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Mark F. Radcliffe  


Partner

mark.radcliffe@dlapiper.com

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2000 University Avenue
East Palo Alto, California 94303-2214
United States
T: +1 650 833 2266   F: +1 650 687 1222

Mark F. Radcliffe concentrates in strategic intellectual property advice, private financing, corporate partnering, software licensing, Internet licensing and copyright and trademark.

Leading international legal publishers consistently rank Mr. Radcliffe among the top lawyers in his profession. The respected English publishers Chambers and Partners has repeatedly named him in Chambers USA: America's Leading Lawyers for Business, and has described him as "outstanding" and "a leader in open source-related matters." Legal 500 also recognizes him, commenting: "His expertise in providing strategic IP advice, with particular specialism in open-source matters, has won him plaudits. Indeed, one client describes him as 'probably the best lawyer in his field.'"

Additionally, Mr. Radcliffe is listed in The Best Lawyers in America. In 2004, he was named one of Northern California's Top 100 intellectual property Super Lawyers, in a joint project of Law & Politics and San Francisco magazines.

He is also listed in The International Who's Who of Internet and e-Commerce Lawyers 2008 and in numerous other guides, including the PLC Which Lawyer? Yearbook 2009, the 2003 Expert Guide – The World's Leading Trademark Lawyers and many annual editions of The International Who's Who of Business Lawyers. In 2009 and 2010, Intellectual Asset Magazine named him among the "IAM 250 - The World's Leading IP Strategists." In 1997, the National Law Journal cited him as one of America's 100 most influential lawyers. The San Francisco Business Times has named him among the best lawyers in the San Francisco Bay area.

Recent Matters

  • Assisted Sun Microsystems, Inc. in open sourcing Solaris operating system.
  • Purchased intellectual property assets from a financially troubled start-up and renegotiated license with a major university for certain drugs.
  • Assisted in financing and licensing strategy for first commercial open source software company.
  • Assisted a Global Fortune 50 company to obtain a license with a financially troubled company through establishing a bankruptcy remote entity.
  • Assisted a Global Fortune 100 company in establishing an intellectual asset management program to exploit its patent portfolio.
  • Assisted major corporation in investment in MontaVista Software.
  • Negotiated the license for a medical device from a startup.
  • Assisted a major publisher to develop and implement a strategy for exploiting its works in online media.
  • Prepared a program to develop a compatible computer program using “clean room” procedures.
  • Developed coordinated programs to protect the intellectual property of a major semiconductor manufacturer and a large software company.
  • Advised on worldwide trademark protection program for several clients, including the owner of major children's book characters.
  • Negotiated several strategic alliances involving equity investment and technology license for semiconductors with a large multinational company.
  • Negotiated publishing contract and clearance issues for a retrospective of a major entertainment industry awards ceremony.
  • Assist with domain name registry in developing policy.
  • Assisted in preparing a suite of e-commerce agreements for a major multinational corporation.

Representative Clients

  • E-Cube Energy, Inc.
  • SugarCRM, Inc.
  • Magnum Semiconductor, Inc.
  • Gainspan, Inc.
  • Sun Microsystems, Inc.
  • Sony Corporation
  • Cleversafe, Inc.
  • NEC
  • Siemens Corporation

Admissions

  • California

Memberships

  • International Trademark Association
  • South Bay Trademark Lawyer's Association; Founder
  • Bar Association of San Francisco; former Chairman of the Computer Law Section

Publications

  • "Here Comes the Sun," IP Law & Business, October/November 2009
  • "The Best Things in Life Are Free - But Still Protected", Daily Journal, August 15, 2008
  • Co-author, "Open Source, Open Legal Issues," New York Law Journal, January 29, 2007 (with James E. Nelson)
  • "Open Source: Disrupting the Software Paradigm," SD Forum News, June/July 2006
  • "Dealing with Potential Bankruptcy of a Licensor," The National Law Journal (coauthor Victoria Lee), December 2004
  • "Red Tides and Choppy Waters: The Music Industry v. The World," Journal of Internet Law, October 2004
  • "The Grokster Challenge," Daily Journal Supplement, September 2004
  • "Patents: A Small Price to Pay for Progress," CIO Magazine, August 2003
  • "Patents: Easily Fixed," CIO Magazine, February 2003
  • "The Digital Millennium Copyright Act: A Retrospective After Three Years," Practising Law Institute, July 2002
  • “Repackaging the Past: Old Content in New Media Bottles,” National Law Journal, March 2001
  • "New Media Convergence: Acquiring Rights to Existing Works for the Internet under US Law," European Intellectual Property Review, April 2001
  • "The Name Game: New domain names threaten trademark chaos," House Counsel, January/February 2001
  • Internet Law and Business Handbook: 2000
  • Co-author, "Trademarks and Domain Names: New Weapons in the Battle Against Cybersquatting," Journal of Internet Law, June 2000
  • "Convergence: Acquiring Rights to Existing Works for the Internet Under US Law," The Copyright Society of the USA, February 2000
  • Co-author, "Trading on Your Brand Name," Legal Times, February 2000
  • Co-author, "Domain Names: ICANN and New Remedies Against Cybersquatting," California Law Business, October 1999
  • "The Technical Provisions of the DMCA," Copyright World, May 1999
  • "Digital Millennium Copyright Act: Forging the Copyright Framework for the Internet: First Steps," Journal of Internet Law, March 1999
  • "Congress Helps Resolve 'Net Copyright Issues," National Law Journal, February 1999
  • "The Digital Millennium Copyright Act," CEB California Business Law Reporter, January 1999
  • Co-author, "Rights in New Media Arise From Old Precedents," National Law Journal, October 1998
  • Co-author, "The Internet: New Issues for Trademark Strategy," Trademark World, August 1997
  • Trademark World: "Trademarks in Cyberspace," May 1996
  • Copyright Ownership Issues, Practicing Law Institute, 1995
  • "Security Interests in Copyright: The New Learning," The Computer Lawyer, September 1990

Seminars

  • Speaker, "Critical Disputes," Stanford Directors College at Stanford University, June 21, 2010
  • Speaker, "Managing the Use of Open Source Software," Open Source Business Conference (OSBC), San Francisco, March 25, 2010
  • Speaker, "Virtualization, the Cloud and Open Source Software," Black Duck Software webinar series on open source legal issues, March 23, 2010
  • Panelist, "Clean Tech in the US and the PRC," PriceWaterhouseCoopers panel, January 22, 2010
  • Panel leader, "Open Source Software: Understanding the Law, the Licenses, the Risks and How to Manage its Use," California State Bar on Intellectual Property Section on Open Source Matters," December 7 and 9, 2009
  • Presenter, "Top 10 Issues Confronting Users of Open Source" Webinar, October 29, 2009
  • Presenter, "Term Sheets" Webinar, Kauffman Fellows program, October 22, 2009
  • Presenter, “Principles of the Law of Software Contracts" Webinar, October 20, 2009
  • Presenter, "Understanding the Complexities of the GPL and Its Obligations is Important for Proper Use," Black Duck webinar, October 14, 2009
  • Speaker, "Open Source Software Emerging Issues for Attorneys," The Knowledge Congress Live Webcast Series, August 25, 2009
  • Speaker, "The Use of Term Sheets," Kauffman Fellows Program webinar, July 7, 2009
  • Presenter, "Open Source Due Diligence in M&A and Financing," Black Duck webinar, May 20, 2009
  • Presenter, "Open Source Issues," American Corporate Counsel Association eCommerce Committee, April 2, 2009
  • Presenter, "Understanding Venture Funding in Cleantech," Palo Alto Research Center Forum, Palo Alto, March 2009
  • Presenter, "Serving on the Board of a Private Technology Company," Kauffman Fellows Program, East Palo Alto, March 2009
  • Speaker, "Matching Your IP Strategy to Your Open Source Strategy," Linuxworld, San Francisco, August 6, 2008
  • Open Source Business Conference: San Francisco, March 2008
  • Kauffman Fellows: February 2006
  • Open Source Business Conference: San Francisco, March 2004
  • Chair, State Bar of California Intellectual Property Section Open Source Presentation
  • Investing in Open Source: Understanding the Opportunities and Managing the Challenges, SDForum
  • Garage Technology Ventures
  • Georgetown University Law Center
  • National Incubation Association
  • National Association of Bankruptcy Trustees
  • American Association of Publishers
  • Seybold San Francisco Conference
  • National Association of Broadcasters' Multimedia World
  • Game Developers' Workshop
  • Internet World
  • American Society of Magazine Editors
  • PLI Representing the New Media Company: 2000 (Chairman)
  • PLI Sixth Internet Law Institute: 2002

Prior Experience

  • Associate, Brobeck Phleger & Harrison, San Francisco, California, 1982-1986
  • Law Clerk, Chief Judge of Southern District of California, 1981-1982

Civic and Charitable

  • Computer Law Association; Board of Directors (former)
  • Journal of Internet Law ; Editor in Chief
  • BNA Electronic Commerce & Law Report , Advisory Board
  • Computer Lawyer ; Editorial Board
  • Cyberspace Lawyer ; Editorial Board
  • Electronic Commerce and Law Report Advisory Board
  • Global Intellectual Property Asset Management Report , Advisory Board
  • General Counsel, Open Source Initiative


EDUCATION

  • J.D., Harvard University 1981
      1998 Distinguished Alumni Award
  • B.S., University of Michigan 1974 magna cum laude
      Chemistry
  • Université Paris Panthéon-Sorbonne I 1972
      Certificate of Completion

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