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Jason T. Kunze



Jason focuses on disputes and transactions relating to software and networking technologies. He works with a variety of businesses—from startups to Fortune 500 companies—to aggressively resolve intellectual property (IP) disputes. He has litigated copyright infringement, trade secret misappropriation, patent infringement, trademark infringement, breach of contract and related claims.

He also procures patents, registers copyrights, negotiates license agreements, evaluates technology acquisitions and advises on IP protection strategies. Particularly in the software development, implementation and gaming environments, Jason is exceptionally positioned to apply his IP and licensing experience to help advance client needs.

What do you focus on?

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 experience prior to attending law school 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, 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 identify and 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.

What do you see on the horizon?

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.

Publications

  • “To avoid copyright disaster, the future of game streaming is licensing,” VentureBeat (August 23, 2017) (co-author).
  • “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).

Speaking Engagements

  • Customized training presentations for software development and compliance teams (2014–present)
  • “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

Representative Experience

  • Represent Junction Solutions in defense of breach of contract and related claims regarding a large 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).

Read fine print on learning apps, experts warn

Education Week | March 28, 2017

Chicago IP litigation associate Jason Kunze is quoted in this article about safeguarding student data privacy in online educational apps.

Contact

Jason T. Kunze

Associate

Chicago

Phone: 312-425-3973


Fax: 866-843-0475

Northwestern University School of Law, J.D., cum laude; Production Editor, Northwestern Journal of Technology and Intellectual Property

University of Illinois, B.S., Electrical Engineering

Illinois

U.S. District Court, Northern District of Illinois

U.S. Patent and Trademark Office

U.S. Court of Appeals, Federal Circuit

  • Super Lawyers Magazine—Recognized as a Rising Star in Illinois (2016–present)
  • American Bar Association (Intellectual Property and Litigation Sections)
  • Intellectual Property Law Association of Chicago
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