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    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, in preparing and negotiating intellectual property licensing agreements, and in representing businesses and their owners. 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

    • Recognized in Best Lawyers in America 2018 as an expert in copyright and trademark law
    • 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 Data & Information Technology 2018
    • Selected for inclusion in Who's Who Legal in Telecommunications, Media & Technology 2015

    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, GDPR agreements, outsourcing agreements, website terms and conditions of use, privacy policies, other online agreements, service and consulting agreements, and nondisclosure agreements.
    • Advising a financial institution on its GDPR compliance obligations.
    • 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

    • John Ottaviani Hosts Trademark Due Diligence and Trademark Transactions Roundtable, April 2018
    • "Cyberspace Law Institute and Winter Working Meeting 2018", January 2018
    • "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
      • co-Chair Smart Contract and Blockchain Subcommittee
    • International Trademark Association
      • Publications Committee
    • Rhode Island Bar Association
      • Business Organizations Committee (former Chair)
    • Massachusetts Bar Association

    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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