Expert advice for controlling your IP

Intellectual Property Law

For a substantial number of businesses, their primary asset is their intellectual property. An ill-conceived IP strategy can cost the entrepreneur valuable market space. Even worse, it can occasionally result in costs thrown away building goodwill in someone else's brand.

We work with businesses to ensure that they secure and enjoy all of the rights in all of the IP that they develop.

We provide IP services to a wide variety of clients, including production companies, software developers, distributors, licensees, licensors, franchisees and franchisors. Our IP practice is based in three areas:


IP Development

  • Build and negotiate agreements relating to wide range of products, such as online subscription video, course design, software and IT infrastructure development, tv programs, financial infrastructure.
  • Build production processes to ensure ongoing content protection.
  • Build creative solutions for issues, including the following:
    • Source code escrow issues re third parties;
    • IP ownership, embedded rights, building framework to distinguish;
    • Compensation milestones and royalties, including vesting of stock options;
    • Timelines for development, sliding scale of penalties/bonuses and unique remedies;
    • Third party rights, embedding of licensed IP;
    • Liabilities and indemnities for use of produced content;
    • Maintenance, support and quality parameters;
    • Protection, management and use of personal information, including required certifications;
    • Category exclusivity and other relevant restrictive covenants;
    • Insurance requirements, audit rights, reporting requirements;
    • Appearance, filming requirements and scheduling; and
    • Royalties and use of content after termination

Licensing

  • Negotiate licensing, distribution, territory development, certification and franchise agreements in wide range of industries, including education, gift cards, retail food, industrial equipment manufacturers, restaurants, software and professional services.
  • Manage international IP issues, engaging domestic counsel where appropriate. Identify necessary registrations and implement same.
  • Manage insurance requirements and work with insurers to ensure appropriate coverage.
  • Deal with franchise disclosure requirements.
  • Build and negotiate unique and risk managed solutions to issues, including:
    • Termination rights and other remedies on default, including sliding scale for non-fundamental breach and rights to cure;
    • Content control and approval/refusal standards, including timelines, implicit result on silence;
    • Scope of territory, details re category and/or territory exclusivity, including rights of first refusal/exclusivity on new product lines, restrictions on related company activity;
    • Unique and flexible milestones for renewal, maintenance/expansion/termination of territory and category exclusivity;
    • Ownership and use of personal information, and responsibilities for each party therein;
    • Profit sharing with respect to alternate/potential income streams;
    • IP registration/protection duties within territories;
    • Warranty service requirements;
    • Promotional requirements; and
    • Indemnities and duties with respect to content and operations

Trademark Registration, Prosecution, and Management

  • Advise on selection of trademarks and brand strategy, determine appropriate registrations required, determine required scope of wares and services, identify potential obstacles and risks, identifying potential opponents and risk management strategies.
  • File applications, advising on Paris Convention rights, manage filing in other jurisdictions. We have agency relationships with law firms in US, EU, Australia and South Africa.
  • Advocate on behalf of clients in office actions, oppositions, domain name arbitration hearings and Section 45 applications. We have an exceptional record of success. We also engage and liaise with international counsel on disputes.
  • Manage disputes with third parties, negotiating non-interference agreements, mutual consent to register, waiver of rights, release of rights, transfer and assignment of rights, and other solutions.