Connecting the Dots

Lisa Casey Spaniel helps U.S. companies extend their reach

Published in 2013 Pennsylvania Super Lawyers magazine

By Jessica Tam on May 17, 2013

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For three weeks earlier this year, Lisa Casey Spaniel would go home from work, spend time with her family, put her three kids to bed and then call Singapore. Between 9 to 11 p.m., she worked out a software implementation deal with a U.S. company’s affiliate in the Southeast Asia nation. Spaniel, an intellectual property attorney at Blank Rome in Philadelphia, drafted documents, sent back revisions, then grabbed some sleep before the next two-hour phone call at 5 a.m.

The odd schedule didn’t faze Spaniel. “So I sacrifice some sleep on account of it,” she says. “I’d rather sacrifice sleep than the time with [my kids].”

As outsourcing becomes more common for U.S.-based technology companies, Spaniel guides clients on how to share and sell products in the U.S. and beyond. Her work “kind of bleeds into a lot of different areas,” she says, including manufacturing, distribution and fulfillment of products. Spaniel also provides counsel on areas including software licensing, app development and maximization.

Lately, Spaniel has been protecting web technology for a famous client. “We are working on an agreement with a very famous doctor to promote this website, both on his family of websites and on his show,” she says. Although she’s reluctant to name clients outright, “we do get our share of celebrity endorsements and licensing that comes through the door as well,” she adds. For example, she’s recently been working with fashion designer Isaac Mizrahi.

Spaniel enjoys being at the forefront of technology. “It’s always fascinating to hear from inventors about their new products or their new website ideas,” she says.

But reconciling new technology with existing IP laws can be a challenge. “The patent system is very difficult to apply to social media and new technologies,” she says. “So we are going to New York to talk with a worldwide, very large advertising company about how they can protect themselves from patent infringement suits, with respect to the social media campaigns that they’re developing for all of their clients. Because some of the patents are just so broad, that they cover what many people are doing in the industry. It’s a very difficult topic for the whole advertising industry.

“Many people think the law needs to be changed,” she says. But for now, clients turn to Spaniel and her colleagues to stay in the clear.

Spaniel got her start at Blank Rome in 1995 as a paralegal and served as a summer associate there following her second year of law school. After earning her J.D., she joined the firm in 2000.

Since then she has helped launch an international finance company’s $100 million, multi-year, worldwide software initiative and helped close a purchase agreement in the $200 million sale of a network performance management provider to an IT management software company. She’s also become a partner at the firm.

As for that deal that required the calls to Singapore? It went through for an estimated $6 million. “[The client is] a smaller, privately owned company, so it was pretty transformational for them,” says Spaniel. “I’ve worked with them for over five years, so it’s nice to see people make those kinds of deals happen for their company.”

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