Intellectual Property & Technology

Overview

Wilson Elser understands the value of an organization’s ideas and identity and provides critical strategic guidance to protect these assets. From copyrights and trademarks to patents and trade secrets, our attorneys operate at the intersection of corporate law and litigation, state-of-the-art technology, science and regulatory experience to advance our clients’ most ambitious intellectual property and commercial advice objectives. 

For more than 40 years, Intellectual Property & Technology practice attorneys have worked with clients across all industries, from start-ups to multinational corporations, on virtually every kind of intellectual property and technology matter. Clients benefit from our depth of related knowledge and ability to draw on the vast resources of a national network of offices comprising more than 800 attorneys.

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 with 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.

  • 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 (USPTO) 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 (print, broadcast, direct mail, telemarketing or outdoor)
  • Register domain names internationally and protect against cybersquatters
  • Litigate Uniform Domain-Name Resolution Policy (UDRP) arbitrations
  • Litigate and arbitrate all trademark-related disputes
  • Litigate false advertising/Lanham Act and unfair competition claims
  • Litigate before the USPTO’s Trademark Trial and Appeal Board and analogous bodies worldwide
  • Draft and review internal compliance policies, assignments, licenses, noncompetition 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.

  • 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

• Technology

  Our Intellectual Property & Technology practice attorneys keep 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. We assist clients with technology transactions and technology development and distribution deals; protect technology brands; and strategically advise on commercialization in a wide range of technology sectors. With the emergence of the Internet of Things and the transition to a borderless online environment, a position at the forefront of related developments is critical. We assist clients across a wide spectrum of related services.

  • Litigation related to all aspects of technology
  • Technology branding
  • Strategic commercialization advice
  • Technology development and distribution agreements
  • Technology transactions
  • Complex licensing agreements
  • Technology vendor contracts
  • Technology and media policies
  • Defense of technology-related claims
  • Defense of internet defamation claims
  • Consultation on cyber privacy, licensing, e-commerce, outsourcing and security
  • Negotiate and prepare software license agreements
  • Defend software audits
  • Consult on the Internet of Things and negotiate and secure agreements to protect against related exposures

• Digital Media / Internet

  We have substantial experience in multimedia law, including representing 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.

  • Conduct website audits for content and regulatory compliance
  • Arrange for protection from claims through DMCA agent registration and creation of acceptable policies
  • Prepare web-based contracts, including terms of use, privacy policies, terms of sale and disclaimers
  • 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
  • Litigate defamation and harassment on the internet
  • Litigate violations of rights of publicity, privacy and promotion
  • Develop and coordinate strategies for 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 the following.

  • 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 related 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: Prosecution & Defense

  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 equitable dismissals of most cases. We nonetheless will escalate matters to trial and appellate courts when it best serves our clients’ objectives.

  • 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, noncompetition and nonsolicitation 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 by the USPTO to the Patent Bar. The team staffs 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.

  • 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

• 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.

  • Represent artists and athletes in a broad spectrum of intellectual property matters
  • Provide counsel on building a personal brand, 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 protections
  • Negotiate sponsorships, endorsements and promotions
  • Evaluate and help ensure Federal Communications Commission and Federal
  • Trade Commission regulatory compliance