James M. Kunick

James M. Kunick

James M. Kunick
Principal
Phone: 312.521.2772 vCard
Fax: 312.521.2872
jkunick@muchshelist.com

PRACTICE GROUPS

AT WORK

James M. Kunick, Chair of the firm's Intellectual Property & Technology group, has nearly two decades of experience representing regional and multinational clients in a broad range of intellectual property, information technology and corporate transactions. Jim's experience includes:

  • Technology Transactions and Licensing: Drafting and negotiating software, patent and trademark licenses; consulting and professional services agreements; hosting, cloud computing and software-as-a-service (SaaS) agreements; data center collocation agreements; hardware and technology purchase agreements; strategic alliance and teaming agreements; reseller, OEM distribution and sales representative agreements; and confidentiality, employment and subcontracting agreements.
  • Outsourcing: Serving as lead counsel representing customers and service providers in IT and business processing outsourcing transactions, including the outsourcing of the applications development and maintenance (AD/M) function, IT infrastructure, call centers, telecommunications services, human resource services and facilities management services.
  • Media Transactions: Representing authors and publishers in publishing agreements; representing Christian and educational content providers in agreements for the licensing of digital content and learning materials; representing an international hotel franchisor in hosting, online travel agency, and reservations and data center outsourcing agreements.
  • Corporate: Representing buyers and sellers in stock option, stock purchase and asset purchase agreements; negotiating government contracts including FAR and DFARS clauses; and performing technology and IP-related due diligence for corporate transactions.

Jim has served for almost 20 years as de facto internal counsel for an international manufacturer of compliance packaging technology. In that role, he is responsible for drafting and negotiating license, sales, product development, supply, OEM and distribution, alliance, reseller and subcontracting agreements.

Jim practiced law for several years in Germany, serving as Counsel in the business and technology sourcing practice group for the Frankfurt office of a major Chicago law firm. In that role, he drafted and negotiated outsourcing and global network services agreements for an international airline alliance client, and advised the alliance and its member airlines regarding data security, privacy policies, website terms and other critical IT and IP legal issues.

While in Germany, Jim also gained government contract experience drafting and negotiating product development and sales agreements between a German aircraft parts manufacturer client and U.S. defense contractors. In addition, he was responsible for negotiating marketing, license, distribution, reseller and end-user software licenses for a German software encryption vendor.

Prior to his legal career, Jim was a Senior Analyst at Andersen Consulting (now Accenture). During law school, Jim served as Vice President of the Moot Court Board. He was also a member of the school's National Moot Court team in the ABA National Appellate Advocacy Competition, and his team finished in the top 10 at the National Moot Court Competition.

IN THE PROFESSION

Jim is a Certified Licensing Professional (CLP) and an active member of the Licensing Executives Society (LES).

A frequent presenter at technology conferences in the United States and abroad, Jim is also a guest lecturer at the College of Engineering of the University of Wisconsin-Madison. In addition, he is a contributor to leading legal and industry journals on the topics of U.S.-European intellectual property law, licensing agreements, outsourcing and vendor contract issues and other critical IP-related business issues.

IN THE COMMUNITY

Jim is a member of the Board of Directors of Community Threads, a thrift store that helps fund Christian schools in suburban Chicago. He also serves as a Unit Commissioner for the Des Plaines Valley Council of the Boy Scouts of America and is an Eagle Scout.

BACKGROUND

University of Miami School of Law
J.D., 1993

University of Wisconsin-Madison
B.S., 1986

Jim is admitted to practice in Illinois and Florida, and before the U.S. District Court for the Northern District of Illinois, the U.S. District Court for the Middle District of Florida, the U.S. District Court for the Southern District of Florida, the U.S. Court of Appeals for the Federal Circuit, the U.S. Court of Federal Claims and the U.S. Patent and Trademark Office.

Jim can speak, read and write German at the Mittelstufe level and earned the Zertifikat Deutsch Prufung from the Goethe Institute in Frankfurt, Germany.