and management software, including claims of breach of contract. (Sole Arbitrator)
- Software development dispute between software developer and website operating online auctions, including claims of breach of contract to produce software for operating online auctions, breach of website development contract, breach of license agreement and infringement. (Sole Arbitrator)
- Peering agreement dispute between two of the world's largest fiber optics network Internet services providers. (Sole Arbitrator)
- Software performance dispute between a software developer and an insurance company. (Sole Arbitrator)
- Contract performance dispute between a search engine optimization developer and website owner. (Chair of Arbitration Panel)
- Dispute between software developer and a large private association of insurance companies concerning alleged breach of computer systems development agreement.
- Software performance dispute between a national financial institution and a software vendor regarding alleged system performance failures. (Sole Arbitrator)
- Computer outsourcing services agreement dispute between a major steel manufacturer and an outsourcing services provider concerning interpretation of pricing provisions. (Sole Arbitrator)
- Contract dispute between a software systems integrator and an international manufacturer of toys and games over alleged failed integrated system installation. (Chair of Arbitration Panel)
- Claims arising out of alleged breach of license agreement between major telecommunications company and intellectual property licensor. (Chair of Arbitration Panel)
- Contract dispute between a national collection agency and a software provider, including claims of performance failures and trade secrets disputes. (Sole Arbitrator)
- Disputes between licensor and licensee over alleged infringement of intellectual property rights and breach of license agreement. (Sole Arbitrator)
- Dispute between Internet based travel site and software developer, including allegations of breach of warranties and performance failures.
- Contract dispute between a web hosting service and an online business involving alleged lost profits and other contract damages alleged to have occurred as a result of a migration of a web site from one host system to another.
- Dispute between insurance company licensee and software developer licensor concerning interpretation of scope of use provisions in license agreement.
- Dispute between a computer software licensor and manufacturer of wood furniture concerning alleged breach of license agreement and maintenance agreement.
- Dispute between an online services provider and financial services company over alleged breach of non-public personal data of financial service company’s customers.
- Mediator of dispute between Point of Sale (“POS”) systems vendor that provides off-the-shelf and custom software and a large big box retailer of home improvements and construction supplies. Result: guided parties to successful settlement of their dispute.
- Copyright infringement claims by large telecom businesses against alleged infringers.
- Federal court appointed mediator of business dispute.
- Mediator of other technology contracts, intellectual property and licensing disputes.
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SPEECHES AND PUBLICATIONS
Throughout his career Alan has been a prolific writer and presenter at numerous public and private industry events as well as at professional and trade association meetings; discussing various topics evolving at the intersection of business, technology and the law. He is also the publisher of the Information Technology & Intellectual Property Alert (ITIP Alert™), a periodic e-mail newsletter with more than 2,000 subscribers.
A sampling of his presentations includes:
- “The Illinois Biometric Information Privacy Act Impact on Business,” a program for the Decalogue Society of Lawyers, Jan. 30, 2020.
- “The Biometric Information Privacy Act After Rosenbach: A Survey of the Legal Landscape,” at a Chicago Bar Association’s Labor & Employment Law Committee meeting, Dec. 11, 2019.
- “Technology and the Law – Emerging Technology Trends and Potential Personal Liability,” a webinar for the National Association of Mutual Insurance Companies, Oct. 15, 2019.
- "Social Media and the Internet" at the Ohio State Bar Association's Federal Bench Bar Conference, Oct. 11, 2019.
- “Technology and the Law – Emerging Technology Trends and Potential Commercial Liability,” a webinar for the National Association of Mutual Insurance Companies, Oct. 8, 2019.
- “Cybersecurity: Is Your Discovery Secure?” at the Chicago Windy City Legal & Data event presented by The Masters Conference, May 16, 2019.
- “Technology and the Law: Emerging Technology Trends and Personal Lines Liability” at the 2019 Personal Lines Seminar presented by the National Association of Mutual Insurance Companies, April 16, 2019.
- “How the Digital Economy (and Digital Transformation) Will Impact Privacy & Security Practices” at the 2018 Responsible Information Management Renaissance conference presented by the Ponemon Institute, March 9, 2018.
- “How Do I Prepare for a Data Breach? What Do I Need to Do After the Data Breach?” at the Data Breach & Cybersecurity Summit presented by the Ohio State Bar Association, Dec. 11, 2017.
- “Cybersecurity Risks and Social Media,” at the 2017 Corporate Counsel Institute presented by the Ohio State Bar Association, Oct. 27, 2017.
- “Internal/External Threats to Your Company,” at The Presidents' Forum of Columbus presented by The Entrepreneurship Institute, March 9, 2017.
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A sampling of his publications includes:
- "Biometrics Information - Permanent Personally Identifiable Information Risk," Business Law Today, an American Bar Association publication, Jan. 2019.
- "Drone Technologies: Business Opportunities & Legal Risks," Fine Print, an Ohio State Bar Association publication, Fall 2016.
- “Privacy Shield,” Securities Regulation Daily, a Wolters Kluwer publication, Sept. 8, 2016.
- “Leadership and Cybersecurity,” ITIP Alert, July 2016.
- “Trade Secrets – A Fragile Web,” ITIP Alert, Feb. 2015.
- “Wi-Fi Interference Is Illegal,” ITIP Alert, Feb. 2015.
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Alan joined Aronberg Goldgehn in August 2019. Previously he had his own practice, Wernick & Associates, Ltd., which he started in 2017. Prior to that he practiced law with several other law firms, including FisherBroyles, LLP, Querrey & Harrow (Chair, IT & IP practice), Quarles & Brady LLP (Chair, National Information Technology Law Practice Group; Chair, Chicago Intellectual Property Practice Group), McBride, Baker & Coles (Co-Chair, Information Technology and Electronic Commerce Practice; Co-Chair, Intellectual Property Practice), and Hahn Loeser.
From 2001 to 2016, Alan was Chairman of the Board of the Computer Law, Intellectual Property and Privacy Law (CLIPP) Advisory Council for Wolters Kluwer Publishing. The CLIPP Advisory Council consisted of representatives from Fortune 100 companies, universities and private law firms. As Chairman, he organized bi-monthly conference calls to discuss recent developments in the areas of computer law, intellectual property law, and privacy/cybersecurity law. He also organized an annual retreat/symposium sponsored by Wolters Kluwer for thought leaders in the areas of law.
For more than 20 years Alan has had the AV Preeminent® Peer Review Rating from Martindale-Hubbell, its highest rating of professional excellence for legal knowledge, communication skills and ethical standards. He was named to "Who’s Who Legal: Data 2020," which recognizes the leading lawyers in the areas of data privacy and protection, data security, information technology and media.
- Alumni Board Member, The Ohio State University Fisher College of Business, 2008-Present
- Mentor, 1871 (Chicago), 2013-Present
- Fellow, The Ponemon Institute, 2007-Present
- Member, Northbrook Chamber of Commerce
- Chairman, Computer Law, Intellectual Property and Privacy Law Advisory Council for Wolters Kluwer Publishing (2001-2016)
- Founder, Computer Law Committee, Ohio State Bar Association
Capital University Law School, J.D., 1978
The Ohio State University Fisher College of Business, B.S., Accounting, 1974
The Ohio State University Moritz College of Law
Independent Study Course on The Use of Computers to Teach Law
BAR AND COURT ADMISSIONS
- Ohio, 1978
- New York, 1987
- District of Columbia, 1987
- Illinois, 1999
- U.S. Supreme Court
- U.S. Court of Appeals for the Sixth Circuit
- U.S. Court of Appeals for the Seventh Circuit
- U.S. District Court for the Northern District of Illinois
- U.S. District Court for the Northern District of Ohio
- U.S. District Court for the Southern District of Ohio
- American Bar Association, Member, Contributing Editor, ABA Business Law Today, Month in Brief, Internet and Cyber-Security, 2019-present; Editor, ABA Business Law Section Cyberspace Law Committee e-Newsletter, 2009-2011
- Ohio State Bar Association, Member, Computer Law Committee, Founder; Corporate Counsel Section, Member; Ethics Committee, Member; Federal Courts Committee, Member
- AV Peer Review Rating from Martindale-Hubbell, its highest rating for ethics and legal ability
- International Who’s Who of Internet and E-Commerce Lawyers
- Leading Lawyer in Computer and Technology Law
- Who’s Who Legal, Global Leader in Data Privacy & Protection
- Who’s Who Legal, Global Leader in Data Security
- Who’s Who Legal, Global Leader in Information Technology
Alan enjoys blending his experience, interest and curiosity in technology together with the law, and helping businesses navigate transactions and disputes at the intersection of law, technology and business.
In his free time, he enjoys spending time with family (married for more than 36 years, two grown children, and a large extended family), reading, writing, working with computers/technologies, and doing computer programming. He enjoys physical activities such as walking, hiking, biking and martial arts.
What would you be doing if you weren’t a lawyer? I would be working in robotics, developing artificial intelligence systems, and/or writing and lecturing.
What is the best vacation you’ve ever been on? Disney World (multiple times), Disney Cruise.