Attorneys

John E. Ottaviani

John E. Ottaviani

John E. Ottaviani
Partner

401-861-8253

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Education

  • Columbia University School of Law, J.D.

  • Bowdoin College, A.B. Mathematics and Government, magna cum laude

Bar Memberships & Admissions

  • Massachusetts
  • Rhode Island
  • U.S. Court of Appeals, 1st Circuit
  • U.S. Court of Appeals, Federal Circuit
  • U.S. District Court, Massachusetts

John, Chair of our Intellectual Property & Technology Group, concentrates his practice in protecting and enforcing trademarks and copyrights, and in preparing and negotiating intellectual property licensing agreements. He regularly advises clients on trademark, copyright, domain name, and trade secret issues that arise in the physical world and on the Internet. He also works on the intellectual property aspects of business financing, acquisition and sale transactions. 


John also has extensive experience in preparing and negotiating agreements for technology companies and for companies using technology in all industries.
 

Honors

  • AV® Preeminent Rated from Martindale-Hubbell, highest possible rating on both legal ability and ethics based upon the confidential opinion of peers and judges
  • Recognized as a leading intellectual property and corporate attorney since 2008 by
    Chambers USA, America's Leading Lawyers for Business
  • Selected by his peers for inclusion in Rhode Island Super Lawyers
  • Selected for inclusion in Who's Who Legal in Telecommunications, Media & Technology 2015
  • Selected for inclusion in the International Who's Who of Internet & e-Commerce Lawyers, 2009-2011

Representative Intellectual Property Experience

  • Managing trademark portfolios for trademark owners ranging from Fortune 100 companies to individuals, including determining availability of marks, preparing and filing applications to register marks, maintaining registrations, and enforcing trademark rights throughout the world.
  • Representing Rhode Island's largest not-for-profit museum in its trademark, domain name, licensing and reproduction programs.
  • Negotiating the multi-million dollar acquisition of a line of personal care products and related trademarks.
  • Shutting down a website and obtaining transfer of the domain name that infringed our client's trademarks and copyrights.
  • Establishing a copyright registration program to protect the constantly changing database of an online real estate listing service.
  • Enforcing the trademarks of an internationally-recognized modeling agency in federal court litigation.

Representative Technology Experience

  • Preparing and negotiating software license agreements, website and software development agreements, application service provider agreements, software-as-a-service agreements, e-commerce agreements, outsourcing agreements, website terms and conditions of use, privacy policies, other online agreements, service and consulting agreements, and nondisclosure agreements.
  • Guiding a non-profit organization through the complex interaction of federal and state laws relating to charitable raffles on the Internet resulting in over $15 million being raised since inception.
  • Preparing online subscription agreements for an educational technology software company.
  • Updating privacy policies and terms of use for the websites of a publicly traded company and its affiliates.
  • Preparing supply agreements, distributor agreements and sales representative agreements for a technology manufacturing company.

Representative Publications

Representative Speaking Engagements

  • “Cyberspace Law 2014-2015: Where Have We Been? Where Are We Going?” at the 2015 Cyberspace Law Institute American Bar Association, January 2015
  • “Intellectual Property Protection for Small Business” at A Beacon For Small Business Expo, April 2013
  • “Navigating the Ever-Changing World of Social Media” at New England Conference of Episcopal Church Bishops and Chancellors January 2011
  • “Intellectual Property Concerns in Social Media” at Social Media Considerations for In-House Counsel Association of Corporate Counsel Northeast Chapter, June 2010
  • “Copyright Problems in Schools” at E-Technology at School – Preventing Lawsuits National Business Institute, October 2009
  • “Tattoos, Dining Tables and Photos in the Shoebox” at Rights and Reproductions in a Visual World: What is an Archivist To Do? New England Archivist, October 2006

Professional Affiliations

  • American Bar Association
  • International Trademark Association
    • Legal Practice Resource Committee
  • Rhode Island Bar Association
    • Business Organizations Committee (former Chair)
  • Massachusetts Bar Association
  • Tech Sandbox

Community Activities

  • Adoption Rhode Island
    • Board of Directors (former Board President)
  • Bowdoin Law Advisory Network
    • Member
  • Bowdoin College Alumni Club of RI
    • Member (former President)

Our approach to the practice of law provides a broad range of expertise to our clients Practice Areas

Boston

30 Federal Street
Boston, MA 02110
617-292-7900

Providence

40 Westminster Street
Suite 1100
Providence, RI 02903
401-861-8200

SouthCoast

128 Union Street
Suite 500
New Bedford, MA 02740
774-206-8200

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