Mr. Goldner's principal areas of concentration include transactions, licensing and counseling involving brands, designs, technology, social media, content, software, persona rights, and pharma and biotech, and he oversees Skadden’s U.S. and international trademark clearance and prosecution practice. Mr. Goldner also is chair of the firm’s New York office Diversity Committee.
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 acquisition of Krispy Kreme Doughnuts for $1.35 billion, its acquisition of Peet’s Coffee & Tea for $973 million and its $7.5 billion acquisition of Panera Bread;
- Twenty-First Century Fox, Inc. in its $66 billion acquisition by the Walt Disney Company and related intellectual property licensing arrangements;
- Peet’s Coffee & Tea, Inc. in its acquisition of Stumptown Coffee Roasters and acquisition of a majority stake in Intelligentsia Coffee & Tea, Inc., and in Peet’s licensing of its first-ever international coffeebar 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, its acquisition of Energy Brands Inc./Glaceau (the producer of Smartwater and Vitaminwater) and its acquisition of Honest Tea;
- E.I. du Pont de Nemours and Company in its $130 billion merger with the Dow Chemical Company, in 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 (Denmark), a global manufacturer of enzyme and food ingredients; and the sale of its pharmaceutical business to Bristol-Myers Squibb Company for $7.8 billion;
- The Hershey Company in its acquisition of SkinnyPop popcorn;
- 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;
- 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;
- Donna Karan International Inc. in the sale of Gabrielle Studio Inc. to LVMH Moët 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, 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; 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. He also has represented clients in trademark infringement, trademark dilution, technology licensing, trade secret misappropriation, 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.