Intellectual Property / Licensing / Entertainment at Olshan Law

Intellectual Property / Licensing / Entertainment

Trademark, Copyright and Unfair Competition
Our Intellectual Property Group (the "IP" Group) offers expert counsel and litigation capabilities to enable businesses and individuals to establish, protect and exploit their trademarks, copyrights and trade secrets. Our trademark practice is particularly extensive. From brand development to registration and protection of trademarks, we offer a sophisticated practice to help clients successfully navigate the legal and business issues confronting companies that create, license or use intellectual property. We represent clients in contested proceedings before trademark offices domestically and internationally, and initiate litigation worldwide when necessary. Our attorneys are highly experienced in obtaining and opposing trademark registrations, enforcing trademarks and defending clients in trademark matters, and in counseling and litigating a wide range of trade secret and unfair competition matters. Our copyright attorneys offer significant experience in enforcing copyrights and defending against charges of copyright violation. As detailed below, one unique feature of our practice is our extensive expertise in protecting our clients' valuable intellectual property against counterfeiting.

Intellectual Property Litigation and Litigation Counseling
A significant portion of the group's litigation practice is devoted to intellectual property litigation and counseling, including trademark, false advertising, copyright, trade dress, trade secrets, unfair competition, patent and right of publicity and privacy matters. The IP Group also litigates related rights acquisition, contract, licensing, antitrust, partnership and joint venture issues. Where injunctive relief is appropriate, success has been achieved in protecting our clients' intellectual property rights against unauthorized activities.

A significant aspect of the IP Group's litigation practice is counseling clients on the avoidance of litigation as well as monitoring the "business" of litigation — ensuring that the litigation makes business sense at every stage of the litigation. We also counsel clients in connection with internet and website issues, as well as advertising, and litigate to protect our clients' rights in those areas as well.

Our attorneys have forged new territory in the representation of clients in the area of anti-counterfeiting litigation. The IP Group has often used a group of companies in the fashion industry to join in collaborative efforts to bring a halt to trademark infringement and counterfeiting. Through our anti-counterfeiting endeavors, our attorneys have successfully represented high profile brand owners in litigation against makers and sellers of infringing and counterfeit products such as Wal-Mart, Kmart and Costco.

Anticounterfeiting
A unique feature of our intellectual property practice is our activity in the protection of our clients' valuable intellectual property rights from counterfeiting. The IP Group includes a former prosecutor who is experienced in investigations and criminal prosecutions for infringement and counterfeiting. Indeed, members of the IP Group are credited with co-authoring statutes relating to criminal and civil penalties for counterfeiting in numerous states, as well as being contributing authors in treatises. We are experienced with enforcement efforts during concerts, sports and other special events, including obtaining blanket federal seizure orders for counterfeit merchandise. We have assisted federal law enforcement authorities with the execution of warrants of civil seizure orders; and made significant contributions to case law broadening rights and remedies available to intellectual property rights holders. Our attorneys are established leaders in protecting clients against the manufacture and distribution of counterfeit and pirated goods. Our reputation and affiliation in specific industries, such as apparel and designer goods, has enabled us frequently to assemble an alliance of industry members to target transgressors of intellectual property rights, thereby creating synergies that enhance persuasion and factual analysis, but also allow a shared cost to create an efficient allocation of resources.

Trademarks, Trade Dress and Trade Secrets
Corporate identity, brand name recognition and reputation are among the most meaningful assets of an organization. Our attorneys provide trademark related services, including selection, registration, maintenance and protection of corporate and brand names on a worldwide basis, in the most efficient and cost effective manner. We are adept at comprehensive trade name, service mark and trademark searches to assess the relative risks and benefits associated with the selection of new names. Our comprehensive and powerful docketing system to manage large portfolios for sophisticated clients eases the administrative burden on in-house legal departments. We regularly coordinate trademark registration filings in foreign countries, enabling our clients to obtain global protection of their intellectual property interests. The advice that we provide our clients enables them to expand their businesses exponentially, both nationally and worldwide.

Trademark Prosecution
Our trademark prosecution attorneys are highly experienced in counseling clients on the careful selection of trademarks and in conducting thorough searches to insure successful registrations, as well as to minimize the chances of opposition by third parties during the registration process. We counsel our clients to be sure that trademarks are available to registration before the launch of products or services to minimize litigation risks. Our trademark attorneys have significant experience in both opposition and cancellation proceedings before the Trademark Trial and Appeal Board and in rendering freedom-to-operate opinions as to infringement, non-infringement, validity and non-validity. We frequently counsel clients on their global trademark portfolios.

Licensing Arrangements
The use of licensing arrangements to capitalize on and exploit intellectual property rights has enabled successful businesses to expand in today's marketplace. Many companies have come to rely heavily on the revenues and royalties they receive from licensed products. Moreover, the rapid pace and increasing complexity of these deals continues to escalate, challenging even the most experienced business people. Our attorneys possess the experience, knowledge and skill necessary to maximize the return on intellectual property rights, while ensuring that each licensing transaction does not violate any unfair competition laws or render our clients' intellectual property rights unenforceable.

Trade Secrets
Our attorneys have extensive experience in counseling clients with respect to confidentiality and trade secret protocol, including advising and drafting of employment, consulting, non-competition, and assignment of intellectual property agreements to protect their trade secrets. Our capabilities include conducting trade secret audits, and proceeding with trade secret litigation where there has been theft or conversion of trade secrets.

Due Diligence
The IP Group has extensive experience in conducting intellectual property/trademark due diligence in connection with corporate transactions, including acquisitions and mergers. We review the trademark portfolios of the relevant company to determine if the trademark registrations have been properly maintained and if coverage exists on a global basis, where appropriate. As part of due diligence, we review the products and services covered by the registration to insure that they provide enforceable coverage. In the case of improperly or unregistered trademarks, we conduct a thorough search to determine whether continued use will violate a third party's rights.

Copyrights
Our copyright attorneys advise clients on a multitude of copyright issues for all types of copyrighted materials. Additionally, we monitor copyright developments worldwide - an increasingly significant need in many industries, particularly with the advent of sophisticated global information systems. Copyright counseling and representation have become integral to the existence and expansion of even routine business arrangements, and we assist our clients with business transactions and disputes involving copyrighted materials.

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