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    Intellectual Property (IP)

 

  • Various types of intellectual property licensing agreements relating to celebrities (such as granting permission to a corporate entity to manufacture products with the name and likeness of the celebrity on the package), characters (as in TV, movies and stage productions), corporate IP (when a corporate entity has a portfolio of copyrighted, patented or trademarked assets and wishes to increase profitability through licensing revenues), entertainment (if third parties wish to use brands or spokespersons to endorse or represent some other established brand for promotional purposes), patents and technologies (where the holder of a patent grants a license to a corporate entity to reproduce such patented product), publishing (such as the granting of a license by an author to a publisher or distributor to reproduce the author’s work in particular forms and through various media), software (in which the author or holder of the rights to a particular software application grants particular rights to an end user or corporate entity regarding how such software is installed, manufactured for distribution, maintained or used), sports (relating either to the branding of particular individual sports personalities or teams, the use of logos, copyrighted or trademarked materials, or royalties allocations from the sale of licensed products), toys (generally for distribution purposes or royalties revenue allocation), video games (which can involve copyright, patent and trademark issues).

 

  • General IP tasks, such as all forms of IP-related contracts and transactions, dealing with infringing competitors, developing an effective intellectual property plan for businesses and startups, protecting promotional materials from counterfeiters, protecting the primary IP rights (copyright, design rights, patents, trademarks), registration of copyrights and trademarks and familiarity with the California right of publicity statutes.

 

  • Management, purchase and sale of domain names, trademarks, patents and complex intellectual property portfolios.

 

  • Consultation regarding cable affiliation agreements, Cable Television Consumer Protection and Competition Act (CTCPCA), cease and desist Notices, content licenses, copyright infringement, copyright registration, cybersquatting, defamation, Digital Millennium Copyright Act (DMCA) – which implemented two World Intellectual Property Organization (WIPO) treaties in the United States, the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty – DMCA takedown notices, fake content, Internet Corporation for Assigned Names and Numbers (ICANN) guidelines, libel, Payment Card Industry Data Security (DSS), retransmission consent, trademark infringement, trademark registration, (also known as authenticated streaming or authenticated video on demand), Uniform Domain-Name Dispute-Resolution Policy (UDRP) disputes, video on demand (VOD).

 

  • Compliance with IP-related laws and guidelines, such as the Anticybersquatting Consumer Protection Act (ACPA), Berne Convention, Defend Trade Secrets Act (DTSA), Digital Advertising Alliance (DAA), Economic Espionage Act (EEA), European Union (EU), Federal Information Security Management Act (FISMA), Federal Trade Commission (FTC), Federal Trademark Dilution Act (FTDA), Indian Arts and Crafts Act (IACA), Interactive Advertising Bureau (IAB), Madrid Protocol, Network Advertising Alliance (NAI), Paris Convention, Plant Variety Protection Act (PVPA), Prioritizing Resources and Organization for Intellectual Property Act (PROIPA), Semiconductor Chip Protection Act (SCPA), Textile Fiber Products Identification Act (TFPIA), Trademark Counterfeiting Act (TCA), Uniform Trade Secrets Act (UTSA), United States (U.S.) Constitution, Wool Products Labeling Act (WPLA).

 

  • Drafted and negotiated cease & desist letters, agreements including various licenses, joint venture, collaboration, material transfer, marketing, confidentiality, franchising, promotional, sponsorship, research, coexistence and endorsement, specialized agreements (retail, e-commerce, permissions, shopping, work made for hire, options, production, network, personal appearances, representation, sponsorship, endorsement, management, contests and settlement), licenses (such as long and short form trademark and copyright, sync, clip, musical compositions).

 

  • Drafted and negotiated media-related agreements for internet and advertising, promotions, push-related activities and marketing, such as ad serving, proposals, programmatic issues, data management, measurement and analytics.

 

  • Assisted in coordination and due diligence for trademark acquisition and retention, and investigations regarding infringement, chain of title, freedom-to-operate, registration and recordation, enforcement programs and with intellectual property due diligence in mergers and acquisitions and other corporate initiatives.

 

  • Retained and managed outside law firms, experts and consultants and directed large-scale IP litigation and authored corporate policies relating to data privacy, security, records retention and records management.

 

  • Directed domestic and international litigation and document review legal teams, law firms, consultants and experts for IP litigations, Trademark Trial and Appeal Board (TTAB) issues and various infringement litigations.

 

  • Experience with B2B and B2C aspects of the digital advertising, beacons, trackers, cookies, cookie alternatives across devices, programmatic technologies and matching of datasets, big data, internet of things (IoT), tracking apps.

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    Last updated 200720_1524

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