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The Creative and His Counsel: How Hansen Uses
Lawyers To Maintains Its IP Assets Hansen Information Technologies, Inc. (Hansen ), a Sacramento-based company providing software applications to government users, was formed 21 years ago by Bob Hansen, his wife Marie, and a young erudite Chuck Hansen. The family's initial marketing campaign consisted of folding promotional flyers at the kitchen table. Fast forward to 2004 Hansen now employs approximately 250 people, has contracts in over 40 states and seven countries worldwide, has completed nearly 10,000 software implementations and had approximate revenues of $30 million for 2004.
Through its various growing phases, Hansen has used lawyers for different purposes, and has learned from those experiences. "Intellectual property is a part of my life 24/7," acknowledges Chuck Hansen, Chairman and Chief Executive Officer of Hansen. "At work, we enter into new contracts on a weekly basis, many of which are in the millions of dollars and contain very complex terms. In my father's early tenure, much of the work performed by Hansen was done on a handshake, with occasional work orders put in the file." As the industry has grown, public contracts have become more complex. Today, nearly all contracts, whether for software sales and implementation, or for vendor services to Hansen, are reviewed by General Counsel Perry Ginsberg. For years, Hansen only called on lawyers when they were needed e.g. after the fact. Kathi Finnerty of Livingston & Mattesich has represented Hansen since 1994 in matters ranging from public contract disputes to multi-million dollar copyright infringement actions. Early on, Hansen's relationships with its customers were so casual, and its filing system so informal, that numerous customer files had no documents in them other than a bill and a payment receipt. In fact, in handling one case, several key documents were ultimately found in a file cabinet stored in the closet of the women's restroom! Hansen had always been ahead of the curve in its technology advances (it was the first in its field to move from a closed architecture database to an ODBC model using Oracle, and then the first to move to a Windows-based internet portal for egovernment), and when Chuck became CEO and Kent Johnson was appointed as Chief Operating Officer, a vision of more astute internal practices was born. In 1999, Hansen recognized the need to have in-house counsel to guide its practices and growth. Although the position was originally part-time, in a matter of months it became apparent that full time general counsel was needed. Perry Ginsberg has been its Corporate Counsel since that time and handles the vasty majority of Hansen's legal work, while utilizing the services of Kathi Finnerty and others at Livingston & Mattesich for litigation counsel, Giles Attia at Gray Cary Ware & Freidenrich LLP for its corporate work, and other local and international counsel for its multifaceted legal needs.
When not leading the charge at Hansen, Chuck plays the baritone saxophone for the popular local band, Hip Service. "Intellectual property issues arise every day in conjunction with the band's work. Playing other artists' music involves royalties and licensing agreements,, and we are now copyrighting our own music for the upcoming album." Indeed, lawyers are a part of Chuck's life in both work and play. Hansen's business is replete with intellectual property issues. "We are currently undergoing our third branding," Chuck said. Having started out as Hansen Software, Hansen became known as Hansen Information Technologies in the 1990s, and has now implemented the moniker, "HANSEN. People. Government. Solutions." "Unlike years past, trademarks were registered before we rolled out the marketing program. Every effort was made to protect Hansen's copyrights, trademarks and service marks across the country," he said. "'Hansen' is Hansen's registered trademark." The first trade mark infringement Hansen was aware of happened in the early years of the internet. A pig farmer in Arkansas decided that he liked Hansen's logo and adopted it to market his pig farm. "While it was an entertaining story, we were able to persuade the farmer to use a different logo to avoid any risks of confusion or dilution," recalls Kathi Finnerty. "We were, however, tempted to license his logo just for the sake of a practical joke on management, but restrained ourselves." More recently, Hansen defended itself from a disgruntled former employee using the World Wide Web to slander the company and its management. An immediate restraining order was obtained in Sacramento County, and the alleged patent ownership issues were resolved prior to any depositions being taken. "The law and motion judge was not the least bit amused by the employee's effort at creative defamation and shut down his web site until modifications acceptable to Hansen were made," Ginsberg said. "Kathi Finnerty was able to obtain one of the most restrictive injunctions I have ever seen." Currently, Hansen recognizes the value of its intellectual property assets as a key component to its continued success. Assuring proper product usage by its clients, diligent internal protection, as well as continual efforts to prevent unauthorized usage or disclosure of protected assets is an important part of Hansen's asset protection program. Hansen routinely monitors the marketplace to make certain that none of its marks or its name are compromised. "Intellectual property is everything to a software company. Without that [intellectual property], we're nothing. Protection of our intellectual property is a component of just about everything we do," Ginsberg said. Litigation of intellectual property is something Hansen will not hesitate to undertake in order to protect its business and assets when it must, but the preferred course is to implement pro-active, preventive measures. For example, Hansen segregates and restricts access to the development area, scrupulously restricts delivery of confidential information to those properly licensed or under contract not to disclose, maintains appropriate agreements with clients and employees, monitors other market place players, conducts regular audits of its developments and other assets and, of course, utilizes quality counsel to patent, copyright or register its intellectual property. |
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