Trademark, Copyright, Entertainment and Advertising
Duane Morris’ full-service Trademark, Copyright, Entertainment and Advertising practice provides clients with day-to-day counseling regarding selection, procurement, registration, licensing and enforcement of their trademarks and copyrights on a worldwide level. We prosecute, maintain and manage nearly 20,000 trademarks for hundreds of clients in more than 200 jurisdictions, earning rankings and recognition from a number of publications, including Managing Intellectual Property and World Trademark Review.
Recognizing that there is no one-size-fits-all approach to procuring, maintaining, enforcing and commercializing trademarks and copyrights, Duane Morris attorneys understand our clients’ businesses and competitive landscapes. This enables us to collaborate with clients to develop best practices that suit their portfolios and business needs.
We have extensive experience in all facets of trademark and copyright law and have the insight and legal skills to advise clients in a variety of industries, including:
- Consumer Products
- Entertainment, Gaming and Sports
- Financial Services
- Life Sciences, Medical Devices and Pharmaceuticals
- Professional Services
- Restaurants, Food and Beverage
- Retail, Fashion and Luxury Goods
Trademark, Copyright and Portfolio Management
Trademark prosecution and portfolio management requires experience, skill and acumen. Our attorneys have decades of experience with search, clearance, registration and portfolio management on an international scale. We represent global brands and manage portfolios for organizations headquartered throughout the world, ranging from Fortune 500 companies to start-ups. We work with our clients to understand their business in order to provide the most effective and strategic legal advice from the planning and launch of a brand through its implementation, growth and protection.
Our guidance extends to conducting in-house trademark searches and collaborating with professional search firms, and if necessary, conducting investigations to ensure that our clients have the most comprehensive trademark information available. With this information in hand, we render opinions and advice and counsel clients on strategies to overcome barriers and during the registration process, including changing the trademark, seeking consent or instituting inter partes proceedings. We also advise clients on strategic foreign filings and offer the advantage of our longstanding global relationships with a network of international law firms, which is beneficial when protecting intellectual property rights throughout the world and across multiple jurisdictions.
As part of our global portfolio management, Duane Morris regularly assesses our clients’ portfolios and identifies trademarks and geographic areas that require enhanced or discontinued protection.
We assist in implementing trademark policing programs, with the use of cease and desist and other protest letters, to protect against dilution or loss of trademark rights. This supports clients in preventing or minimizing damage before it leads to expensive and time-consuming litigation.
In the wake of rapid technological innovation, the complexity level of copyright issues has increased exponentially. Duane Morris’ lawyers are experienced in tackling these multifaceted issues and providing innovative solutions. In light of these advancements, copyrights are now created, distributed, exploited and owned in non-traditional ways. Our attorneys have widespread and in-depth familiarity with these issues, as well as content-specific copyright matters, including risks with use and ownership of user-generated content and content sharing (i.e., video, audio, photo, etc.).
We regularly counsel clients on registering their copyrights in all types of works, including graphics, music, text, video, photography and images and software, and advise on copyright licensing, publishing, enforcement and fair use matters. Our attorneys have extensive experience enforcing rights through the Digital Millennium Copyright Act (DMCA), including enforcement against repeat offenders, as well as drafted software licenses, Website linking agreements, music and video distribution or streaming deals, and work-for-hire agreements.
Protecting brands includes oversight and management of domain names. At Duane Morris, we counsel clients on strategies, acquisition and enforcement of domain names. We are a registered trademark agent of ICANN’s (Internet Corporation for Assigned Names and Numbers) Trademark Clearinghouse (TMCH), a global repository of validated trademarks that assists trademark holders with the launch of new top-level domains (TLDs) and to prevent infringement in the domain name system.
We have recovered thousands of domain names from cybersquatters through ICANN’s Uniform Dispute Resolution Policy (UDRP) and federal court actions under the AntiCybersquatting Consumer Protection Act (ACPA).
Trademark and Copyright Litigation
Our IP trial lawyers litigate trademark claims in federal courts throughout the country, the Trademark Trial and Appeal Board and the International Trade Commission. We focus on protecting the goodwill and brand value that our clients have worked to develop through their trademarks and copyrights, and handle an array of disputes, including infringement, dilution, unfair competition, false advertising and counterfeiting. We have extensive experience with both taking cases to trial and using alternative dispute resolution mechanisms. From the outset of each case, we work closely with clients to identify risks, opportunities and costs associated with various strategies for dispute resolution, including litigation, mediation, arbitration and negotiated settlements.
Increasingly, we are involved in global anti-counterfeiting enforcement by coordinating efforts to stop the sale of knockoff goods around the world, including identification, interdiction, seizure and forfeiture of suspect and parallel import goods (or gray market goods). Our lawyers have obtained ex parte orders to seize counterfeit goods under both copyright and trademark laws. We regularly assist clients in developing strong anti-counterfeiting/piracy programs to prevent damage to their brand.
Aside from trademark and copyright litigation, protections are available from acts of unfair competition and unfair trade practices, such as antitrust, federal unfair competition and false advertising under Section 43(a) of the Lanham Act; federal and state computer fraud statutes; employment law covering inventions and non-disclosure and non-compete agreements; trade secret laws; as well as right of publicity laws. As unfair competition and unfair trade practice laws are often intertwined with patents, trademarks and copyrights, Duane Morris’ intellectual property practice is strategically positioned to handle such matters.
Our attorneys assist clients with IP rights in a multitude of corporate transactions, including intellectual property due diligence and audits in connection with M&A transactions, public offerings and financings, as well as to negotiate and draft corporate purchase, acquisition and financing agreements. We work with our employment attorneys to draft employment contracts to ensure the protection of corporate-owned trade secrets and develop employee social media policies to protect the employer’s brand and reputation. Our attorneys also draft and negotiate IP licenses, co-branding agreements, publicity agreements, distribution, reseller, manufacturing and supply agreements, among others.
Advertising, Internet and New Media
The Internet and the rise of new media has introduced new IP issues and implications. Duane Morris’ attorneys regularly counsel clients on a variety of online and traditional advertising and branding issues, including social media matters, clearance of advertising copy and content, comparative and false advertising, surveys, endorsements and testimonials, promotions (i.e., sweepstakes, contests, incentives, etc.), mobile marketing and privacy, publicity and image rights.
Cybersecurity, Privacy and Data Protection
Cybersecurity concerns are becoming a daily occurrence. Duane Morris lawyers have more than a decade of experience preparing, protecting and responding to cyber-attacks to protect our clients and their valuable assets. Many cyber threats are perpetrated through a variety of means, such as phishing and fraudulent e-mail, misleading domain names, online auction sales of counterfeit/infringing goods and copycat Websites. These threats all involve the use of IP, especially trademarks and copyrights, and we are prepared to fight these cyber-threats through ICANN’s domain name arbitration Uniform Dispute Resolution Policy (UDRP), Website take-down procedures under the Digital Millennium Copyright Act (DMCA) and IP complaint procedures and policies that allow for removal of infringing uses/content (i.e., Twitter, Google, Verified Rights Owner (VeRO) Program on eBay, YouTube, Facebook, CafePress, etc.) and other means.
Entertainment, Gaming and Sports
For the entertainment and sports industries, names, brands, logos, likeness and published works are among the most valuable assets. Enabling their use in the most advantageous ways while simultaneously protecting against non-permitted uses is a constant balancing act.
Our IP attorneys work with sports and entertainment clients, corporations, media companies, celebrities and athletes, to register and protect trademarks, ensure brands are established as revenue-generating assets, protect and maximize the value of trademarks and copyrighted works, and manage the legal issues involved in creating, distributing or using all manner of marks, merchandise and original content. As an extension to safeguard brands, we assist in the registration, licensing, sponsorship and endorsements of events, products, services and Websites, as well as counsel on international joint ventures to distribute a variety of entertainment content and products. We also advise on recording, songwriting, publishing, syndication and merchandising to ensure that copyrighted works are protected against piracy, yet still accessible to the new markets and opportunities made possible by the Internet.
We have decades of experience serving gaming, casino and related clients in all IP aspects of the gaming and entertainment industry on a global basis, including trademark and copyright registration, patent registration, licensing, transactions and enforcement of games, gaming hardware and software, security systems and other gaming processes.
Life Sciences, Medical Devices and Pharmaceuticals
From major multinational corporations seeking to expand market share to startups with ideas growing in the laboratory, life sciences companies of all levels of development turn to Duane Morris for counsel and representation aimed at improving their organizational health. Our attorneys are experienced in navigating the challenges posed by the development, manufacture, marketing and sales of medical devices, biologics and pharmaceuticals, including a significant focus on generic drugs. We seek to quickly and effectively clear regulatory hurdles while protecting our clients’ intellectual property and monetary assets.