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, procurement, 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 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, 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:
- Acting as outside trademark counsel for a Fortune 100 retailer and health care provider, including determining availability of trademarks, filing trademark applications, 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.
- Representing Rhode Island’s largest museum in its trademark, domain name, licensing and reproduction program.
- Working with a publicly traded manufacturing company to align its trademark portfolios with its present and future sales opportunities.
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, and licensing 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.
- Representing Biopure Inc. in connection with the sale of its assets, including its patent portfolio, in a Chapter 11 “363” sale and confirmation of a plan of reorganization.
- 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 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 users in this regard.
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 Protection Act (COPA), 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:
- 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.
- Preparing online subscription agreements for an educational technology software company.
- Representing financial institutions in reviewing and negotiating technology, data processing and service contracts.
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.
- 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.
- Successfully defended and prosecuted a number of patent infringement claims.
- Assisted in federal court litigation enforcing the trademarks of an internationally recognized modelling agency.
- Won a federal court trial for a worker’s compensation 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 a website and obtained transfer of the domain name that infringed our client’s 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.