Intellectual Property

     
       

Overview

Wilson Elser understands the value of an organization’s ideas and identity and how critical it is to protect these assets. From copyrights and trademarks to patents and trade secrets, our attorneys are uniquely positioned to help clients manage their full intellectual property portfolios as a strategic asset and to advance virtually all related objectives.

From copyrights and trademarks to patents and trade secrets, our attorneys are uniquely positioned to help clients build and manage their full intellectual property portfolio as a strategic asset and to advance virtually all related objectives.

For nearly 40 years, our Intellectual Property practice attorneys have worked with clients across all industries, from start-ups to multinational corporations, on virtually every kind of intellectual property matter. Clients benefit from our depth of related knowledge and ability to draw on the vast resources of a national firm with nearly 800 attorneys and 37 U.S. offices.

We have compiled an enviable record of success in maintaining, enforcing and protecting intellectual property in state, federal and international jurisdictions. Representative services include:

  • Trademark

    Investing in name and brand recognition often equates to increased profits and asset growth. Wilson Elser assists in obtaining, securing, maintaining and enforcing trademark rights for clients worldwide. We also protect clients sued for trademark-related issues.

    Representative Trademark Services:

    • Counsel clients on the selection and exploitation of trademarks
    • Conduct trademark searches and, where applicable, obtain clearances
    • Advise on anti-counterfeiting strategies, brand integrity and brand building
    • Obtain, maintain and protect trade names, company names, brands and logos
    • File for domestic and international trademark registrations with the U.S. Patent and Trademark Office and intellectual property offices worldwide
    • Help ensure international protocols are followed to secure trademarks, including preparation and filing of license agreements
    • Monitor and manage trademark portfolios
    • Enforce trademarks on the Internet and in traditional channels
    • Register domain names internationally and protect against cybersquatters
    • Litigate Uniform Domain-Name Resolution Procedure (UDRP) arbitrations
    • Litigate and arbitrate all trademark-related disputes
    • Litigate false advertising/Lanham Act and unfair competition claims
    • Litigate before the Trademark Trial and Appeal Board and analogous bodies worldwide
    • Draft and review internal compliance policies, assignments, licenses, non-compete agreements and confidentiality agreements
  • Copyright

    Wilson Elser’s copyright practice is multifaceted, with cases involving literary and theatrical works, musical compositions, software, luxury goods, apparel, consumer products, and sales and instructional manuals.

    Representative Copyright Services:

    • Litigate on behalf of rights-holders and defendants relative to copyright disputes
    • Litigate royalty disputes in such areas as music and art
    • File for copyright registrations
    • Provide counsel on acquisition, sale and transfer of copyrights and portfolios
    • Prepare and file assignments
    • Negotiate and prepare licensing agreements
    • Enforce online copyrights via Digital Millennium Copyright Act (DMCA) takedown requests
    • Clear usage of copyrighted material
    • Conduct website audits for copyright compliance
    • Conduct due diligence for business transactions
    • Advise on copyrights in the context of overall intellectual property strategy
    • Draft and review internal compliance policies, assignments, licenses and related agreements
  • Entertainment & Sports

    As intellectual property plays an increasingly pivotal role in the entertainment and sports industries, our practice attorneys represent a broad spectrum of clients in such areas as fashion, photography, film, stage, television, sports and publishing.

    Representative Entertainment and Sports Services:

    • Represent artists and athletes in a broad spectrum of intellectual property matters
    • Provide counsel on personal brand-building, including trademark and domain name development and protection
    • Act as production, development and distribution counsel
    • Negotiate and secure project financing
    • Counsel and provide services to the publishing industry
    • Handle pre-publication review of material
    • License content, music and software
    • Litigate libel and slander matters
    • Defend against claims of violation of rights of privacy, publicity and promotion
    • Provide reputation management services, including protection against fraudulent reviews and disclosure of private information and images
    • Consult on First Amendment protection
    • Negotiate sponsorships, endorsements and promotions
    • Evaluate and help ensure Federal Communications Commission and Federal Trade Commission regulatory compliance
  • Digital Media / Internet

    As the world has grown closer with the transition to a borderless online environment, our practice attorneys have adapted and remained at the forefront of the developing law. We have substantial experience in multimedia law, including the representation of web-based clients, product developers and creative content owners. We assist companies with developing a compliant online presence in e-commerce and social media. We protect clients who are attacked for Internet-related activity.

    Representative Internet Services:

    • Conduct website audits for content and regulatory compliance
    • Arrange for protection from claims through Digital Millennium Copyright Act (DMCA) agent registration and creation of acceptable policies
    • Defend claims of website inaccessibility subject to the Americans with Disabilities Act and similar state statutes.
    • Prepare web-based contracts, including terms of use, privacy policies, terms of sale and disclaimers
    • Negotiate and prepare software license agreements
    • Defend software audits
    • Arrange for website design protection and negotiate and draft related development agreements
    • Consult on data collection and privacy breach, and respond to related incidents
    • Litigate false advertising issues
    • Defend claims arising from breach of data collection and privacy rights
    • Consult on the “Internet of Things” and negotiate and secure agreements to protect against related exposures
    • Litigate defamation and harassment on the Internet
    • Litigate violations of rights of publicity, privacy and promotion
    • Develop and coordinate strategies for the prevention and remediation of cybersquatting
    • Draft and review internal compliance policies for social media and technology use
    • Prepare sweepstakes and contest rules and, as required, related registrations
    • Coordinate online fundraising inclusive of registration
    • Consult and coordinate regarding compliance with cross-border privacy protection and policies
    • Help ensure compliance with e-commerce rules and prepare required agreements
  • Art Law

    Art law intersects with a variety of disciplines, including intellectual property; commercial contracts; art-based financing; antitrust; bankruptcy, creditors’ rights and security interests; gifts, acquisitions, dispositions and liens; tax and estate planning; and litigation. Drawing on collective decades of related experience, Wilson Elser attorneys provide reliable legal counsel to virtually all participants in the creation, licensing, sale, lending, gifting, merchandising and display of art. Our clients include artists, collectors and buyers, sellers, insurers, gallerists and dealers, consultants, auction houses and museums.  

    We are familiar with applicable statutes and codes and skilled at safeguarding and protecting valuable creative assets. We also work “cross practice” with colleagues throughout the broader firm to address a range of issues, including but not limited to:

    • Copyrights in works of art and reproductions of works of art
    • Authorship rights and issues related to the Visual Artists Rights Act (VARA)
    • Defamation concerning works of art and their provenance
    • Authenticity disputes
    • Donor restrictions on use or display of donated works
    • Display of art and art sales on the Internet
    • Secondary art market transactions
    • Loans of artwork to museums and exhibition agreements
    • Misappropriation of artwork and design
    • Tribal Art Law and the Native American Graves Protection and Repatriation Act
    • New media agreements
    • Litigation, disputes and restitution
    • Insurance requirements and disputes
  • Litigation

    When all other remedies have been exhausted, litigation is a route available to businesses to protect and defend their intellectual property rights. As one of the largest litigation firms in the United States, Wilson Elser seeks to achieve early and successful dismissals of most cases. We nonetheless will escalate matters to trial and appellate courts when it best serves our clients’ objectives.

    Representative Litigation Services:

    Litigate matters involving:

    • Breach of contract and licensing disputes
    • Business and personal reputational damage, corporate disparagement, and defamation and libel/slander
    • Copyright, trademark and patent infringement
    • Counterfeiting and piracy
    • False advertising
    • Internet-based disputes
    • Invasion of privacy, social media harassment
    • Media liability
    • Nondisclosure, noncompete and non-solicitation disputes
    • Privacy
    • Rights of publicity and promotion
    • Software disputes
    • Technology errors and omissions
    • Technology-related disputes
    • Trade secrets
    • Unauthorized impersonation
    • Unfair competition
  • Patent

    Our patent practice comprises attorneys with broad-based scientific backgrounds who are admitted to the patent bar. The team can staff patent matters appropriately, deploying attorneys with experience in biological, chemical, mechanical and computer sciences. From patent counseling to prosecution and enforcement or defense, our team preserves the rights of our clients.

    Representative Patent Services:

    • Litigate related claims
    • Advise on developing patent portfolio strategy and new patents
    • Prepare and file patent applications and utility and design patents
    • Consult on patent clearance, inclusive of patent searches and freedom-to-market opinions
    • Monitor and manage international patent portfolios
    • Negotiate, draft, file and record patent license and assignment agreements
    • Consult on patent marking and misuse
  • Technology

    Our Intellectual Property practice attorneys have kept pace with advancements in all aspects of technology services. We understand the substance and subtleties of hardware and software products that can be especially valuable to their owners and especially vulnerable to outside entities. With the emergence of the “Internet of Things,” it is critical to be at the forefront of related developments.

    See our list of Representative Technology Services:

    • Draft technology vendor contracts
    • Review and prepare technology and media policies
    • Defend technology-related claims
    • Defend Internet defamation claims
    • Consult on cyber privacy, licensing, e-commerce, blockchain technologies, outsourcing and security