Licensing, Partnering & Commercialization

General.  We assist clients in developing and implementing strategies to acquire, develop, protect, enforce and commercialize intellectual property and technology. We advise our clients as they structure and negotiate corporate partnering and strategic alliance transactions, R&D deals, licensing arrangements, marketing arrangements, OEM agreements, distribution/agency contracts, and joint ventures.  We also assist them in compliance with copyright laws, including the Digital Millennium Copyright Act.  We have represented both start-up clients and much larger public entities with licensing, partnering and other commercial arrangements.

Industries.  We advise clients in technology and health care sectors, from software, hardware, Internet, communications, semiconductor, and other information technology and content companies to biotechnology, pharmaceutical, and medical-device companies. We seek to provide practical, business-oriented advice on a cost-effective basis.

Prior Deals.  Our attorneys bring a long history of experience in IP transactions, including their representation of much larger public entities or transactions, including:

  • Yahoo! Inc. in several transactions, including its Australian joint venture with Seven Network Limited;
  • E.I. du Pont de Nemours and Company in its licensing, manufacturing, marketing, and supply arrangements with Merck & Co., Inc. related to COZAAR, a leading anti-hypertension pharmaceutical;
  • Taro Pharmaceutical Industries Ltd. in the licensing of patents and know-how, and supply and service agreements, making Taro the exclusive manufacturer of ElixSure and Kerasal, and Alterna LLC, the acquirer of these products, the exclusive marketer and distributor in the United States, Canada and Mexico, with an option to purchase the brands in North America;
  • Gucci Group N.V. in the formation of a joint venture with Stella McCartney, including the assignment and license of trademark and personal name rights relating to the STELLA MCCARTNEY name and marks and copyrights concerning fashion designs;
  • E.I. du Pont de Nemours and Company in the assignment and license of trademarks, software, patents and related technology, and the structuring of manufacturing and distribution arrangements in connection with the division’s disposition to Bristol-Meyers Squibb Company;
  • Graham Packaging Company, L.P., a portfolio company of the Blackstone Group, in the assignment and license of patents and related technology in connection with its acquisition by Owens-Illinois, Inc.;
  • Citigroup and its wholly-owned subsidiary, Travelers Property Casualty Corp. (Travelers), in the assignment and cross-license of service mark rights relating to the CITIGROUP, TRAVELERS, and Red Umbrella marks in connection with Traveler’s initial public offering; and
  • Apollo Management, L.P. in the acquisition and licensing of proprietary curricula and software in connection.

Recent Transactions

• Great Bay Software in various licensing matters;

• Hotaling & Co. in connection with various commercial matters;

• Bunch in various licensing matters;

• Mytonomy in various licensing matters;

• Shiver Entertainment in a strategic partnership with Nexon;

• Simplify Media in software license and distribution agreement with a leading OEM;

• DecisionView in numerous licensing transactions with leading pharmaceutical companies;

• Bunchball in numerous licensing transactions;

• A biotechnology company in a licensing and commercialization arrangement;

• A number of start-up companies entering into development or commercialization agreements and reseller or distributor agreements; and

• Smule in a variety of in- and out-licensing transactions.