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Counsel clients in the promotion, use and commercial exploitation of intellectual property through branding, reseller and private label agreements. Assist companies in the RFP process for hardware and software procurement. Conduct IP due diligence reviews for merger and acquisition transactions. Structure joint venture, strategic alliance, acquisition and co-marketing transactions to enable clients to maximize the use of, and profit from, their intellectual property.
Structure, negotiate and draft agreements for the transfer or assignment of IP between parties. Draft and file paperwork with the United States Patent and Trademark Office, as well as the United States Copyright Office, for the transfer or assignment of IP. Structure, draft and negotiate escrow arrangements for the storage, review and release of IP. Counsel companies on data export compliance.
Structure development and licensing transactions involving digital media. Negotiate advertisement placement transactions, including media purchases, media licensing and insertion order transactions. Represent digital agencies and digital production companies in asset purchase, and merger and acquisition deals. Enforce intellectual property rights for digital agencies on a global basis.
Structure and negotiate agreements for application development and maintenance (AD/M), call center functions, and various back office activities with companies located worldwide, including locations in India, Eastern Europe, Ireland, and China. Assess and evaluate risks associated with offshore sourcing, and structure offshore development transactions for logistics and supply chain transactions.
Responsible for the registration and prosecution of dozens of trademark applications, and dozens of copyright applications. Provide litigation and transaction solutions to companies to protect their IP rights throughout the United States, the EU and Asia. Litigate trademark and copyright infringement cases throughout the United States. Represent clients in WIPO arbitration proceedings related to domain name uses. Advise clients regarding compliance under, and enforcement of, the Digital Millennium Copyright Act (DMCA).
Negotiate and draft hundreds of agreements involving the layout, wiring and use of video, data and voice conduits in planned communities and high rise buildings. Provide guidance on Federal Trade Commission (FTC) regulations, including issues related to online marketing, pretexting, and SPAM law compliance. Negotiate cell tower placement transactions and structured payout deals.
Advise companies regarding technology and online privacy issues, including workplace privacy rights, employer telephone & Internet monitoring, and government electronic surveillance and monitoring. Structure, negotiate and draft service level agreements for companies that provided hosted application services and offsite data storage solutions. Counsel companies on the use of customer data and personally identifiable information under HIPAA and the Gramm Leach Bliley Act.
Structure, negotiate and draft restrictive covenants for use by technology and e-commerce companies in employment agreements, vendor agreements, distribution and independent contractor agreements. Litigate the viability and enforceability of IP-based restrictive covenants.