Co-Chair, Intellectual Property Practice Groupemail
Manatt's intellectual property lawyers assist the firm's clients in establishing, monetizing and protecting their trademarks, trade dress and copyrights. Our lawyers:
Portfolio ManagementWe administer portfolios consisting of hundreds, if not thousands, of marks, working closely with our clients to both aggressively police and maximally exploit the marks around the world. We provide day-to-day advice regarding potential infringement of our clients' trademarks as well as their own possible infringement of the trademarks of others.
We strengthened lawn care company Scotts Miracle-Gro Company's trademark protection throughout the world, by first developing a thorough understanding of its trademark clearance objectives and maintenance and reporting requirements, and then designing and implementing a trademark filing and reporting program meeting its criteria. We then developed and implemented a cost-effective expansion of trademark protection for its GRO, WATERSMART, and Scotts Green Oval brands, in the United States and abroad, expanded the protection program for its OSMOCOTE mark in Latin America, and executed global trademark filings following Scotts' purchase of portions of Turf Seed, Inc.'s business, among many other projects.
As part of our transaction support, we draft and negotiate a variety of IP-related agreements, including trademark licenses and branding agreements; copyright licenses; software and open source licenses; SaaS and content delivery and integration agreements; Internet advertising and click-through agreements; joint venture and collaboration agreements; development, OEM and commercialization agreements; nondisclosure agreements; technology transfer agreements; and acquisition/divestiture agreements.
In connection with acquisitions, we conduct due diligence examinations that go beneath the surface to provide insight that could reduce potential liabilities, identify new market opportunities, and confirm that the IP rights being considered will support business plans. We are also called in on corporate and private equity M&A transactions and venture capital deals to analyze IP and its impact on the value potential of such deals.
Brand ManagementClients utilizing our IP services range from large multinationals to VC-backed start-ups to individual entrepreneurs and span virtually every field of commerce. However, the IP-intensive entertainment and media, banking and financial services, consumer goods and services, and information technology and telecommunications industries are particularly well-represented, as they also happen to constitute Manatt's core clientele.
Brand Integration. One of the many positive by-products of our IP work for the entertainment industry has been our early, and ongoing, involvement in brand integration deals. Manatt is the first law firm to have a practice devoted to sourcing, negotiating and managing branded content deals for feature films, television, new media, music, and video games, and our attorneys have represented the interests of all key business and creative players, including advertisers, advertising agencies, producers, major motion picture studios, television and music companies, talent agencies, talent managers, and technology companies, in structuring and documenting these transactions. Such arrangements are challenging in that the goal is to maximize the value received on all sides; in addition, they raise a host of questions and concerns regarding ownership of the IP, financing, apportioning of liability, and creative control.
Internet Brand Protection. Love it or hate it, the Internet cannot be ignored, because this powerful communications tool is a force capable of both good and evil. We help clients leverage the Internet's potential for the former to build their brands while, at the same time, assisting them in dealing with some damaging forms of brand abuse occurring on the web, including trademark infringement and dilution, domain name abuse, diversion of traffic and sales, falsely claimed affiliations, unauthorized and counterfeit sales, improper ad placement, damaging social media buzz, and more.
Trademark Registration & ProsecutionOur track record of obtaining registration of both traditional and unique trademarks is superior to that of many other firms practicing in this area. Moreover, the consistency and professionalism of our trademark registration practice over so many years have led to cordial relations between our firm and PTO examiners, who often will contact our attorneys by telephone to resolve a registration issue rather than issue a formal refusal.
Because a trademark registration can live forever (as long as the mark is used), we have developed a trademark portfolio system for monitoring applications and registrations to ensure that clients' trademark rights continue to be protected long after their registration issues. As necessary, we also engage trademark watch services to learn of infringing uses or attempted registrations of our clients' trademarks and domain names.
Trademark/Trade Name LicensingManatt assists clients in identifying opportunities to effectively exploit their trademarks, trade names, domain names, product configurations and other source designations, and then seeing the transactions through to close and beyond. We have represented licensors and licensees in transactions involving merchandising rights, co-branding relationships, product endorsements by celebrities and professional associations, and private-label product distribution.
Our trademark lawyers often will team with lawyers in the firm whose focus is on, say, a particular industry, emerging companies or a relevant practice area such as finance or tax, to structure a transaction that will achieve the best financial or other business advantage without putting the client's rights at risk.
CopyrightThe contours of copyright law have radically changed in recent years in response to very significant changes in information and communication technology. Such changes include the explosive expansion and exploitation of the Internet that has turned concepts of direct, vicarious and contributory liability on their ear; major developments in digital rights management, especially in the area of web content challenges; the proliferation of software and apps and the attendant copyright licensing issues and software protection and enforcement issues; and issues of open source and fair use that are as complex as they are far-reaching. Manatt counsels clients on all aspects of copyright law, including:
Ranked Nationally for Copyright Law 2011–2013
© 2013 Manatt, Phelps & Phillips, LLP. All rights reserved.