Case Studies - Technology and Intellectual Property
Saving the Client's Business by Saving Its Trademark
Our client was marketing a new food product and receiving large numbers of advance orders from grocery store chains when he learned the trademark he had created had been rejected for registration by the Patent and Trademark Office. The PTO found that the trademark was similar to a registered trademark for another food product and believed that consumers would be confused. Our client considered his trademark essential to the success of the product and sought our help. Upon our review of the matter, we found that the conflicting trademark was no longer being used by its owner and we initiated a cancellation proceeding before the Trademark Trial and Appeal Board. The owner of the abandoned trademark, finding that it owned a potentially lucrative asset, fought back by going to federal court to enjoin our client from using the trademark. We won in federal court, the owner of the abandoned trademark backed down, we obtained the federal registration, and our client is selling his product nationwide under the trademark he wanted.
Preserving Access to Essential Internet Services
Our client, an internet company, faced a business shutdown when the vendor supplying booking software and a database of products for the company to sell claimed a breach of contract and threatened to cut off its services unless our client renegotiated its contract. Our client was confident that it had not breached the contract and that the supplier simply wanted to revise the contract that it had decided it did not like. However, even a brief business disruption could devastate our client’s business.
Garson Claxton designed a strategy to avoid both a business shutdown and revision of the contract. Working with attorneys in the western state where our client was located, we obtained a temporary court injunction compelling the supplier to continue to provide services on the ground that a disruption would cause irreparable harm to our client. We then worked with our client to find a stand-by provider of the necessary internet services. Realizing that it had lost the leverage of a threatened cut-off of services, we were able to negotiate a satisfactory resolution to the dispute.
Defending a Valuable Domain Name
Our client owned a domain name that was short, simple, and snappy. Anyone would love to have it. So, naturally, others tried to take it away from our client. One claimed to have superior rights to the domain name based on prior use and federal registration of the trademark. Our attorneys investigated the name, found defects in the claim, and presented our client’s case. The claim was defeated and our client continues to use the domain name.
Protecting a Copyright and a Reputation
Our client was an engineer who had developed a method for improving the clarity of photographs taken by satellites. He had processed a number of photographs of planetary formations and had obtained federal copyright protection for the photographs. An author with outlandish theories regarding life in the solar system used these photographs in his books. Our client’s copyrights had been violated. Even worse, our client’s reputation had been harmed by the association of his photographs with the writings of the author. We reviewed the photographs, confirmed the infringement, and vigorously prosecuted the matter. The author’s books were pulled from the shelves and public notice was given about the infringement and the lack of any relationship between our client and the author.
Salvaging the Sale of a Technology Asset
Our client, the President of non-profit organization, had a dilemma. The President had personally funded the completion of a 20-terabyte database which the non-profit had begun, but then abandoned. A private company now wanted to buy the database for a seven-figure price. However, because the project had been transferred from the non-profit to the President informally, the President’s ownership rights were unclear. We performed an intellectual property audit to show the President’s contribution to the project, obtained the approval of the non-profit organization to documents recognizing the President’s part ownership of the database, and then prepared the contract for a joint sale of the database by the non-profit organization and the President. In the end, both the President and the non-profit were treated fairly and profited from their investments.
Creation of a New E-Commerce Business
Our client had ambitious plans. The company operated a well-established travel agency and had a creative marketing plan to build an audience for a travel-oriented web portal. We provided a full range of services for development of the web site and the roll-out of the marketing program. We prepared agreements for web site development, advised on linking arrangements, compliance with privacy laws and online travel sales regulations, and drafted terms of use and “click-wrap” agreements for sales processed through the site. For the marketing program, we drafted marketing agreements for use with affinity groups, negotiated co-venture agreements for joint promotions with charitable organizations, and ensured that the revenue flows throughout the venture were internally consistent. Whether working with “bricks and clicks” or “feet on the street,” we had solutions for our client’s needs and helped keep the venture on track from start to finish.
Pushing Back Against the Blue-Chip Customer
Our client, formerly a small software vendor, had successfully repositioned itself as an application service provider. The benefit was immediate and substantial – Fortune 100 companies anxious to sign up for our client’s new service. But those blue-chip customers uniformly insisted on contracting with their own lengthy, complex, one-sided ASP agreements – agreements that typically shifted almost all risk to our client and gave the large customer complete ownership of new technology that our client might develop. With our knowledge of technology law and the client’s business, we led the negotiations with those customers. In every case, the final agreements preserve our client’s key technologies, minimize the ownership rights transferred to the customer, and more fairly allocate liability and risk.
Distributing Software in Foreign Countries
Our client’s software had gained a reputation that extended beyond the United States. Several distributors were interested in acting as resellers in Europe. We provided guidance and counsel throughout the process, helping to find and retain qualified foreign counsel, and working through myriad issues. Some of the issues required everyone to question basic assumptions. Would a foreign country treat an LLC’s members like corporate shareholders for liability purposes? Would disclaimers in our client’s standard contracts be enforced by a foreign court? What structure for the transaction would simplify tax compliance and reduce the risk that revenues would be taxed by multiple countries? We found answers for these questions (and many others), obtained legal opinions from foreign counsel when needed, and applied the lessons learned to develop both a reseller agreement and an end-user agreement for European customers. With our help, our client’s product was ready for delivery to a new market.
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