Branding, Trademarks & Copyright

Manatt's intellectual property lawyers assist the firm's clients in establishing, monetizing and protecting their trademarks, trade dress and copyrights. Our lawyers:

• Conduct availability searches and draft opinions
• Prepare, file and prosecute trademark applications in the United States and abroad
• Perform portfolio audits to identify and analyze assets with value
• Plan and budget for worldwide trademark filing programs and then work with foreign counsel to clear marks, file and prosecute foreign applications, and maintain registrations
• Develop practical and cost-effective global enforcement programs to prevent the importation and exportation of counterfeit products
• Advise on domain name issues, including protection against the "predatory and parasitical practices" of cybersquatters
• Provide IP transaction support in the areas of asset disposition, mergers and acquisitions, securitization and monetization, joint ventures, transfer pricing, IP holding companies, and intellectual property tax issues

Portfolio Management
We administer portfolios consisting of hundreds, if not thousands, of marks, working closely with our clients to both aggressively police and maximally exploit the marks around the world. We provide day-to-day advice regarding potential infringement of our clients' trademarks as well as their own possible infringement of the trademarks of others.

We strengthened lawn care company Scotts Miracle-Gro Company's trademark protection throughout the world, by first developing a thorough understanding of its trademark clearance objectives and maintenance and reporting requirements, and then designing and implementing a trademark filing and reporting program meeting its criteria. We then developed and implemented a cost-effective expansion of trademark protection for its GRO, WATERSMART, and Scotts Green Oval brands, in the United States and abroad, expanded the protection program for its OSMOCOTE mark in Latin America, and executed global trademark filings following Scotts' purchase of portions of Turf Seed, Inc.'s business, among many other projects.

As part of our transaction support, we draft and negotiate a variety of IP-related agreements, including trademark licenses and branding agreements; copyright licenses; software and open source licenses; SaaS and content delivery and integration agreements; Internet advertising and click-through agreements; joint venture and collaboration agreements; development, OEM and commercialization agreements; nondisclosure agreements; technology transfer agreements; and acquisition/divestiture agreements.

In connection with acquisitions, we conduct due diligence examinations that go beneath the surface to provide insight that could reduce potential liabilities, identify new market opportunities, and confirm that the IP rights being considered will support business plans. We are also called in on corporate and private equity M&A transactions and venture capital deals to analyze IP and its impact on the value potential of such deals.

Brand Management
Clients utilizing our IP services range from large multinationals to VC-backed start-ups to individual entrepreneurs and span virtually every field of commerce. However, the IP-intensive entertainment and media, banking and financial services, consumer goods and services, and information technology and telecommunications industries are particularly well-represented, as they also happen to constitute Manatt's core clientele.

Brand Integration. One of the many positive by-products of our IP work for the entertainment industry has been our early, and ongoing, involvement in brand integration deals. Manatt is the first law firm to have a practice devoted to sourcing, negotiating and managing branded content deals for feature films, television, new media, music, and video games, and our attorneys have represented the interests of all key business and creative players, including advertisers, advertising agencies, producers, major motion picture studios, television and music companies, talent agencies, talent managers, and technology companies, in structuring and documenting these transactions. Such arrangements are challenging in that the goal is to maximize the value received on all sides; in addition, they raise a host of questions and concerns regarding ownership of the IP, financing, apportioning of liability, and creative control.

Internet Brand Protection. Love it or hate it, the Internet cannot be ignored, because this powerful communications tool is a force capable of both good and evil. We help clients leverage the Internet's potential for the former to build their brands while, at the same time, assisting them in dealing with some damaging forms of brand abuse occurring on the web, including trademark infringement and dilution, domain name abuse, diversion of traffic and sales, falsely claimed affiliations, unauthorized and counterfeit sales, improper ad placement, damaging social media buzz, and more.

Trademark Registration & Prosecution
Our track record of obtaining registration of both traditional and unique trademarks is superior to that of many other firms practicing in this area. Moreover, the consistency and professionalism of our trademark registration practice over so many years have led to cordial relations between our firm and PTO examiners, who often will contact our attorneys by telephone to resolve a registration issue rather than issue a formal refusal.

Because a trademark registration can live forever (as long as the mark is used), we have developed a trademark portfolio system for monitoring applications and registrations to ensure that clients' trademark rights continue to be protected long after their registration issues. As necessary, we also engage trademark watch services to learn of infringing uses or attempted registrations of our clients' trademarks and domain names.

Trademark/Trade Name Licensing
Manatt assists clients in identifying opportunities to effectively exploit their trademarks, trade names, domain names, product configurations and other source designations, and then seeing the transactions through to close and beyond. We have represented licensors and licensees in transactions involving merchandising rights, co-branding relationships, product endorsements by celebrities and professional associations, and private-label product distribution.

Our trademark lawyers often will team with lawyers in the firm whose focus is on, say, a particular industry, emerging companies or a relevant practice area such as finance or tax, to structure a transaction that will achieve the best financial or other business advantage without putting the client's rights at risk.

Copyright
The contours of copyright law have radically changed in recent years in response to very significant changes in information and communication technology. Such changes include the explosive expansion and exploitation of the Internet that has turned concepts of direct, vicarious and contributory liability on their ear; major developments in digital rights management, especially in the area of web content challenges; the proliferation of software and apps and the attendant copyright licensing issues and software protection and enforcement issues; and issues of open source and fair use that are as complex as they are far-reaching. Manatt counsels clients on all aspects of copyright law, including:

• Establishing copyright ownership as the fundamental basis for an effective copyright protection program, offering proactive strategies and international considerations
• Open source software, including the benefits and risks associated with its use and distribution, managing developers who use it, and considerations when licensing products that contain open source software
• Fair use and other copyright misuse defenses, including what is "fair" and "not fair," what constitutes a derivative and transformative work, and the rapidly evolving world of book digitizing
• Digital Rights Management (DRM) and license agreements, using DRM and other content protection technologies to protect copyright, and enforcement options for responding to DRM circumventions
• Copyright portfolio management and registration, including what and when to register, registration as prerequisite to bringing suit, tactical issues to consider in completing the registration application, and the evidentiary value of a registration certificate
• Copyright licensing
• Copyright due diligence
• Ownership and recordation services
• Work-for-hire agreements and issues
• Software-related agreements, including joint software-creation arrangements
• Copyright clearance for advertising
• Music and entertainment copyrights
• Public performance rights and display rights
• Assignment and acquisition of copyrights
• Copyright ownership in cases of joint authorship
• International copyright protection and Berne Convention rights
• Avoiding copyright pitfalls in Internet business models and content delivery technologies
• Social networking pros and cons