Tom Magnani is a director with the firm’s Business Department and Co-Chair of the Intellectual Property & Competition Practice Group. His practice focuses primarily on intellectual property counseling and licensing and on structuring technology, commercial, and corporate transactions for companies and investors in a broad range of industries, including media and entertainment, life sciences, consumer products and information technology. Mr. Magnani has provided strategic advice to clients in connection with a wide variety of intellectual property-related transactions, including mergers, asset acquisitions, public offerings, venture capital financings, copyright, trademark, and patent licenses, software licenses, research and development deals, distribution and supply arrangements, and sponsorship deals. Working closely with the firm’s Litigation Department, Mr. Magnani has developed particular expertise in the settlement of complex intellectual property disputes.

In addition, Mr. Magnani counsels clients on compliance with advertising laws, including those regulating sweepstakes, skills contests, unsolicited e-mail and privacy. He also advises clients on antitrust concerns that arise in the context of business transactions.

Mr. Magnani's representative clients include Amazon.com, The Doheny Eye Institute, Hewlett-Packard, IMDb.com, the LiMo Foundation, United Business Media, Wedbush Securities, The Saul Zaentz Company (d/b/a Tolkien Enterprises) and a leading national consumer products company. He has represented clients in deals with Boeing, Boston Scientific, Electronic Arts, Google, Johnson & Johnson, Nestlé, New Line Cinema, Siemens, Paramount, Sony, Universal Pictures, Vivendi Universal Games and Warner Bros., among others.

While in law school, Mr. Magnani served on the editorial board of the Berkeley Technology Law Journal and earned a Boalt Hall Law and Technology Certificate.

Mr. Magnani is admitted to practice before the United States Patent and Trademark Office.

Representative Matters

• Representing three leading research universities in structuring and negotiating a settlement of class action copyright infringement lawsuits brought by the Authors Guild and five major publishers against Google regarding Google’s digitization of the universities’ vast library holdings in connection with the Google Book Search Project.
• Participating in the negotiation and documentation of a $612.5 million license and settlement between Research In Motion Limited and NTP, Inc. resolving a widely-publicized patent dispute over RIM’s BlackBerry handheld devices.
• Negotiating and drafting video game and merchandise license agreements on behalf of The Saul Zaentz Company (d/b/a Tolkien Enterprises), holder of film, stage, and merchandising rights in The Hobbit and The Lord of the Rings.
• Advising a leading non-profit life sciences research institution on intellectual property and equity compensation issues arising from its research activities on behalf of for-profit enterprises.

Education

• J.D., University of California, Berkeley,  School of Law (Order of the Coif, recipient of Boalt Hall Law and Technology Certificate), 2000
• B.S. in Biology and Environmental Studies, Tufts University (summa cum laude, Phi Beta Kappa), 1997

Admitted

• California
• United States Patent and Trademark Office

Memberships

• State Bar of California, IP Section, Licensing Committee
• American Bar Association, member of the Computer Games and Virtual Worlds Committee
• Licensing Executives Society
• Bay Area Lawyers for Individual Freedom
• Frameline, Board of Directors 

Selected Publications

• “California Employee Invention Assignment Agreements – Proceed with Caution,” IP Today (August 2009)
• “Judge Finds Jackson Browne's Copyright Case is Hardly "Running on Empty",” Intellectual Property Lawcast (March 2009)
• “Google to Pay $125 Million to Settle Book-Scanning Copyright Case,” Intellectual Property Lawcast (December 2008)
• “The Patentability of Human-Animal Chimeras,” 14 Berkeley Tech. Law Journal 443 (1999)
• “Biotechnology: A Solution to Deforestation in Southeast Asia,” 20 Hemispheres: Tufts U.J. Int’l Aff. 5 (1997)

Selected Presentations

• "Damages Law and Policy: Business Role of Patent Damages," IP Counsel Café (April 2010)
• "The Brand Licensing Race: Steering Brands to Success," California State Bar IP Law Section Licensing Committee (March 2010)
• "ACC’s Value Challenge: How is Your Law Firm Doing?," The Recorder Roundtable (November 2009)
• "Google Print Library Class Action Settlement and Implications for the Future of Copyright Protection," Law Seminars International (April 2009)
• “Advanced Licensing Agreements: Analysis of a Content License Agreement,” Practising Law Institute (February 2009, February 2008, March 2007, March 2006)
• “Key Terms of Collaboration Agreements,” Global Bio Program (2006)
• “Bringing Your Product to Market: Key Issues in Negotiating and Drafting Distribution Agreements,” San Jose BioCenter (September 2006)
• “Blogs: The Risks & Rewards of Using This Hot New Medium,” Dow Jones & Company (July 2005)
• “Antitrust Basics for Business and Technology Lawyers” San Francisco Bar Association (Summer 2002)
• “Sweepstakes Primer” CMP Media LLC (Spring 2001)

Awards & Honors

Mr. Magnani was recently selected by the Daily Journal as one of the top IP attorneys in California. He was also recognized as a Northern California Rising Star in 2009 and 2010, and named the “‘Hidden Gem’ Intellectual Property Attorney” by The Recorder in October 2006.