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Intellectual Property
Intellectual property is of growing and universal importance. It is hard to imagine a business of significance that does not use intellectual property on a daily basis. The firm's intellectual property department has wide experience in this burgeoning legal area, from advising clients on how best to protect and exploit their intellectual property assets, including trademarks, copyrights, patents and trade secrets, to litigating infringement disputes. Members of the department are responsible for leading court decisions in the copyright, trademark and trade secret fields and have substantial experience addressing intellectual property issues internationally as well as domestically.
Donald Prutzman is the Chairman of the Intellectual Property Committee of the
International Law and Practice Section of the New York State Bar Association;
Drew Jaglom speaks frequently on intellectual property issues at
that Section's annual meetings and in continuing legal education programs; and our counsel,
Andrew Berger, lectures to creators of copyrights in the U.S. and abroad regarding all aspects of copyright protection and infringement litigation. Mr. Berger also writes a monthly newsletter called "Legal News You Can Use" focusing on recent copyright developments.
We are experienced in addressing the many ways that intellectual property issues arise in e-commerce, including resolving trademark and domain name disputes, advising clients with respect to the use of copyrighted materials and other intellectual property belonging to others on their 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 several 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
- Copyright registration
- United States and International Trademark Registration and Prosecution
- 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
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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