DEBORAH G. SPANIC - Whyte Hirschboeck Dudek SC

DEBORAH G. SPANIC
Technology Law
(414) 978-5318 / dspanic@whdlaw.com
EXPERIENCE PROFILE
Deborah Spanic is an attorney in the Milwaukee office of Whyte Hirschboeck Dudek S.C. where
she concentrates her practice in commercial and information technology transactions and
intellectual property, particularly copyright and trademark. She has particular expertise in
preparing and negotiating trademark and technology license agreements, copyright license
agreements, joint development agreements, and software licensing contracts. Deborah brings 15
years of corporate business experience to the firm, including experience managing and directing
internet development for a Fortune 100 financial services company and also serving as in-house
intellectual property counsel to a large global manufacturing company.
Deborah serves on the State Bar of Wisconsin's Communications Committee and has coauthored
the Wisconsin Business Advisor Series chapter on Internet law. She has presented on
topics such as software licensing, e-commerce business issues, cyberlaw trends, the intersection
of technology and intellectual property and commercial and technology contracting.
Deborah has:
• Overseen and managed internet development and the business implementation of e-commerce
technology for a Fortune 100 financial services company and a large manufacturing company.
• Overseen and managed all global intellectual property matters, including trademark, patent,
copyright and trade secret, for a global manufacturing company.
• Overseen and managed global intellectual property litigation, including patent infringement
matters in Germany, Italy, UK, US and China, and was lead attorney to the successful
completion of a $60 million patent trial in the Federal Circuit-Western District of Wisconsin
in 2005.
• Negotiated and drafted a wide variety of technology transfer, software, copyright and
trademark license agreements, including a $40 million trademark license agreement with a
Fortune 50 company.

DEBORAH G. SPANIC, continued
Experience Profile, continued
• Provided advice and counsel to clients regarding software infringement audits and data
privacy regulation.
• Advised clients on online marketing issues, including issues related to advertising law and the
FTC, keyword advertising, and the Children’s Online Privacy Protection Act (COPPA).
• Prosecuted domain name infringements and online brand infringement, including 100%
success rate for clients in UDRP proceedings, both as complainant and respondent.
• Represented clients on technology and intellectual property issues, including performing due
diligence, for several major mergers and acquisitions.
• Provided assessment and analysis to clients on technology and intellectual property risks.
• Drafted and negotiated performance agreements, production agreements and license
agreements for clients in the music industry.
• Developed and conducted training of engineering staff on patent and trade secret issues, and
marketing staff on trademark issues.
• Drafted and implemented comprehensive polices and procedures for managing patent
portfolios, trademark portfolios and for protecting trade secret information.
• Drafted and implemented business processes that have consistently provided management
efficiency and saved significant cost, including a savings of over $700,000 annually in
intellectual property expenses.
PROFESSIONAL PROFILE
Education
• Marquette University Law School, J.D., 2004; Recipient, ABA/BNA Award for
Excellence in the Study of Intellectual Property Law, 2004.
• University of Wisconsin, Honors B.A. in English, 1992; included study abroad in Rome,
Italy through University of Michigan
• NASD Series 6 Registered Representative stockbroker license, 1996-2000

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Admissions, continued
Admissions
• State Bar of Wisconsin
Professional Associations
• State Bar of Wisconsin, Member of Communications Committee
• American Bar Association (Intellectual Property Law Section)
• International Trademark Association (INTA)
Community Involvement
• Board of Directors, Urban Ecology Center, 2008-present
• Secretary, Board of Directors, Milwaukee Chamber Orchestra, 2008-present
• Member, Board Development Committee, Downtown Montessori Academy, 2009-
present
• President, Downtown Montessori Academy PTO, 2006-2009
• Advisory Board, University of Wisconsin E-Business Consortium (UWEBC), 2004-05
Awards & Distinctions
• 2008 Wisconsin Rising Star, Wisconsin Super Lawyers magazine
• American Bar Association/Bureau of National Affairs Award for Excellence in the Study
of Intellectual Property Law, 2004
Articles and Presentations
• Copyright 101 for bloggers - Killing the myths, Wisconsin Technology Network (October
17, 2009)
• Best Practices in E-Mail Marketing, co-author, UW E-Business Consortium Best Practice
Report (May 28, 2009)
• CAN-SPAM and Best Practices in Email Marketing, UW E-Business Consortium Web
Marketing & Strategy Peer Group (April 2, 2009)
• Text messages on company-owned equipment considered private Not so fast.,
Wisconsin Technology Network (March 17, 2009)
• Internet Law, The Wisconsin Business Advisor Series: Commercial and Consumer
Transactions, co-author, State Bar of Wisconsin CLE Books, 2008 Supplement to Vol. 3
• CAN-SPAM: Does Your Email Comply, UW E-Business Consortium e-Merchant Retreat
(September 10, 2008)
• Negotiate Your IT Contract: Make Sure Vendor Doesn't Hold, Small Business Times
(June 13, 2008)
• Willful Patent Infringement : 1 Year After In re Seagate Technology, Whyte Hirschboeck
Dudek's Corporate Counsel Forum - What You Can Do to Identify, Protect and Maximize
Your Company's Intellectual Property (May 28, 2008)

DEBORAH G. SPANIC, continued
Articles and Presentations, continued
• Is Your Web Site Secure...From Your Developer, Article in "Business Law News," a
publication of the State Bar of Wisconsin's Business Law Section (April 2008)
• Critical Considerations for Software Licensing, Licensing Executives Society Spring
Meeting (April 22, 2008)
• Key Issues in Cyberlaw, Marquette University (March 2008)
• Trademarks for the In-House Practitioner, Wisconsin Association for Corporate Counsel
(Fall 2007)