M&R’s Intellectual Property Department represents a broad-based clientele in connection with patent, trademark and copyright issues before federal and state courts, as well as before the Patent Trial and Appeal Board (PTAB), Trademark Trial and Appeal Board (TTAB) and the United States International Trade Commission (USITC). We have obtained numerous multi-million dollar verdicts for our clients in disputes involving false advertising, unfair competition, computer fraud and abuse, and trade secrets.
We counsel on the validity and infringement of patents, trademarks and copyrights. We also represent companies in opinion-work relating to e-commerce; business and finance systems; computer software, hardware and networking; digital/analog data transmission, reception and processing circuits; electrical power supply and semiconductor circuits; wire and wireless signal communication devices and networks; and electronic and electro-mechanical devices. Additionally, we represent clients in brand identity and rights protection matters across the entertainment, consumer products, health care, hospitality, insurance, apparel, wine and spirits, toys and automotive industries, among others.
Our intellectual property attorneys draft and negotiate licenses and other intellectual property agreements to meet the various requirements of corporate transactions. We represent several of the top technology companies in the world, and have significant experience in the most complex and sophisticated transactions, routinely counseling clients who introduce new products and services to the market. Further, we have successfully resolved multimedia issues that have arisen from the convergence of the entertainment and advertising industries. Our attorneys regularly provide counsel on domestic and foreign trade laws, devising and implementing intellectual property strategies for venture capital investments and mergers and acquisitions. We also advise clients on proprietary information protection systems, copyright matters, and rights of publicity, as well as Internet-related branding issues, including domain names, acquisition strategies, administration issues and disputes.
Our Intellectual Property attorneys are adept at prosecuting patents and trademarks before the U.S. Patent and Trademark Office, and are skilled in the cost-effective management of large and small domestic and international intellectual property asset portfolios. We have represented numerous companies in this capacity, from various industries, including electronics, manufacturing, telecommunications, e-commerce and financial services.
Areas Of Expertise
- IP Counseling & Licensing
Our attorneys are frequently called upon to counsel clients on a range of IP issues. We provide due diligence reviews of patents and other intellectual property portfolios and advise on the IP aspects of corporate transactions. We routinely advise companies on licensing strategies and draft and negotiate licensing agreements.
- Patent Infringement Litigation
We routinely litigate patent disputes for clients and have extensive trial experience, both with and without juries. We are skilled at evaluating cases from the beginning and make decisions strategically at every phase of the patent litigation process. Our attorneys have also had considerable success in evaluating disputes and disposing of cases through dispositive motions before trial when in our clients’ best interests.
- Patent & Trademark Prosecution - Domestic & International
When patent and trademark enforcement is required, our intellectual property attorneys have a highly successful track record both in the U.S. and abroad. We counsel clients from the initial process of evaluating ideas, through every phase of prosecuting patent applications. We have represented numerous clients in these enforcements before the U.S. Patent and Trademark Office, as well as before the World Intellectual Property Organization.
- Service Agreements
Our attorneys excel at drawing upon their extensive experience in structuring, drafting and negotiating service agreements to ensure clarity on behalf of our clients regarding licensing, ownership, assignment, and non-disclosure rights.
- Software Development Agreements
Software development agreements are often complex, especially given that laws routinely change to keep pace with rapidly evolving technologies. We have drafted and negotiated software development agreements on behalf of various corporate clients including investment funds and software developers, and have defended against litigation arising out of these agreements, including breach of contract, breach of fiduciary duty and fraud.
- State & Federal Investigations
Our attorneys possess the regulatory and compliance experience to counsel clients on how best to manage a state or federal investigation and have a track record of resolving matters quickly before they become formal enforcement actions.
- Trade Secrets
Our IP attorneys counsel clients to protect trade secrets and confidential information. Aggressive litigators, we have obtained numerous victories including a multi-million dollar jury verdict that remains one of the largest in U. S. history for the misappropriation of computer trade secrets.
- Trademark & Copyright Litigation
Rapidly evolving technology has given rise to a myriad of internet, software, and technology-related trademark and copyright infringement claims. We have successfully litigated numerous trademark and copyright infringement disputes, as well as unfair competition and false/misleading advertising claims in courts throughout the country.
Amended Mark: The Office of the Director of the U.S. Patent and Trademark Office granted the relief sought in the post-registration petition filed by M&R on behalf of our client, a major heavy metal guitarist, in connection with the registration of his mark for coffee beans. The guitarist’s management had originally provided (and verified) instructions to file the application for a misspelling of the mark. After the application had been examined and allowed, the client realized the error. Subsequently, when the statement of use was filed along with an amendment of the mark, the Trademark Office erroneously ignored the amendment and processed the statement of use – based on a specimen displaying the as-amended mark – and granted registration for the misspelled mark. M&R filed the petition to correct the record and have the registration reissued, based on clear error by the Trademark Office. In its order, the Office of the Director acknowledged the Trademark Office’s fault and, finding the amendment would not comprise a material alteration of the applied-for mark, remanded the file for reissue of the registration for the proper, amended mark.
Copyright & Trademark Prosecution: Handled all stages of trademark and copyright prosecution for client in the U.S. Patent and Trademark Office and U.S. Copyright Office, including opposition and cancellation practice before the Trademark Trial and Appeal Board.
Counterfeiting: Secured nationwide temporary restraining order and permanent injunction against counterfeiters on behalf of major recording artist; participated in seizure of counterfeit goods.
Distribution Agreement: Drafted and negotiated 13-episode home video distribution agreement for startup digital animation content provider.
Domain Name Dispute: Successfully represented a world-renowned science and education museum in Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding to oppose improper registration of an Internet domain name by a competitor, forcing transfer of that domain name to client.
False Advertising: Successfully defended Thrive Records LLC against claims of false advertising, false designation of origin and deceptive trade practices alleged by Payday Records, Inc. Payday and Ultra Records, Inc. brought the suit under federal and New York state laws, disputing Thrive's longstanding practice of identifying recording artists and remixers whose work is included on cover packaging of dance music compilation albums.
Financing: Represented a privately-held, New York-based medical device company from its inception through several rounds of financing. The client has proprietary technology that provides a secure cloud-based solution for reliable reviewing, reporting, archiving, managing and distribution of ultrasound and other forms of medical imaging.
Illegal Bootlegging: M&R client, a major hard rock act, was negotiating with distributor for a repackage release in Europe, but encountered problems when the distributor cited seven unauthorized third-party bootleg concert DVDs on Amazon’s German website. Client’s entertainment counsel attempted via the Amazon “take-down” procedures to have the infringing product removed but was unsuccessful, so they engaged M&R. M&R wrote a strong demand letter and followed it up with email correspondence. Amazon took down the product. Further, many of the sellers provided contact information for the distributors from whom they sourced the infringing product. The resulting total victory (within less than a week) ensures the client can move forward with the planned new release, while enjoying reduced fallout from unauthorized third-party product sales.
Licensing Agreements: Drafted and negotiated a cross-license and field-of-use agreement between two major specialty chemical corporations for the patent portfolios relating to anti-reflective and top-coat immersion compositions.
Misappropriation of Trade Secrets: Obtained a multi-million dollar jury verdict on behalf of our client that remains one of the largest in U. S. history for the misappropriation of computer trade secrets.
Patent Prosecution – International: Defended an electronics manufacturer before the World Intellectual Property Organization (WIPO) in the prosecution of its patent portfolio of software algorithms and processes for the identification of products displayed in media programs.
Permanent Injunction Counterfeiters: Secured nationwide temporary restraining order and permanent injunction against counterfeiters on behalf of major recording artist; participated in seizure of counterfeit goods.
Rebranding: Managed end-to-end IP aspects of corporate-wide rebranding effort for large entertainment company client.
Technology Transaction – Business Acquisition: Drafted and negotiated the intellectual property and services clauses for a major private investment company in a $2 billion equity and asset purchase of a telecommunications company’s business and manufacturing facilities.
Technology Transaction – Merger Agreement: Drafted and negotiated the intellectual property clauses of a $35 million merger agreement by which a global technology provider acquired the retail commerce solutions of a leading next generation mobile solutions provider.
Trade Secret Litigation: Successfully represented a major social gaming company in litigation against a large competitor, alleging claims of trade secret misappropriation and employee raiding.
Trademark Dispute: The Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office granted a petition by a major movie studio to cancel registration for a mark in the name of another party. During the subsequent four years, M&R filed the petition on behalf of the studio. The registrant failed to present any evidence or arguments in support of the validity of her registration, while we collected evidence that registrant had never used the mark, relying on false specimen to obtain registration. Registrant’s arguments were rejected, and her procedurally impossible plea to amend her registration to an “intent to use” basis failed, resulting in a total win for M&R’s client.
Trademark Infringement: Represented the National Football League Properties, LLP and a local National Football League franchise in multiple trademark infringement and false designation of origin matters against defendants in connection with their unlicensed use of trademarks and sale of merchandise. Through the rapid initiation and prosecution of legal proceedings, clients achieved favorable monetary settlements and consent decrees prohibiting similar future conduct by defendants.
Trademark, Copyright: Managed all employment and confidentiality agreements and trademark and copyright issues for digital film studio.
- Michelman & Robinson, LLP Boosts Its Intellectual Property Practice with New Partner Jeremy RichardsonMay 1, 2017
- April 17, 2017
- April 11, 2016
- Michelman & Robinson Expands its Corporate and IP Practice Groups with the Addition of Partner Victor Sapphire in Los AngelesFebruary 2, 2014
- April 18, 2012
- August 10, 2010
- May 4, 2017
- August 9, 2016
- April 22, 2016
- April 14, 2016
- April 13, 2016
- April 13, 2016
- March 29, 2016
- May 14, 2015
- February 9, 2015
- September 24, 2014
- May 8, 2014
- May 7, 2014
- IPFrontline, September 5, 2016
- IPWatchdog, September 2, 2016
- Digital Music News, August 29, 2016
- IPFrontline, August 19, 2016
- Golden Gate Restaurant Association Blog, August 8, 2016
- American Agent & Broker, October 1, 2013
- IIABCal Independent Insider, May 10, 2013
- Law360, August 31, 2010
- Developments in Trademark LawSan Diego Journal of Contemporary Legal Issues, Volume 19
- Patent Court Clarifies Interpretation of Patent Claim ConstructionIntellectual Property Developments, Spring 2006
- Paul McCartney Sues Sony/ATV to Reclaim Copyrights to Beatles Songs January 27, 2017
- FACING THE MUSIC: Hoteliers Run the Risk of Copyright Infringement August 2, 2016
- A Different Route: Challenging Orange Book Patents Via Inter Partes Review July 18, 2016
- Courts and Patent Litigants Continue to Wrestle With Scope of Supreme Court’s Alice Test July 11, 2016
- Julia Child Foundation Sues Airbnb for Using Her Name Without Permission June 27, 2016
- German High Court Copyright Decision Indicates Potential Limits on Sample Clearance Requirements June 1, 2016
- New Federal Trade Secret Law: Key Takeaways for Employers May 12, 2016
- UPDATE: The Priceline Negotiator Fails: BOOKING.COM Is Rejected As A Trademark April 22, 2016
- Omni Accuses Vacation Rental Site of Trademark Infringement March 28, 2016
- Mondo NYC 2017New York, NY, October 6, 2017
- Juvenile Products Manufacturing Association (JPMA) Baby ShowAnaheim, CA, May 12, 2017
- Mondo.NYC Music, Technology and Innovation ConferenceNew York, New York, September 16, 2016
- Silicon Beach FestMarina del Rey, CA, August 26, 2016
- San Francisco Entertainment CommissionSan Francisco, CA, August 16, 2016
- AAHOA WebinarSan Francisco, CA, June 29, 2016
- The IP Strategy Summit: Orange CountyCosta Mesa, CA, June 1, 2016
- Independent Insurance Agents & Brokers of California (IIABCal) Blue Ribbon ConferenceBig Island, HI, May 3, 2016
- 2016 InnSpire Conference & Trade ShowMonterey, CA, February 2, 2016
- Del Shaw Moonves Tanaka Finkelstein & LezcanoSanta Monica, CA, July 22, 2014
- American Bar Association (ABA) Entertainment & Sports Forum Annual Meeting2012
- Juvenile Products Manufacturing Association (JPMA) Baby ShowWashington, D.C., March 22, 2018