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Intellectual Property Practice

Licensing

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Overview

Our attorneys have deep experience representing both licensors and licensees of intangible assets and attendant intellectual property rights. These matters include license arrangements involving patents, technology, copyrights, brands, trade dress, content, and software. We have experience with licenses with complex aspects, such as technology assets with significant monetization potential. We recognize the driving business and legal interests of both the owners/licensors as well as the licensees, which are frequently aligned but can occasionally diverge depending on the nature of the licensed asset, its potential use and commercialization cases, and the relative economic and time horizon positions of the parties.

Patent

We have extensive experience representing both patent licensors and licensees in patent licensing agreements. In addition to negotiating definitive license agreements, our attorneys are experts in negotiating other commercial arrangements that often are implemented along with patent licensing deals, including joint development agreements, supply agreements, and services/technical assistance agreements.

We also assist clients in strategically managing their patent portfolios to maximize the value of their technology, generate revenue, or gain competitive advantage. We work with in-house business units and legal teams to develop a comprehensive approach that integrates with the business’ objectives and strategies, including by establishing patent licensing programs and by monetizing patents through various business models (e.g., joint ventures, divestitures, spin-outs, alliances, securitizations, synthetic royalties, royalty buy-outs and royalty interests).

Trademark & Brand

We have extensive experience in trademark licensing matters and the broader areas of merchandising programs, intellectual asset management business models involving trademarks and trademark holding company initiatives. This experience includes significant transactions involving world-famous brands and all forms of trademark and related rights in a wide range of industries. Such transactions include licensing, joint ventures and strategic alliances, supply/distribution, co-branding, franchising, and marketing/promotion/advertising agreements. Our attorneys have also represented clients in the context of celebrity licensing and endorsements and understand the legal issues relating to talent and rights of publicity.

In addition, our attorneys have been involved in the establishment of joint ventures and complex corporate transactions where the core asset of the relationship is a brand licensing arrangement. We also represent clients in straight brand license transactions. Our attorneys understand the key business considerations for companies, which can include brand integrity and minimum commercialization goals, and the considerations for licensees building a business line on a licensed brand asset.

Copyright & Content

Our attorneys advise clients on financing, development and licensing arrangements related to all types of copyrighted material and published content, including software, television series and feature length films, video games, music, and online and print publications. In addition, we assist clients with licensing arrangements as resolutions to copyright infringement disputes and advise on copyright ownership interests in creative works.

Software

Our attorneys represent clients in software-driven deals for solutions and platforms used in broader digital ecosystems. In addition to licensing agreements, we negotiate agreements that often accompany these licensing arrangements, such as agreements for software development, IT platforms, implementation and integration, and managed services. Our experience includes assisting clients with the licensing of source code under open source licenses. In addition, our attorneys are well versed in the broader concepts of shared services and converged infrastructure. We have a broad range of experience working with software delivery models and cloud computing, including on Software as a Service, Infrastructure as a Service, and Platform as a Service bases.