Mr. Bernacchi is a partner emeritus in Los Angeles–based Irell & Manella LLP, one of the leading commercial law firms in California. For more than 35 years he has specialized in the legal, technical, and strategic planning issues and opportunities arising from computer hardware and software, multimedia, telecommunications, e-commerce, and other advanced technologies and businesses, including development, acquisition, protection and exploitation of intellectual property, acquisitions and mergers, licensing, distribution, co-marketing, joint venture, and other strategic partnering arrangements and related contract disputes.

Mr. Bernacchi has been named to the Southern California "Super Lawyers" list by Los Angeles Magazine every year since 2004. He has also been included for the past ten years in The Best Lawyers in America in the areas of corporate law and information technology law. In its publication The Best of the Best 2000, the Euromoney Legal Media Group named Mr. Bernacchi one of the three top partners worldwide in the area of information technology. He is also listed in Euromoney's 2003 Expert Guide to the World's Leading Technology, Media & Telecommunications Lawyers. In 1999, Law Business Research Ltd. selected Mr. Bernacchi for inclusion in its publication An International Who's Who of Internet and E-Commerce Lawyers.

ADR Experience

1. Represented a privately-held software development company in a mini-trial mediation relating to a pending lawsuit involving various disputes and claimed breaches under software licensing and distribution agreements, which resulted in a settlement on mutually acceptable terms.
2. Represented a major software development and outsourcing company in a mediation with the City of Los Angeles Building and Safety Department relating to various disputes and claimed breaches under a system development agreement, which resulted in a settlement on mutually acceptable terms.
3. Represented a privately-held software company in a mediation relating to pending litigation involving various disputes and claimed breaches under a joint venture agreement with a major accounting firm, which resulted in the sale of the software company's assets to the accounting firm on mutually acceptable terms.
4. Represented a publicly-held software company in a mediation relating to pending litigation with former employees of the company involving various disputes and claimed breaches arising from the employment relationship and agreements under which the software company had purchased a business previously owned by such employees, which resulted in a settlement on mutually acceptable terms.
5. Served as a party-appointed arbitrator for a manufacturer and distributor of children's books and toys in an arbitration in Illinois to resolve various disputes and claimed breaches under a computer system development contract, which were resolved by settlement before any arbitration hearings had taken place.
6. Served as a member of a neutral three-party panel of arbitrators engaged to determine, in arbitration hearings in Houston, Texas, certain issues which had arisen in pending litigation between a publicly-traded software company and a major publicly-held energy company, which issues involved the scope of license rights granted to algorithms used in the development of software for seismic data processing and interpretation and related matters.
7. Served as a mediator in connection with a dispute that was the subject of a lawsuit pending in the Circuit Court of Cook County, Illinois, between a full service advertising agent and a software development company relating to the design and development of two computer software applications. After one day of mediation the dispute was settled and the lawsuit was dismissed.
8. Served as a mediator in connection with a dispute between a software vendor and a mutual fund company relating to the installation and customization of a portfolio management system. After approximately six hours of mediation the parties determined that their positions were too far apart to justify further attempts at settlement.
9. Served as a party-appointed arbitrator for a chain of department stores in a AAA arbitration in Boston to resolve various disputes and claimed breaches arising from a contract for the procurement of a computer system. The case settled before the arbitration hearings.
10. Served as a party-appointed arbitrator for a manufacturer of imaging hardware in a AAA arbitration in San Diego to resolve certain disputes arising from a purchase/license of computer hardware and software from a company in the business of developing and marketing software, including enterprise resource planning applications. The case settled before the arbitration hearings.
11. Served as a mediator for a pre-litigation mediation of a dispute between a large telecommunications company and a small software developer. The dispute was settled without a complaint being filed.

Representative Matters

Represented America Online, Inc. in establishing a joint venture in Japan with Mitsui and Nikkei to create a Japanese version of AOL's commercial online service as well as a joint venture in Latin America with the Cisneros Group for a version of this service in countries in Latin America.

Represented AT&T in establishing a joint venture with Matsushita, Sony and Bertelsmann for the purpose of developing a secure system for the delivery of music and other content over the Internet.

Represented Peter Norton Computing, Inc. in connection with its intellectual property protection program, licensing and distribution activities and a variety of other matters, including its merger into Symantec Corp.

Represented Intuit, Inc. in connection with a transaction involving the joint development (with a major banking institution) of Web-based human resources services.

Represented privately-held Sierra Monolithics, a developer of state-of-the-art microwave communications systems and ultrahigh-speed integrated circuits in complex development and licensing transactions with IBM and other vendors of such products.

Counseled Hewlett Packard Corporation in connection with HP's e-commerce strategies.

Represented Constellation Power Source, Inc. and its affiliates (formerly Baltimore Gas & Electric) with respect to licensing risk management software from Goldman Sachs for Constellation's energy trading business.

Represented the Los Angeles Unified School District in connection with various hardware and software procurements and various intellectual property matters.

Represented Technicolor Digital Cinema, Inc. and related entities with respect to the purchase of Qualcomm, Inc.'s minority interest in Technicolor Digital Cinema LLC, a joint venture relating to the digital cinema business, and the acquisition of certain patents and other intellectual property rights from Qualcomm.

Represented numerous privately held software development, technology consulting, database and e-commerce companies with respect to a broad range of matters as well as numerous corporations and financial institutions in connection with computer, information technology and telecommunication system procurements and outsourcing of the functions performed by such systems.

Professional Activities 

• Member of the Steering Committee; Former co-chairman of Committee R (International Technology and E-Commerce Law) of the International Bar Association's Section on Business Law; Member of the Advisory Board, former Director and Past President of the Computer Law Association; Co-author of Data Processing Contracts and the Law (Little, Brown & Co., 1974); Co-author of Bernacchi on Computer Law (Little, Brown & Co., 1986); Frequent lecturer
  

Publications

• Co-author, Bernacchi on Computer Law: A Guide to The Legal and Management Aspects of Computer Technology (Little, Brown & Co., 1986).
• Co-author, Data Processing Contracts and the Law (Little, Brown & Co., 1974).
• Author, Chapter on "Acquiring Software Companies in Software Procurement", Nordic Yearbook of Law and Informatics (1992).
• Co-author, Chapter on "Distribution of Computer Software in Non-U.S. Countries: Five Important Concerns", The Law and Business of Computer Software (D.C. Toedt, ed. 1989).
• Co-author, "A Structured Approach to Analyzing the Substantial Similarity of Computer Software in Copyright Infringement Cases", 20 Ariz. State Law Journal 625 (Fall 1988).
• Co-author, "Computer System Procurement", 30 Emory Law Journal 395 (Spring, 1981).
• Co-author, "The Leasing of Hardware" and "Taxation of Computer Hardware and Software", Computers And The Law, Third Edition, Section of Science and Technology, American Bar Association (R. Bigelow ed. 1981).
• Co-author, "Philosophy, Data Processing and the Rules of Evidence", 48 Los Angeles Bar Bulletin 374 (August, 1973).

Seminars & Speeches

• Lecturer, Course on Data Processing Contracts in the Advanced Professional Program, University of Southern California Law Center (Spring, 1972; Fall, 1978; and Fall, 1981).
• Lecturer, ALI-ABA Course of Study on Law and Computers in the Seventies (1972).
• Lecturer, American Bar Association, Section of Litigation, National Institute, "The Litigator in a Technological Age" (1975).
• Lecturer, Computer Law Association, West Coast Conference (1976).
• Lecturer, Computer Law Association, Annual Meeting Conference (1977).
• Lecturer, Course on Practical and Legal Aspects of Negotiating Data Processing Contracts, University of Denver (1978).
• Lecturer, Course on Practical and Legal Aspects of Negotiating Data Processing Contracts, University of Houston (1978).
• Lecturer, Course on Practical and Legal Aspects of Negotiating Data Processing Contracts, University of Tulsa College of Law (1978).
• Lecturer, Course on Practical and Legal Aspects of Negotiating Data Processing Contracts, Pacific Lutheran University, Seattle, Washington (1978).
• Lecturer, Course on Practical and Legal Aspects of Negotiating Data Processing Contracts, University of Toledo (1978).
• Lecturer, Course on Practical and Legal Aspects of Negotiating Data Processing Contracts, Washington University, St. Louis, Missouri (1978).
• Lecturer, Course on Practical and Legal Aspects of Negotiating Data Processing Contracts, University of Denver (1978).
• Lecturer, American Bar Association, Young Lawyers Division, National Institute, "Computers in Litigation" (1979).
• Lecturer, Computer Law Association, West Coast Conference (1979).
• Lecturer, Course on Practical and Legal Aspects of Negotiating Data Processing Contracts, American University, Washington, D.C. (1979).
• Lecturer, Course on Practical and Legal Aspects of Negotiating Data Processing Contracts, Wright State University, Dayton, Ohio (1979).
• Seminar Leader, "Computer Contracting - A Practical Guide", International Computer Negotiations, Inc. (1979 - 1980).
• Lecturer, Computer Law Association, Annual Meeting Conference (1980).
• Lecturer, Practicing Law Institute, West Coast Conference on Computer Law, San Francisco (1981).
• Lecturer, COMDEX, "Beating the Tax Man Legally" and "Legal Problems of ISO's", 1981 Conference and Exposition, Las Vegas (1981).
• Lecturer, EDP Auditors Association, Washington (June, 1981) and Los Angeles (1981).
• Lecturer, "Forming and Financing High Technology Ventures", Third Annual Computer Law Institute, University of Southern California Law Center (1982).
• Lecturer, Practicing Law Institute, Computer Law, New York (1983).
• Lecturer, Annual Conference, Arizona Law and Technology Institute (1983).
• Lecturer, Annual Conference, Arizona Law and Technology Institute (1984).
• Lecturer, Annual Conference, Arizona Law and Technology Institute (1985).
• Lecturer, Pacific Rim Symposium, International Bar Association (1985).
• Lecturer, National Computer Conference, Las Vegas, Nevada (1986).
• Lecturer, "International Distribution of Computer Software", Seventh Annual Computer Law Institute, University of Southern California Law Center (1986).
• Lecturer, "Selected Aspects of Negotiating Data Processing Contracts", California County Counsels' Association Conference (1987).
• Lecturer, "Missed Opportunities and Pitfalls to be Avoided in Structuring End-User and Distribution Contracts", Eighth Annual Computer Law Institute, University of Southern California Law Center (1987).
• Lecturer, "Potential Points of Conflicts in Advanced Technology Contracts", High Tech and Dispute Resolution Seminar, International Bar Association (1987).
• Lecturer, "Source Code Escrows and Bankruptcy", London Computer Law Society (1987).
• Lecturer, "Use of Expert Witnesses in Litigation Involving Computer Contracts", International Conference on Computers and Law (1988).
• Lecturer, "Keys to Success in Professional Services Projects", 68th ADAPSO Management Conference (1988).
• Lecturer, "The Impact that Computer Law Will Have on New and Emerging High Technology Applications", Ninth Annual Computer Law Institute, University of Southern California Law Center (1988).
• Lecturer, "Selected Liability Issues Arising from Electronic Funds Transfers", 3rd National Conference on Computer Law, Buenos Aires, Argentina (1988).
• Panelist, "Avoiding the Pitfalls in Negotiating Computer System Contracts", 23rd Annual Bank Council Seminar, California Bankers Association, San Diego, California (1990).
• Moderator, "The Growing Importance of Patent Laws on the Computer Industry", University of Southern California Law Center 11th Annual Computer Law Institute, Los Angeles, California (1990).
• Lecturer, "Software's Hottest Topics", "Advanced Strategies: Patents and Copyrights", and "Outsourcing Contracts", International Computer Negotiations, Inc.'s Master's Program, Los Angeles, California (1991).
• Moderator and Lecturer, "Manufacturing and Marketing Opportunities In the United States and Canada", World Computer Law Congress, Los Angeles, California (1991).
• Lecturer, "Dispute Resolution", Committee R (International Computer and Technology Law Section), International Bar Association Section on Business Law, 10th Biennial Conference, Hong Kong (1991).
• Lecturer, "Computer Databases: Copyright and Other Protection From the U.S. Perspective", International Conference on Intellectual Property Rights, Chinese National Federation of Industries, Taipei, Taiwan (1991).
• Lecturer, "U.S.: Development and Marketing of Computer Software - Recent Developments", Fifth International Congress on Computer Law, São Paulo, Brazil (1991).
• Lecturer, "After The License - Software Maintenance Agreements", Fifteenth Annual Institute, American Intellectual Property Law Association, La Quinta, California (1992).
• Lecturer, Transactional Session, "Simulated Transactional and Litigation Sessions Covering State of the Art Issues in Computer Law", Computer Law Association, San Francisco, California (1992).
• Commentator, "Acquiring Software Companies", Software Procurement '92, International Federation of Computer Law Associations, Stockholm, Sweden (1992).
• Lecturer, "Selling Up, Selling Out", CORUM Conference Series, Los Angeles, California (1992).
• Lecturer, "Negotiating the Best Deal", Software Asset Management Special Interest Group (SWAMI), Gartner Group, San Jose, California (1992).
• Moderator, "The Impact of Technology and Law on Strategic Planning for Businesses in the Next Decade", Committee R (International Computer and Technology Law Section), International Bar Association Section on Business Law, Annual Conference, Cannes, France (1992).
• Moderator and Lecturer, "Intellectual Property Laws: Getting the Competitive Edge", World Computer Law Congress, Second Biennial Conference, San Diego, California (1993).
• Lecturer, "GOTCHA: Problems, Pitfalls and Strategies for Software Licensing", Software Asset Management Special Interest Group (SWAMI), Gartner Group, Atlanta, Georgia (1993).
• Lecturer, "Selling Up, Selling Out", CORUM Conference Series, Los Angeles, California (1993).
• Lecturer, "Extraction and Transplanting of Intellectual Property in a Failed International Venture: A Surgical Response", Fifth Annual International Law Weekend, State Bar of California, San Francisco, California (1993).
• Moderator, "Leveraging the Emerging Software Pricing Models", Software Asset Management Special Interest Group (SWAMI), Gartner Group, San Francisco, California, New York (1994).
• Lecturer, "Finance, Distribution and Marketing Aspects of Interactive Media", Division 46 - Media Psychology, American Psychological Association Annual Convention, Los Angeles, California (1994).
• Lecturer, "Outsourcing, A Growth Industry", National Intellectual Property Law Institute, Washington, D.C. (1994).
• Lecturer, "Due Diligence in Business Transactions", Irell & Manella Due Diligence Seminar, Beverly Hilton Hotel, Beverly Hills, California (1994).
• Panelist, Computer Law Association, Information Technology Law '95, Trends & Tips: How the Legal Profession Can Add Value; Contracting Workshop Part I: Tips and Resources (1995).
• Moderator, Computer Law Association, '96 Computer & Telecommunication Law Update and World Computer Law Congress; Developments in Anti-Trust and Trade Regulation, Annual Meeting Conference (1996).
• Lecturer, "Successful Software Development in New Environments", 17th Annual Computer Law Institute, University of So. California Law Center (1996).
• Lecturer, "How to Succeed at Content Acquisition, with a Focus on Online Use", 13th Annual Pacific Rim Computer Law Institute, Washington State Convention & Trade Center (1996).
• Panelist, "Protecting your IP Assets in Cyberspace", VentureNet '96 (1996).
• Lecturer, "The Internet and Electronic Commerce in the United States", The 1997 CLA Pacific Rim Conference, Honolulu, Hawaii (February, 1997).
• Panelist, "Year 2000 Warranties", Year 2000 Systems Compliance, Emerging Technology Executive Forum (ETEF), Santa Monica, CA (March 13, 1997).
• Panelist, "Markets of Tomorrow: Electronic Banking and Commerce", Computer Law Association, 1997 Computer & Telecommunications Law Update, Washington, D.C., ANA Hotel (April 24-25, 1997).
• Moderator, "The Future of Commerce in Cyberspace", 18th Annual Computer Law Institute, University of So. California Law Center (May 15-16, 1997).
• Panelist, "Search & Selection of International Partners", Software Council of Southern California, Long Beach Airport Marriott (August 26, 1997).
• Panelist, "The Year 2000 - What is the Executive Board's and CIO's Personal Liability?", Fall Conference of the Southern California Chapter of the Society for Information Management, Long Beach, CA (December 2, 1997).
• Panelist, "Year 2000 Awareness Workshop", sponsored by Southern California Bank, Sutton Place Hotel, Newport Beach, CA (October 28, 1998).
• Panelist, "Year 2000 Litigation Risk Avoidance and Management: Planning for the Millennium", Irell & Manella LLP and American International Group, Inc., Westin South Coast Plaza Hotel, Costa Mesa, CA (October 29, 1998), and Beverly Hilton Hotel, Beverly Hills, CA (October 30, 1998).
• Panelist, "Year 2000 Awareness Workshop" sponsored by Santa Monica Bank, Sheraton-Miramar Hotel, Santa Monica, CA (November 18, 1998).
• Panelist, "Year 2000 Awareness Workshop", sponsored by Southern California Bank, Embassy Suites, Downey, CA (February 4, 1999).
• Panelist, "Business to Business E-Commerce", 21st Annual Computer Law Institute, University of So. California Law Center (May 11-12, 2000).
• Panelist, "Licensing Challenges: New Business Processes & Models for Doing Procurement Deals in the New Economy", Caucus 2000 - The Annual Conference for High Tech Procurement Professionals, Hyatt Islandia, San Diego, CA (September 6-7, 2000).
• Panelist, "Security & Privacy Issues in E-Commerce Agreements", Caucus 2000 – The Annual Conference for High Tech Procurement Professionals, Hyatt Islandia, San Diego, CA (September 6-7, 2000).
• Panelist, "eLegal, Business-to-Business Integration of Electronic Systems", E-Business Special Interest Group, Software Council of Southern California, Sheraton 4-Points Hotel, Culver City, CA (September 8, 2000).
• Panelist, Trade Secrets, "The Surest Way to Protect Your Venture's Jewels", Software Council of Southern California, The Doubletree Suites, Santa Monica, CA (October 4, 2000).
• Panelist, "Emerging Trends in Cyber Terrorism and Corporate Espionage and the Implications to the Linux Userbase", Linux World Expo, Moscone Convention Center, San Francisco, CA (August, 2001).
• Panelist, "How to Resolve Complex Financial Disputes Without Going to Court", Impact Round Table, Los Angeles, CA (May, 2003).

Bar & Court Admissions

• 1965, California