Attorney, Arbitrator and Mediator

Managing Attorney/Arbitrator/Mediator, Paul E. Burns, P.C. dba Burns Legal, 2023-Present; Partner/Attorney/Arbitrator/Mediator, Procopio, Cory, Hargreaves & Savitch LLP (AMLAW200), 2010-2023; Adjunct Professor of Law, Pepperdine University School of Law Straus Institute for Dispute Resolution, 2008-Present; Attorney, AMLAW100 and regional firms (including Steptoe & Johnson and LeBoeuf, Lamb, Greene & MacRae), 1985-2010.

Over 30 years of legal experience and 15 years of arbitration experience in:
COMMERCIAL CONTRACT AND FRANCHISE: Counsel or Arbitrator in hundreds of contract disputes involving software, manufacturing, supply, distribution, purchasing, sales, product development, marketing, services, corporations, limited liability companies, partnerships, insurance, indemnity. Arbitrator in 20+ franchise disputes in restaurants, beverage, retail, and fashion.
HEALTHCARE: Arbitrator or mediator in 20+ healthcare-related disputes including as emergency arbtirator. Advised on HIPAA data security and privacy obligations. Handled litigation involving healthcare computer software, health IT systems, and HIPAA for pharmacy benefit management (PBM) company. Drafted numerous manufacturing, research and development, licensing, purchase and sale agreements and provider agreements for digital healthcare companies, medical device manufacturers and biotechnology/life sciences clients. Received AAA training in credentialing/peer review/medical staff and provider contract disputes.
TECHNOLOGY, INTELLECTUAL PROPERTY, LICENSING: Counsel or Arbitrator in many technology and IP disputes involving patent infringement, copyright infringement, trademark infringement, trade secret misappropriation, and licensing in computers, software, information technology, gaming, artificial intelligence (AI), blockchain, bitcoin, semiconductors, fintech, electrical, mechanical, chemicals, fashion and music.
LIFE SCIENCES: Arbitrator in complex pharmaceutical license dispute. Negotiated life sciences license, manufacturing, R&D and clinical data agreements. Advised life sciences clients on intellectual property rights, manufacturing, sourcing, supply, distribution, regulatory compliance, HIPAA, cybersecurity, privacy. Represented clients in litigation and counseling on disputes regarding pharmaceuticals, biotechnology, genomics, biologics, medical and dental devices and clinical data. Designed and taught Biotechnology Licensing & Litigation at top-25 ranked law school.
ENTERTAINMENT/MEDIA: Many arbitrations involving music, video, film, and TV, film distribution, theatrical and publishing rights disputes. Represented online entertainment company negotiating agreements with production companies, talent, and SAG/AFTRA. Handled video game development/IP disputes. Speaker at San Diego Comic-Con.
INTERNET/DATA PRIVACY: 20+ years as thought leader in Internet Law including drafting Internet Terms of Use and Privacy Policies for Internet start-ups, social media companies and established companies, and counseled them on cybersecurity and data privacy obligations under state and federal law, Federal Trade Commission guidelines, HIPAA, FERPA and GDPR. Data breach investigations.
CORPORATION/LLC/PARTNERSHIP/INVESTMENT/SECURITIES: Arbitrator in 15+ disputes involving claims of breach of fiduciary duty, bondholders’ claims, broker-dealer conduct, breach of investment advisor agreements, unsuitable investments, and securities fraud. Advised clients on business entity creation.
FINANCIAL/CREDITORS' RIGHTS: Counsel in 100+ disputes involving financing agreements, loan agreements, collections, and creditor/debtor rights.
PROFESSIONAL SERVICES: Arbitrator or mediator in several professional malpractice cases involving alleged accounting malpractice applicable to international taxation, forensic accounting experts, and allegations of legal malpractice and excessive fees in a patent infringement case.
EMPLOYMENT: Advised on Americans with Disabilities Act, Federal Medical Leave Act, sexual harassment and discrimination, and age discrimination. Handled litigation involving breach of employment agreements and trade secret misappropriation.
ELECTRONIC DISCOVERY: 14+ years of experience as thought leader in E-Discovery. Appointed as Special E-Discovery Master in court and arbitration proceedings.

Over 15 years of mediation experience and mediation training. Served for 12+ years as an Adjunct Professor of Law teaching mediation at the top-ranked Pepperdine University School Caruso School of Law's Straus Institute for Dispute Resolution, trained 200+ students and supervised hundreds of simulated mediations. Developed a proprietary method of mediation. Co-created/led The Sedona Conference Patent Mediation Drafting Team involving multiple stakeholders and several prominent federal judges to develop best practices for mediating patent infringement disputes and was a Contributing Author of "Patent Mediation Best Practices," The Sedona Conference Working Group on Best Practices in Managing Patent Litigation (2016). Serve as a member of the Panel of Trademark Mediators for the International Trademark Association. Serve as Vice Chair of the American Intellectual Property Association and assisted in developing AIPLA Mediator List application protocol. Mediation practice is focused on technology, intellectual property and commercial dispute resolution, including patent mediation, copyright mediation, trademark mediation, and mediation of disputes involving trade secret misappropriation, license agreements, technology-related agreements, commercial contracts, employment relationships, franchise relationships, environmental, and all other types of disputes involving subject matter such as computer hardware, software and information technology, entertainment, Internet and E-Commerce, website terms of use and privacy policies, social media, cybersecurity, biotechnology and pharmaceutical, healthcare, semiconductor processing, electronics, chemical, product manufacturing and distribution, publishing, insurance, financial services, and professional services. Also mediated numerous litigation matters at the request of various courts involving personal injury, commercial disputes and banking/financial disputes. Available to mediate healthcare disputes, including disputes involving peer review, credentialing, privilege suspension/termination, compensation and other medical staff disputes, billing and collections disputes, medical practice corporations, limited liability companies and partnership disputes, medical and other health care provider contracts with hospitals and managed care organizations (MCO), healthcare insurance and Medicare/Medicaid coverage and reimbursement disputes, medical device and purchase and sale agreements, digital medicine, False Claims Act disputes, Health IT meaningful use disputes, medical malpractice and other health care provider malpractice disputes. Available to mediate employment disputes including employment agreement and compensation disputes, Americans with Disabilities Act, Federal Medical Leave Act, sexual harassment and discrimination, and age discrimination. Available to handle corporation, limited liability company and partnership disputes involving claims of breach of fiduciary duty, excessive compensation, derivative claims and dissolution. Available to mediate disputes involving shareholders, bond holders, investment advisors, suitability of investments, and securities fraud. Available to mediate banking and financial disputes involving financing agreements, loan agreements, collections, creditor and debtor rights and bankruptcy. Available to mediate disputes involving real estate purchase agreements, real estate development and real estate financing, as well as construction disputes. Available to mediate personal injury, toxic tort, hurricanes and other mass disasters, insurance coverage and class action disputes. Available to serve as electronic discovery mediator or Special E-Discovery Master in courts and arbitration proceedings, SPECIAL EXPERTISE IN MEDIATING INTERNATIONAL AND MULTICULTURAL DISPUTES.

In addition to participating as counsel in hundreds of mediations and settlement conferences, acted as mediator in 150+ disputes before and during litigation and arbitration. The following is a representative list of matters served as mediator:

• Several managed healthcare disputes including claims underpayment and denial, excessive billing and whether services were reasonable and necessary including involving Fortune 500 health insurers and plans, major regional hospital systems, all, medium and large provider practice groups.
• $20 million dollar trade secret dispute between two semiconductor manufacturers concerning the design of integrated circuits.
• Trademark infringement dispute between cannabis company and organic food company.
• Trademark infringement and Internet domain name dispute involving web-based retailer.
• Lanham Act False advertising with patent infringement counterclaims between major cybersecurity/data privacy companies.
• Multiparty entertainment and professional services dispute involving star of a hit TV show against tax accounting firms for accounting malpractice.
• Patent infringement dispute by inventor against Fortune 500 paper manufacturer.
• Patent infringement/trade secret misappropriation dispute between sound equipment manufacturers.
• Copyright infringement claims involving photographs published by major school book publisher.
• Claim of negligent and unsuitable investments against an investment advisory firm.
• Claim of nonpayment of fees and counterclaim of failure to provide financial advisory services.
• Dispute between a pharmaceutical company and a medical spa.
• Digital online marketing services dispute.
• Dispute involving Internet video advertising.
• Numerous mediations of discovery and procedural matters within arbitration proceedings .
• Mediation of electronic discovery disputes in court actions as a Special Master for the U.S. District Court for the Central District of California.
• Partnership and breach of fiduciary duty dispute.

During my years of teaching mediation to law students and mediating cases, especially complex patent, technology, trademark, copyright, entertainment and commercial disputes, I have developed a proprietary method of mediation. This method includes thorough review of factual allegations of each side, the applicable law, each parties' arguments as to application of law to the facts, and the parties' respective interests and needs. While I have the knowledge and experience to provide candid evaluations of strengths and weaknesses of each parties' respective legal positions in private caucus when necessary, I focus on facilitating settlement. This goal is pursued through identifying potential risks to the parties in turning control over dispute resolution to a court or jury and offering creative solutions from which all parties can benefit. I am committed to doing everything in my power and working for as long as it takes into the evening and beyond to settle your dispute.

Boston College (BS, magna cum laude, 1981; JD, magna cum laude, 1984)

Admitted to the Bar: California (2000), Arizona (1997), Texas (2000), New York (1991), District of Columbia (1991), Massachusetts (1986), Connecticut (1984); U.S. Patent and Trademark Office.

College of Commercial Arbitrators (Fellow), California Dispute Resolution Council (Board Member); Federal Bar Association (Chapter Board Member and Past President); The Sedona Conference (Board Member and Member, E-Discovery Working Group, Patent Litigation Working Group, Data Security and Privacy Liability Working Group, Trade Secrets Working Group); American Bar Association (Fellow and Member of several sections); State Bar of California (Member of several sections); Licensing Executives Society (Chapter Chair); American Intellectual Property Law Association (Vice-Chair, Alternative Dispute Resolution Committee); Copyright Society of the USA (Past Chapter Chair); International Trademark Association (Panel of Trademark Mediators); State Bar of Arizona (Past Chair, Intellectual Property Law Section and member of several sections); Los Angeles County Bar Association (member of several sections); Beverly Hills Bar Association (member Entertainment Law and Intellectual Property, Internet and New Media sections).

PUBLICATIONS (Past 5 Years):
Author, Cutting Edge Issues in Mediation Ethics: Mediation Confidentiality and Privilege in Patent Cases, presented to the American Intellectual Property Law Association Annual Meeting (2017); Contributing Author, "Patent Mediation Best Practices," The Sedona Conference Working Group on Best Practices in Managing Patent Litigation (2016-17); Co-Author: "Technology-Assisted Review: The Judicial Pioneers," 15 Sedona Conf. J. (2014); Author, "E-Discovery in Arbitration" American Arbitration Association presentation "Using Technology to More Effectively Manage Arbitration," American Bar Association 15th Annual Section of Dispute Resolution Spring Conference, 2013. Contributing Author for The Sedona Conference, Electronic Discovery and Digital Evidence (West American Casebook Series).

SPEAKING ENGAGEMENTS:
Numerous speaking engagements on Arbitration, Mediation, E-Discovery, Litigation, and Intellectual Property for the American Arbitration Association, the American Bar Association, the Federal Bar Association, the Association of Corporate Counsel, The Sedona Conference, the American Intellectual Property Law Association, the Copyright Society of the USA, the Licensing Executives Society, the LA County Bar Association, the Beverly Hills Bar Association, the State Bar of Arizona and San Diego Comic-Con. A representative list includes the following: “Trade Secrets in the Life Sciences: How to Protect and Enforce Them,” Association of Corporate Counsel, San Diego Chapter, 2018; Mediation Ethics: Mediation Confidentiality and Privilege, American Intellectual Property Law Association Annual Meeting, 2017, Arbitration Provisions in Trademark/Brand Licenses, Licensing Executive Society Annual Meeting, 2017; “Legal and Ethical Issues, Intellectual Property and Artificial Intelligence in HBO’s Westworld,” San Diego Comic-Con, 2017; “Patent Mediation Best Practices,” The Sedona Conference Annual Patent Working Group Meeting, 2016; “E-Discovery in Arbitration,” Los Angeles County Bar Association Los Angeles, CA, 2016; “Technology Assisted Review (TAR): What, Why, When, and How,” The Sedona Conference Institute’s 7th Annual E-Discovery Program: Living on E-Discovery’s Cutting Edge, 2013; “E-Discovery in Arbitration,” American Arbitration Association Conference, 2012; “Strategies for Requesting & Producing ESI in the Cloud and Social Media,” The Sedona Conference, 2012; “Muscular Arbitration: Trimming the Fat Out of Arbitration,” American Arbitration Association, 2011; “Proportionality in Preservation & Discovery,” The Sedona Conference, 2011. “The Ethical Minefields of Mediation and Arbitration,” American Intellectual Property Association Mid-Winter Institute, 2010; “Social Networking and Fair Use,” Copyright Society of the USA Mid-Winter Meeting, 2010; “Managing the Costs of Litigation,” Federal Bar Association, 2009; “Settlement Conferences and Mediation in Federal Court,” Federal Bar Association, 2009; Copyright Under Pressure, Copyright Society of the USA Mid-Winter Meeting, 2006; “Electronic Discovery Panel,” American Bar Association Annual Meeting, 2006; “Technology-Related Transaction Tips for Corp. Counsel,” Association of Corporate Counsel, 2005; “Alternative Dispute Resolution in Copyright Disputes,” Copyright Society of the USA Mid-Winter Meeting, 2005; Red Lights & Green Flags: Rules of the Road for Advertisers, Federal Trade Commission, 2005; The Law of the Internet, National Business Institute, 1997.

Los Angeles, San Francisco, San Diego, Orange County, Phoenix, anywhere in California, Arizona and the United States, including New York, Washington, DC, Boston, Philadelphia, Atlanta, Miami, Chicago, Dallas, Houston, Austin, Denver, Salt Lake City, Portland and Seattle.

$595 Per Hour

English

United States of America

Los Angeles, CA