Intellectual Property Law Counseling Accomplishments
Conducted IP Review. This company needed to ensure that its tens of thousands of hours of development time were appropriately resulting in securing legal rights. Focused this IP Review on patents (computer software and business methods) and trade secrets. The first step was to review their IP portfolio and their IP-related guidelines. The project had three key deliverables. The first was to ensure that the company has identified and protected all IP that resulted from its development efforts. The second was to create systems and procedures that will maximize and protect the IP developed in the future. The third was to educate all company IP users about the new guidelines. Drafted all the documents and executed the strategy.
Created IP Awareness System for IP Users. The company had few proactive processes and information to manage their IP. Created a system and written information to disseminate to all IP users in the company, from engineers to marketers to General Managers. Then presented the information in a lively seminar to three different business segments. This well-received initiative reduced infringements and improved the value of the IP created by the company, thereby increasing its profitability. Topics included trademarks, patents, licensing, trade dress, trade secrets, TV and print comparative claim and testing legal standards, new ideas submissions system, the Road to Registration, contracts, litigation, counterfeit goods, attorney-client privilege, costs of IP registration, confidentiality, copyright, managing documents and international aspects.
Assessed and Pruned a 3,000- Trademark Global Portfolio. Reviewed this company’s worldwide trademark portfolio in approximately 35 countries. Needed to compare the actual use of the products with the registered trademarks. Reviewed the utility of the trademarks and recommended go forward strategy for products where the marketplace opportunities justified continued expenditures.
Enforced Software Rights. Infringers illegally obtained the company’s non-assignable software that was embedded in equipment. Reviewed the conflicting license language in several versions of license agreements. Developed a uniform settlement strategy that included future licensing opportunities with software maintenance. Developed and drafted an amnesty program for the industry. Protected the future revenue stream for this product. Drafted Patent and Know-How License. Negotiated and drafted the HAMMER® tennis racquet patent and know-how license. Thereafter, managed the legal team that enforced the patent worldwide in litigation. This technology, and the legal success in preventing low price, infringing uses, increased the Company’s market share from 15% to 50%. In flat growth market, these new sales came at the expense of our competitors, substantially weakening the previous market leader; we overtook #1.
License Terminated Successfully. The company’s exclusive apparel producer/ licensee announced a premature termination of its license. Aggressively negotiated termination package and simultaneously participated on strategic team to swiftly replace licensee and reconfigure overall license program. Negotiated $450,000 minimum royalty payment (2 years’ worth of minimum royalties) and developed creative contract provisions to protect the brand and prevent unauthorized distribution during the sell-off. Using record speed, replaced licensee and prevented product delivery interruption for next selling season. Team modified strategic trademark licensing strategy (products and channels) and concurrently renegotiated separate apparel license.
International IP Rights Enforced. Prosecuted worldwide trademark, patent and counterfeit goods infringements. Worked with numerous national and municipal governmental bodies, distributors, manufacturers, subsidiaries, agents, and local attorneys to halt such activities. In one instance, we removed infringing products from seven trade show booths in Munich, Germany. Initiated offensive actions against infringers in these regions:
Defended Print and TV Advertisements. Reviewed product promotion and advertising claims (client’s and competitors’). Proactively involved in drafting product-testing protocols to substantiate product claims. Interpreted network TV product claim guidelines and negotiated clearances with the broadcast networks.
Obtained Insurance for Defensive Trade Dress Infringement. Client was sued for trade dress infringement. Researched advertising injury coverage law and negotiated with carriers to obtain insurance coverage for federal infringement suit claims. Eliminated financial risk for infringement claim by competitor.
Acquired Technology Which Aided New Product Introduction. Market intelligence showed that Ektelon would reconfigure its sales force and change its operational positioning. Client company was previously prevented by a patent from selling racquetball racquets. Negotiated and obtained patent rights at critical market moment to facilitate effective competitor entry into racquetball market. Thereafter, company seized immediate, significant market share. Completed negotiations in three weeks.
Taiwan Criminal Copying Charges against U.S. Executives. The Taiwanese criminal prosecuting authorities sued our executives in an apparently politically motivated criminal case of patent copying (infringement). The case prevented us from doing business in Taiwan where we manufactured much of our product. Defended these executives and was closely involved in this critical case, at all stages. Created strategy where we tied the criminal case to the resolution of a separate U.S. civil patent infringement case against a leading, government connected Taiwanese industry vendor. Obtained dismissal of the case; there were no negative results.
Jury Verdict Stops Competitors’ Infringements. Responsible for preventing infringing the cutting edge ULTRA® golf ball dimple pattern patent. This new technology enables the golf ball to gain marked distance over a golf ball without this dimple technology. A U.S. and Japanese competitor - in a market dominated by only four competitors- infringed this patent. It was important to prevent the market entry of a new competitor and to prevent them from establishing credibility in the market. Aggressively litigated patent infringement against these two competitors in South Carolina. Aggressive case management resulted in a jury verdict for the client, with a willful infringement finding, in 13 months and an expedited Permanent Injunction against these two key competitors.
Drafted Many IP and Trade Secret Protection Programs. These programs catalogue and analyze the intellectual property owned by the company. Then, created rules for internal managers so that the managers use IP correctly. Wrote the materials in practical terms so that the rules are useable by all levels of management. By doing this, the company maximizes the chances it does not inadvertently allow customers and competitors access to their confidential information.
Created Patents Database. Took the entire patent portfolio of client and some competitors and put the portfolio into an electronic database accessible through the company intranet. After this, the clients could view the prior art references, drawings, and claims of the intranet from anywhere. This significantly increased information flow, creating faster product develop decisions. At the time, this was a state-of-the-art capability (1995).
Averted U.S. Customs Quarantine. Participated on team that negotiated an amicable resolution with U.S. Customs to prevent threatened golf club component import quarantine due to country of origin marking requirements issues. Developed creative solution in two weeks that prevented interruption of product delivery.
Negotiated and Implemented Patent License with Italian Company. Company needed this technology to improve the performance of its shoes. Negotiated the license to acquire the technology. Added protection clauses so that client would have flexibility if the technology did not demonstrably improve worldwide sales. Managed compliance with contract.
Conducted Worldwide Patent Prior Art Investigation. Interviewed witnesses and obtained information to invalidate competitor’s patent.
Conducted worldwide patent and design review for products. After studied available opportunities, reduced costs to maximize product ROI.
Enforced Covenant Not To Compete. Successfully enforced Wilson’s Covenant Not to Compete and Confidentiality Agreement against a senior departing manager who possessed critical technology information and a major competitor (Titleist). Obtained a temporary restraining order (TRO) in eight days, preventing the employee’s move to Titleist absent compliance with our Agreement. The Court issued a Permanent Injunction and Judgment one month later. We prevented significant losses and transfer of critical golf ball technology trade secret.
Worldwide Patent and Intellectual Property Protection Study. Recommended that global branded goods company client assess what patent protection laws existed around the world to determine if we had the right design and patent protection for our products. Conducted worldwide study of industrial design and patent opportunities. Studied legal scope of protection, procedures, and costs in forty (40) current and proposed worldwide markets. Study revealed opportunities to improve protection at less cost. Implemented a policy to better manage decisions on which countries in which to obtain protection. Improved IP asset cost-effectiveness structure and ROI.
Worldwide Trade Dress Infringement Enforcement. Identified approximately 60 worldwide trade dress infringers for a key product. Attended industry trade convention and gathered samples of each infringing product and contact information for each infringer. Catalogued the infringers and systematically pursued each infringer. Achieved 100 percent compliance over 6 months.
Golf Industry Counterfeit Team. Participated in unprecedented cooperative golf industry-wide anticounterfeit effort. Persuaded U.S. Department of Customs to increase port of entry scrutiny of imported golf clubs on basis of trademark and trade dress violations. Effort was successful and resulted in golf clubs worth millions of dollars.
Terminated Intellectual Property Criminal Theft. Developed sting operation and halted theft of critical golf ball mold-making technology. Led team that created and executed strategy. We confronted conspirators (competitor and company employees), discharged the employees (in Tennessee), and presented RICO suit to competitor (in Florida)-all on same day. Resulted in immediate cessation of activity and recovery of materials.
Multi-Licensee Trademark Program. Identified licensing opportunities for underutilized secondary trademark. Created information package supporting trademark validity and led negotiations that put three licenses in place. Realized hidden trademark value and created significant royalty income to MacGregor Golf Company.
International Trademark License Analysis. A licensee claimed it had royalty-free use of a trademark in Malaysia based on a related Japanese license. We assessed the implied license laws in the U.S., Japan, and Malaysia and mapped out prosecution alternatives and our strategic approach.
Talk to us
If we can help you or you would just like to talk to us, please call our office or send us an e-mail. References are available upon request.
We wish you the best of luck with your business!
Charles B. Brown
Charlie concentrates in IP (Intellectual Property) Law. Charlie has 37 years of experience as an accomplished attorney for businesses in diverse industries nationally and internationally, including as in-house counsel where he came to fully understand how to serve business clients best. He has served in leadership roles at the Chicago Bar Association and Association of Corporate Counsel and writes on IP topics.
He is active in North Shore civic affairs. He likes sailing, softball, platform tennis, old boys rugby, mountain climbing, and working on his 1967 Cutlass Supreme convertible with 206,000 miles.