Practice Areas

Intellectual Property Counseling & Transactions

For more than 45 years, our attorneys have helped clients acquire, protect and exploit their intellectual property rights.  As a result, we know that obtaining a superior intellectual property position is more critical to the success of our clients' businesses now than at any other time in history. 

Our expertise covers the full range of intellectual property, including design and utility patents, copyrights, trademarks, domain names and trade secrets.  We combine our expertise in these legal areas with a broad understanding of a variety of industries, including education, health care, life sciences (biotechnology, pharmaceuticals, diagnostics, medical devices), technology (software, electronics, semiconductors), media (digital media, broadcast, advertising and privacy, book and magazine publishing), sports and entertainment, retail and consumer products (toys, food, wine and other alcoholic beverages) and financial institutions and services.

Areas of Focus

Intellectual Property Counseling

  • Domestic and foreign trademark prosecution and portfolio management
  • Copyright registration and portfolio management
  • Domain name acquisition and transfer, including Uniform Dispute Resolution Policy (UDRP) proceedings
  • Patent and trade secret strategy
  • Intellectual property audits and due diligence in connection with mergers, acquisitions, public offerings, venture capital investments, exclusive licenses and other transactions
  • Development of in-house and external IP policies and usage guidelines
  • Anticounterfeiting and customs
  • Prelitigation policing of intellectual property
  • Proceedings and appeals before the Trademark Trial and Appeal Board and Court of Appeal for the Federal Circuit

Intellectual Property Transactions

  • Patent, trademark and copyright options, licenses, assignments and security interests
  • Merchandising agreements
  • Research and development agreements
  • Nondisclosure and material transfer agreements
  • Technology transfer and university licensing
  • Clinical trial agreements
  • Collaboration agreements and strategic alliances
  • Manufacturing, supply, distribution, value-added reseller (VAR), and original equipment manufacturer (OEM) agreements
  • Open source software development and licensing
  • Information technology acquisition and implementation, including software licenses, hardware and software development, application service provider (ASP) agreements, and outsourcing arrangements
Representative Engagements

The Saul Zaentz Company d/b/a Tolkien Enterprises retained us to manage its extensive worldwide trademark portfolio relating to J.R.R. Tolkien's The Hobbit novel and The Lord of the Rings trilogy and to represent it in its related licensing deals.  In anticipation of the December 2001 release of the first film of New Line Cinema's trilogy, we filed more than 1,500 trademark applications worldwide to secure and protect the company's rights in the names of the books' characters, places, items and events.  We continue to assist the company in the expansion, management, exploitation and enforcement of these rights.  Our substantial licensing work for the company has included agreements relating to film, stage, video game, board game and other merchandising rights.

In addition to providing prepublication content review and counseling for CMP Media Inc., a publisher of specialty magazines across various industries, we have managed the international and domestic trademark portfolio that consists of over 300 U.S. registrations and applications and over 150 foreign registrations and applications.  We frequently provide advice regarding protectability, infringement and enforcement of trademarks and draft and review license agreements.

We serve as U.S. outside counsel to Tower Semiconductor Ltd., an Israel-based independent wafer foundry that specializes in embedded solutions, CMOS image sensor and mixed signal technologies and whose shares are listed on the Nasdaq and the Tel Aviv stock exchange.  We have represented Tower in a host of transactions, including patent licenses and cross-licenses, development and customization agreements, and service and support agreements.  Our attorneys also advise Tower regarding employment, tax, real estate and other legal issues it faces as an international technology company.

The firm represents music performing rights association, Broadcast Music, Inc., in its music copyright enforcement actions in Northern California. The firm has brought and resolved numerous lawsuits on behalf of BMI and the composers and publishers of BMI-licensed music, against establishments that perform music publicly without license.

Representative Clients
  • Aberdare Ventures
  • Beverages & More!
  • Greenpoint Mortgage Funding, Inc.
  • Hewlett-Packard Company
  • Investigen, Inc.
  • Lee Mendelson Film Productions
  • Longs Drug Stores California Inc.
  • Maxager Technology, Inc. (now OutPerformance, Inc.)
  • Mitsubishi Motors North America, Inc.
  • PalmSource, Inc. (now ACCESS Systems Americas, Inc.)
  • PC World Communications, Inc.
  • Pearson Education, Inc.
  • PlanetOut Inc.
  • Sandra Jordan Collection
  • The Breast Cancer Fund
  • The Saul Zaentz Company
  • Tower Semiconductor Ltd.
  • Trader Vic's
  • Transmeta Corporation
  • United States Olympic Committee
  • Vitasoy International Holdings Limited
  • Walden Venture Capital
  • Wham-O, Inc.
  • Women's Sports Foundation

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