With approximately 70 attorneys in four domestic offices, the Intellectual Property and Technology Group of Skadden, Arps offers clients a full range of legal services relating to the acquisition, enforcement and commercial exploitation of intellectual property assets.  These services include litigation; counseling; technology transfer, outsourcing and licensing agreements, and other transaction-related services; patent and technology portfolio strategy analysis; and trademark and copyright registration.

LITIGATION: TRIAL AND APPELLATE PRACTICE; DISPUTE RESOLUTION

Attorneys in the Intellectual Property and Technology Group routinely litigate cases at the trial and appellate level in both federal and state courts, as well as before the U.S. Patent and Trademark Office and the International Trade Commission (“ITC”).  Our attorneys also have extensive experience in arbitrations and other dispute resolution proceedings, and have served as lead coordinating counsel in complex international litigations.  Approximately one-third of the group’s attorneys are registered patent attorneys or attorneys with technical backgrounds who practice primarily in the patent area.

Skadden’s litigation experience covers all areas of intellectual property including patents, trademarks, copyright infringement, false advertising, and Internet and related technology.  We have handled a broad spectrum of technology/patent matters ranging from pharmaceutical, biotechnology, chemical and medical device issues, to computer science, semiconductor, telecommunications and aerospace issues, among others.  With 24 offices around the world, Skadden’s litigation capability is not just national, but global.  Our attorneys have counseled clients in proceedings in international courts and before the patent offices of other countries.

COUNSELING AND PROTECTION PRACTICE

Trademark and Domain Name Counseling and Portfolio Management

We assist clients in obtaining, protecting and enforcing trademarks in the United States and worldwide, including: conducting and reviewing searches and investigations for trademark clearance; preparing opinion letters; filing and prosecuting trademark applications; handling the prosecution and defense of trademark administrative proceedings; monitoring and policing the use of trademarks by third parties; and providing general trademark and domain name counseling.  As part of this practice, we manage the domestic and international trademark portfolios and related intellectual property matters for a wide range of clients.  We also actively counsel clients regarding Internet domain name acquisition, use and defense.

Copyright, Entertainment and New Media

The group’s lawyers provide copyright advice to a wide range of clients in the online, entertainment and communications industries, including e-commerce companies, new media entrepreneurs, Internet technology companies, Web site operators, software developers, broadcast and cable television networks, television producers, recording artists and authors.  Our lawyers also have extensive experience with the role of copyrights in the entertainment and communications industries, including film, theater, music, and print and electronic publishing.

Patent Strategy

We advise and assist technology companies in evaluating, securing and exploiting intellectual property assets, with a particular emphasis on computer software and hardware, semiconductors, telecommunications, Internet and e-commerce, biotechnology, pharmaceuticals and health care.  Specifically, we counsel clients on:  (1) developing and deploying a portfolio of strategic intellectual property assets; and (2) exploiting those assets by negotiating, drafting and implementing technology licenses, consulting and development agreements, outsourcing arrangements, joint ventures and other strategic partnerships.  In this regard, we often work closely with our corporate lawyers in connection with mergers and acquisitions, initial public offerings and corporate finance.

Transactional Counseling

Skadden’s Intellectual Property and Technology Group offers tremendous experience in transactional work and strategic analysis.  Beyond an understanding of intellectual property matters and the science and technology underlying them, we understand the business models used by our clients to maximize the value of these technologies.  Attorneys providing strategic counseling serve clients in a business transactional sense, seeking to create or add value to clients’ intellectual property portfolios.  We frequently evaluate these portfolios for acquisition and financing matters, and provide counseling regarding the drafting of license, option, nondisclosure, collaboration, manufacturing and distribution agreements.  Our strategic counseling across industries is enhanced by our extensive experience in validity and infringement analysis in a broad range of technical and scientific subject matters.

Advertising Substantiation

We review and pre-clear advertising copy and represent parties in advertising disputes before the National Advertising Division of the Council of Better Business Bureaus, Inc., the Federal Trade Commission and various state attorneys general.  One of the co-leaders of the Intellectual Property and Technology Group co-authored the Advertising Compliance Handbook (Practising Law Institute, 2d ed. 1991).

INFORMATION TECHNOLOGY AND E-COMMERCE PRACTICE

Attorneys in the Information Technology and E-Commerce segment of the group handle a wide variety of matters that relate to the creation, use, licensing and transfer of information technologies.  We have an extensive network of international offices and resources in Europe, Latin America, Asia and Australia, allowing us to analyze these issues from a global perspective as well.

The following is a representative sample of the different areas that our Information Technology and E-Commerce practice covers:

Alliances and Other Strategic Relationships

Skadden, Arps has negotiated and drafted numerous alliance agreements, including overall strategic relationships, cross-linking agreements, content provider agreements and advertising service agreements.  In all of these cases, we have experience representing each side in such alliances.

Technology Licensing

We handle the entire spectrum of technology licensing arrangements, ranging from traditional license agreements to complex ventures for joint development of applications and systems.  For example, we regularly negotiate and advise clients with respect to software licenses, equipment leases, software development and distribution agreements, and network services and data acquisition agreements.  Our clients in this area include technology vendors and end-users in the publishing, financial services, transportation, manufacturing, entertainment and telecommunications industries.

Outsourcing 

We advise clients in connection with the outsourcing of all types of information technology.  Our work encompasses all areas of outsourcing including: negotiating and drafting the overall service agreement and the service level agreement, handling any related asset acquisitions, and employment and tax matters. 

Privacy

Developments in information technology and the interactive nature of Web sites allow companies to create large databases of personal information.  Companies seeking to process or mine this data, however, need to focus on the evolving U.S. and international privacy landscape.  Skadden advises clients on the scope of privacy laws and regulations and helps them define and draft appropriate privacy and data use policies.  We represent clients in settlement discussions with state attorneys general when aspects of clients’ privacy policies are challenged.  The firm also assists clients in obtaining third-party privacy certification from entities such as TrustE.  In addition, we closely monitor developments in this area and participate in the Model Contracts Project, which seeks to provide companies with contractual language that satisfies European Union data requirements.

Web Site Support

Our group routinely counsels clients on all aspects of developing and maintaining a Web site.  When our clients are outsourcing these functions, we help negotiate agreements to ensure they receive the services they expect and the ownership rights they require.  When our clients are developing these capabilities in-house, we help create intellectual property interests that are protectable and secure any necessary third-party licenses for content or technology.  Once a site has been designed, Skadden drafts appropriate legal disclaimers, terms and conditions of use, and “click-wrap” agreements.  We have experience drafting terms and conditions for a variety of services, including e-commerce, financial services, chat and content distribution.

Internet Policy

Skadden has acted as general counsel to the Internet Society, the umbrella organization for many Internet standard-setting organizations.  In this capacity, we are involved with Internet policy issues both in the United States and abroad.  We also have a representative on the International Chamber of Commerce’s Committee on Internet and E-Commerce, and work closely with the Internet Corporation for Assigned Names and Numbers to address current policy issues.

REPRESENTATIVE LAWSUITS AND TRANSACTIONS

Recent examples of lawsuits and other disputes handled by our attorneys include the following:

Patent and Related Technology

• Space Systems/Loral Inc. v. Lockheed Martin Corp., 96 Civ. 3418 (SI) (N.D. Ca.).  Defended Lockheed Martin in a patent infringement litigation involving a patent on satellite attitude control systems.
  
  
• ICN (Valeant) Pharmaceuticals, Inc. v. Geneva Pharmaceuticals Technology Corporation, 02 Civ. 03543 (MLGx) (C.D. Cal.); Ribapharm, Inc. v. Three Rivers Pharmaceuticals, LLC, 02 Civ. 03231 (E.D. Pa.); ICN Pharmaceuticals, Inc. v. TEVA Pharmaceuticals, USA, Inc., 02 Civ. 600 (E.D. Pa.); ICN Pharmaceuticals, Inc. and Ribapharm, Inc. v. Hoffman-La Roche, Inc., et al., 02 Civ. 6644 (C.D. Cal.).  Represented ICN and Ribapharm in patent litigations involving patents on the use of hepatitis C drugs.
  
  
• In the Matter of Certain Flooring Products, 67 Fed. Reg. 14,973 (Mar. 28, 2002) (United States International Trade Commission) (Judge Paul J. Luckern).  We successfully represented Pergo, Inc. in an ITC investigation related to alleged patent infringement by the importation of laminate flooring panels.
  
  
• France Télécom et al. v. Compaq Computer Corporation, 00 Civ. 967 (GMS) (D. Del).  Defended Compaq in a patent litigation involving patents on MPEG-2 standards.
  
  
• DataTreasury Corp. v. J.P. Morgan Chase & Co., J.P. Morgan Chase Bank and Affiliated Computer Services, Inc., 02 Civ. 124 (DF) (E.D. Tex.).  Defended J.P. Morgan Chase in a patent infringement suit relating to image capture and archival of transactional information.

Trademark Infringement, Dilution and Cybersquatting

• New York Stock Exchange, Inc. v. New York-New York Hotel and Casino, LLC, 69 F. Supp. 2d 479 (S.D.N.Y. 1999), aff’ d in part and rev’ d in part, 293 F.3d 550 (2d Cir. 2002).  We represented the defendant in a trademark infringement and dilution case challenging the Casino’s use of a replica of the facade of the New York Stock Exchange as well as the slogan “New York-NewYork $lot Exchange.”
  
  
• Citigroup Inc. v. City Holding Co., 2003 WL 282202 (S.D.N.Y. Feb 10, 2003).  We successfully represented the plaintiff in a trademark infringement and dilution lawsuit involving the plaintiff’s “CITI” family of marks for financial services.  See 97 F. Supp. 2d 549; 171 F. Supp. 2d 333.
  
  
• Checkpoint Systems, Inc. v. Check Point Software Technologies, Inc., 104 F. Supp. 2d 427 (D.N.J. 2000), aff’ d, 269 F.3d 270 (3d Cir. 2001).  We successfully represented the defendant in an eight-day trademark infringement trial in a lawsuit challenging the use of the mark “Check Point” for computer system firewalls.
  
  
• BigZoo.com Corporation v. Anderson Lin, Case No. 01-02205-ABC (JWJx) (C.D. Cal. 2001).  We successfully represented the plaintiff in a trademark infringement, dilution and cybersquatting action challenging the defendant’s registration and use of the domain name “bigzoo.ws.”

Internet and Related Technology

• Register.com Inc. v. Verio Inc., 126 F. Supp. 2d 238 (S.D.N.Y. 2000), aff’ d, 356 F.3d 393 (2d Cir. 2004).  We represented domain name registrar Register.com in a lawsuit asserting claims for trademark infringement and misappropriation of data contained in the company’s “WHOIS” database.  The District Court granted Register.com’s motion for a preliminary injunction, and the Second Circuit affirmed.
  
  
• Zurakov v. Register.com Inc., 760 N.Y.S. 2d 13 (1st Dept. 2003).  We represented Register.com in a putative class action lawsuit concerning Register.com’s linking of recently registered domain names to a “Coming Soon” Web page that provided links to services provided by Register.com and its business partners, as well as banner advertisements for such services.
  
  
• Wornow v. Register.com, Inc., 2004 WL 1244275 (1st Dept. June 8, 2004).  We represented Register.com in connection with the defense of a putative class action alleging that Register.com’s automatic renewal of domain name registrations under its management constitutes a violation of Section 5-903 of the New York General Obligations Law.  To date, the court has dismissed five of seven causes of action and the Appellate Division has affirmed the dismissals.

Trademark Licensing

• Del Monte Corporation v. Del Monte Fresh Produce Co., 98 Civ. 4060 (JSR) (S.D.N.Y.).  We successfully represented the defendant in a four-day bench trial challenging the scope of licensed trademark rights to the mark “Del Monte” for fresh fruit products.
  
  
• National Basketball Association v. The New York Times Company, No. 602858/00 (N.Y Sup. Ct.).  We represented the National Basketball Association in a lawsuit challenging The New York Times’ sale of NBA game-action photographs taken at NBA arenas.
  
  
• Cerruti 1881, S.A. v. Hartmarx Corporation, 97 Civ. 0192 (AIH) (W.D.N.Y.).  We successfully represented the defendant in a four-day bench trial in a dispute alleging the breach of a trademark license agreement involving men’s designer suits.

False Advertising

• Gillette Co. v. Norelco Consumer Products Co., 96 Civ. 12034 (D. Mass.).  We represented Gillette in a false advertising claim challenging advertisements for electric razors.  See 946 F. Supp. 115 (D. Mass 1996) (decision on preliminary injunction motion).
  
  
• CB Fleet Co. v. SmithKline Beecham Consumer Healthcare, 13 F.3d 430 (4th Cir. 1997). We successfully defended SmithKline Beecham in a false advertising lawsuit brought by its principal competitor in the category.
  
  
• PBM Products, Inc. v. Mead Johnson & Company, 3:01CV 199 (E.D. Va.).  We defended Mead Johnson in a false advertising lawsuit involving infant formulas.

Copyright Infringement

• Covington Indus. Inc. v. Nichols, 03 Civ. 8024 (KTD) (S.D.N.Y.).  We were counsel to the defendants in a copyright infringement lawsuit challenging the defendants' manufacture and sale of certain fabric patterns.
  
  
• Arista Records. Inc. et al. v. Launch Media, Inc., 01 Civ. 4450 (S.D.N.Y.).  We represented the defendant, Launch Media, in a copyright infringement lawsuit brought by several major record labels seeking damages and injunctive relief based on defendant’s operation of its Launchcast webcasting service.

Rights of Publicity and Privacy

• New York Life Insurance Co. v. Howard Stern (d/b/a H. Stern Consulting), Case No. 00-8324-Civ-RYSKAMP (S.D. Fla. 2000).  We represented the plaintiff in a lawsuit challenging references to New York Life trademarks and company executives on defendant’s Internet Web site promoting his consulting business.
  
  
• New York Magazine v. Metropolitan Transportation Authority, 987 F. Supp. 254 (S.D.N.Y. 1997), aff’d, 136 F.3d 123 (2d Cir.), cert. denied, 525 U.S. 824 (1998).  We represented the MTA in an action concerning the propriety of the plaintiff’s use of the slogan “Possibly the only good thing in New York Rudy hasn’t taken credit for” as part of an ad campaign promoting New York magazine.
  
  
• Sharp v. The Boyds Collection Ltd., 96-344 (MJM) (N.D. Iowa). We represented the defendant, Boyds, in a dispute with an artist involving licensed designs for plush bears and resin figurines.

Strategic Alliances and Joint Ventures

• Citigroup in its strategic alliance agreement with AOL to provide on-line payment services for AOL users and to be featured as the preferred provider for certain financial services throughout the AOL service.
  
  
• Banco Itaú S.A. in its investment in, and joint venture with, AOL Latin America to create an Itaú-branded customized AOL Brazil service for Itaú customers.
  
  
• Tecnomatix Technologies, Inc., a leading supplier of software for manufacturing process management, in a joint development agreement with Unigraphics Solutions, Inc., a leading supplier of CAD/CAM software, to develop and market a bundled product offering.
  
  
• Citigroup in its strategic alliance with Microsoft to provide on-line payment services for MSN and to be a preferred provider in the Microsoft Wallet and in other locations within MSN.
  
  
• NBC, Inc. in its strategic alliance with Ralph Lauren Media, LLC to develop and market the Polo.com Web site.

Technology Licensing

• Actimize Ltd., a provider of compliance software products, in license agreements with various financial institutions.
  
  
• ActiveBuddy Inc., a leading developer of instant messaging technology in various license agreements with co-developers and end-users.
  
  
• Fleet National Bank in connection with various license agreements for information technology services.
  
  
• J.P. Morgan Chase & Co. in connection with multiparty license agreements for the development and hosting of its online banking services.
  
  
• Sterling Commerce Inc. in a licensing agreement with EDS to develop and market electronic trading and settlement services.
  
  
• TradeWeb, a provider of an online bond trading system, in various license agreements and user agreements.
  
  
• U.S. Tobacco Inc. in a license agreement with J.D. Edwards & Company for various logistics, manufacturing and financial services software.

CORPORATE TRANSACTIONS

• Compaq Computer Corporation in several transactions, including (i) its merger with Hewlett-Packard Company, and (ii) its sale of Alta Vista Company to CMGI, Inc.
  
  
• IBM Corporation in all intellectual property and technology matters relating to its acquisition of PwC Consulting, the global consulting practice and technology services unit of PricewaterhouseCoopers LLP, including the negotiation of domestic and international transition service agreements.
  
  
• Cendant Corporation in connection with its acquisition of Galileo International, Inc., the computerized reservation system.
  
  
• Deloitte & Touche USA, LLP in connection with negotiating various software and technology license agreements with Arthur Andersen LLP arising from Deloitte's acquisition of certain partners from Arthur Andersen's global tax practice.
  
  
• Skype Technologies S.A. (Luxembourg), a provider of telecommunications software that allows free telephone calls over the Internet, in connection with its acquisition by eBay Inc., which was selected as a “Breakthrough Deal” for 2005 by Investment Dealers’ Digest (January 2006).
  
  
• Yahoo! Inc. in connection with its acquisition of HotJobs.com, Ltd., the online job search service.

Outsourcing

• US Airways in connection with (i) a comprehensive outsourcing agreement with the Sabre Group for substantially all of US Airways' information technology services requirements, and (ii) an outsourcing agreement with EDS in connection with the sale of certain aspects of Sabre's outsourcing business to EDS.
  
  
• Wireless Internet Group, an outsource provider of various wireless information and transaction services, in connection with providing such services to telecommunications companies.
  
  
• A consortium of Bank of America and J.P. Morgan Chase & Co. in an outsourcing agreement with IBM Corporation to receive check imaging services, and to provide such services to other financial institutions.
  
  
• Citibank in connection with the outsourcing of Microsoft's online rebate and gift certificate business.

ICANN and Domain Name Transactions

• America Online, Inc., register.com and various other domain name registrars in the establishment of the Uniform Domain Name Dispute Resolution Policy.
  
  
• Afilias Ltd. in its successful ICANN bid to operate the ".info" domain name registry and in various ancillary ICANN agreements relating to that bid.
  
  
• Global Name Registry in connection with various ICANN agreements to operate the ".name" domain name registry.

Privacy

• Global Name Registry, Limited in its negotiations with the UK Data Protection Commissioner to establish a data privacy policy that complies with the UK Data Protection Act.
  
  
• Estée Lauder Inc. in connection with various domestic and international privacy issues relating to Estée Lauder Web sites. 
  
  
• AltaVista Company in connection with an investigation by the New York state attorney general into AltaVista's online privacy practices.

Web Site Support

• Cendant Corporation in connection with various agreements relating to the Trip.com travel site.
  
  
• Estée Lauder Inc. in the development of the cosmetics portal, gloss.com, including various licensing agreements and terms and conditions of use.
  
  
• Register.com in connection with various licensing agreements and online user agreements for its Web site.
  
  
• WeddingChannel.com in connection with various agreements relating to online bridal services and gift registries.