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Intellectual Property

A firm's intellectual property is one of the key ingredients in building a successful business. At Tannenbaum Helpern, we understand the commercial importance of properly protecting and maximizing the usage of intellectual property assets. Tannenbaum Helpern's Intellectual Property Practice covers copyrights, patents, trademarks and trade secrets. With an average of 25 years in advising domestic and global clients on intellectual property matters, our attorneys are skilled in protecting, evaluating and helping clients maximize their intellectual property portfolios as well as successfully resolving and litigating domestic and global infringement disputes.

Patent - In patents, Tannenbaum Helpern attorneys are technically trained and experienced in advising clients on the life-cycles of patents and technologies in existing portfolios and how best to extend the protection of commercially vital products. Our attorneys have extensive experience in the enforcement and defense of patents in the US, Europe and Asia both in the Courts and in Administrative Proceedings such as the International Trade Commission (ITC) as well as handling multinational patent litigation. Our experience also includes substantial appellate practice before the Court of Appeals for the Federal Circuit, where our attorneys have been successful not only on appeals of cases they handled below, but also when retained at the appellate stage. In several cases, Tannenbaum Helpern attorneys have successfully obtained reversals of unfavorable judicial constructions of patent claims (Markman Rulings), giving vitality to patents previously of little value. Additionally, our attorneys assist clients in technology transfers including in- and out-licensing and joint ventures and prepare Freedom-to-Operate opinions.

Trademark - Our intellectual property practice has vast experience in protecting, registering, asserting and defending trademarks in the US and internationally. We regularly advise clients on the selection and clearance of strong, commercially effective trademarks, proper usage of marks, and cost-efficient ways to protect marks in jurisdictions relevant to the client's business. Our attorneys also have substantial experience in litigation involving trademarks, unfair competition, domain-names, and related intellectual property rights, such as rights in one's image, likeness and right-of-publicity. Our experience includes representation of multiple clients in high-profile disputes in State and Federal Courts throughout the US, and before the Trademark Trial and Appeal Board.

Copyright - Our copyright experience includes copyright registration and licensing of copyrights in all types of works. Our attorneys are well versed in litigation of copyright disputes throughout the US and in international copyright protection.

Trade secrets - Tannenbaum Helpern intellectual property attorneys have considerable experience in recognizing when an intellectual property asset should be protected as a trade secret rather than another method requiring disclosure and advising on the measures necessary to maximize protection. Our attorneys have the expertise to determine, under current standards , which business methods and trading strategies are likely patentable and which are not patentable subject matter and must be protected as trade secrets. Additionally, Tannenbaum attorneys are skilled in litigating trade secret theft claims in State and Federal courts.

Our intellectual property clients span the spectrum from inventors to small to mid-size businesses to multinational corporations. Industry experience includes but is not limited to life science, medical devices, software, chemical, electronic, e-commerce, Internet, music, art, publishing, distribution, financial services, food and beverage, restaurants, staffing industry and entertainment.

We are also experienced in addressing the many ways that intellectual property issues arise in e-commerce, including resolving domain name disputes, advising clients with respect to the use of copyrighted materials and other intellectual property belonging to others on their Websites, establishing new e-retailing websites and negotiating license, distribution and other agreements in the Internet context.

In the field of entertainment law, the firm has represented motion picture producers and distributors, artists, authors, photographers, fashion designers and technical personnel, as well as clients in the music and publishing industries. We have represented major motion picture productions and have considerable experience in commercial transactions and financings having intellectual property as their foundation.

Representative Services

  • Negotiating and drafting license agreements, joint venture agreements, publishing agreements and other contracts relating to copyrights, trademarks and patents
  • Global patent preparation and prosecution
  • Copyright registration
  • Evaluating patent portfolios and identifying possible revenue potential
  • Advising on patent life-cycles and extending patent protection for commercially vital products
  • Litigating patents in the Federal Courts as well as in 337 Actions at the ITC
  • Using patent litigation as a licensing tool
  • US and international trademark registration
  • Litigating copyright and trademark infringement matters
  • Litigating misappropriation of trade secret disputes
  • Negotiating, drafting and enforcing restrictive covenants and litigating disputes
  • Advising on the protection of copyrights, trademarks, patents and trade secrets
  • Establishing rights to Internet domain names and litigating domain name disputes
  • "Proofing" Websites for compliance with copyright and trademark laws

Selected Accomplishments

Patent Prosecution & Litigation

  • Obtained patent protection for a commercial product containing two active agents when the patent disclosure did not describe the ratio of active agents.
  • Obtained patent protection for a recombinant product over the naturally occurring product.
  • Successfully defended a Biotech company against a charge of patent infringement by invalidating the patent at the Federal Circuit on an appeal from an improvidently granted Preliminary Injunction
  • Recovered in excess of $14 million in an ITC proceeding by licensing the patents to the defendants

Intellectual Property Licensing and Transactions

  • Advised Fortune 500 telecommunications equipment manufacturer in connection with restructuring their distribution arrangements, including trademark and software licensing issues with both resellers and end users.
  • Negotiated license agreement for soft drink bottler with Fortune 500 candy manufacturer
  • Negotiated licensing agreements for portfolio management, pricing, hedging and trading software used as the arbitrage trading system at a major securities firm.
  • Prepared license agreement licensing a new financial index to the investment advisor of an index fund.
  • Acted as special trademark counsel to a consortium of lenders in $300 million financing and acquisition of a major worldwide foods company and its subsidiaries, secured principally by the borrower's owned and licensed trademarks.
  • Represented Australian company in acquiring engine supercharger technology from Scottish and American companies for use and license in the U.S. and around the world.
  • Represented owners of pinball machine copyrights and other intellectual property in drafting and negotiating licenses exploiting those rights, including a license to Microsoft to use intellectual property in historically important pinball machines in "Pinball Arcade" computer game.
  • Represented foreign-based worldwide distributor of duty free merchandise in licensing rights to use the name and trademarks of a well-known men's magazine worldwide to develop and market a line of alcoholic beverages.
  • Negotiated license of articles for Internet content site in exchange for cash and stock options.
  • Advised Scottish counsel regarding New York and U.S. law aspects of patent and technology licenses relating to pharmaceutical products.
  • Negotiated license agreements for works of art to be used on consumer products, including license of famous cartoonist's work for bathroom accessories and license of artwork.

Intellectual Property Litigation

  • In Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992), won summary judgment and the subsequent appeal in a landmark Second Circuit copyright case against popular sculptor Jeff Koons, who based an edition of three sculptures, selling for over $100,000 each, on a photograph taken by our client, photographer Art Rogers.
  • In Elizabeth Taylor Cosmetics Co. v. Annick Goutal, Inc., 673 F. Supp. 1238 (S.D.N.Y. 1987), won injunctive relief against the sale and distribution of "Elizabeth Taylor's Passion" perfume on behalf of our client, noted French perfumer Annick Goutal whose own "Passion" perfume had been sold in the U.S. since 1982.
  • In Pencom v. Shapiro, 237 A.D.2d 144 (1st Dep't 1997), won judgment on behalf of our employer client against a former employee who used the employer's trade secrets to compete with it, establishing new law admitting into evidence as business records our client's database records of communications between its employees and third parties.
  • In Psihoyos v. Microsoft, 00 CV 5744 (RMB) (S.D.N.Y. ) (settled in June 2002), successfully protected client's copyright in an infringement action against Microsoft and McCann Erickson.
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