1. Meet Lothar Determann
Co-Chair of ACI’s
Produced by:
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2. Mr. Lothar Determann
Partner
Baker & McKenzie LLP
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) –
www.bakermckenzie.com/BKDetermanGuidetoPrivacyLawAug12/.
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,
#ACISoftwareLicensing

3. 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.
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 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
#ACISoftwareLicensing

4. 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.
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.
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.
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
#ACISoftwareLicensing

5. Lothar Determann
Co-Chair of ACI’s 17th Annual
The Practical and Tactical Art of the Deal in Software
Agreements - Cloud, SaaS, Open Source & Licensing