Brent ‘Giles’ Davis
Caitlin P. Dettmer
Shana T. Don
David A. Einhorn
Jason A. LaBerteaux
Paul A. Lieberman
Jill A. Michael
Kenneth C. Oh
Nicholas J. Pellegrino
Fernando M. Pinguelo
Ramon E. Rivera
William R. Samuels
John M. Scagnelli
Charles A. Yuen
Fred D. Zemel
The attorneys in our Intellectual Property (“IP”) group handle the full spectrum of Intellectual Property (IP) matters. We assist clients nationally and throughout the world by securing, enforcing, and leveraging intellectual property rights wherever needed and however possible. The attorneys in this practice group include members of the Patent Bar, litigators, and true business and legal problem solvers. We recognize that our clients’ trademarks, patents, copyrights, proprietary technology, and trade secrets are among their most valuable assets, and that securing protection of such IP will ensure long lasting benefits.
We advise and represent companies of all sizes, worldwide, who are seeking to maximize, maintain, and protect their intellectual property portfolios. We represent individuals and corporate clients, providing access to full-service, business-driven dynamic IP counseling that evolves with the globally changing IP environment. The firm handles all aspects of domestic and international IP matters, including trademarks, copyrights, patents, IP enforcement and defense, IP licenses and agreements, domain names, software services, counterfeit protection, unfair competition, and IP counseling and audit services. We help clients manage their IP while developing practical and creative solutions that secure their property and information at home and around the world.
We help facilitate our clients’ exploitation of their intellectual property rights through various licensing and joint venture arrangements. We also counsel clients regarding the validity and valuation of intellectual property, mergers and acquisitions, and asset purchases. 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 throughout the world.
Even more, we handle insurance coverage matters on issues including Advertising Injury, Copyright Infringement, Trademark Infringement, Patent Infringement, Trade Dress (Packaging) Infringement, and Misappropriation of Trade Secrets and Confidential Information.
Tailored Solutions — Competitive Prices
Intellectual property law is at the core of many business transactions and strategic disputes and is one of the most critical legal areas as companies continue to expand and protect their technologies, brands, products, data and services throughout the world. Our attorneys help our clients to identify, prioritize and protect their core and expanding interests with trademark filings, patent filings, and other appropriate protective and growth measures.
The firm represents clients in an array of industries. The intellectual property needs of retail clients, designers, writers, musicians, and artists, inventors, hospitality providers, consumer goods companies, e-commerce platforms, and software developers differ. Additionally, depending on a company's stage of development, the intellectual property protections and plans required will also differ. In light of this, the firm advises clients by providing business-tailored recommendations and protection plan options, along with a spectrum of intellectual property considerations which are essential in a given context.
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, Scarinci Hollenbeck offers startup clients fixed fees, capped fees and structured payments when appropriate. By ensuring that clients are protected at the outset, the firm builds lasting relationships with companies that will continue to rely on the firm's services as they grow and evolve. The firm is open to non-traditional payment arrangements under a variety of circumstances.
Areas of Service
Our copyright practice spans all areas of the performing and visual arts, including works related to musical compositions, computer software, media arts, written works, paintings, photography, and others.
We draft and negotiate licensing and royalty agreements, fair use, and rights of publicity issues. We counsel clients on securing copyright protection in the United States and abroad and provide litigation services to protect and defend clients’ creative works. Our attorneys facilitate the exploitation of our clients’ copyrights through licensing and royalty agreements to ensure that our clients realize the full benefits of their creative endeavors. We also advise clients on issues pertaining to copyright fair use, rights of publicity, and copyright infringement concerns.
We provide strategic advice to our clients with respect to IP and technology matters that arise from licensing, collaboration, research and development activities. This includes issues including the scope of their licenses, revocability and/or transferability of applicable agreements, the effect of corporate structure on such activities and bankruptcy-related issues affecting their rights under such agreements and succession rights as to such IP.
Portfolio Management and Transaction Aspects
Trademark Prosecution is a notable aspect of the legal services we provide. In that regard, our attorneys have vast experience in obtaining and prosecuting word, design, and product configuration trademarks in the United States Patent and Trademark Office. We also aid clients in policing their trademarks and have successfully obstructed hundreds of infringers from selling counterfeit or unauthorized goods bearing our clients’ trademarks all around the world.
We handle all types of intellectual property transactions, and manage extensive trademark portfolios for domestic and international clients. As part of this service, we help clients of all sizes with acquisitions, divestitures, licensing, investments, and strategic planning. These include non-disclosure agreements, distribution agreements, joint venture agreements, manufacturing agreements, and endorsement agreements. Our attorneys are also experienced in preparing, structuring, and negotiating trademark, copyright, and patent license agreements, as well as technology development agreements.
We assist clients in securing and managing patent rights for their inventions and designs and designs. We provide clients with patent availability searches and “freedom to operate” reports. We also file and fully prosecute provisional and non-provisional patents with the United States Patent and Trademark Office.
We have represented both plaintiffs and defendants in trademark, copyright and patent infringement actions, trade secret disputes, contract breaches and general business litigation clients in Federal and State Courts across the country, as well as in the Trademark Trial and Appeal Board. We have obtained nationally recognized precedential verdicts and decisions for our clients, as well as achieved favorable settlements.
Real intellectual property protection is more than securing patents, copyrights, or trademarks. Though these aspects of IP law are essential, true protection allows products, companies, ideas and software to grow while IP protection evolves to protect existing and derivative products and works.
Our seasoned lawyers have vast experience in litigation over a range of issues in federal, state and administrative jurisdictions all around the country. Over the years, they have been involved in many of the paramount cases involving the music and musical instrument business, and other creative industries, and have had success in achieving favorable outcomes for clients again and again.
|(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.|
|(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.|
|(United States District Court, Central District of California)||Successfully defended toy manufacturer in product configuration trademark infringement lawsuit by prominent doll manufacturer.|
|(United States District Court, Eastern District of New York)||Successfully obtained dismissal for clients – studio, producer and engineer – in landmark music sampling litigation.|
|(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, Southern District of New York)||Successfully defended clients sued by giant entertainment conglomerate and achieved favorable settlement from Plaintiffs for copyright infringement.|
|(Trademark Trail 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.|