Ieuan G. Mahony is a partner concentrating his practice in intellectual property licensing and litigation, and electronic commerce. Mr. Mahony is the firmwide Technology Partner and Chair of the firm's Technology Advisory Council.
Mr. Mahony has counseled clients on, and has litigated, a wide range of intellectual property and technology matters, including matters involving traditional and open source software, software development and integration, IT outsourcing transactions, distance education, "best practices" in data privacy and protection, value-added medical and financial data, traditional and online media, medical devices, and domain names. Mr. Mahony's cases and licensing matters have involved rights under patent, copyright, trade secret, and trademark law, as well as rights of publicity.
Prior to joining Holland & Knight Mr. Mahony was a Law Clerk to Chief Justice Edward F. Hennessey, Massachusetts Supreme Judicial Court.
Mr. Mahony was a member of the Boston College Law Review from 1986-1987 and was the Executive Editor from 1987-1988.
Mr. Mahony is active in community service, focusing his efforts on tutoring grade school students at the nearby Boston Renaissance Charter School.
Representative matters for Mr. Mahony include:
Software Development Disputes
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Represented an international software developer in a dispute with an international automobile manufacturer over the developer's performance under agreements for the development and implementation of a nationwide automotive financing software application. The plaintiff automobile manufacturer sought compensation for a claimed breach of the agreements, and sought release of our client's source code from escrow. After we successfully opposed the plaintiff's motion for a preliminary injunction seeking release of the source code, the matter settled, and was dismissed.
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Represented a regional transportation authority in a dispute with a leading software systems developer. The transportation authority had licensed a range of off-the-shelf financial and HR software products, and had engaged the developer to customize and integrate the licensed software with its existing systems, and to migrate legacy data to the new system. The agreements covering the implementation were fixed fee, with certain exceptions for identified tasks. When billings began to approach the fixed fee cap, a dispute arose as to whether remaining work fell under, or outside the agreed scope of work. In addition, initial testing of the installed system showed performance below acceptance criteria. When the developer demanded additional compensation for completing the installation, and threatened to walk off the project, we advised the client on obtaining replacement contractors (including employees of the developer) to complete the installation, and pursuing the dispute with the developer over unpaid invoices and remaining work, using an informal information exchange and other alternative dispute resolution techniques. The client obtained a completed, fully functional system through alternative contractors, and successfully resolved the dispute with the developer without the need to resort to litigation.
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Represented an international financial services provider in a dispute with a software developer concerning a software system designed to track and report performance metrics and compensation for account managers and other upper level management personnel. The system contained numerous access control mechanisms. Among other elements, the case involved expert reports and discovery comparing (a) the functionality and performance of the system as delivered to (b) the acceptance criteria set out in the parties' agreements and specifications. After filing a motion for summary judgment, we obtained a settlement of the case.
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Represented a software company in trade secret claims against its former employees, who later formed their own company, developed a competing product, and successfully completed an initial public offering, we alleged, based on our client's technology. Shortly after filing the complaint and implementing a detailed and aggressive negotiation strategy, we obtained a substantial settlement for our client.
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Represented the plaintiff in a software trade secret case, suing software engineers who developed a software application and database for the plaintiff, and then later developed a similar system for a competitor. The case required expert analysis of the programs' source code, including particular attention to the architecture, logic flow, message sets, the organization and structure of the individual software modules, and the breakdown of individual functions within the modules. After a two-week trial, the Rhode Island Federal District Court enjoined the defendants from marketing their product without paying our client royalties, and awarded our client full restitution of compensation paid to the defendant software engineers.
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Represented the owner of design software in trade secret claims in Massachusetts Federal District Court against a former independent software engineer and the competitor company who employed him to develop a similar software product. The software allowed fabric and clothing designers to create and manipulate digital images (photographic or otherwise), convert these images into loom-control commands, and generate fabrics incorporating the images in woven patterns. The case involved a detailed comparison between the source code and the design of the two software products. After completion of expert discovery, our client obtained a favorable settlement.
Intellectual Property, Data Protection Practices and IT Representations of Academic Institutions
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Representing a university in connection with software development, licensing and maintenance transaction, covering full accounting, admissions, and human resources software functionality of institution.
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Representing a higher education research facility in complex medical patent due diligence and commercialization project, including structuring and drafting licensing, cross-licensing and assignment agreements.
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Representing colleges and universities in drafting and implementing policies and practices concerning (i) ownership of copyrights and patents; (ii) distance education course development and ownership of course content; (iii) online reserves and library services; (iv) subscription agreements and database access agreements; and (v) online privacy policies, "codes of conduct" and other network use policies, particularly in light of challenges based on peer-to-peer file sharing of copyrighted materials.
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Advising national association of educators concerning trademark protection strategies, and brand licensing issues.
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Advising colleges and faculty members concerning "fair use" exceptions to obligations under the Copyright Act, including TEACH and DMCA exceptions specific to institutions of higher education.
Pharma Matters
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Representing a pharmaceutical company in connection with the development and commercialization of endothelin antagonist and other compounds. The representation included the drafting of licensing agreements, assignments, services agreements, a qualified cost-sharing agreement, and partnering agreements to provide funding and marketing resources for the compounds.
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Representing a technology transfer department in research collaboration agreements and licensing agreements involving antibody synthesis technology relating to cloned transgenic cattle.
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Representing a higher education research facility in complex medical patent commercialization and due diligence project, including structuring and drafting licensing, cross-licensing, and assignment agreements.
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Representing a university laboratory in a cross-licensing dispute concerning the cross-licensor’s obligations to transfer technology relating to patented monoclonal antibody, including technology relating to increased-yield process for the antibody. Resolution of the dispute included, among other components, accelerated mediation, the exchange of draft formal complaints, followed by negotiation and drafting of revised licensing structure and settlement.
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Representing a medical school faculty member in pharma inventions disclosure process, university waiver, and subsequent prosecution and licensing of an invention designed to restore or increase endothelial cell Nitric Oxide Synthase activity for pulmonary hypertension and other conditions.
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Representing a manufacturer and distributor of patented medical devices employed to non-invasively monitor arterial oxygen saturation, systolic pressure, diastolic pressure, mean arterial pressure and other vital signs. The representation included a range of licensing transactions and patent infringement advice.
Data Security Matters
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Advising clients concerning retention of security and intrusion detection experts in the wake of a security breach. Representations include advice and guidance concerning compliance with state "notice of security breach" laws, and concerning related chain of custody and digital integrity issues in order to preserve evidence of the intrusion and mitigate effects. Recent representation involved an international services organization from which seven upper level management laptops had been stolen.
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Represented a national carrier in connection with response to denial of service attacks. Advised concerning chain of custody issues for log files showing hacking activities. Demanded that the site through which the attacks originated block identified traffic, and obtained requisite agreement from site host.
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Representing an online business in connection with claims against a competitor that was "scraping" the client's site for data. Obtained log files showing the improper activity, traced the activity to the competitor, and promptly served the competitor with a cease and desist letter, alleging violation of the Computer Fraud and Abuse Act, the Digital Millennium Copyright Act and common law claims. The competitor agreed to delete the scrapped information and paid damages.
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Representing an online retailer in responding to a denial of service attack. An anonymous visitor to the client's Web site was employing a tool that effectively shut down the site. We served the Internet Service Provider hosting the IP address of the anonymous visitor with a Digital Millennium Copyright Act subpoena, obtained the identity of the intruder, and obtained a quick resolution of the matter.
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Representing a user of online content accused of exceeding the scope of its permitted online access, and accused of violating the Computer Fraud and Abuse Act, among other wrongs. Investigated the client's policies concerning sharing of passwords, dissemination of content obtained from the site, and techniques used for accessing the site. Reviewed the Web site's terms of use and related policies. Responded to the Web site host's assertions, and the matter settled.
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Represented a software developer and Web site host in connection with an intrusion. The client discovered that what appeared to be portions of its source code were being offered on the Web as "samples" to entice potential customers to purchase a complete system. Advised the client concerning forensic work to determine possible security breaches, concerning engagement of a third party investigator to effectuate a "buy" of the samples, and concerning FBI involvement. After the client had obtained available code, advised the client concerning available options and risks.
Reported Cases
- Cacciola v. Nellhaus, 49 Mass.App.Ct. 746, 733 N.E.2d 133
- Greater Boston Real Estate Bd. v. City of Boston, 428 Mass. 797, 705 N.E.2d 256
- Sisk v. Board of Assessors of Essex, 426 Mass. 651, 689 N.E.2d 1340
- Tobias v. Secretary of Com., 419 Mass. 665, 646 N.E.2d 1054
- Ash v. Attorney General, 418 Mass. 344, 636 N.E.2d 229
- Sullivan v. First Massachusetts Financial Corp., 409 Mass. 783, 569 N.E.2d 814
- Digital Equipment Corp. v. AltaVista Technology, Inc., 960 F.Supp. 456 (D.Mass. 1997)
- Scully Signal Co. v. Joyal, 881 F.Supp. 727 (D.R.I. 1995)