Intellectual Property and Technology
The Intellectual Property and Technology Group at Skadden, Arps, Slate, Meagher & Flom LLP and affiliates (“Skadden, Arps” or “Skadden”) offers clients a full range of legal services relating to the acquisition, enforcement and commercialization of intellectual property assets. These services include counseling; technology transfer, outsourcing and licensing agreements, and other transaction-related services; patent and technology portfolio strategy analysis; trademark and copyright registration; and litigation. Skadden was named to The National Law Journal’s 2013 “Intellectual Property Hot List” and ranked among the leading firms in Intellectual Property by Chambers Global 2013, Chambers USA 2013 and U.S. News — Best Lawyers “Best Law Firms” 2013. In 2013, the Financial Times ranked Skadden first in the country in its “US Innovative Lawyers” report, which recognized our representation of MIPS Technology in a unique patent carve-out plus mergers and acquisitions deal to monetize its intellectual property portfolio. The 2012 report recognized our representation of Rosetta Stone in trademark infringement claims against Google.
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, website 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.
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.
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.
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.
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.
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.
Developments in information technology and the interactive nature of websites 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.
Our group routinely counsels clients on all aspects of developing and maintaining a website. 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.
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.
Litigation: Trial and Appellate Practice; Dispute Resolution
Attorneys in our 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). We 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 handle technology/patent matters ranging from pharmaceutical, biotechnology, chemical and medical device issues to computer science, semiconductor, telecommunications and aerospace issues. With 22 offices around the world, Skadden’s litigation capability is global. Our attorneys have counseled clients in proceedings in international courts and before the patent offices of other countries.
We help our clients navigate the complex issues they face when developing, licensing or acquiring information technology. The cornerstone of our practice is understanding the complicated technical and business issues that arise. Because of our diverse client base, we can help our clients understand the strategic interests of the other side during negotiations.
The litigation experience of our attorneys covers all areas of intellectual property, including trademarks, copyright, patents, false advertising and technology. Among other representations, we have defended Register.com's policy of automatically renewing domain name registrations and challenged The New York Times' use of game photographs on behalf of the National Basketball Association.
Skadden acts as the general counsel for the Internet Society, the international organization for global coordination and cooperation on the Internet. In addition, one of our partners, Rita Rodin Johnston, is a member of the board of directors of ICANN (the Internet Corporation for Assigned Names and Numbers), which coordinates and manages domain names worldwide. Through our roles in these and other important Internet organizations, Skadden's lawyers participate in the debates and initiatives that shape international Internet policy.
The group operates on both a national and a global scale — representing clients in courts and before the International Trade Commission. Our lawyers work with clients that range from small, high-tech startups to multinational corporations, keeping pace with rapid changes in both technology and law.