Jason T. Kunze

My focus

Litigation of Software and Networking Technology

With more than ten years of industry experience as a software engineer at Motorola, Lucent Technologies, and at my startup company, I gained valuable practical knowledge that I am able to strategically leverage in complex IP matters. I have litigated cases involving complex technology such as mobile telecommunications, electronic security, automotive technology, video games, speech compression, image processing, distributed networks, ERP systems, health care technology, and many various web-based services. Because of my experience designing and implementing software features using languages such as C, C++, Assembler, and Java, I can quickly assess technical issues, develop legal arguments, and distill complex information into jury-friendly terms. My experience in the software industry is also an asset when I’m working with businesses to advise on strategies to protect leading-edge technology.

Technology Transactions and Software Licensing

The development, acquisition, and/or licensing of software assets raises many potential legal issues, such as ownership, access to source code, and ability to use and distribute the software. This is particularly true as software projects routinely leverage many third-party components. I assist clients in navigating these potential issues. For example, I provide assessments and related guidance regarding the use of open-source software, including customized training sessions on strategy and best practices. I conduct diligence and evaluate IP risk in relation to the sale or acquisition of software assets. I also prepare, revise, and/or negotiate software development licenses, master service contracts, website terms of use, and related agreements. Overall, I help clients assess potential risks and develop customized mitigation strategies to align with business strategy and risk tolerance.

Representative experience

• Represented Spectrum Media Services in a complex software ownership dispute, involving copyright and related claims.  The matter settled. New London Associates LLC v. Kinetic Social LLC et al. (S.D.N.Y.)
• Represented video game developers and publishers Stardock Entertainment and Valve Corporation in a trademark and copyright infringement dispute involving Star Control: Origins, an action-adventure video game. The matter settled. Stardock Systems, Inc. v. Paul Reiche III, et al.  (N.D. Cal.)
• Represented Junction Solutions, a custom software implementer, in defense of breach of contract and related claims regarding a large ERP software implementation project. Team Express Distributing v. Junction Solutions, Inc. et al. (W.D. Texas)
• Represent Catilina Nominees and Daniels Sharpsmart, a creator of novel storage containers for medical waste, in a patent infringement action and the defense of a related IPR claim. Catilina Nominees Pty. Ltd. et al. v. Stericycle, Inc. (N. D. Illinois)
• Represent various early-stage companies and research institutions in a variety of technology evaluation, licensing, patent portfolio development, and copyright matters, particularly in relation to software for internet technology, data analytics, and mobile applications
• Assisted Athena Health and Battery Ventures in the evaluation and acquisition of multiple software-based assets
• Represent PCMS Datafit, Inc., in connection with software licensing strategy, and claims relating to a large software implementation project. PCMS Datafit, Inc. v. Rite Aid Hdqtrs. Corp. (Del. Chancery)
• Defended 29 companies, including some of the world’s best-known brands, in relation to online career application software, wherein 450 defendants were accused of patent infringement by a non-practicing entity involving a patent directed at online access to geographically and topically based information. The case was dismissed. GeoTag Inc v. Frontier Communications, et al. (E.D. Texas)
• Defended Royal Caribbean Cruises in relation to a portfolio of patents asserted by a non-practicing entity directed to methods for automated marketing. The case settled. Phoenix Licensing v. AAA Life Insurance Co. et al. (E.D. Texas)
• Defended Peoplefluent, a provider of cloud-based talent management software, against patent infringement allegations filed by a non-practicing entity. The case settled. Trunqate LLC v. Peopleclick, et al.(E.D. North Carolina)
• Defended TrueX Media, a digital advertising company, against allegations of trademark infringement concerning use of TRUEX MEDIA mark. The case settled. True Media LLC v. Truex Media Inc. et al. (N.D. Illinois)
• Represented Compandent, a developer of innovative voice processing software, in a copyright infringement action. The case settled. Vocal Technologies, Ltd. v. Compandent, Inc. (W.D. New York)

Looking ahead

The massive growth of esports will continue to push the limits of copyright law as the norms of an industry built on sharing of gameplay and content (such as on YouTube and Twitch) collide with the rights of game developers and prohibitions of the Copyright Act.

Insights

• “Software Contracts: Lessons from the Front Lines,” Chicago Bar Association, Chicago, IL, April 8, 2020
• Customized training presentations for software development and compliance teams (2014–present)
• “To Avoid Copyright Disaster, the Future of Game Streaming is Licensing,” VentureBeat, August 23, 2017 (co-author)
• “Software Licensing Strategies,” Chicago Corporate Counsel IP Seminar, Chicago, IL, June 2, 2016
• “Open Source Software: Tips for Avoiding Licensing Surprises,” Embedded Systems Conference, Boston, MA, May 6–7, 2015
• “Open Source Software 101: Key Legal Concerns,” EE! Live Conference and Expo, San Jose, CA, April 2, 2014
• “Avoiding Pitfalls When Using Third Party (including Open Source) Software,” Chicago Corporate Counsel IP Seminar, Chicago, IL, June 3, 2014
• “Developments in Joint Infringement Law,” Expert Analysis column, Law360, September 28, 2011 (co-author)
• “Eeny, Meeny, Miny, MOVE! — Taking the Guess Work Out of Selecting from the Plethora of Accelerated Patent Prosecution Options,” 82 Patent, Trademark & Copyright Journal, (BNA) 309, July 1, 2011 (co-author)
• “Regulating Virtual Realms Optimally: The Model End User License Agreement,” 7 Northwestern Journal of Technology and Intellectual Property, 102, 2008
• “Excerpt of ‘Imagine’ in Film is Likely to be Fair Use” World Media Law Report, July 17, 2008 (coauthor)