Mr. Goldner’s principal areas of concentration include mergers and acquisitions, licensing, financing and counseling involving brands, designs, technology, software, social media, content and persona rights, and strategic commercial transactions including manufacture, supply, distribution, logistics and services agreements.
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:
- JAB Holdings in its acquisitions of Dr. Pepper Snapple, Insomnia Cookies, Krispy Kreme Doughnuts, Peet’s Coffee & Tea and Panera Bread, and in related commercial agreements;
- Twenty-First Century Fox, Inc. in its $66 billion acquisition by the Walt Disney Company and related licensing and technology arrangements;
- Peet’s Coffee & Tea in its acquisition of Stumptown Coffee Roasters and acquisition of a majority stake in Intelligentsia Coffee & Tea, and in Peet’s licensing of its first-ever international coffee bar in Shanghai, China;
- The Howard Hughes Corporation in its licensing and design arrangements with Milan-based lifestyle retail brand 10 Corso Como to open its only North American location in the Seaport District;
- The Coca-Cola Company in its worldwide strategic partnership with Monster Beverage Corporation and its acquisitions of Energy Brands/Glaceau (the producer of Smartwater and Vitaminwater) and Honest Tea;
- E.I. du Pont de Nemours and Company in its $130 billion merger with the Dow Chemical Company, the separation of Dow DuPont into three independent public companies and its spin-off of its performance chemicals business into a separate, publicly traded company called The Chemours Company; its $4.9 billion sale of its high-performance coating business to The Carlyle Group; its $6.3 billion acquisition of Danisco A/S, a global manufacturer of food ingredients; and the sale of its pharmaceutical business to Bristol-Myers Squibb Company for $7.8 billion, and related manufacture, supply, distribution, technology and services agreements;
- The Hershey Company in its acquisition of SkinnyPop popcorn;
- Kraft Foods Inc. in its separation into the Mondelēz snack foods (e.g., Oreo, Cadbury) and Kraft grocery businesses (e.g., Kool-Aid, Kraft cheese), and in related brand separation and cross-licensing matters;
- Embraer S.A. in its $5 billion joint venture with The Boeing Corporation, including intellectual property cross licensing, supply, joint marketing, and research and development arrangements;
- WeWork Companies Inc. in intellectual property structuring and licensing matters;
- Blackstone Group in the $1 billion sale of its 50 percent stake in Universal Studios Orlando theme parks to NBC Universal, 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 in which Diageo purchased a 50 percent stake in the premium “Ron Zacapa” branded rum and corresponding product recipes, and entered into international licensing and distribution agreements with respect to this product;
- Donna Karan International Inc. in the sale of Gabrielle Studio Inc. to LVMH Moat Hennessy-Louis Vuitton for $450 million, including the assignment and license of trademark and personal name rights relating to the DONNA KARAN name and marks;
- 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; 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 Clearance, Prosecution, Administrative Proceedings and Litigation
Mr. Goldner assists clients in obtaining, protecting and enforcing brands and content in the United States and abroad, including clearance, prosecution, trademark administrative proceedings, policing, and providing general brand and content counseling. He also has represented clients in trademark infringement, trademark dilution, technology licensing, trade secret misappropriation, unfair competition, false adverting, and copyright infringement disputes and lawsuits; in domain name administrative proceedings; and in social media and mobile application challenges and takedowns. He repeatedly has been selected for inclusion in Chambers USA: America’s Leading Lawyers for Business and was named to the WTR 1000 by World Trademark Review in 2017 and 2018 as a leading trademark practitioner.