Michael is a principal at Gray Plant Mooty and possesses over 25 years of experience representing a variety of businesses and organizations in the acquisition, development, manufacture, marketing, licensing, and distribution of products and services. He has experience in multiple industries, including computer software and related technology, health care, medical device, pharmaceutical, biotech, agribusiness, food and beverage, music, publishing, creative arts, among others.
Michael has a unique perspective and experience with both buyers and sellers having served as senior corporate counsel for a $1B global technology company, partner at a top tier intellectual property law firm, and as a special assistant attorney general responsible for government procurement and managing the legal needs of the Minnesota Department of Health and Human Services.
Michael has special expertise in intellectual property related transactions: patent, copyright, trademark, and trade secret licensing; open source compliance; software export; and government contracts. He is also a Certified Information Privacy Professional (CIPP/US).
Michael is a frequent lecturer and author on topics related to information technology, e-commerce, data privacy, intellectual property, contracts, and licensing. In addition, he is an adjunct faculty member at Hamline Law School and the author of several books on international property related topics.
Experience
General
- Managed corporate acquisitions by $1B global ERP software company including extensive due diligence and follow-up integration activities
- Managed all commercial licensing and related transactions including patent, copyright, and trademark portfolio and patent litigation for global software company
- Served as primary counsel on behalf of pharmaceutical company acquisition of exclusive United States rights to cardiovascular drug
- Completed comprehensive intellectual property and Web site audits for companies of all size
- Represented companies in settling disputes regarding alleged unauthorized use of computer software
- Obtained significant monetary settlement for client based upon copyright infringement by global fashion company
Agreements Negotiated
- Asset acquisition including extensive patent portfolio of Colorado Company for purposes of allowing joint venture to conduct large-scale research, development, and manufacture of new polymers from naturally renewable resources
- Collaborative research agreement related to development of medical devices between Minnesota corporation and London based company
- Software distribution agreement between Minnesota developer of Web based business content management software and London based distributor
- Stent license agreement for leading provider of surface modification coatings for medical devices
- Manufacturing, supply, and license agreements for world leader in design and manufacture of quick disconnect couplings used in industrial, medical, chemical handling, and food and beverage industries
- Software development and license agreements for largest provider of sales force automation software
- Research and license agreement with NREL, the United States Department of Energy's premier laboratory for renewable energy research
- Sponsored research agreements between various universities throughout the country for purpose of developing products for commercial use by private companies
- Patent licenses for processes and products in the pharmaceutical, medical, electronic, telecommunications, agricultural, and other industries
- Computer network system acquisition including all hardware, software and related services for use by a large national retailer based in Minnesota and implemented nationwide
- Cross branding and trademark license agreements for use in food industry
- Multimillion dollar agreement between the State of Minnesota and software vendor for the consolidation of the delivery of health and human services into one computer system network that included review and application of state and federal procurement regulations as well as appropriate computer contracts
- Agreements related to large-scale outsourcing of information technology by multinational financial services institution
- License agreement with Disney for use by licensee of copyrighted images on clothing, gift items, and related accessories
- Licensing rights negotiations with major film companies for use by food company of major feature films for promotional purposes
- Music publishing agreements and related contracts for songwriters and others for record and music publishing company
Publications
- “Legal Guide to Technology Transactions,” Minnesota Department of Employment & Economic Development, April 2012
- “Computer Contracts,” West-Thomson, updated annually since 1988
- “Entertainment Industry Agreements,” West-Thomson, updated annually since 2006
- “Entertainment and Media Law Strategies – Leading Lawyers on Case Strategies, Exceeding Client Expectations, and Negotiating Deals,” Aspatore Books
- “Legal Guide to the Internet,” for use by non-lawyers to better understand data privacy and other issues related to ecommerce, Minnesota Department of Trade and Economic Development
- Regular contributor of articles to international publication, Licensing in the Boardroom, and the National Law Journal
Presentations
- “IP Due Diligence—Lessons Learned From In-House Counsel,” M&A Networking Group, April 2012
- Intellectual Property Basics From Mouthwash to Music, BizLounge, February 2012
- Teaching Intellectual Property Through Music, MJF Street Law Program, January 2012
- “Intellectual Property Considerations for Start-ups,” Project Skyway, October 2011
- “Selecting the Right Arbitration Provision: A Seminar for In-House Counsel,” November 2006
- “Licensing: A Strategy for Procurement, Protection, and Profits,” Seattle, Washington, October 2005
- “E-Commerce: Know Your Online Rights,” St. Cloud, Minnesota, October 2004
- “IP Licensing,” Atlanta, Georgia, September 2004
- “IP and Music,” July 2004
- “License Agreements: New Developments,” July 2003
- “Integrating Knowledge, Technology and Security,” November 2002
- “E-Commerce: Know your Online Rights,” September 2002
- “License Agreements: Case Law Developments,” August 2002
- “Using IP to Create Wealth and Increase Asset Return and Shareholder Value,” March 2002
- “Precision Software Licensing,” Palm Desert, California, October 2001
- “Intellectual Property Rights and Marketing Online,” July 2000
- “Intellectual Property in the New Millennium,” February 2000
- “Developing a Corporate Intellectual Property Strategy” New York, February 1999
- “Protecting Your Company’s Valuable Proprietary and Intellectual Property Rights” April 1998
- “Outsourcing Contracts-Unwinding the Deal,” May 1995
- “From Aristotle to Henry Ford: A Basic Approach to Licensing,” September 1995
- Workshops for Procurement Officers of Federal Department of Health and Human Services, 1988-1990
Education
- University of Minnesota Law School, J.D.,1985
- University of Pittsburgh, B.A., 1977
- Hebrew University, Jerusalem, Israel, 1974
Professional Activities
- Minnesota State Bar Association, Computer Law Section, past president
- International Association of Privacy Professionals
- Certified Information Privacy Professional (CIPP/US)
Community Involvement
- Big Brothers Big Sisters of the Twin Cities
- Justice Squared—a literacy project in the Minneapolis public schools
- Community speaker, “The Holocaust and Tolerance”