Intellectual property is a critical part of doing business in today’s global economy, and not just for the likes of Hollywood studios or blue-chip technology firms. Organizations of all types and sizes now have a vested interest in maximizing the value of their IP assets and in protecting them from growing threats, both at home and abroad, of misuse, misappropriation and infringement. This is precisely the focus of our large and experienced Intellectual Property team. Each day, these veteran attorneys work with a wide array of clients—from Ivy League universities to start-up software firms to mom-and-pop retailers—on cutting-edge legal issues involving trademarks, copyrights, intellectual property, technology and much more.
Our Intellectual Property team has an unusually strong grasp of the complex and ever-evolving practice area that is IP law. Knowing statutes and precedents, however, is not enough—our attorneys place strong emphasis on learning each client’s business goals and fully grasping their on-the-ground market realities. Doing so better enables us to work with both producers and consumers of intellectual property, regardless of their current stage of product or company development. Indeed, we put this industry- and company-specific knowledge to maximum use as we help clients protect trade names, trademarks, trade dress, good will, domain names, trade secrets, manufacturing processes, know-how and other confidential information and copyrights.
When it comes to handling intangible assets, however, companies must also be sensitive to a myriad of antitrust, franchise, tax and other issues. Our attorneys have broad experience in helping both large and small businesses gain a competitive edge by striking just the right balance between these often-competing considerations.
We routinely provide IP counseling and advice to clients such as pharmaceutical and biotechnology companies, medical device manufacturers, financial institutions and investors, telecommunications firms, products companies, retailers, franchisors, distributors, trade associations, educational entities, software and hardware vendors, database service providers, Internet service and content providers, e-commerce companies, developers and systems integrators, and other tech firms.
Given that identifying, protecting and enforcing IP assets can mean the difference between success and failure on today’s fast-paced marketplace, we are fully prepared to defend our clients’ interests in the courtroom. Our veteran IP litigators have extensive experience acting as lead counsel in complex patent, trademark, trade dress, copyright, trade secret and unfair competition cases, and routinely appear in IP-related matters before the Federal District Courts, the U.S. Courts of Appeals (including the Court of Appeals for the Federal Circuit), state courts, the U.S. Patent and Trademark Office, as well as Alternative Dispute Resolution proceedings such as ICANN.
Moreover, with offices and seasoned trial lawyers in each of the three divisions of the U.S. District Court for the Eastern District of Virginia—the famed “Rocket Docket”—we routinely serve as co-counsel with other premier law firms in patent and other IP litigation matters. In addition, with offices and experienced litigators in Charlottesville and Roanoke, our firm maintains an active intellectual property litigation practice throughout the Western District of Virginia.
Our IP litigators have a proven track record of obtaining excellent results for our clients. They have earned a strong reputation for their responsiveness, practicality, commitment to cost-effectiveness, and for their effective collaboration with in-house legal departments.
Our Intellectual Property team routinely assists clients with matters such as:
- Devising and implementing strategies to develop, market, manage and protect know-how, patent, copyright, trademark and other intellectual property assets.
- Securing intellectual property for uses now and in the future through agreements with employees, subcontractors, vendors and other business partners.
- Conducting intellectual property audits and reviews of Web site and Internet practices.
- Developing internal intellectual property management programs and procedures.
- Copyright and trademark clearance and development.
- Registering and protecting copyrights and trademarks in the United States and abroad.
- Managing the risk of acquiring and using intellectual property-based assets—as in, for example, negotiating complex IP purchases and licenses, development agreements, systems-integration projects, enterprise systems management and ASP and outsourcing relationships.
- Designing and implementing a wide range of strategies for commercialization of IP assets, whether through direct development, sales and marketing, strategic alliances and joint ventures, distribution, reseller, VAR, franchise or licensing and cross-licensing arrangements.
- Advertising and labeling review and advice.
- Negotiating and drafting Web-based, technology and software related agreements
- Counseling and negotiation in IP-related disputes.
- Web portal site development
- Multimedia, software, hardware and database development
- Licensing of trademarks and copyrights, including software and content, in all media and formats
- Licensing of regulatory approvals, patents and trade secrets
- Joint-venture arrangements, including financing, risk allocation and IP ownership structure
- Transfer of technology from research institutions
Our Intellectual Property services include:
- Trademarks and Copyright Procurement and Maintenance
- IP Transactional/Licensing
- Litigation
- Counseling and Audits
- USPTO/ICANN Proceedings
Representative engagements:
Trademarks, franchises and advertising
- Assist businesses of all types and sizes with trademark-clearance, prosecution, maintenance, licensing, protection, counseling and dispute-resolution; examples include a Fortune 500 retailer, a publicly traded financial services firm, a national trade association, one of Virginia’s largest wineries, a nationally known art products business, a food producer, an agricultural firm and a manufacturer of medical devices and diagnostic products
- Counsel franchisors in various lines of business in the protection of intellectual property in the context of franchise relationships, including protection of trademarks, copyrights and trade dress
- Assist businesses with resolution of domain-name disputes; examples include a financial services business and a publisher
- Counsel businesses and non-profits on advertising matters and promotions
- Negotiated co-marketing agreements with Fortune 100 pharmaceutical companies for a Virginia developer of connectivity solutions for point-of-care test results
- Prosecute and defend applications for injunctive relief and/or damages for infringement, false advertising, false designation of origin, trademark counterfeiting (including Court Ordered ex parte seizures of goods bearing counterfeit trademarks), and unfair competition claims, under the Lanham Act, the Copyright Act, the related Digital Millennium Act, state statutes protecting IP, as well as common law
Copyrights, patents, technology and licensing
- Assist and counsel technology companies and authors of creative works on matters related to copyright registration
- Assist numerous businesses, organizations and technology companies in the preparation and negotiation of research-and-development agreements; software, database, hardware, technology, copyright and patent licenses; and procurement, use and sales contracts
- Advise clients on international software distribution and sales representative agreements
- Represent various businesses in copyright, patent, licensing, and contractual IP disputes—including, for example, a large government contractor in a dispute over the termination of a software/hardware development contract and a subcontractor’s tortious interference and performance issues, and a software company in alleged breach-of-contract allegations surrounding development of a software-security product
- Act as outside general counsel to privately held technology and services companies
- Negotiate joint development/supply agreements for manifold clients, including a major Virginia-based supplier of precision drives and controls
- Assisted numerous businesses in the development of various forms of strategic alliance arrangements and related IP-ownership issues
- Counseled a technology-commercialization business on IP issues involved in a development-services agreement with a publicly traded company
- Represented numerous individuals and businesses in technology and IP transfers—as in, for example, the sale of certain engineering software tools by a Virginia firm; the sale of assets to a multinational corporation by a Virginia plastics company; and the purchase of a pharmaceutical consulting firm and related intellectual property by a Virginia software developer
- Counsel individuals and businesses on IP matters in university contexts—as in, for example, advising on the out-licensing of university-developed technologies, or on the rights of faculty members regarding disclosure obligations and IP ownership
- Advised “America’s first research university” on commercializing medical research
- Counseled Virginia and Maryland advertising agencies on strategies for avoiding copyright infringement
- Advised Virginia and Maryland architectural firms on copyrights, copyright-infringement and other issues
- Counsel businesses on matters related to the protection of intellectual property rights over the Internet
- Negotiate and advise upon agreements related to Web site development, hosting and design
Intellectual property management
- Counsel businesses on IP and trade-secrets management and best practices
- Manage IP portfolio of Fortune 500 Company
- Assist businesses with non-disclosure, non-solicitation, employment, non-compete and independent-contractor agreements
- Advise on IP transfers and other arrangements between employers and their independent contractors, employees and clients
- Represent businesses in association with disputes arising from the hiring or termination of employees and independent contractors, subject to contracts limiting use of proprietary information and intellectual property
- Act as co-counsel in disputes over government contracts related to procurement of technology services and development
Intellectual property litigation
- Represented public company as the plaintiff in litigation over two patents covering the interface between computing devices and digital displays; case involved issues related to fraud, antitrust, licensing and setting of industry standards
- Defended public company in patent litigation centering on business intelligence software; case included claims brought under a state’s unfair-competition statutes and the Trade Secrets Act
- Advised major research university on intellectual property matters
- Advised advertising agencies on advertising-related intellectual property issues
- Represented one of the two major music-licensing companies in copyright-infringement action
- Represented major film studio in copyright-infringement case involving the release of a motion picture
- Represented company in copyright-infringement case involving alleged architectural misappropriation
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