Intellectual Property

Overview

A company's intellectual property is one of the key ingredients in building a successful business and often includes the most valuable assets a company owns. At Tannenbaum Helpern, we understand the commercial importance of properly protecting and maximizing the value and use of intellectual property. Tannenbaum Helpern's Intellectual Property practice covers copyrights, trademarks, trade dress, patents and trade secrets. Our attorneys are skilled in strategically evaluating, protecting and enforcing intellectual property rights, helping clients create and maximize the value of their intellectual property portfolios, minimizing legal risks so that clients can focus on their business objectives, and successfully resolving and litigating domestic and international intellectual property disputes.

Trademark

Tannenbaum Helpern’s Intellectual Property practice has decades of experience in successfully clearing, registering, protecting, licensing, enforcing and defending trademarks in the US and internationally. We advise clients on the selection and clearance of strong, commercially effective trademarks, brand strategies and proper usage of marks, due diligence in mergers and acquisitions, and cost-efficient ways to protect marks in jurisdictions relevant to the client's current business and future plans. Tannenbaum Helpern attorneys also have substantial experience in litigation involving trademark infringement, unfair competition, false advertising, gray market goods, cybersquatting and other online infringement, right of publicity and related intellectual property disputes. Our experience includes representing multiple clients in high-profile disputes in state and federal courts throughout the US, in arbitration proceedings, before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, and before the World Intellectual Property Organization (WIPO) and other domain name dispute resolution providers.

Copyright

Our intellectual property attorneys help clients protect and defend their copyright rights, particularly on the Internet. Our copyright experience includes copyright registration, licensing, enforcement and litigation in multiple jurisdictions, as well as fair use and parody analyses, joint ownership issues, work-made-for-hire agreements, software copyright rights, assignments and due diligence. We assist clients with their copyright needs across a number of industries, including banking and finance, interior design, textiles, technology and software, print and Internet publishing, architecture and construction, fashion and jewelry, travel and manufacturing.

Patent

In patents, Tannenbaum Helpern attorneys are experienced in patent litigation in the federal district courts and the United States Court of Appeals for the Federal Circuit, and in Administrative Proceedings before bodies such as the International Trade Commission. They also advise clients on the life-cycles of patents and technologies in existing portfolios and how best to extend the protection of commercially vital products. Additionally, our attorneys assist clients in patent technology transfers of all types including in- and out-licensing, joint ventures, due diligence in mergers and acquisitions, and preparation of Freedom-to-Operate opinions.

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 clients such as business owners and employers on the measures necessary to maximize protection. Our attorneys are skilled in determining, 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.

Industries Served

Tannenbaum Helpern’s intellectual property clients span the spectrum: inventors, designers, small businesses, new businesses, established multi-national businesses, international banks, hedge funds, real estate companies, breweries, restaurants, and retail stores. Industry experience includes but is not limited to life science, medical devices, software, chemical, electronic, e-commerce, Internet, music, art, publishing, distribution, construction, financial services, food and beverage, hospitality, technology, fashion, staffing and entertainment.

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

Internet and Ecommerce

We are experienced in addressing the many ways that intellectual property issues arise in e-commerce and on various online platforms, including resolving domain name disputes, advising clients with respect to the use on their websites or social media of copyright-protected materials and other intellectual property belonging to third parties, establishing new e-commerce websites, and negotiating license, distribution and other agreements in the Internet context.

Representative Services

• Negotiating and drafting license agreements, joint venture agreements, publishing agreements and other contracts relating to copyrights, trademarks and patents
• Copyright registration and enforcement programs tailored per client
• Trademark registration and US and global registration strategies
• Creating and implementing global trademark and copyright enforcement programs
• Litigating copyright, trademark and patent infringement matters
• Litigating misappropriation of trade secrets, false advertising, and unfair competition disputes
• Negotiating, drafting and enforcing settlement agreements, coexistence agreements, and restrictive covenants
• Resolving disputes through creative settlements, arbitration, and litigation
• Advising on the protection of copyrights, trademarks, patents and trade secrets
• Establishing rights to domain names and litigating gTLD and ccTLD domain name disputes
• Ensuring websites and other promotional material comply with applicable copyright, trademark, and advertising laws and FTC regulations

Selected Accomplishments

• 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 worldwide the name and trademarks of a well-known men's magazine 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.
• Negotiated license of name and likeness of prominent entertainment industry figure.
• Advised hedge funds and financial services business on need for and terms of licenses for financial indices and securities identifying numbers.
• Won summary judgment and the subsequent appeal in a copyright case against a well-known sculptor who based an edition of sculptures on a photograph taken by a client.
• Secured judgment on behalf of employer against a former employee who used the employer's trade secrets to compete with it.
• Secured early, cost-effective dismissal of patent infringement litigation by demonstrating that statements in the prosecution history barred the plaintiff’s doctrine of equivalents infringement theory.