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Experience
Trademark & Copyright
IP Counsel to Market-Leading Consumer Electronics Manufacturer
IP counsel to market-leading consumer electronics manufacturer with significant market share and famous product trade dress. Managed extensive U.S. and international trademark portfolio and handle 70+ active trademark, trade dress and domain name enforcement matters in the U.S., European Union, China and other parts of Asia, working with U.S. Customs and local counsel as well as initiating DMCA takedowns to remove infringing listings from online marketplace sites, including Sears, Alibaba and AliProtect and filing UDRP actions to enforce trademark rights against cybersquatters. Conducted training for U.S. Customs personnel to improve incidents of U.S. Customs seizure and destruction of infringing imports.
Trademark Counsel to Big-Box and Online Retailer
Trademark counsel to big-box and online retailer of food and beverage products as well as consumer electronics and other household goods; filed Madrid Protocol Applications and Subsequent Designations covering 20+ jurisdictions and more than 15 classes. Assist client with enforcement of well-known brand in U.S. and China.
IP Counsel to Beverage Company
IP counsel for successful beverage company with significant market share, managing its U.S. and international trademark portfolio and enforcing its well-known brand and trade dress against numerous third-party copycats.
IP Counsel to Aerospace and Defense Manufacturer
IP counsel to large aerospace, military and defense manufacturer managing its U.S. and international trademark portfolio and enforcing its brands worldwide.
Trademark, Copyright and Advertising Counsel to Nationwide Banking and Financial Services Institution
IP counsel for large banking and financial services institution, managing hundreds of U.S. and international trademark filings, thousands of domain name registrations, and dozens of related disputes. Assisted the company in developing all aspects of its trademark protection and enforcement strategies and policies and integrated large portfolios of marks acquired from other financial institutions as part of the company's nationwide growth strategy. Counseled the company on copyright clearance and advertising issues as well as drafted and negotiated sponsorship, merchandising, naming rights, and advertising agency and talent agreements.
Trademark Counsel to Worldwide Software Publisher
Trademark counsel to software publisher working collaboratively with the in-house trademark team to protect and enforce numerous application brands in more than 60 jurisdictions worldwide. Implemented both U.S. and international protection strategies for the company's key brands and handled more than 200 disputes, including dozens of Trademark Trial and Appeal Board actions for the company.
Trademark and Copyright Counsel to Casual Games Publisher
IP counsel for publisher of popular and award-winning casual games, helping the company establish an international filing and protection strategy for its most successful game titles and register the copyrights in many of its games.
Strategic Trademark Advice to Electronics Manufacturer
Handles the U.S. and international trademark portfolio for an international manufacturer of computer memory and storage devices and provider of custom electronics manufacturing services to the U.S. government as well as the medical, aerospace, automotive, telecommunications, computer and U.S. national defense industries. Helped the company "right-size" its trademark portfolio and revamp its international trademark protection strategy after the company added several divisions through the acquisition of existing businesses.
Trademark, Copyright and Trade Secret Representation of Commercial Airline
Provided comprehensive trademark, copyright and trade secret advice to a major commercial airline, managing its large U.S. trademark portfolio and helping it launch an innovative web site and onsite airport check-in process for improved customer management and relations. Managed the successful resolution of more than 50 domain name/cybersquatting disputes for the airline and assisted with the trademark and copyright clearance for numerous advertising campaigns.
Trademark Counsel to Wireless Carrier
Worked for more than a decade with a wireless telecommunications provider to develop and manage its U.S. and international trademark portfolio and licensing strategy for numerous licensees nationwide. Also drafted and negotiated numerous software license and development agreements for telecommunications systems applications.
Trademark Expansion and Enforcement of Famous Banking and Financial Services Corporate Brand
Worked with a major national banking and financial institution to extend and protect its famous corporate brand to include a wide range of financial services and programs. Implemented an Internet brand management strategy for the company with a brand management vendor as well as initiated numerous actions, including cease-and-desist letters, Trademark Trial and Appeal Board (TTAB) actions, Uniform Domain Name Dispute Resolution Policy (UDRP) actions, and Internet take-down requests as part of an overall brand protection strategy. Assisted the company with advertising review and copyright clearance issues as well as helped extend the brand through naming rights and sponsorship arrangements to several entertainment venues. Managed a domain name portfolio for the institution that includes thousands of registered domain names.
Trademark Enforcement for Famous Software Brand
Worked with an international software publisher to design and implement a multi-year U.S. protection strategy to ensure the famous status of an important and popular company brand. Initiated dozens of actions against infringers, including sending cease-and-desist letters, filing TTAB actions, filing UDRP actions, settling numerous disputes, and negotiating licenses for authorized use of the mark.
Uniform Dispute Resolution Policy (UDRP) Actions for Game Publisher
Prepared and submitted successful UDRP complaints for publisher of popular online games against domain name cybersquatters and trademark and copyright infringers.
Domain Name Dispute for Television Station
Assisted a local network television station in negotiating the resolution of a sports-related domain name dispute with a major university.
Website Take-Down Requests
Submitted successful take-down requests to Facebook, Google, Apple, Sears, Alibaba, AliProtect and other marketplace sites, social media websites and ISPs to remove infringing user-generated content and infringing trademarks for clients across a wide range of industries, including electronics, retail, food and beverage, software, games, e-commerce and banking.
Software And Technology-Related Transactions
Software License and Development Agreements for Online Educational Courses
Drafted and negotiated complex software license and development agreements for an Internet education provider of high school Advanced Placement curriculum.
Software License and Maintenance Agreements for Software Publisher
Drafted form software license and maintenance agreements for a database software publisher and negotiated numerous licenses with state government agencies for use and customization of a multi-faceted public domain and proprietary software product for use in tracking disability retraining programs and participants.
Software License and Development Agreements for Wireless Carrier
Drafted and negotiated numerous software license and development agreements for nationwide wireless telecommunications provider for the customized development of telecommunications systems applications.
Website Hosting Agreements
Drafted and negotiated website hosting agreements with ISPs on behalf of clients across a broad range of industries.
Website Terms of Use for Online Publisher
Prepared website Terms of Use for online publisher of articles and other materials related to community-based political and social issues. Assisted in developing user-generated content posting, usage and take-down policies.
Website Terms of Use Analysis
Provided analysis and advice regarding website Terms of Use on various marketplace and social media sites to both content creators and IP rights owners for purposes of IP enforcement and web policy compliance.
Web Content License and Broadcasting Agreement for Financial Program
Negotiated a content license agreement with major Internet services provider for the use of multimedia financial markets-related content in Web broadcasting environment.
Database Content License Agreement for College Basketball Exhibit
Drafted and negotiated database content license agreement for exhibition use of database containing college basketball-related statistics and information.
Arts, Entertainment & Sports
Art Auction House Transactions
Negotiated contracts with both Sotheby’s and Christie’s for the sale of artwork. Transactions have included the private sale of a collection of photographs by an iconic U.S. photographer and the auction in Hong Kong of a painting by a well-known Japanese artist.
Art Collection Counsel for Large Corporate Collection
Serve as art collection counsel for large corporation with extensive multi-location art collection.
Art Book Publishing Agreement
Negotiated book publishing agreement between art museum and book publisher on behalf of well-known glass artist for publication of exhibit catalog associated with art glass museum installation.
Art Gallery Dispute
Prepared settlement agreement and negotiated resolution of trademark and copyright dispute between art galleries in connection with settlement of gallery owner’s estate.
Artist Exhibition Agreement
Prepared agreement on behalf of gallery for consignment and sale of art work for artist exhibition.
Artwork Consignment and Sale for Collector
Prepared purchase and sale agreement and gallery consignment agreement for the consignment and sale by art collector of artwork and decorative objects by well-known artists and craftsmen.
Artwork Loan Agreement for Museum
Prepared artwork loan agreement for a Chicago museum for long-term use and display of a large collection of paintings and other objects.
Book and Magazine Publishing Agreements
Negotiated publishing agreements on behalf of book and magazine publisher for publication of book and related articles comprised of excerpts, maps, illustrations and photographs from online travel blog.
Book Publishing Agreement
Drafted and negotiated book publishing agreement on behalf of publisher for publication of outdoor photography/adventure coffee table book.
Book Publishing Agreements - Renegotiated Digital Media Rights and Royalty Terms for Well-Known Text Book Author
Successfully renegotiated multiple publishing agreements with a major book publisher on behalf of a well-known graduate school text book author to clarify and renegotiate the publisher's digital media rights, bundling rights, and royalty obligations. Assisted the author and his co-authors in protracted negotiations related to a multi-year royalty audit.
Complex Copyright Clearance for Music Museum
Conducted complex copyright clearance for the opening of a nationally acclaimed Seattle-area music museum. Assisted the museum in clearing and registering its trademarks.
Copyright and Contract Dispute Regarding Online Use
Represented author and photographer in copyright and breach of contract dispute with large retailer regarding online use of articles and related photographs.
Fashion Design Agreement
Prepared and negotiated fashion design agreement on behalf of clothing manufacturer for design and development of line of outdoor wear by well-known fashion designer.
Fashion License and Distribution Agreement
Negotiated license and distribution agreement with designer on behalf of distributor for manufacture and sale of specialty clothing items and accessories.
Film Production Agreements
Prepared agreements and releases on behalf of film producer for use in the production of a documentary film about the history of Paralympic sports and the Paralympic Games.
Jewelry Design Agreement
Negotiated design agreement on behalf of designer for manufacture and distribution of high fashion art jewelry.
Personal Story Agreements
Prepared and negotiated literary agent, ghost-writer, literary option, screenplay collaboration, and film production agreements on behalf of family member of victim of infamous crime story.
Publishing and IP Counsel to Well-Known Cartoonist
Represent well-known cartoonist in connection with book publishing, film rights and music rights counseling and agreements.
Reality Television Show
Negotiated television production agreement, personal appearance agreement and releases for episode of reality-based television series.
Right of Publicity Counsel for Purchaser of Famous Retail Sports Brand
Served as right of publicity counsel to purchaser of assets, including rights of publicity associated with famous sports personality and brand.
Talent Agreement and Trademark Licenses for National Advertising Campaign
Negotiated the talent agreements and trademark licenses related to a multi-year, national advertising campaign for a major financial institution.
Trademark and Copyright Counsel to Media Distribution and Audience Measurement Company
Provided trademark and copyright counseling and worldwide trademark registration and enforcement for media distribution and audience measure company.
Trademark and Copyright Counsel to NBA Team
Provided trademark and copyright counseling and dispute-related advice to a professional basketball team.
Trademark and Copyright Counsel to NFL Team
Served as trademark and copyright counsel for a professional football team.
Trademark and Copyright Counsel to Public TV Station
Served as trademark and copyright counsel to a Seattle public television station, implementing a protection strategy for a popular series of aerial geographic videos/CDs.
