Intellectual Property and Technology
Bruce Goldner is the leader of the firm’s New York office and is co-head of Skadden’s Intellectual Property and Technology Group. His principal areas of concentration include transactions, licensing and counseling involving brands, designs, technology, social media, content, software, persona rights, and pharma and biotech. He also oversees Skadden’s U.S. and international trademark clearance and prosecution practice.
Intellectual Property Transactions and Licensing
Mr. Goldner negotiates and structures the development, license and transfer of intellectual property and technology. Significant intellectual property transactions have included the representation of:
- Kraft Foods Inc. in its separation into the MONDELEZ snack foods (e.g., Oreo, Nabisco) and KRAFT grocery (e.g., Kool-Aid, Kraft cheese) businesses, and in related brand separation and cross-licensing matters;
- Serge Azria and Dutch, LLC, the global fashion company and owner of the JOIE, Equipment, and Current/Elliott labels, in a majority investment by TA Associates and related brand and persona agreements;
- E.I. du Pont de Nemours and Company in its $4.9 billion sale of its high performance coating business to The Carlyle Group; its $6.3 billion acquisition of Danisco A/S (Denmark), a global manufacturer of enzyme and food ingredients; and the sale of its pharmaceutical division to Bristol-Myers Squibb Company for approximately $7.8 billion;
- Blackstone Group L.P. in the $1 billion sale of its 50 percent stake in Universal Studios Orlando theme parks to NBC Universal Media, LLC, and in connection with the licensing by Universal Studios theme park of The Wizarding World of Harry Potter attraction and The Simpsons ride;
- Inversiones de Guatemala S.A., the largest rum producer in Guatemala, in its joint venture with Diageo plc (United Kingdom) in which Diageo purchased a 50 percent stake in the premium “Ron Zacapa” branded rum and corresponding product recipes, and entered into international distribution agreements with respect to this product;
- Chiquita Brands International, Inc., in its creation of a joint venture with multinational food products company Danone aimed at developing “Just Fruit in a Bottle,” Chiquita Brand’s European smoothies concept. Chiquita contributed its fruit juice business, along with associated intellectual property, and entered into a license agreement for the CHIQUITA brand and logo to the joint venture established in Paris;
- James Perse Enterprises, Inc., a renowned apparel and lifestyle designer, retailer and wholesaler, in trademark, copyright, distribution and licensing matters;
- Toms Shoes, Inc. in intellectual property and related matters;
- Amylin Pharmaceuticals, Inc. in its approximately $1.5 billion termination and reacquisition of its rights under its alliance agreements with Eli Lilly and Company with respect to the diabetes drugs BYDUREON and BYETTA and intellectual property licenses and supply agreements entered into in connection with such transaction, and in its acquisition by Bristol-Myers Squibb Company for approximately $5.3 billion;
- J. C. Penney in its $267.5 million acquisition from Liz Claiborne Inc. of the worldwide rights to the LIZ CLAIBORNE family of brands as well as the United States and Puerto Rico rights for the MONET jewelry brand;
- Burger King Holdings, Inc. in its approximately $4 billion acquisition by 3G Capital Management, a private equity firm backed by Brazilian investors;
- The Coca-Cola Company in its $4.1 billion acquisition of Energy Brands Inc. (also known as Glacéau) and in its earlier acquisition of FUZE Beverage, Inc.;
- Donna Karan International Inc. in the sale of Gabrielle Studio Inc. to LVMH Moët Hennessy-Louis Vuitton for approximately $450 million, including the assignment and license of trademark and personal name rights relating to the DONNA KARAN name and marks, and Donna Karan in connection with her URBAN ZEN boutiques and foundation;
- Citigroup Inc. in the sale of its red umbrella logo, as well as the associated trademark rights, to The Travelers Companies Inc., and in Citigroup’s policing, enforcement and licensing of its CITI family of marks in the United States;
- Apax Partners, Inc. in its acquisition of Tommy Hilfiger Corporation;
- Vivendi Universal Entertainment LLP in the planned development and operation of a Universal Studios theme park in Shanghai, including the licensing of characters, content and trademarks for attractions and merchandise; and
- 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.
Intellectual Property Prosecution, Administrative Proceedings and Litigation
Mr. Goldner assists clients in obtaining, protecting and enforcing trademarks and copyrights in the United States and abroad, including conducting and reviewing searches and investigations for trademark clearance, preparing opinion letters, filing and prosecuting trademark and copyright applications, handling the prosecution and defense of trademark administrative proceedings, policing and monitoring the use of trademarks and copyrights by third parties and providing general trademark and copyright counseling.
Mr. Goldner advises clients regarding the acquisition, use and defense of Internet domain names, including representing clients in domain name administrative proceedings brought under the Uniform Domain Name Dispute Resolution Policy (UDRP).
Mr. Goldner also has represented clients in trademark infringement, trademark dilution, technology licensing, trade secret misappropriation and copyright infringement disputes and lawsuits. He repeatedly has been selected for inclusion in Chambers USA: America’s Leading Lawyers for Business.
J.D., University of Michigan Law School, 1992 (cum laude; Articles Editor, Michigan Law Review)
B.A., Amherst College, 1987 (summa cum laude; Phi Beta Kappa)
Law Clerk, Hon. Michael B. Mukasey, U.S. District Court, Southern District of New York (1993-1994)
Member, International Trademark Association (INTA)
Member, Board of Directors, The Times Square Alliance
"2004 Trademark Law Decisions of the Federal Circuit," American University Law Review, April 1, 2005