Intellectual Property & Technology

Identification, Protection and Commercialization of IP

Frequently, after its employees, a business’s most important asset is its intellectual property. The attorneys in our Intellectual Property & Technology Group advise clients regarding issues that arise out of the identification, protection and commercialization of intellectual property, including know-how and other trade secrets, patents, copyrights, trademarks, information technology and data.

We assist our clients by identifying sources of intellectual property in the client’s operations and establishing programs to insure that the client obtains rights to, and appropriately protects, valuable intellectual property developed with the client’s time and resources. Our attorneys have a great deal of experience in analyzing and assisting with the transfer of intellectual property in connection with business transactions, including mergers, acquisitions, sales transactions, financing transactions, joint ventures and licensing arrangements. We also assist our Trusts & Estates attorneys in identifying, managing, transferring and planning for intellectual property assets held by clients. In addition, we have substantial litigation expertise pursuing infringement and other actions to enforce rights to intellectual property and in defending infringement claims.

Trademark, Copyright and Trade Secret Selection and Protection

We counsel clients concerning the selection, registration, protection and enforcement of trademarks and service marks in the United States and throughout the world. In addition to providing clients with advice concerning the selection and availability of marks, our attorneys have substantial experience in preparing, filing and prosecuting U.S. federal and state trademark applications. We also coordinate with a worldwide network of attorneys to protect our clients’ trademarks abroad. We have worked with clients ranging from Fortune 100 companies to start-ups to individuals.

Our trademark attorneys also have a wealth of experience in developing and implementing brand management strategies with clients. We work closely with our clients to understand their business and goals, so that we may assist in identifying which assets are worth protecting and which are not. Often we have been able to help identify areas for cost savings and make the client’s brand development and protection process more efficient.

We work with clients across all industries to obtain copyright protection and registration. We also provide counseling on copyright ownership, copying and licensing issues. Our copyright practice encompasses computer software, databases, applications and digital rights, as well as more traditional subject matter areas such as books, photographs, videos, movies, and works of art. We advise clients regarding the Digital Millennium Copyright Act (DMCA), fair use, secondary liability, open source, and other emerging issues related to Internet and e-commerce, social media and computer software and applications.

Our attorneys also develop employment agreements and non-competition agreements that require disclosure and protection of ideas as well as limit the use of intellectual property following cessation of employment. We provide counsel regarding the establishment of internal controls to protect trade secrets.

Some of the ways our attorneys have assisted our clients are:
  • Managing trademark portfolios for trademark owners ranging from Fortune 100 companies to individuals, including determining availability of trademarks, filing applications to register trademarks, maintaining trademark registrations, and enforcing trademark rights throughout the world.
  • Establishing a copyright registration program to protect the constantly changing database of an online real estate listing service.
  • Filing trademark applications and negotiating co-existence arrangements to protect the names of new restaurants and craft breweries.
  • Representing Rhode Island’s largest not-for-profit museum in its trademark, domain name, licensing and reproduction program.
  • Reviewing a documentary film and advising the producers with respect to copyright and licensing issues.

Intellectual Property Transactions

Our attorneys have substantial experience dealing with the intellectual property aspects of business transactions, including purchase and sale, merger, financing, joint venture, licensing and marketing arrangements. We routinely work with our business law and financing attorneys regarding identification, assessment, and transfer of intellectual property assets.

Representative transactions include:
  • Negotiating the multi-million dollar acquisition of a line of personal care products and related trademarks, and evaluating potential right of publicity claims by descendants of the company’s founder.
  • Representing the purchaser of a worldwide trademark portfolio and related assets from a Chapter 11 bankruptcy trustee.
  • Negotiation of a multi-year, multi-million dollar extension of a marketing agreement and trademark license for an academic institution.
  • Representing Brine, Inc., a leading manufacturer of lacrosse, soccer and other sporting goods equipment, in connection with its acquisition by New Balance, Inc.

Technology and Electronic Commerce

Our attorneys have experience in advising clients regarding licensing and transfer of intellectual property rights, regarding software, applications, and other technology agreements and transactions, and regarding liability for transactions over the Internet.
Our clients include both licensors and licensees, and we are involved at all stages of licensing transactions. Our software licensing practice includes inbound and outbound licensing of computer programs and other applications, and our attorneys have represented some of the region’s largest financial institutions and other users in this regard.

In addition, our attorneys prepare and negotiate other important technology agreements for our clients, such as research and development agreements, marketing, private label and co-branding agreements, sales and distribution agreements, OEM and sales representative agreements, end user licenses, hosting agreements, escrow agreements, open source agreements and software as a service (SaaS) agreements. We also advise clients regarding website privacy policies, terms of use and other website agreements, unauthorized sale of products online, and data security issues.

We counsel clients on liability issues arising from use of the Internet and the World Wide Web, including the Digital Millennium Copyright Act (DMCA), the Children’s Online Privacy Protection Act (COPPA), the Anticybersquatting Consumer Protection Act (ACPA), the Uniform Electronic Transactions Act (UETA), the Electronic Signatures in Global & National Commerce Act (E-Sign), Section 230 of the Communications Decency Act, and other state and federal laws and pending legislation affecting online businesses.

Services we provide include:
  • Negotiating a multi-year Master Services Agreement and software licenses with a large financial services technology provider on behalf of a financial institution.
  • Negotiating a multi-year, multi-million dollar software license and services agreement with a major footwear and apparel manufacturer on behalf of a technology vendor.
  • Guiding a non-profit organization through the complex interaction of federal and state law relating to charitable raffles on the Internet, resulting in over $15 million being raised and donated since inception.
  • Negotiating a strategic alliance agreement, restricted stock agreement and software license agreement with and investment in a startup online insurance company.
  • Preparing of 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 non-disclosure agreements.

Intellectual Property and Technology Litigation and Dispute Resolution

Commercializing intellectual property often leads to business disputes. While we attempt to resolve business disputes in a cost-effective manner, sometimes litigation cannot be avoided. Our attorneys have decades of experience in litigating all types of intellectual property disputes in federal and state courts, including those involving patents, trademarks, copyrights, trade secrets and right of publicity, as well as disputes involving contracts, license agreements and joint venture agreements.

Representative engagements include:
  • Successfully represented manufacturer of juvenile products in trade secret litigation against former management.
  • Served as trial counsel for Victorinox AG, the maker of the Original Swiss Army Knife, which resulted in the successful resolution during trial of rights to worldwide intellectual property.
  • Forced an online clothing retailer to stop selling products bearing our client’s trademarks.
  • Won a federal court trial for an insurance carrier against a national competitor on claims of trademark infringement, establishing new precedent on the issue of harm in intellectual property infringement actions.
  • Successfully shut down websites and obtained transfers of domain names that infringed our clients’ trademarks and copyrights.
  • Our attorneys also routinely represent clients in opposition and cancellation proceedings and in appellate proceedings related to trademark registration before the Trademark Trial and Appeal Board (TTAB), and in Uniform Domain Name Dispute Resolution Policy (UDRP) administrative proceedings.
Providence

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

Boston

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

Greater Boston

20 Pickering Street
Needham, MA 02492
781-444-2333

SouthCoast

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

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