Intellectual Property & Technology

The GSH Intellectual Property & Technology Group (“IP & Technology Group”) brings together a team of attorneys with deep and diverse practice backgrounds and legal expertise, including senior in-house corporate experience. The IP & Technology Group understands challenges that businesses experience and provides sensible advice designed for this rapidly evolving technological 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 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 competition 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, websites, host services and “cloud computing”, use of social media and user generated content, distribution of online content, technology systems and technology “work-for-hire” arrangements, domain names, e-commerce and mobile apps, data security and privacy, due diligence, online advertising, sponsorship agreements, sweepstakes and promotions.

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.

Trademarks, Trade Dress, and Domain Names: Advice, preparation and prosecution of federal, state, and foreign trademark registrations; Strategic selection, management, and enforcement of rights in marks; Purchase, sale and dispute resolution regarding domain names.

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.

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 materials protected under patent, copyright, trademark, and trade secrets law, as well as for outsourcing, cloud computing and other technology-related and M&A 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 World Intellectual Property Organization Arbitration & Mediation Center; and Internet‐related litigation involving business libel and tortuous claims from former employees and gripe website bloggers.

Due Diligence: Conduct intellectual property portfolio 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

• Prepare patent applications, patent counseling, patent prosecution, and licensing agreements for the world’s largest software developer and leading Fortune 100 companies.
• Diverse client counseling and patent/IP technology licensing practice, including complex transactions involving open source software, outbound patent licenses, cross licenses, OEM software licensing, litigation settlements, acquisitions, and joint development agreements.
• Successfully represented international farm and industrial equipment manufacturer in patent preparation and prosecution matters involving robotic, vehicular, agricultural, and mechanical technologies.
• Prevailed in design patent litigation was on behalf of a retailer of outdoor furniture in the Eastern District of Wisconsin.
• Successfully represented clients in reexamination proceedings, interference proceedings, and appeals before the Board of Patent Appeals and Interferences.
• Provide a Fortune 500 vehicle manufacturer with on-site contract negotiation, drafting and review regarding service agreements, trademark license agreements, consulting agreements, and dealer contracts.
• Represent 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.
• Provide 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.
• Negotiate, draft, and review multi-million dollar marketing, licensing, and advertising contracts for a major company.
• 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.
• Represented clients in over a dozen trademark enforcement matters via oppositions and cancellations proceedings before the U.S. Trademark Trial & Appeal Board.
• Prepared opinions of counsel regarding worldwide availability of use and registration of trademarks in connection with brand products and service offerings for major companies.
• Evaluated global brand marketing strategy, including preparation of trademark license and mutual co-existence agreements, as well as advertising clearance of slogans, taglines and logos used in connection with house trademarks in promotional and marketing campaigns for major companies.
• 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.
• Resolved favorably online-related disputes, such as anonymous gripe websites, involving business defamation, libel, tortuous contractual claims and misappropriation of trade secrets against former company employees for clients.
• Secured removal and transfer of infringing cybersquatting domain names for clients via World Intellectual Property Organization Arbitration & Mediation Center proceedings.
• Representing one of the world’s largest high‐end leather bag and accessory designers in over 56 litigation matters across the country involving trademark infringement, unfair competition and anti‐counterfeiting claims under the Lanham Act and comparable state statutes.
• 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.
• Trying 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.
• Litigated misappropriation of trade secrets and unfair competition claims under the federal Lanham Act, the Uniform Trade Secrets Act and the Georgia Trade Secrets Act in over a dozen matters for clients.
• Litigated claims involving trademark infringement, copyright infringement, unfair competition, false designation of origin, false advertising and dilution under the Lanham Act, Copyright Act, Anticybersquatting Consumer Protection Act, Federal Revised Dilution Act, and Computer Fraud & Abuse Act in over two dozen matters for numerous clients.
• 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.