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. In 2015, we were one of the few firms recognized by Law360 as "Intellectual Property Practice Group of The Year".
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 intellectual property rights on the Internet. Our attorneys are experienced in technology transfers, including assignments, licensing and joint ventures. We also assist our clients to protect proprietary information to avoid loss through employee departures, industrial espionage or other means, as well as create compliance and employee training programs. We have proven expertise in representing clients 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 International Trade Commission, the Federal Trade Commission and other tribunals, as well as in industry investigations such as those before the National Advertising Division of the Council of Better Business Bureaus, Inc.
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.
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.
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.
International Trade Commission (ITC)
With the ability to prevent infringing products from being sold or imported into the US, coupled with the speed from start of investigation to decision, the International Trade Commission (ITC) has increasingly become a popular forum for the resolution of IP disputes. Sheppard Mullin’s ITC practice is comprised of highly skilled and successful senior trial lawyers with years of experience managing fast paced litigation before the ITC. Our attorneys are uniquely positioned to respond to the special challenges of pursuing or defending a Section 337 complaint from filing through all necessary levels of appeal, as well as coordinating a global response. The breadth of experience in litigating intellectual property cases combined with considerable experience in international trade policy and practice, allows Sheppard Mullin to bring powerful resources to bear for our clients in order to secure an effective resolution.
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 Competition
Intellectual property transactions and litigation can raise antitrust and competition concerns where the acquisition, sale or enforcement of intellectual property rights might affect market power or lead to a restraint of trade. Sheppard Mullin advises clients in connection with the antitrust and competition issues that may have an impact on such transactions. We regularly counsel clients on antitrust matters with respect to standard setting, patent pooling, product distribution and licensing restraints, pricing practices, mergers and acquisitions, joint ventures and other competitor collaborations.
We have defended our clients against alleged liability resulting from unlawful patent prosecution and the tying of IP assets; price maintenance and resale distribution problems; antitrust claims associated with the inappropriate use of copyrights, patents and trademarks; and the failure to meet the requirements of licensing agreements. 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, with competition resources in London, Brussels, Seoul, Shanghai and Beijing.