Licensing

We have extensive experience representing both patent licensors and licensees in patent licensing agreements. Accordingly, our lawyers understand the business and legal issues from both perspectives, as well as from the perspectives of third parties who may have a vested interest in the license relationship, particularly suppliers and customers. In addition to negotiating definitive license agreements, our attorneys are experienced in negotiating other commercial arrangements that are often implemented alongside of patent licensing deals, including joint development agreements, supply agreements, and services/technical assistance agreements.

We also assist clients in strategically managing their patent portfolios to maximize the value of their technology, generate revenue, or gain competitive advantage. We work with in-house business units and legal teams to develop a comprehensive approach that integrates with the business’ goals and strategies, including by establishing patent licensing programs and by monetizing patents through various business models (e.g., joint ventures, divestitures, spin-outs, alliances, securitizations, synthetic royalties, royalty buy-outs and royalty interests).

We have extensive experience in trademark licensing matters and the broader areas of merchandising programs, intellectual asset management business models involving trademarks and trademark holding company initiatives. This experience includes significant transactions involving world-famous brands and all forms of trademark and related rights in a wide range of industries. Such transactions include licensing, joint ventures and strategic alliances, supply/distribution, co-branding, franchising, and marketing/promotion/advertising agreements. Our attorneys have also represented clients in the context of celebrity licensing and endorsements, and have an understanding of the legal issues relating to talent and rights of publicity.

In addition, our attorneys have been involved in the establishment of joint ventures and complex corporate transactions where the core asset of the relationship is a brand licensing arrangement. We also represent clients in straight brand license transactions. Our attorneys understand the key business considerations for licensors, which can include brand integrity and minimum commercialization goals, and the considerations for licensees building a business line on a licensed brand asset. We also have experience in bankruptcy law issues that affect brand licenses, including the structuring of bankruptcy remote vehicles to protect the licensee.

Our attorneys advise clients on financing, development and licensing arrangements related to all types of copyrighted material and published content, including software, television series and feature length films, video games, music, and online and print publications. In addition, we assist clients with licensing arrangements as resolutions to copyright infringement disputes and advise on copyright ownership interests in creative works.

Our attorneys represent clients in structuring and negotiating licensing agreements relating to data, databases, data analytics and data services as well as related infrastructure and processing arrangements. We help clients navigate the unique issues of deals in which data is an asset, and we advise on the contours of IP protection for data and databases and the expanding universe of laws governing the collection, security, use, sharing, distribution, and disposal of certain types of data, in some situations with criminal penalties attached. As part of structuring data-driven relationships and allocating attendant risk, we counsel clients on the policy frameworks, laws and regulations of key jurisdictions.

Our attorneys represent clients in software-driven deals for solutions and platforms used in broader digital ecosystems. In addition to licensing agreements, we negotiate agreements that often accompany these licensing arrangements, such as agreements for software development, IT platforms, implementation and integration, and managed services. Our experience includes assisting clients with the licensing of source code under open source licenses. In addition, our attorneys are well versed in the broader concepts of shared services and converged infrastructure. We have a broad range of experience working with software delivery models and cloud computing, including on Software as a Service, Infrastructure as a Service, and Platform as a Service bases.