For over 20 years, John has represented clients on a variety of intellectual property and business matters. John's experience in both business counseling and intellectual property protection allows him to better identify potential risks and benefits to his clients. He counsels clients on matters involving the protection of trademarks, copyrights and trade secrets, the acquisition and sale of technology companies, the Internet, electronic commerce, the use and exploitation of technology, and investments in technology companies. He also advises emerging technology and other privately held businesses on organizational, operational and financing matters.
John frequently is asked to review and negotiate computer software licenses and technology services contracts on behalf of users, and has represented some of the region's largest governmental, financial services and health care institutions on these matters. He also advises, prepares and negotiates contracts for software, hardware, electronic commerce, and other technology vendors. John's depth of experience in counseling these different interests translates into a valuable advantage in the negotiating stage and provides him with the ability to suggest creative solutions to seemingly impossible problems.
In recognition of his accomplishments, he is the only private attorney to have been listed twice in the Providence Business News's list of "Who's Who in Technology in Rhode Island" (October 2000; November 2001). John also was named in the September 2003 issue of "Rhode Island Monthly Magazine" as among the 3 "top lawyers" in Rhode Island in intellectual property matters. John has also been recognized as a leader in his field by Chambers USA. John has been included in the recently published 2009 edition of The International Who's Who of Internet & e-Commerce Lawyers. John, is one of three attorneys included from New England and the only attorney included from Rhode Island.
Notable Experience
· John recently advised a corporate client and implemented a strategy to stop infringing or diluting uses of a trademark by others, including filing dozens of opposition and cancellation proceedings.
· John has determined the availability and his protected hundreds of trademarks worldwide for clients ranging in size from Fortune 50 companies to individuals.
· John has advised many buyers, sellers and investors with respect to the implications of the use of open source software by the target company on the merger, sale or investment transaction.
· To protect a national drugstore chain's trademarks, John recently shut down an Internet pharmacy website and stopped a pet food manufacturer's infringing national media campaign.
· A non-profit organization engaged John to guide it through a complex tangle of federal and state laws relating to a proposed charitable raffle via the Internet.
· John advised a gaming technology provider and negotiated the contracts to allow it to produce games using a movie logo and the names and likenesses of well-known racing drivers.
· John negotiated the contracts for a large financial services client in connection with the development and implementation of an enterprise software application.
· John represents Rhode Island's largest not-for-profit museum in its trademark, domain name, licensing and reproduction programs.
· John guided a venture-backed encryption technology company in strategic planning, through two rounds of venture financing, and in its trademark and software licensing matters.
· John helped a new cable television network clear, establish and protect rights in its name and in the titles of dozens of its programs.
· John assisted a corporate group with establishment of a Rhode Island passive investment company to hold technology and intellectual property, resulting in millions of dollars in tax savings.
Recent Speaking Engagements and Publications
John lectures and writes articles on protecting rights in intellectual property and technology and on issues of concern to technology companies.
Selected Speaking Engagements:
· Moderator, "Did the Viacom court get it right?," ABA Cyberspace Law Committee Institute and Winter Working Meeting, January 20-21, 2012
· Panelist, Careers in Trademark Law Seminar, Roger Williams Law School Intellectual Property Society, Bristol, Rhode Island, October 13, 2011.
· "Best Practices for Protection of IP Rights when Employing Social Media," panelist, Advanced IP Forum for Advertising Counsel, New York, NY, April 27-28, 2011.
· Speaker, Navigating the Ever-Changing World of Social Media: Critical Considerations for In-House Counsel, June 16, 2010.
· "Copyright and Social Networking in Schools," speaker, National Business Institute's E-Technology at School: Preventing Lawsuits, Warwick, Rhode Island, October 23, 2009.
· "Website Agreements: 'I Didn't Agree To Those Terms, Did I?'" panelist, American Bar Association 2007 Annual Meeting (San Francisco, August 2007).
· "Rights and Reproductions in a Visual World: What is an Archivist to Do?" panelist and "Tattoos, Dining Tables and Photos In The Shoebox," speaker, NEA Fall 2006 Meeting (Durham, NH, October 2006.
· "Another Technology Wrinkle in M&A Practice: Open Source and Free Software," co-moderator and "Mechanisms for Addressing the Problem in a Merger Acquisition," speaker, ABA 2006 Spring Meeting, Section of Business Law (Tampa, FL, April 2006).
· "Where do We Go From Here? The Implications of MGM v. Grokster," delivered at the Cyberspace Law Committee's Hot Topics forum at the American Bar Association Annual Meeting, (Chicago, IL, August 2005).
· "Who's Afraid of Open Source? Implications for Mergers & Acquisitions and Investment Transactions," presented to the Boston Bar Association Internet and Computer Law Committee, (Boston, MA, June 2005).
· "Considerations in Entering the Marketplace - Licensing, Joint Ventures & All That Stuff," speaker, $mart Fund$ - Hows and Whys of Financing Your Technology Conference sponsored by the Naval Undersea Warfare Center (Portsmouth, RI, October 2004).
· "Electronic Privacy in the Workplace," Presentation to the Rhode Island Bar Association Annual Meeting, (Providence, RI, June 2003).
· "Implied Assent in Electronic Form Contracts," Presentation to the Business Law Section of the American Bar Association Annual Meeting, (August 2002).
· "Online Licensing Basics - Creating Enforceable Contracts," speaker, Legal Issues Conference sponsored by the Massachusetts Software and Internet council (Newton, MA. January 2001).
· "Avoiding Legal Risks in Cyberspace" Speaker, eBusiness Roundtable Conference sponsored by the Information Technology Forum of South Florida. (Ft. Lauderdale, FL, April 1999).
Selected Publications:
· "Saving Costs in The U.S. Trademark Registration Process," author, Ahuja's World Patent & Trademark NewsTM, May 2012.
· "Second Circuit Vacates and Remands YouTube Summary Judgment Under the Digital Millennium Copyright Act," co-author, Edwards Wildman Palmer LLP Client Advisory, April 2012.
· "Image Hosting Service Wins Summary Judgment in Copyright Suit - Lessons For Online Service Providers and Content Owners on the DMCA Safe Harbor," co-author, Edwards Wildman Palmer LLP Client Advisory, January 2012.
· "Ninth Circuit Court of Appeals Affirms District Court's Decision that Veoh Networks Inc. is Protected by the DMCA's Safe Harbor Provisions," co-author, Edwards Wildman Palmer LLP Client Advisory, December 2011.
· Supplement to the "Maine, New Hampshire, Rhode Island and Vermont Limited Liability Company Forms and Practice Manual," author, Data Trace Publishing, 2011.
· "An internal and external approach: An effective policy for social media and internet trademark use starts from within," co-author, World Trademark Review, Issue 29, February/March 2011.
· "Copyright First Sale Doctrine Does Not Apply to Resale of Licensed Software," co-author, Edwards Angell Palmer & Dodge Client Advisory, September 2010.
· "Court Finds YouTube Not Liable to Viacom for Copyright Infringement Because YouTube Complied with Requirements of Federal Safe Harbors," co-author, Edwards Angell Palmer & Dodge Client Advisory, August 2010.
· "Federal Circuit Supports Trademark Owners by Making It More Difficult to Challenge Applications and Registrations Based on Fraud," co-author, Edwards Angell Palmer & Dodge Client Advisory, September 2009.
· "TTAB Fraud Findings Without Intent Put Trademark Registrations At Risk," co-author, Edwards Angell Palmer & Dodge Intellectual Property Bulletin, Winter 2008.
· "Survey of the Law of Cyberspace: Intellectual Property Cases 2006," co-author, The Business Lawyer, November 2007.
· "Coming down on fraud," co-author, World Trademark Review, July/August 2007.
· "Don't let your company's blog get you in trouble," co-author, Mass High Tech, July 27, 2007.
· "Purchasing a competitor's trademark as a 'keyword' online," Massachusetts Lawyers Weekly, April 2, 2007.
· "YouTube Suit Raises Novel Internet Copyright Issues," co-author, The Licensing Journal, October 2007 and IP Law 360, March 26, 2007.
· "Trademark Selection - An Exercise in Risk/Benefit Analysis," Edwards Angell Palmer & Dodge Insurance & Reinsurance Update, March 2007.
· "Purchasing a competitor's trademark as a 'keyword' online," author, Rhode Island Lawyers Weekly and Massachusetts Lawyers Weekly, April 2, 2007.
· "When a business begins a blog -- It's easy, but is it safe?," co-author, Business Law Today, January/February 2007.
· "Blog standard rules - Ownership and liability of weblogs," Copyright World, July/August 2006.
· "Selected 2005 Cyberspace Intellectual Property Cases," co-author, CIPerati, Volume 3, Issue 1, March 2006.
· "Tech Transfer: Outsourcing Your R&D," Mass. High Tech, March 29, 2004.
· "Browse-Wrap Agreements: Validity of Implied Assent in Electronic Form Agreements," Co-Author of law review article, The Business Lawyer, November 2003.
· "Buyer Beware: Tightening Software Licensing Agreements a Must," Atlantic Coast In-House, October, 2003.
· "Can You Make the Terms Stick Without the 'Click'?," Boston Business Journal, September 5, 2003.
· "California Supreme Court Says to Intel . . . Eat Spam," Mass High Tech, August 4, 2003.
· "It's Not Over 'Til It's Over! Domain Name Holders Who Lose UDRP Proceedings Have Redress Under The Anticybersquatting Consumer Protection Act," Intellectual Property Today, March 2002.
· "DMCA Faces Free Speech Challenges," The National Law Journal, October 22, 2001.
News & Publications
April 2012, Client Advisory - Second Circuit Vacates and Remands YouTube Summary Judgment Under the Digital Millennium Copyright Act
January 2012, Client Advisory - Image Hosting Service Wins Summary Judgment in Copyright Suit - Lessons For Online Service Providers and Content Owners on the DMCA Safe Harbor
December 2011, Client Advisory - Ninth Circuit Court of Appeals Affirms District Court's Decision that Veoh Networks Inc. is Protected by the DMCA's Safe Harbor Provisions
June 21, 2011, Edwards Angell Palmer & Dodge Recognized by Chambers USA in 17 Categories
February/March 2011, John Ottaviani and Patrick Concannon Co-Author Article on Social Media and Internet Trademark Policy World Trademark
September 2010, Client Advisory - Copyright First Sale Doctrine Does Not Apply to Resale of Licensed Software
August 2010, Client Advisory - Court Finds YouTube Not Liable to Viacom for Copyright Infringement Because YouTube Complied with Requirements of Federal Safe Harbors
June 23, 2010, Chambers and Partners Recognizes EAPD in Nineteen Areas
September 2009, Client Advisory - Federal Circuit Supports Trademark Owners by Making It More Difficult to Challenge Applications and Registrations Based on Fraud
June 12, 2009, Chambers and Partners Recognizes Firm in Nineteen Areas
June 25, 2008, Attorneys recognized at EAPD's Second Annual Pro Bono Award Reception
June 13, 2008, Chambers and Partners Recognizes Firm in Twenty Areas
April 10, 2008, EAPD Represents Takeda Pharmaceutical Company Limited in $8.8 Billion Acquisition of Millennium Pharmaceuticals
Winter 2008, Intellectual Property Bulletin - Winter 2008
Edwards Angell Palmer & Dodge LLP
October 2007, YouTube Lawsuit Raises Novel Internet Copyright Issues
The Licensing Journal
July/August 2007, Coming down on fraud
World Trademark Review
June 18, 2007, Chambers and Partners Recognizes Firm in Twenty Areas
April 2, 2007, Purchasing a competitor's trademark as a 'keyword' online
Massachusetts Lawyers Weekly
March 31, 2007, Insurance & Reinsurance Update - March 2007
Edwards Angell Palmer & Dodge LLP
March 26, 2007, YouTube Suit Raises Novel Internet Copyright Issues
IP Law 360
January 16, 2007, When a business begins a blog -- It's easy, but is it safe?
Business Law Today
August 1, 2006, Blog Standard Rules: Ownership and Liability of Weblogs
Copyright World
March 6, 2006, John E. Ottaviani Authors Article in Lawyers Weekly
April 6, 2005, Open Source Issues Challenge Lawyers; Software Registration Rules May Be Revisited
Electronic Commerce & Law Report
February 1, 2005, Intellectual Property Bulletin - Winter 2005
Edwards & Angell
December 2003, Patenting Bioinformatics Tools
Bio IT World
November 10, 2003, Electronic Privacy In The Workplace
Lawyers Weekly
October 2003, Buyer Beware: Tightening Software License Agreements
Atlantic Coast In-House
September 11, 2003, Can you make the terms stick without the click?
Know the different ways to enforce your web site's legal terms, agreements.
Boston Business Journal
2001, A License is a License is a Sale
2001, Don't Let Your Website Get You In Trouble
2000,
Considerations in Computer Software Acquisitions
January 1, 2000, Cyberpirates Beware: Federal Act Provides Trademark Owners with Modern Weapons
1998, Congress Passes Major Technology Bills
December 12, 1997, Some Pointers for Using E-Mail in Your Law Practice
Reducing Uncertainty in Cyberspace Licensing
Besides Edwards Wildman
John is the past President of the Board of Directors of Adoption Rhode Island, a non-profit organization dedicated to recruiting permanent families for abused and neglected children in state care, and is President of the Bowdoin College Alumni Club of Rhode Island. John also served on the Advisory Board of Directors of the Tech Collective (formerly the Rhode Island Technology Council), is the Co-Chair of the Intellectual Property Subcommittee of the A.B.A.'s Cyberspace Law Committee and has been an adjunct faculty member in the Legal Studies Department at Bryant College. He is an avid baseball fan and is awaiting the day when the Boston Red Sox win the World Series again.
Events
January 20-21, 2012, San Francisco, CA, ABA's Cyberspace Law Institute & Winter Working Meeting
April 27 - 29, 2011, New York, NY, Advanced IP Forum for Advertising Counsel
June 16, 2010, Providence, RI, Navigating the Ever-Changing World of Social Media: Critical Considerations for In-House Counsel
October 23, 2009, Warwick, RI, E-Technology at School: Preventing Lawsuits
August 9, 2007 - August 14, 2007, San Francisco, CA, American Bar Association 2007 San Francisco Annual Meeting
October 20, 2006 - October 21, 2006, Durham, NH, NEA Fall 2006 Meeting
August 5, 2004 - August 10, 2004, American Bar Association Annual Meeting
Industries
· Gaming
· Technology
· Precious Metals
· Education
· Telecommunications
· Cloud Computing & Managed IT Services
Memberships
· Rhode Island Bar Association
· Massachusetts Bar Association
· American Bar Association
· American Intellectual Property Law Association
· Computer Law Association
· International Trademark Association
(Also at Providence, Rhode Island Office)