Intellectual Property & Technology

The Gonzalez Saggio & Harlan Intellectual Property & Technology Group (“IP & Technology Group”) brings together a team of attorneys with deep and diverse practice backgrounds and legal expertise. The IP & Technology Group understands challenges that businesses experience and provides sensible advice designed for this rapidly evolving technological media driven and legal landscape. By using an interdisciplinary approach, our attorneys are able to oﬀer comprehensive solutions that transform great ideas into protected, productive assets. Our clients range from small startups to large, established Fortune 500 companies, many of which seek to develop, exploit or use new intellectual property and technologies. We understand that each client has unique needs, and we tailor our services to meet those needs eﬃciently and eﬀectively.

The IP & Technology Group’s practice covers all aspects of traditional intellectual property laws, including patents, trademarks, copyrights, trade dress, proprietary information and trade secrets, unfair trade practices, unfair com- petition and franchising matters (and related fillings, due diligence and dispute resolution including litigation). The IP & Technology Group also oﬀers experience handling technology-related and Internet-related legal matters, such as creation, licensing and use of software (including open source software), websites, host services and “cloud computing”, use of social media and user generated content, distribution of online content, technology systems and technology “work-made-for-hire” arrangements, domain names, e-commerce and mobile apps, data security and privacy, due diligence, online advertising, sponsorship agreements, sweepstakes and promotions, and due diligence for M&A and securitization transactions.

Services Include:

Patents: Advice on the patentability of ideas and inventions; Preparation and prosecution of patent applications before the U.S. Patent and Trademark Oﬃce; Aggressive protection and enforcement of patent rights; Providing counsel in both oﬀensive and defensive patent strategies; Transactional deals including patent cross-licensing terms; Enforcement of patent rights including “cease and desist” letters and litigation.

Trademarks, Trade Dress, and Domain Names: Advice, preparation, prosecution and maintenance of federal, state, and foreign trademark registrations; Clearance of proposed trademarks; Strategic selection, management, and enforcement of rights in marks; Purchase, sale and dispute resolution regarding domain names; Licensing trademarks; Due diligence in acquisition and sales of trademarks and domain names; and Enforcement of trademark and domain name rights including “cease and desist” letters and UDRP proceedings.

Copyrights: Advice on copyrightability of created works; Registration and protection of copyrighted works, including resolution of issues arising from works created by employees and consultants, and registration of software and digital works; Licensing copyrighted works, and potential rescission of rights.

Proprietary Information, Personal Information and Trade Secrets: Develop proprietary information and trade secret protection programs; Advice regarding sensitive data security, data privacy, personal information and IT breach recovery and reporting issues; Draft and review privacy policies, address security risks, and ensure compliance with applicable privacy laws and regulations.

Licensing and Technology: Structure, negotiate, and draft a wide variety of licenses for creation, use and distribution of software and other technology protected under patent, copyright, trademark, and trade secrets law, as well as for mobile app use, outsourcing, cloud computing and other technology-related transactions.

Litigation: Represent clients in intellectual property disputes, including copyright disputes; Lanham Act claims in federal courts involving trademark infringement, unfair competition, counterfeiting, false designation of origin, false advertising and dilution; ex parte and inter partes litigation before the Trademark Trial and Appeal Board; trade secrets and restrictive covenants disputes in state courts and in AAA and JAMS arbitration proceedings; Internet-related, cybersquatting litigation under the Anticybersquatting Consumer Protection Act and in Uniform Domain Name Dispute Resolution Policy proceedings before the National Arbitration Forum and World Intellectual Property Organization Arbitration & Mediation Center; trade secret litigation; patent infringement and licensing disputes; and Internet-related litigation involving business libel and tortuous claims from former employees and gripe website bloggers.

Due Diligence: Conduct intellectual property and technology asset audits and due diligence reviews in support of corporate transactions, such as mergers, acquisitions, securitizations and private oﬀerings of equity and debt securities.

Representative Experience

Prepared patent applications, patent counseling, patent prosecution, and licensing agreements for the world’s largest software developer and leading Fortune 100 Corporations.
Represented of a preeminent handbag designer, where we received a judgment in the amount of $616,505.38 for statutory damages and attorneys’ fees in a federal district court action in Indiana. Upon granting summary judgment on Lanham Act claims of trademark infringement and counterfeiting one month earlier, the court found that a local retail store willfully sold “knock-oﬀ” products bearing marks confusingly similar to three of the designer’s federally registered trademarks: “Based on Defendant’s intentional conduct, it is undeniable that a likelihood of confusion exists as a matter of law.”
Successfully represented international farm and industrial equipment manufacturer in patent preparation and prosecution matters involving robotic, vehicular, agricultural, and mechanical technologies.
Successfully represented organization of conventions in trademark infringement actions against competing convention organizer resulting in settlement.
Successfully represented clients in reexamination proceedings, interference proceedings, and appeals before the Board of Patent Appeals and Interferences.
Managed trademark portfolios, including applications, responses to Oﬃce Actions, and maintenance of filings with the Trademark Oﬃce.
Provided copyright counseling, including preparation of “works made for hire” and other copyright agreements, and application filings with the U.S. Copyright Oﬃce.
Prepared opinions of counsel regarding worldwide availability of use and registration of trademarks in connection with brand products and service oﬀerings for major companies.
Prepared company guidelines and policies regarding use of trademarks, use of copyrights, Internet IP-related terms of use and disclaimers, proper disclosures of trade secrets and confidential information, and due diligence regarding IP in consulting agreements and mergers and acquisitions.
Drafted and negotiated confidentiality and non-disclosure agreements, non-compete and non-solicitation agreements, and IP-related provisions involving trade secrets, ownership of IP rights, scope of services, exclusivity of use, and indemnification in agreements involving technology, research and development, advertising and marketing, sponsorships, entertainment, employees and consultants, franchise distribution, media content, licensing and joint ventures.
Evaluated legal risks and compliance for social media policies, as well as promotional games, sweepstakes and contests.
Drafted legal disclaimers, terms and conditions of use and IP rights’ notices in connection with websites and user-generated content.
Negotiated, drafted, and reviewed multi-million dollar marketing, licensing, and advertising contracts for a major company.
Provided client counseling and patent/IP technology licensing expertise, including complex transactions involving open source software, outbound patent licenses, cross licenses, OEM software licensing, litigation settlements, acquisitions, and joint development agreements.
Provided advice and counsel regarding multi-million dollar software and technology licensing agreements for asset acquisition, including advice regarding risks and obligations related to ownership, indemnification, assignment, change of control, IP infringement, warranty, and limitation of liability provisions, for a global management consulting and technology services organization.
Planned, managed, supervised and completed information technology and related intellectual property due diligence on software and vendor agreements for insurers of a multi-billion dollar securitization of a global information services company.
Provided a Fortune 500 Vehicle Manufacturer with on-site contract negotiation, drafting and review regarding service agreements, trademark license agreements, consulting agreements, and dealer contracts.
Represented world’s largest software company with various open source software issues relating to licensing open source software, acquisitions of companies, and product lines, as well as product development and integration of open source software.
Advised, negotiated, conducted diligence, drafted and closed agreements related to software development, “Software-as-a-Service” and cloud computing, and licensing and support arrangements, including use of open source software and source code escrow, bankruptcy issues, and master technology, software license and development and consulting agreements, to run operations of various companies, from auto insurance to global container shipment logistics.
Managed, advised and resolved disputes regarding online content, personal information and copyright (under the DMCA, CDA, FTC Act, FTC Blog rules, COPPA, FCRA, HIPAA and other laws and regulations), and developed and implemented internal corporate privacy and data protection policies for global insurance, financial services and e-commerce companies.
Represented clients in over a dozen trademark enforcement matters via oppositions and cancellations proceedings before the U.S. Trademark Trial & Appeal Board.
Tried breach of confidentiality agreement and theft of trade secrets case to verdict, where more than $10,000,000 in damages were claimed and presented by expert testimony. The jury agreed with our client in finding that confidentiality had not been breached.
Representing the world’s largest beverage maker on favorable summary judgment involving multi-million dollar claims of unfair competition under the Lanham Act and comparable California statutes.
Represented IP owners in claims against cybersquatters, typosquatters and malicious competitors.
Sought and received transfer or cancellation of infringing domain names, and investigated domain name registrants protected by privacyprotect.org and similar identity shielding services, pursuing communications with registrants and preparing “cease and desist” letters and UDRP complaint on behalf of licensee clothing manufacturer and retailer.
Analyzed and researched legal issues relating to new generic Top Level Domains (gTLDs) applied for under ICANN procedures and potential IP rights and liability issues arising from same.
Structured, negotiated and drafted domain name transfer agreements for a variety of hedge fund-related clients acquiring domain names from legitimate owners and/or innocent infringers, or transferring domain names to purchasers of businesses.
Conducted investigations of domain names that infringed client trademarks and drafted “cease and desist” letters to the registrants of infringing domain names, and structured, negotiated and drafted settlement and transfer agreements resulting from such letters.
Advised clients on legal issues relating to domain name registration, acquisition, transfer, licensing and trademark infringement issues.
Conducted trademark clearance searches, prepared and filed over 100 U.S. and international trademark applications, and responded to office actions and other communications from the U.S. Patent and Trademark Office, regarding trademark, service marks, logos and graphic designs for a wide variety of clients including financial institutions, convention services organizations, education and entertainment companies, online services, consumer goods manufacturers, celebrity talent, software and service providers, non-profits and small businesses.
Monitored global usage of client trademark portfolio and potential infringers; prepared cease and desist enforcement letters and negotiated and drafted settlement agreements.
Negotiated and drafted trademark licensing agreements involving both large and small domestic and international trademark portfolios.
Evaluated chain of title and validity of trademark portfolios for hedge funds seeking to acquire trademark-rich portfolio companies.
Represented trademark owners as well as accused infringers in various litigations; prepared pleadings, conducted discovery, engaged in motion practice, prepared witnesses, defended and took depositions, appeared at trial and during motion practice, prepared post-trial briefs and motions, and negotiated and drafted settlement documents.