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Practice/Industry Group Overview
In today's global economy, patents, trademarks, copyrights, trade secrets, domain names and other intellectual property are among the most valuable assets of market leaders and rising businesses. Baker Hostetler lawyers help such companies -- as well as universities, start-ups, artists, producers, and authors -- to procure, protect and exploit their intellectual property (IP) rights and to avoid the pitfalls posed by third-party assertions of IP rights.
Baker Hostetler's IP team provides guidance in all phases of IP planning -- from the formulation of initial strategies and "best practices" to securing IP rights, creating strategies for exploitation (licensing, joint development, etc.), litigation and other forms of dispute resolution. From aerospace technology to antiviral drugs, from software and web content to consumer goods, entertainment, advertising, cartoon character rights and financial services, we have the hands-on knowledge to help our clients secure and use IP assets for maximum competitive advantage. In thousands of proceedings spanning over 100 countries, we protect that advantage in negotiations, at trial and through other dispute resolution proceedings.
Baker Hostetler also provides enforcement monitoring services and can provide client-specific and portfolio-specific Internet portals. These portals allow clients to easily and efficiently assess the status and value of their IP portfolio for general commercial purposes and compliance with regulatory requirements such as Sarbanes-Oxley.
Leadership in Action
Patents: Realizing the value of patents
Client: ImagExpo, L.L.C., a subsidiary of SPX Corporation, a multibillion-dollar global provider of technical products and systems, industrial products and services, flow technology and service solutions
Type of Matter: Patent infringement case in the U.S. District Court for the Eastern District of Virginia.
Our Client's Challenge: Patent infringement suit brought by ImagExpo to enforce a patent relating to collaborative software.
The Goal: Obtain damages for past infringement.
Our Strategy: Brought suit in the Eastern District of Virginia, the "rocket docket," to bring suit to trial quickly.
Results: Obtained a settlement for $60 million for ImagExpo/ SPX Corporation.
Leadership in Action
Trademarks: Protecting a sporting association's right to use images of its sport as trademarks
Client: United States Polo Association (USPA)
Type of Matter: Trademark infringement case in the U.S. District Court for the Southern District of New York.
Our Client's Challenge: Polo Ralph Lauren filed a lawsuit which sought an injunction barring USPA from using four logos featuring two men playing polo on horses on licensed goods including clothing, leather goods, watches and sporting equipment.
The Goal: Convince the jury that USPA, as the governing body of the sport, had the right to use images of polo being played in a licensing program despite the fame of the Ralph Lauren polo player.
Our Strategy: Educate the jury to better understand the sport of polo, the people who play it, and their legitimate interest in supporting the sport by selling goods bearing images of the sport.
Results: The jury unanimously found that three of the four trademarks adopted by the USPA did not infringe Polo Ralph Lauren's trademark rights.
Leadership in Action
Trademarks: Defending our client's trademark
Client: York International Corporation
Type of Matter: Suit for trademark infringement brought by Carrier Corporation in the U.S. District Court for the Southern District of Indiana.
Our Client's Challenge: Protect its rights in the AFFINITY trademark used with its new HVAC product line.
The Goal: Rebut Carrier's allegations of trademark infringement, show that York's AFFINITY trademark does not infringe Carrier's INFINITY trademark, and prevent Carrier from obtaining a preliminary injunction from the court.
Our Strategy: Rebut Carrier's claim that its INFINITY mark had therefore acquired secondary meaning and to rebut Carrier's allegations of trademark infringement.
Results: The court denied Carrier's motion for preliminary injunction. Carrier withdrew its complaint with prejudice in exchange for York entering into a consent motion asking the court to vacate a portion of its Order.
Leadership in Action
Trade Secrets: Going to court to enjoin anonymous posters on Yahoo!'s message boards
Client: Several large industrial companies
Type of Matter: Trade secret infringement and breach of confidentiality agreements in the Cuyahoga County Court of Common Pleas.
Our Client's Challenge: Identify the anonymous posters and informers to stop the unauthorized leak of information.
The Goal: Stop the dissemination of trade secrets over the internet.
Our Strategy: Obtain a temporary restraining order and subpoena Yahoo! to identify information on the posters; have Yahoo! pull offending messages.
Results: Anonymous posters identified and trade secrets protected.
Leadership in Action
Transactions: Going to court in the defendant's home base to protect a distribution agreement
Client: A large Canadian toy company
Type of Matter: Breach of distribution agreement in Federal District Court.
Our Client's Challenge: Our client had secured rights to distribute a famous plush toy in Canada, along with promises from the rights owner to take action against infringements. The toys were delivered late, and unauthorized copies dominated the Canadian market, despite our client's requests to the owner to take action. Our client was not able to sell the anticipated quantities of licensed products once they arrived.
The Goal: Recover lost profits.
Our Strategy: When business negotiations failed, litigation was instituted in the United States for breach of the agreement--late delivery and failure to stop the infringements.
Results: Obtained a jury verdict and damages in favor of our client, and the matter was resolved later privately.
Leadership in Action
Due Diligence: IP-related due diligence for several multimillion-dollar acquisitions and a billion-dollar divestiture
Client: A multibillion-dollar global multi-industry company
Type of Matter: Intellectual property due diligence.
Our Client's Challenge: Perform intellectual property-related due diligence, negotiate, and draft transfer documents associated with several multimillion-dollar acquisitions and billion dollar divestitures in an efficient manner, to enable a seamless closing to occur simultaneously or consecutively in multiple transactions.
The Goal: Complete due diligence, draft related transactional documents, and negotiate contentious topics in multiple acquisitions and divestitures and comply with targeted consecutive closing dates.
Our Strategy: Provide the client with listings of intellectual property assets to be acquired or divested, research and remedy chain of title issues with respect to such assets, review ancillary license and employment agreements, negotiate and draft appropriate representations and warranties for inclusion in the purchase agreements, negotiate and draft licenses and transition agreements related to such transactions.
Results: Assisted the company in closing a billion-plus dollar divestiture and several multimillion-dollar acquisitions in 2005.
Leadership in Action
IP Litigation: Successfully represented one of the largest shirt manufacturers in the world accused of patent infringement
Client: Esquel Enterprises, Ltd. Of Wanchai, Hong Kong and Esquel Apparel, Inc. of New York, New York.
Type of Matter: ITC Section 337 Investigation.
Our Client's Challenge: Alleged infringement of claims in five different U.S. patents owned by TAL Apparel Limited of Hong Kong (and related entities).
The Goal: Ensure that client's products are not barred from the U.S. market.
Our Strategy: Rapidly gather evidence and present arguments on all issues.
Results: Successfully secured the withdrawal of all allegations of infringement against the Esquel companies.
Leadership in Action
International IP: Navigating stringent Mexican trademark laws
Client: A leading United States manufacturing company
Type of Matter: Trademark infringement lawsuit and cancellation action before the Mexican Institute of Industrial Property.
Our Client's Challenge: A former distributor's unlawful use and registration of the client's trademark.
The Goal: Stop the use, despite the defendant's claim to be the rightful trademark owner in Mexico.
Our Strategy: Work with local Mexican counsel to initiate and execute a raid on the former distributor's facility in Mexico to seize counterfeit product.
Results: Successfully navigated stringent Mexican trademark laws in strategizing future action, gathering acceptable evidence and advising the client, and seized the inventory of counterfeit goods and entered into settlement talks.
Solution
Baker Hostetler develops client- specific, secure Internet sites or "portals" for fast and efficient matter management and client communication.
About Our Intellectual Property Team
Our dedicated team of IP lawyers and patent agents have the diverse backgrounds and core strengths required to ensure that the full spectrum of domestic and international IP is considered in securing IP and formulating IP strategies. Members of our IP team have worked as engineers and in-house patent, trademark and copyright counsel for companies and agencies as diverse as Borg Warner, Capitol Records, DuPont, the United States Patent and Trademark Office (USPTO), the United States International Trade Commission (ITC), the Justice Department (Civil Division, Intellectual Property) and the Federal Trade Commission (FTC).
Our team members also include adjunct IP law professors, columnists, the co-founder of the longest-running journal on computer technology, and regular lecturers for the Zurich Institute of Technology, Georgetown University and George Mason University. In addition, our team members frequently speak and write for continuing legal education programs and industry events and are quoted in the press on emerging issues.
Baker Hostetler is a member of the International Trademark Association (INTA), American Intellectual Property Law Association (AIPLA), Intellectual Property Owners Association (IPO), Licensing Executive Society (LES), The International AntiCounterfeiting Coalition (IACC), International Licensing Industry and Merchandisers Association (LIMA), as well as numerous local and regional IP organizations.
About Baker Hostetler
Baker Hostetler lawyers help clients establish, maintain and protect market-leading positions across the United States and around the world. We offer clients the strength of 600+ lawyers in a full range of practices, a unique geographic platform including both the coasts and the center of the country, a deep knowledge of industry issues, and a 90-year track record of excellence and achievement.
For more information on our Intellectual Property practice:
National Leader
John H. Weber
202.861.1526
jweber@bakerlaw.com
Cincinnati
William Appleton
513.929.3403
wappleton@bakerlaw.com
Cleveland
Thomas H. Shunk
216.861.7592
tshunk@bakerlaw.com
Deborah A.Wilcox
216.861.7864
dwilcox@bakerlaw.com
Columbus
Rosanne T. Yang
614.462.2684
ryang@bakerlaw.com
Costa Mesa
George T. Mooradian
714.966.8800
gmooradian@bakerlaw.com
Denver
Raymond L. Sutton
303.764.4103
rsutton@bakerlaw.com
Houston
Lisa H. Pennington
713.646.1303
lpennington@bakerlaw.com
Los Angeles
James E. Doroshow
310.442.8818
jdoroshow@bakerlaw.com
C. Dennis Loomis
310.442.8865
dloomis@bakerlaw.com
New York
Gerald J. Ferguson
212.589.4238
gferguson@bakerlaw.com
Orlando
G. Thomas Ball
407.649.4004
tball@bakerlaw.com
Washington, DC
Gary J. Rinkerman
202.861.1699
grinkerman@bakerlaw.com
Kenneth J. Sheehan
202.861.1682
ksheehan@bakerlaw.com
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