Intellectual Property Practice Group

Our Intellectual Property (“IP”) Practice Group protects our clients’ rights in their most valuable assets—their proprietary innovations—utilizing a variety of intellectual property protections.  For example, we regularly assist clients in filing for trademarks as well as drafting non-disclosure agreements and “terms of use” for their websites.  In addition, our attorneys are highly skilled in the area of maximizing value for our clients through commercialization of their intellectual property.  Such commercial arrangements include joint ventures and strategic alliances; research, development and collaboration arrangements; invention and patent acquisitions, licenses and sales; and content and database licenses.  The IP Practice Group assists clients ranging from start-ups to large multi-national corporations.   

• Patents.  Our attorneys help clients to implement proper timing strategies, protect and often license their patents, ordinarily in limited, non-exclusive agreements.  We also represent clients in patent-related litigation regarding infringement and associated claims.

• Trademark Prosecution.  Our team is knowledgeable in trademark prosecution and maintenance, trademark monitoring, searching, and investigations, as well as the development of enforcement strategies, opposition and cancellation proceedings.

• Trademark and Trade Dress Litigation.  Our IP litigators represent clients in all types of claims under both federal and state laws:  trademark, service mark, and trade dress infringement, unfair competition, counterfeiting, cybersquatting, and unfair advertising cases.  

• Trade Secrets.  We carefully protect trade secrets when drafting agreements regarding our clients’ intellectual property.  In addition, we handle litigation involving trade secret misappropriation.  Our attorneys work in conjunction with our Labor and Employment Practice Group to protect employers’ trade secret information and to litigate misappropriation of trade secret claims.  We have also defended employees accused of stealing trade secrets.  We often handle trade secrets issues in the sports agency context with respect to client lists and other sensitive client information.  Our IP Practice Group also advises clients on the interplay between trade secret protection and covenants not to compete.

• Rights of Publicity.  Our attorneys represent high-profile clients, such as professional athletes, in endorsement deals, and in litigation to protect rights in their name and likeness (interference with rights of publicity, which is recognized under Cal. Civ. Code §3344).  Our IP Practice Group works in conjunction with Sports Law Practice Group to protect, and in some cases license, athletes’ names and likenesses.
• Acquisition and Licensing.  Our commercial transactions team has extensive experience assisting clients with the acquisition and sale of specific intellectual property assets such as trademarks, patents, software and hardware, medical devices and cosmetic product lines.  In addition, our attorneys are skilled in technology licensing including in-licenses and out-licenses.
• Development and Collaboration.  We confidently structure, draft and negotiate joint venture and development agreements involving joint development efforts, cross-licensing of patents and technology and exclusive commercialization rights.

Representative Matters

• Closed 100+ software licensing deals including related professional services (installation, customization and support), annual maintenance, hosting and service levels.  Negotiated against Oracle, Computer Associates, IBM, Dell McKesson and GE Healthcare.  

• Drafted and negotiated collaboration agreement involving complex intellectual property ownership and licensing rights to facilitate the parties’ development of new cancer diagnosis solutions.
• Structured an e-commerce arrangement involving development and hosting of a Web portal to facilitate communication among the client, its customers and its suppliers.
• Originated license and support agreement involving development of a large pediatric database for a hospital network.
• Represented acquirer of certain trademarks, including drafting several consulting agreements with the sellers of the trademarks, reversion rights upon abandonment of the product line using the trademarks and right to share in proceeds of any sale of the product line.
• Coordinated with U.S. patent counsel and foreign counsel representing patent owner in connection with several patent infringement proceedings in Korea and France with respect to a valuable cosmetic packaging component.
• Represented licensor in connection with merchandising license agreement for use of images, artwork, characters and other elements from a motion picture in connection with cosmetic packaging.
• Represented U.S. licensee in connection with an exclusive development agreement with a German supplier of a unique “soft solid material” relating to development of new applications for the material.
• Represented licensor in connection with an exclusive license and supply agreement for unique cosmetic components, including minimum purchase requirements for the licensee with the licensor retaining the exclusive right to supply the licensed products.
• Negotiated endorsement deals, on behalf of professional baseball players, with Under Armour, Topps, Louisville Slugger, Rawlings and many other companies.