Intellectual Property

Intellectual Property – Full Range of Legal Tools 

Intellectual property (IP) can be the most important asset of a business. IP is an umbrella term that defines a number of legal rights — patents, trademarks, copyrights, name and likeness rights, trade secrets, goodwill and know-how — that can provide a significant competitive advantage to your company over its competitors.

 Our IP attorneys are equipped to handle virtually every type of intellectual property and technology matter. While many firms provide some general IP services, our attorneys provide perhaps the broadest spectrum of intellectual property advice, procurement, and enforcement of IP rights in the country – from hard IP, such as patents and trade secrets, to soft IP, such as trademark and brand protection to copyright protection and exploitation.

Our IP team consists of attorneys with backgrounds in science and engineering to media and entertainment of all types. We have represented some of the largest national corporations down to medium-sized and small businesses, to start-ups.

Our Expansive IP Law Experience

Relying on decades of shared experience, our IP team possesses the legal knowledge, technological acumen, and business savvy needed to develop innovative solutions for all of your IP issues. We stand apart from our peers by:

• Delivering tailored, cost-effective solutions that achieve your business goals.
• Providing wide-ranging IP services that protect all of your valuable IP assets at home and abroad.
• Having a deep understanding of the unique IP issues encountered in niche industries, such as pharmaceuticals, software, heavy industry, fashion, entertainment, music and the arts, and much more. 
• Demonstrating a strong track record of success, which includes precedential court rulings, hundreds of IP awards, and a client roster of well-known companies, artists, and owners of creative content.
• Leveraging the resources and capabilities of a full-service law firm.

Putting Our IP Experience to Work for You

We deeply understand that protecting your valuable IP rights can be of significant value to your business’s success. The attorneys in our Intellectual Property Group handle the full spectrum of IP matters in a cost-effective manner. We assist clients by securing, enforcing, and leveraging their IP rights in state, federal, and international jurisdictions. Our legal services include:

• Anti-Counterfeiting Strategies
• Assignment of IP Rights 
• Copyright Registration
• Digital Millennium Copyright Act (DMCA) Matters 
• Domain Name Disputes
• False Advertising/Lanham Act Disputes
• International IP Protection
• IP Audits
• Licensing Transactions
• Litigation 
• Mergers & Acquisitions
• Portfolio Development & Management
• Rights of Publicity
• Royalty Disputes
• Sponsorship & Endorsement Agreements
• Technology Transactions
• Trademarks (Obtaining, Maintaining, Monitoring & Enforcing)
• Trade Secret Issues
• Patents (Prosecution & Enforcement)
• Unfair Competition Claims

In today’s increasingly competitive market, the importance of intellectual property (IP) rights has never been greater. We help clients manage, protect, and enforce their IP, while developing cost-effective, practical, and creative solutions.

What Our IP Attorneys Do

Our IP Group aids you in exploring strategies that protect your ideas, inventions, visual and audio works, brands, trade secret information, business know- how, and methods. What makes us different is our ability to handle the full spectrum of IP work. For instance, we will not only draft patent applications and register copyrights, but also license your rights, police for infringement, and enforce your rights in court.  We also have the capability to secure our clients’ interests, both domestically and abroad.

Who Our IP Attorneys Help

We represent individuals and corporate clients, providing access to full-service, business-driven dynamic IP counseling that evolves with the rapidly changing legal environment. Our clients range from budding entrepreneurs to Fortune 500 companies and are located across the globe.  We manage IP assets in the U.S., Europe, and across Asia, including Japan, China, Korea, Singapore, and elsewhere.

The firm represents clients in an array of industries. For example, our firm satisfies the IP needs of retail and wholesale clients, software developers, chemists and biologists, engineers, electronics firms, designers, writers, musicians, and artists, hospitality providers, consumer goods companies, and others. We are able to design and implement a wide range of IP strategies, tailored to meet the goals of companies in varying stages of development.  We take practical and cost-effective approaches to resolving disputes and transactions of all types. 

The firm is deeply committed to ensuring that startups and small companies in all industries have access to reasonably priced intellectual property protection. As such, the firm offers startup clients fixed fees, capped fees, and structured payments, when appropriate. By ensuring that clients are protected at the outset, we build lasting relationships with companies that will continue to rely on the firm’s services as they grow and evolve.

Relying on first-hand experience in the boardroom, the courtroom, and even the music studio, our Intellectual Property Group stands ready to address all of our clients’ crucial intellectual property needs, including:

Patents

Our patent team strives to preserve the rights of our clients through patent counseling, prosecution, litigation and trials, and is staffed by seasoned attorneys with technical and complex legal backgrounds.  Unlike some firms, our IP attorneys do the work rather than push down matters to inexperienced and junior lawyers.  We provide our clients with comprehensive patent counseling services, including patent availability searches and “freedom to operate” reports. Our attorneys also file and prepare patent applications, as well as manage existing patent portfolios in the United States and overseas. We also help clients exploit patent-related opportunities through joint ventures, mergers, licenses, assignments, and other transactions. Our team also includes skilled litigators, experienced in patent enforcement and defense before federal courts across the country and the US and foreign Patent and Trademark Offices.

Copyrights

The firm’s copyright practice spans all areas of the performing and visual arts, including works related to musical compositions, computer software, media arts, written works, fine art, photography, and others. Our attorneys facilitate the exploitation of our clients’ copyrights by securing copyright protection in the United States and abroad, as well as negotiating licensing and royalty agreements that ensure that our clients realize the full benefits of their creative endeavors.  We have recently been involved in assisting many of our clients with re-claiming their U.S. copyrights, which rights were granted to third parties under agreements made at least 35 years ago, pursuant to U.S. Copyright Law.  We also advise clients on issues pertaining to copyright fair use, rights of publicity, and copyright infringement. Our litigation team has a strong track record of defending clients’ creative works in the courtroom, including successfully defending clients sued by giant entertainment conglomerates for copyright infringement.

Trademarks

Our clients count on us to protect their brands by securing, maintaining, and enforcing their trademark rights at home and across the globe. Our attorneys manage trademark portfolios, including trade names, brands, and logos. We also pursue trademark registration on behalf of our clients with the U.S. Patent and Trademark Office (USPTO) and international trademark offices. Recognizing the global reach of the Internet, we enforce trademarks across all platforms and devise anti-counterfeiting/anti-infringement strategies that safeguard our clients’ brands. We also protect and defend trademarks before state and federal courts, as well as the USPTO’s Trademark  Trial and Appeal Board (TTAB). Our trademark litigators have protected or defended cases involving major brands, won major precedent-setting cases, and have successfully resolved disputes through alternative dispute resolution methods. 

IP Litigation

When necessary, our experienced attorneys are always prepared to enforce and protect our clients’ IP rights through litigation in jurisdictions across the United States and in conjunction with foreign counsel overseas. We represent clients in state and federal courts; before administrative bodies like the Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB), and in alternative dispute forums around the world. We have achieved nationally recognized precedential verdicts and decisions for our clients, as well as countless favorable settlements.

Entertainment, Media & Sports

Relying on decades of experience in the entertainment, media, and sports industries, our attorneys have handled virtually every type of transaction that such areas may require. Our entertainment clients count on us to assist with music recording and publishing agreements, producer agreements, music licenses for film and television, artist intra-band agreements, television and film production agreements, on-screen and crew talent agreements, management agreements, work-for-hire agreements, option agreements, content licensing agreements, personal appearance agreements, book publishing agreements, name and likeness, and endorsement agreements. In assisting media companies, we have substantive experience in First Amendment defense, newsgathering concerns, licensing, IP rights, antitrust, new and existing technologies, distribution, financing, acquisitions and divestitures of interests in sports and media properties, employment, bankruptcy, real estate, and constitutional law. We also counsel members of the traditional sports and esports industries regarding sponsorships, licensing, and commercial transactions, among other matters.

IP Counseling & Transactions

The firm provides IP counseling services that are tailored to the specific objectives and risks of each client. We provide guidance regarding clients’ existing IP portfolios, develop new IP protection strategies, perform IP audits, give freedom-to-operate opinions, conduct trademark searches, and develop international IP protection plans. We also handle all types of IP transactions, and manage extensive portfolios for domestic and international clients. We help clients of all sizes with acquisitions, divestitures, licensing, investments and strategic planning. Our comprehensive services also include secrecy, distribution, joint venture, manufacturing agreements, research and development agreements, and endorsement agreements.

Technology & Internet Law

Our attorneys keep pace with the latest technology impacting our clients, as well as the legal industry.  We provide strategic advice to our clients with respect to IP and technology matters that arise from technology vendor agreements, licensing, collaboration, research, and development activities. Recognizing the growing importance of a strong Internet presence, the firm also helps clients claim, purchase, and negotiate the transfer of domain names corresponding to their services, trademarks, and copyrights, as well as resolve disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP).

The firm’s intellectual property lawyers are fortunate to represent a diverse roster of clients that includes leading multi-national corporations, innovative start-ups, and world famous artists. The firm has participated in many high stakes IP disputes involving the creative industries (ADD other industries), and enjoyed success in achieving favorable outcomes for our clients again and again. Below are a few recent success stories:

Trademark Matters

• (Trademark Trial and Appeal Board, USPTO) Represented numerous guitar manufacturers in one of the largest United States trademark oppositions to applicant’s registration for product configuration trademarks in three guitar body shapes. Successfully opposed Applicant’s registrations by proving that the body shapes were not distinctive and had become generic. No appeal was made to this precedential TTAB decision.
• (United States District Court, Southern District of New York) Represented client in consolidated cases over federal trademark infringement. Successfully had opponent’s declaratory judgment case transferred from California to New York on grounds that opponent made an improper anticipatory filing before our client filed a federal trademark infringement lawsuit. During discovery, negotiated a substantial favorable settlement for client.
• (United States District Court, District of New Jersey) Represented musical instrument manufacturer in a patent and trademark infringement lawsuit against audio equipment manufacturer. Obtained favorable settlement for Plaintiffs.
• (United States District Court, Central District of California) Represented musical instrument manufacturer against audio accessory manufacturer in federal and common law trademark infringement suit. Obtained favorable settlement for client after start of trial.
• (United States District Court, Western District of North Carolina) Represented Defendants in trademark ownership dispute for marks federally owned by Defendants and passed down to Plaintiff by testamentary instrument. Obtained dismissal for lack of personal jurisdiction, improper venue, and insufficient service of process. Decision was not appealed.
• (Trademark Trial and Appeal Board, USPTO) Successfully fought in the Trademark Trials and Appeals Board to recover and secure federal trademark registration for the name for one of the founding rock bands from the 1950’s.
• (United States District Court, Northern District of New York) Successfully defended foreign custom guitar parts builder in trademark litigation against large guitar manufacturer.
• (United States District Court, Central District of California) Obtained favorable post mediation settlement for plaintiff in suit over unauthorized use of music instrument manufacturer’s federally registered trademarks on clothing.
• (United States District Court, Central District of California) Successfully defended toy manufacturer in product configuration trademark infringement lawsuit by prominent toy manufacturer.

Copyright Matters

• (United States District Court, Southern District of New York) Successfully defended clients sued by giant entertainment conglomerate and achieved favorable settlement from Plaintiffs for copyright infringement.
• (United States District Court, Eastern District of New York) Successfully obtained dismissal for clients – studio, producer and engineer – in landmark music sampling litigation.

Other IP Matters

• (NJ Superior Court) Represented founding band member and shareholder in a precedential suit against other band members and the corporate entity for breach of shareholder agreement and for failure to distribute profits. Obtained both money damages and attorney’s fees.
• (United States District Court, Middle District of Florida) Represented a US musical instrument distribution company in a precedential lawsuit against a foreign musical instrument manufacturer for breach of distribution contract. Successfully defeated a motion to dismiss for lack of jurisdiction and negotiated favorable settlement for client.