- Comprehensive US trademark availability searches (clearance searches)
- Filing new US trademark applications
- Responding to Office Actions from the US Patent and Trademark Office, including rejections based on descriptiveness, likelihood of confusion, surname, geographic descriptiveness, trademark doctrine of foreign equivalents,
- Assisting non-US clients with US trademarks filed under the Madrid Protocol
- Filing ex parte appeals to the Trademark Trial and Appeals Board
- Filing oppositions to trademark registration
- Filing cancellation of existing US trademark registrations
- Advising clients on international trademark filing strategy
- Managing foreign outside counsel in obtaining international trademark protection
- Negotiating consent agreements to permit trademark registration
- Negotiating trademark license agreements
- Conducting intellectual property audits to analyze client’s IP portfolio, identify risks, and recommend needed protection
- Analyzing online copyright and trademark infringements
- Advising clients on unusual music performance license situations under ASCAP/BMI licenses
- Analyzing “work made for hire” issues
- Preparing employer agreements to ensure ownership of materials developed by contractors and employees
- Sending takedown notices to website copyright infringers that have resulted in prompt removal of infringing material, including from Google’s Android Market
- Registration of US copyrights in literary, musical, audiovisual, and computer-based works
- Obtaining licenses for use of copyrighted music
- Analyzing cutting edge copyright issues related to digitized content
- Analyzing termination of transfers of copyright under Sections 203 and 304 of the US Copyright Act
- Advising US clients regarding international copyright issues
- Managing nationalizing non-US patents in the US through the Patent Cooperation Treaty (PCT)
- Drafting new US patent applications
- Drafting and negotiating patent license agreements
Entertainment Law — Publishing, Promotions, Sweepstakes, Social Media
- Handling book publishing agreements with major publishers in New York and elsewhere, including Doubleday, John Wiley, Pearsons, Cengage, Shadow Mountain, and Macmillan.
- Representing new authors in contract negotiations with book publishers
- Advising clients on right of publicity issues in relation to live events, film shoots, reality television shoots, and news programming
- Representing musical artists
- Representing GRAMMY® award-winning musical groups
- Obtaining clearance (music licenses) for audio CDs, digital downloads, and DVDs (sync licenses)
- Handling agreements for multiple film projects with multi-million-dollar budgets (location agreements, musical score agreements, talent agreements, production agreements, screenwriter agreements)
- Handled sports marketing agreements for sponsorship of the Dallas Cowboys, PGA Tour, British Triathlon, and the Winter Olympics, as well as negotiated agreements with multiple Olympic athletes
- Preparing Official Rules for sweepstakes, both for company internal events and for public participation, including multi-million-dollar events
- Handling social media promotions through Facebook and Twitter
Technology — Internet Law, Domains, Licensing
- Negotiating confidentiality/non-disclosure agreements
- Negotiating software license agreements and software development agreements—we’ve negotiated opposite Google, Microsoft, Oracle, Dell, Xerox, AT&T, Adobe, IBM, JP Morgan Chase, and many others.
- Negotiating technology services agreements
- Analyzing online copyright and trademark infringements
- Sending takedown notices to website copyright infringers that have resulted in prompt removal of infringing material, including from Google’s Android Market
- Analyzing open source software matters, including potential open source license liability and creating strategies for clients that want to use open source software
- Handling domain name disputes through UDRP proceedings
- Conducting website legal reviews, including analysis of copyright and trademark issues
- Preparing website legal documents, including terms of use, e-commerce terms, privacy policies, and disclosure policies related to social media
- Advising clients regarding FTC requirements for bloggers and other social media participants to avoid liability under false advertising laws
Data Privacy Law
- Analyzing clients’ compliance and risks related to European privacy laws under the EU Data Protection Directive (Directive 95/46/EC)
- Advising US-based clients on use of the safe harbor and model contract provisions of the EU Data Protection Directive (Directive 95/46/EC)
- Preparing internal security compliance policies and data management policies to ensure compliance with European laws
- Registering clients’ databases with European data protection authorities
- Analyzing US state laws relating to data privacy and data breach notification
- Advising clients regarding the requirements of specific state and federal privacy-related laws for website privacy policies, including COPPA, GLB, and HIPAA.