Intellectual Property

Our firm has extensive experience in helping our clients protect their intellectual property through trademarks and copyrights. We take a 360° approach to trademark advice: we help our clients select, use and protect their marks in effective, sensible ways, both in the U.S. and abroad. Our attorneys are skilled in negotiating licenses for trademarks and software, and have extensive experience in selling, purchasing, securitizing and financing trademarks, copyrights and related assets.

We represent publishers and authors on the full range of development, license transfers and work-for-hire contracts, and advise clients on strategies for registering works for maximum copyright protection. We also work with clients in protecting their IP assets during litigation. Our IP litigators have argued a landmark case before the United States Supreme Court and have appeared before the TTAB and other U.S. Courts. We also work closely with counsel abroad, to ensure high-quality legal protection wherever our clients do business.

Among our notable achievements in this area are:

  • Worldwide trademark registrations and portfolio management for a high-end textile manufacturer to provide coordinated protection and avoid third-party infringements.
  • Strategic planning and coordination of Swiss trademark infringement litigation for a Swiss client in the entertainment and food business.
  • Advising, negotiating and preparing numerous author, illustrator, work-for-hire, collaboration, and related agreements for bestseller books.
  • Advising, negotiating and preparing agreements for the publication of a biography of a mid-20th century broadcast journalism pioneer. On behalf of the late journalist’s family, we assembled the team to produce the biography, including a professor of journalism to write the book and a well-known literary agent to present the work to major book publishers.
  • Advising, negotiating and preparing agreements for the purchase and sale of domain names, including domain name transfer agreements in connection with resolving domain name disputes.
  • Successfully providing strategy and advice on U.S. trademark opposition to a multinational language school seeking to protect its U.S. trademark.
  • For more than 20 years, successfully representing a world-famous restaurant in winning all trademark infringements.
  • Preparing a sponsorship agreement for a consumer electronics company client engaging a well-known celebrity saxophonist.
  • Preparing and negotiating a license agreement for a client/licensor’s most valuable trademark to be used by a third-party carpet manufacturer.
  • Providing analysis and advice to a Swiss publisher regarding cross-border publishing agreement and possible breach of contract claims in U.S. courts.
  • Securitizing a copyrighted musicportfolio, enabling a musician to obtain funding for a personal project.

Overview

Our firm has extensive experience in helping our clients protect their intellectual property through trademarks and copyrights. We take a 360° approach to trademark advice: we help our clients select, use and protect their marks in effective, sensible ways, both in the U.S. and abroad. Our attorneys are skilled in negotiating licenses for trademarks and software, and have extensive experience in selling, purchasing, securitizing and financing trademarks, copyrights and related assets.

We represent publishers and authors on the full range of development, license transfers and work-for-hire contracts, and advise clients on strategies for registering works for maximum copyright protection. We also work with clients in protecting their IP assets during litigation. Our IP litigators have argued a landmark case before the United States Supreme Court and have appeared before the TTAB and other U.S. Courts. We also work closely with counsel abroad, to ensure high-quality legal protection wherever our clients do business.

Representative Matters

Among our notable achievements in this area are:

  • Worldwide trademark registrations and portfolio management for a high-end textile manufacturer to provide coordinated protection and avoid third-party infringements.
  • Strategic planning and coordination of Swiss trademark infringement litigation for a Swiss client in the entertainment and food business.
  • Advising, negotiating and preparing numerous author, illustrator, work-for-hire, collaboration, and related agreements for bestseller books.
  • Advising, negotiating and preparing agreements for the publication of a biography of a mid-20th century broadcast journalism pioneer. On behalf of the late journalist’s family, we assembled the team to produce the biography, including a professor of journalism to write the book and a well-known literary agent to present the work to major book publishers.
  • Advising, negotiating and preparing agreements for the purchase and sale of domain names, including domain name transfer agreements in connection with resolving domain name disputes.
  • Successfully providing strategy and advice on U.S. trademark opposition to a multinational language school seeking to protect its U.S. trademark.
  • For more than 20 years, successfully representing a world-famous restaurant in winning all trademark infringements.
  • Preparing a sponsorship agreement for a consumer electronics company client engaging a well-known celebrity saxophonist.
  • Preparing and negotiating a license agreement for a client/licensor’s most valuable trademark to be used by a third-party carpet manufacturer.
  • Providing analysis and advice to a Swiss publisher regarding cross-border publishing agreement and possible breach of contract claims in U.S. courts.
  • Securitizing a copyrighted musicportfolio, enabling a musician to obtain funding for a personal project.

Contacts

Karen A. Monroe
T +41 22 322 2010

Stuart M. Riback
T +1 212 981 2326