Practice Areas & Industries: Hinshaw & Culbertson LLP

Practice/Industry Group Overview

The number and diversity of both legal disputes and laws relating to intellectual property has grown massively in recent decades. So, too, has the amount of new and innovative products, techniques and technologies introduced into the market. Businesses and individuals are consequently finding that they must be ever more diligent in protecting their intellectual property and defending against claims of infringement and other unfair practices.

Services Available

Our Intellectual Property Group attorneys have vast transactional and litigation experience in all nearly every area of intellectual property law. We also help businesses with protective activities, such as developing electronic document management solutions. These include those efforts concerning new e-discovery rules. Beyond representing clients, we are also are active in intellectual property professional organizations, and author articles on cutting edge topics.

Intellectual property challenges often arise in a pre-litigation context ¿ with the sending or receipt of a cease and desist letter, for example. So when intellectual property disputes arise, we try first to avoid actual litigation. Where more formal dispute resolution means are necessary, we aggressively advocate our clients’ interests.

Copyrights
Our copyright experience runs deep. We have especially broad capabilities regarding architectural subjects, publishing issues and as to negotiating software license agreements. Among many other activities, we help our clients by:

• Assisting with copyright registrations
• Drafting cease and desist letters, and writing responses to them 
• Evaluating shrinkwrap and clickwrap agreements
• Investigating and obtaining clearances where appropriate
• Litigating copyright issues
• Negotiating licensing and ownership agreements, including issues of “work made for hire” and assignments

Trademarks
We provide a full range of services in trademark and related areas, including all phases of applications and prosecutions. We also routinely represent clients in litigation and pre-litigation matters. Some of the activities with which we are experienced include:

• Negotiating and documenting ownership transfers and licensing agreements
• Assisting start-up companies in selecting corporate names and trademarks
• Evaluating First Amendment issues
• Evaluating issues arising out of electronic re-publishing, including Tasini questions, and negotiating license agreements accordingly
• Litigation and pre-litigation activities in areas of: claims under the Indian Arts & Crafts Act; cybersquatting; domain name disputes; trademark dilution and infringement; and unfair competition and false advertising claims

In addition to resolving disputes in federal and state courts, we have appeared in matters pending in World Intellectual Property Organization and other Uniform Domain-Name Dispute-Resolution Policy forums. We have also represented clients before the U.S. Trademark Office and the Trademark Trial and Appeal Board.

Trade Secrets
Our Intellectual Property and Employment Law Groups work together to counsel our clients on employee agreements and appropriate methods to protect trade secrets. We also provide advice on employee movement, where there exists the potential that incoming or outgoing employees might bring or take trade secret information with them. In this area, we have:

• Litigated trade secret misappropriation claims
• Prepared employee trade secret and non-competition agreements
• Provided trade secret audits and advice to clients regarding how to maximize protection of confidential information

Patents
Hinshaw has handled a wide range of patent-related matters. Specific activities that we have engaged in include:

• Litigation and pre-litigation activities of patent infringement claims;
• Negotiating patent license agreements
• Participating in evaluation of patentability and of potential for infringement
• Preparing employee agreements that comply with state Patent Employee Act requirements

Right of Publicity
Hinshaw attorneys have provided advice and litigated issues involving the right of publicity and the right of privacy. Examples of some of the activities with which we have assisted include:

• Evaluating the scope of releases needed
• Evaluating the scope of rights of non-famous persons whose images appear in advertising or other photos, and in video games
• Negotiating licenses with NASCAR drivers for use of images and persona for a charitable organization

Insurance
We are ideally situated to handle the insurance challenges that are often raised by intellectual property claims. In doing so, our Intellectual Property Group attorneys work along side lawyers in the firm who, collectively, are familiar with nearly every insurance matter. Together, they provide the experienced counsel necessary to develop effective, practical solutions. Among many other activities, we routinely litigate declaratory judgments involving insurance coverage for intellectual property claims; and review proposed insurance policies and programs regarding whether they provide the sought coverage for potential claims.