Practice Areas & Industries: Sheppard, Mullin, Richter & Hampton LLP

 





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Practice/Industry Group Overview

Intellectual property rights may be your most valuable asset in today's market. Sheppard Mullin is a leader in the protection of those rights, and we are well positioned to help companies protect their intellectual property rights and exploit their commercial potential.  

We cover in depth all laws governing patents, trademarks, copyrights, trade secrets, false advertising, unfair competition, counterfeiting, grey marketing, and all matters involving intellectual property. We routinely address practical concerns related to the Internet, intranets, e-mail and document and data retention policies, as well as offer cutting edge advice in important related areas such as antitrust, unfair competition, counterfeiting, grey marketing and product diversion. Sheppard Mullin represents clients ranging from Fortune 500 corporations to deserving start-ups and individuals across a wide spectrum of industries.

Sheppard Mullin's attorneys assist clients to secure and enforce patents, trademarks and copyrights, both domestically and internationally.  We also monitor and enforce our clients' rights on the Internet. Our attorneys are experienced in sophisticated technology transactions. We help clients avoid loss through employee departures, industrial espionage or other means, and create compliance and employee training programs.  We represent clients' intellectual property interest in trials and appeals in the federal and state courts, in arbitrations and in adversarial proceedings before the U.S. Patent and Trademark Office, the Federal Trade Commission and other tribunals.

Patents

Sheppard Mullin offers a full service patent practice, featuring registered patent attorneys with diverse technical backgrounds. We have significant experience in the preparation and prosecution of U.S. and foreign patent applications, and counseling on the complete range of issues that can arise in connection with patent matters. Our lawyers have extensive experience in the trial of patent cases, both jury and non-jury, and have represented clients in some of the most significant cases in recent history.

Trademarks, Service Marks, Trade Names and Trade Dress

Words, phrases, designs, logos and other commercial symbols used to identify products, services, or their producers in the marketplace can all be protected as trademarks, service marks, trade names or trade dress. A company name can be protected against the use of similar names by others. A color scheme or unique theme for a business or product packaging can be protected as trade dress. Sheppard Mullin's practice in these areas includes trademark and trade dress infringement, prosecution of domestic and international trademark and service mark registrations and opposition and cancellation proceedings, as well as counseling clients concerning the selection, availability and use of trademarks, service marks, trade names and trade dress, as well as enforcing attendant rights.

Copyrights

Sheppard Mullin assists computer software developers, authors, artists, designers, cartoonists, advertisers, musicians, movie producers and others who create works of authorship under domestic and international copyright laws to maintain control over the products of their creativity, as well as protect the profits resulting from those works. Our practice includes copyright registration and litigation involving works such as computer programs and databases, websites, novels, newspaper and magazine articles, fine art and audio visual works, to name only a few. We also counsel clients concerning the scope of copyright protection for their works and the rights of third parties in those works.

Internet, Domain Name and Computer Law

Domain names are a frequent ground for disputes. Competing claims to a company's trademarks by cybersquatters and more traditional infringers can bar a business's attempt to exploit a trademark as a domain name and market itself through the Internet. Using both traditional trademark theories and the Federal Anti-Dilution Act, Sheppard Mullin attorneys have successfully assisted trademark holders and domain name registrars who are faced with such disputes.

Internet litigation and disputes extend well beyond domain names.  For example, creative trademark infringers use famous trademarks and service marks in meta tags and "ghost text," a colored font on an identically colored background. Others creatively use the Internet as a way to pirate software or otherwise unlawfully trade on another's property. Sheppard Mullin has commensurate expertise in the proactive Internet protection of intellectual property, the identification and location of infringement and infringers and the enforcement of our clients' rights.

Our computer law expertise also extends to drafting and negotiating agreements and licenses. We assist clients with website development and hosting agreements, software development and licensing agreements, domain name registrations and transfers and a wide variety of computer related agreements.

Trade Secrets

Valuable information—both technological and commercial—can be protected and exploited as trade secrets if the appropriate safeguards are followed. Sheppard Mullin's practice includes counseling and litigation for clients to protect trade secrets, know how and confidential information from loss, whether through misappropriation by employees, piracy with third parties or otherwise.

False Advertising and Unfair Competition

The Internet continues to make products and services instantly available to consumers in an increasingly competitive international marketplace. Effective advertising is a vital tool to survival on the Internet. Businesses routinely use offers of "free" products, rebates, sweepstakes, contests, testimonials, endorsements, comparative advertising and a panoply of product claims in every available media to distinguish themselves from their competitors. At the same time, consumer and competitor complaints, rigorous government enforcement of false advertising laws and industry self policing are on the rise.

Sheppard Mullin's attorneys are well versed in all aspects of advertising law. We conduct compliance reviews of advertising copy prior to publication, and provide practical advice on a broad range of advertising and marketing issues. We effectively represent clients in all types of advertising proceedings including false advertising, libel and defamation actions in federal and state courts, as well as the investigation of false and deceptive advertising claims by the Federal Trade Commission, the various state attorneys general and trade groups, including the National Advertising Division of the Council of Better Business Bureaus, Inc. Our attorneys also conduct multimedia interactive in-house compliance programs designed to educate and train employees in these areas.

For many businesses, stopping the sale of infringing goods by third parties in the marketplace, particularly counterfeits or knockoffs that dilute exclusivity, diminish quality or tarnish reputations, is vital to their continued success. On behalf of our clients and with law enforcement assistance, Sheppard Mullin has successfully used the unfair competition laws to conduct large scale ex parte seizures of counterfeit goods and stolen computer software. We are experienced in all aspects of unfair competition law, and regularly counsel clients on how to protect their rights and how to avoid unfair competition claims by others.

Buying, Selling, and Licensing Intellectual Property

Sheppard Mullin's attorneys bring their superior problem solving skills and extensive experience in all aspects of business negotiations to matters involving intellectual property. We excel in negotiating and structuring licensing, franchising, technology transfer agreements, corporate acquisitions, incorporations, limited liability company and partnership formations, securities transactions and domestic and international joint ventures in which technology owned or to be developed by the participants is an important element of the transaction. We successfully represent clients in mergers, acquisitions and dispositions of companies with valuable intellectual property rights, including numerous technology based companies in the computer software, electronics and biomedical industries; aerospace and defense companies; consumer products companies; apparel companies; and retailers and publishers.

In addition, our attorneys regularly represent licensors and licensees in international and domestic transactions involving software, patent, trademark, copyright and trade secret licenses.  We routinely negotiate a broad range of commercial contracts.  Sheppard Mullin also represents clients in negotiating system integration agreements and value added reseller, distribution and original equipment manufacturing agreements.

Antitrust and Trade Regulation Law

Intellectual property transactions and litigation can raise antitrust and trade regulation concerns where the acquisition, sale or enforcement of intellectual property rights might affect market power or lead to a restraint of trade. Sheppard Mullin assists businesses in complying with the myriad antitrust and trade regulation laws that might impact such transactions. We regularly counsel clients on issues such as price fixing, customer allocation, market allocation, dealer price cutting, price discrimination, tying arrangements, refusals to deal, industry exemptions and the unique laws that apply to regulated industries.

We are equally conversant with developments in Western Europe, through the European Union and in the United States, Canada and the Pacific Rim. Recognizing the interdependence of international markets, Sheppard Mullin is able to help solve the legal problems of its clients in all these areas.


 
 
Articles Authored by Lawyers at this office:

$2.3 Million Trial Verdict against Newegg
Lai L. Yip, December 10, 2013
On November 25, 2013, the jury in TQP Development, LLC v. 1-800-Flowers.com, et al., U.S.D.C., E.D. Tex., No. 2:11-cv-00248-JRG-RSP, returned a $2.3 million verdict for plaintiff TQP Development, LLC (“TQP”) against Newegg, Inc. (“Newegg”) in TQP’s suit for...

Kraft v. Cracker Barrel: A Summary of Judge Posner’s Opinion and an Alternative Reverse Confusion Theory of Liability
Paul Bost, December 05, 2013
In a unanimous opinion authored by Judge Posner, the Seventh Circuit recently upheld the district judge’s granting of plaintiff Kraft Foods Group Brands LLC’s motion to preliminarily enjoin defendant Cracker Barrel Old Country Store, Inc.’s sale of food products to grocery stores...

No Avoiding BPCIA For Biosimilars: No Patent Declaratory Judgment Action Before Biosimilars Application Is Filed
Peter S. Reichertz, November 22, 2013
The United States District Court for the Northern District of California ruled November 12, 2013, that a party seeking to obtain approval of a biosimilar could not avoid the process set forth in the Biologics Price Competition and Innovation Act of 2009 (“BPCIA”) by obtaining a...

Apple is Fighting Back in Brazilian Courts to Get its iPhone Trademark
Marcos Vergara del Carril, October 15, 2013
In February 2013, the Instituto Nacional Da Propriedade Industrial (the “Brazilian Patent and Trademark Office”), ruled that Gradiente Electronica (“Gradiente”), not Apple, owned the “iPhone” mark in Brazil. The “iPhone” term was registered by...

United States Supreme Court Agrees to Hear Two Cases That Could Potentially Deter Non-Practicing Entities From Filing Frivolous Suits
Martin Bader,Sooho Lee, October 15, 2013
On October 1, 2013, the United States Supreme Court agreed to review the “exceptional” case standard for awarding attorneys’ fees in two separate patent-infringement cases. Both cases relate to patentees who are non-practicing entities. The outcome of these cases could...

Federal Circuit Affirms Inequitable Conduct Determination Under Therasense “But For” Exception and Reaffirms Significance of Rohm & Haas
Martin Bader,Stephen S. Korniczky,Matthew M. Mueller, October 14, 2013
Today, the Federal Circuit upheld the District Court’s inequitable conduct verdict based on the submission of false affidavits to the United States Patent & Trademark Office (“PTO”). Intellect Wireless, Inc. v. HTC Corp., 2012-1658. In its precedential opinion, the Federal...

Comments on Recent Changes to the Trademark Law of the People's Republic of China
Scott Palmer, September 11, 2013
A revision to the Trademark Law of the People’s Republic of China (“Trademark Law”) was adopted at the 4th Session of the Standing Committee of the Twelfth National People’s Congress of the People’s Republic of China on August 30, 2013. The revised Trademark Law will...

Dang v. San Francisco Forty Niners - Consumers can Challenge Reebok's Exclusive NFL Apparel Deal Based Just on a Market of Garments Bearing NFL Team Logos
Leo Caseria,David R. Garcia, August 08, 2013
On August 2, 2013, District Judge Edward J. Davila denied a motion to dismiss antitrust claims brought by consumers of NFL apparel against Reebok and the NFL in Dang v. San Francisco Forty Niners, Case No. 5:12-CV-5481 (N.D. Cal.). Plaintiff seeks to represent a class of NFL apparel purchasers who...

DOMA Goes Down - Copyright Goes Up - U.S. v. Windsor, Supreme Court, No. 12-307, Decided June 26, 2013
Edwin Komen, July 03, 2013
The Supreme Court today handed down a far reaching decision throwing out an attempt by Congress to deny the benefits conferred by federal law on same sex couples legally married under state law holding that the Defense of Marriage Act (“DOMA”), as so applied, constituted a deprivation...

Foreign Trade Antitrust Improvements Act Defeats Claim Against Holder Of Patent Incorporated Into Industry Standard
Thomas D. Nevins, July 02, 2013
Plaintiff alleged that defendants, which were affiliates of each other, held patents that were essential for plaintiff to manufacture and market USB 3.0 connectors that complied with a standard adopted by the industry for such connectors. Defendants assertedly refused to license those patents to...

FTC v. Actavis: What Does It Mean for Reverse-Payment Settlements?
Jennifer M. Driscoll-Chippendale,Bradley C. Graveline, June 27, 2013
On June 17, 2013, the United States Supreme Court announced a rule that blurs the lines between antitrust and patent law in the context of Hatch-Waxman litigation. In FTC v. Actavis, 570 U.S. 756 (2013), the Federal Trade Commission (“FTC”) prevailed when the Supreme Court held in a...

Four Wheel Fashion
, June 25, 2013
If you’ve ever wondered what the “lifestyle” of a Porsche driver looks like, look no further than Porsche Design’s latest fashion catalog. Twenty-three glossy pages of sleek leather jackets, modern business blazers, and retro-futuristic day-to-evening wear attempt to define...

Hashtagging Away Your Rights: Privacy and Publicity Rights in Social Media
, June 25, 2013
The fashion industry is finally loosening its buttons—several decades and a few billion dollars in advertising later, retailers are moving away from using high-priced models and exotic locations to lure customers. Instead, many brands are promoting their designs by relying on every day images...

An Unreasonable Royalty Rate is No Gaming Matter
Mercedes A. Cook, May 27, 2013
The Honorable Judge James L. Robart recently took on the challenging task of determining a reasonable and non-discriminatory (“RAND”) royalty rate for Motorola’s standards-essential patents (“SEP”). Microsoft Corp. v. Motorola, Inc., 2013 U.S. Dist. LEXIS 60233, No....

Appropriate Appropriation: Second Circuit Holds That Commentary on Original Work Unnecessary for Fair Use Defense, Only Transformative Quality Required
, May 01, 2013
In Cariou v. Prince, No. 11-1197-cv (2d Cir. Apr. 25, 2013), an opinion with significant importance for the art world, the U.S. Court of Appeals for the Second Circuit clarified what is required for a defendant’s entitlement to the “fair use” defense to a claim of copyright...