Alec P. Rosenberg

pARTNER

Washington, DC
(240) 883.7556 (phone)
alec@clintonpeed.com

Alec Rosenberg is a versatile business lawyer with nearly two decades of experience solving problems for all kinds of clients. His background includes a mix of outside counsel and in-house counsel roles. He has deep expertise in a wide range of disciplines, including intellectual property, commercial transactions, and dispute resolution. He regularly serves as a “speed dial” advisor for entrepreneurs and CEOs of start-ups and growth-stage businesses in fields ranging from SaaS / technology to consumer products to professional services.

After clerking for a federal judge in the Eastern District of Virginia (a so-called “Rocket Docket”), Alec spent several years litigating a diverse array of matters in the Washington, D.C. office of Covington & Burling. From there, his passion for intellectual property matters led him to Arent Fox, where built a practice specializing in all types of IP scenarios, began serving as “outside GC” to start-ups, high-growth enterprises, and non-profits, and became a partner in 2011. In 2015, he joined the management team of one of his clients—a pioneering e-commerce / consumer products company—and, as its Chief Legal Officer, built legal and risk management functions from scratch and guided the company through meteoric growth in an exceptionally dynamic and competitive business space.

Alec builds relationships easily with persons of all kinds, and across all functions of an organization. He takes his work—but not himself—seriously, and he can be counted on to translate complex problems into actionable options and recommendations. Business leaders come to trust him quickly because he reliably guides them through problems with creativity, sound judgment, and unwavering integrity.

 


Representative Matters:

As a solo practitioner*

  • Outside GC for international educational services provider, including sell-side M&A support.

  • Outside GC for SaaS, web, and mobile app development company.

  • Advised operator of SaaS solution for impact investments on its acquisition of IP rights in technology platform, subsequent outbound license of same, and eventual sale of all assets.

  • Data governance, IP risk management, and transactional counseling for provider of fraud prevention and cyber-security SaaS solutions.

  • Negotiated equity investment and employment arrangement for consumer product start-up.

  • Counseled on and drafted license to use (with option to buy) food business’s IP and other assets.

  • Ongoing IP clearance, registration, licensing, and risk mitigation counseling.

  • Managed outside investigator conducting background investigation of independent contractor on behalf of non-profit organization; handled subsequent separation, pre-litigation counseling, and settlement negotiations arising out of contractor’s termination.

  • Commercial dispute negotiation and preparation of template contracts for experiential caterer.


As a Chief Legal Officer* 

  • Negotiated and drafted complex agreements (e.g., supplier/vendor; SaaS; inbound/outbound IP licenses; retail, office, and R&D facility leases; construction agreements; sponsorships).

  • Managed investments in, and identification, creation, use, and defense of, intellectual property.

  • Reviewed and refined advertising content across all media, ensuring compliance with FTC regulations and best practices.

  • Created People Handbook, including delicate culture-specific policies (e.g., Romance at Work; Moonlighting; Work-Life Balance), and advised on performance management and separations.

  • Crafted internal and customer-facing policies to address developments involving e-commerce, consumer privacy, social media, and online speech.

  • Led crisis management efforts in coordination with other executives, PR, and Operations teams.

  • Led regulatory compliance and safety initiatives for physical and digital product development.

  • Expanded, improved, and managed corporate insurance program.

  • Supported all aspects of Brick & Mortar retail development and expansion.

  • Spearheaded relations with vendors, partners, customers, lessors, and competitors.

  • Successfully managed business disputes without litigation, staying focused on long-term goals.

  • Guided corporate governance and acted as corporate Secretary.


As outside counsel at a large, national law firm*

  • Negotiated complex assignment/license back transaction for leading Internet/technology company to facilitate expansion of key brand.

  • Represented industry-leading SaaS company in multiyear patent license litigation brought by non-practicing entity and patent infringement lawsuit by competitor; favorable settlements resolved pending and potential future claims.

  • Developed and implemented strategies involving national and international registration, due diligence, enforcement, and brand management projects for prominent companies seeking to enhance and extend trademark rights in various industries.

  • Orchestrated all phases of multi-year trademark priority/infringement dispute involving hospitality industry; court granted motion awarding client summary judgment on all claims.

  • Extensive work involving social media issues, DMCA/user-generated content problems, strategies related to web crawling/scraping, publication and collaboration negotiations and agreements, and Copyright Office procedures. 


  • Successfully opposed preliminary injunction motion seeking complete shutdown of client’s business in trade secrets litigation.

  • Managed invention identification, disclosure, and patent application process for multiple technology clients; advised on problems involving uncooperative co-inventors. 


  • Lead advisory and advocacy roles in disputes and negotiations involving, e.g., online content, translations, TV commercials, open source software, screenplays, educational videos and games, medical texts, maps, architectural designs.

  • Transactional due diligence, structuring, drafting, and negotiations (M&A support; inbound and outbound licensing; asset dispositions).

  • Interdisciplinary guidance, crisis management, and dispute resolution, including investigating, obtaining emergency injunctive relief, and achieving favorable consent judgments in cases involving bogus websites and fraudulent online “phishing” schemes for clients in financial services and professional testing/accreditation industries.

*Matters handled before joining the firm


Education

The George Washington University Law School, J.D.
With High Honors;
Order of the Coif;
Law Review;
Moot Court Board

Northwestern University College of Arts & Sciences, B.A.


Honors

Washington DC SuperLawyers Magazine
Selected for inclusion, “SuperLawyers” (2014 & 2015)

Admissions

District of Columbia

Virginia

U.S. District Court for the District of Columbia

U.S. District Court for the Eastern District of Virginia

U.S. Court of Appeals for the Fourth Circuit


Speaking Engagements

Speeches/Lectures

“Enforcement of Famous Trademarks,” USPTO Global IP Academy, August 2011

“The Role of Trademarks in Sustainable Economic Development,” USPTO Global IP Academy, June 2011

“It’s Not Just For Cyberpunks” – Real-World Considerations at the Intersection of Copyright and Virtual Reality,” Copyright Society of the USA, December 2009