Our Intellectual Property (IP) transactions practice is international in scope and covers a broad spectrum of domestic and international business activities. We have a long history of providing counseling, negotiation, drafting and due diligence services with regard to all types of non-disclosure agreements, licenses, web site terms and policies, technology and content development agreements, contractor agreements, employment agreements, transfers, portfolio acquisitions, distribution agreements, escrow agreements, appearance and location agreements and other IP transactions involving business entities, government entities and academic institutions.
Our team has negotiated, drafted and administered domestic and international IP agreements in such diverse areas as software, computer and semiconductor technology, consumer products, industrial tools and equipment, databases, industrial products and services, consumer goods, aeronautic equipment, pharmaceuticals, music, film, television programming, advertisements, printed and digital media, cartoon characters and architectural works. We have negotiated the sale and purchase of valuable domain names for our clients and advised on online advertising methods.
Leadership in Action
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| Transactions: Going to court in the defendant’s home base to protect a distribution agreement |
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| Client: A large Canadian toy company |
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| Type of Matter: Breach of distribution agreement in Federal District Court. |
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| Our Client's Challenge: Our client had secured rights to distribute a famous plush toy in Canada, along with promises from the rights owner to take action against infringements. The toys were delivered late, and unauthorized copies dominated the Canadian market, despite our client's requests to the owner to take action. Our client was not able to sell the anticipated quantities of licensed products once they arrived. |
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| The Goal: Recover lost profits. |
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| Our Strategy: When business negotiations failed, litigation was instituted in the United States for breach of the agreement--late delivery and failure to stop the infringements. |
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| Results: Obtained a jury verdict and damages in favor of our client, and the matter was resolved later privately. |
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About Our Intellectual Property Team
Our team of dedicated IP lawyers and patent agents has the diverse backgrounds and core strengths required to ensure that the full spectrum of domestic and international IP is considered in securing IP and formulating IP strategies. Members of our IP team have worked as engineers and in-house patent, trademark and copyright counsel for companies and agencies as diverse as Borg Warner, Capitol Records, DuPont, the United States Patent and Trademark Office (USPTO), the Justice Department (Civil Division, Intellectual Property) and the Federal Trade Commission (FTC).
Our team members also include adjunct IP law professors, columnists, the co-founder of the longest-running journal on computer technology and regular lecturers for the Zurich Institute of Technology, Georgetown University and George Mason University. In addition, our team members frequently speak and write for continuing legal education programs and industry events and are quoted in the press on emerging issues.
Baker Hostetler is a member of the International Trademark Association (INTA), American Intellectual Property Law Association (AIPLA), Intellectual Property Owners Association (IPO), Licensing Executive Society (LES), The International AntiCounterfeiting Coalition (IACC), International Licensing Industry and Merchandisers Association (LIMA), as well as numerous local and regional IP organizations.