Practice/Industry Group Overview
Wilson Elser understands the value of an organization’s ideas and identity and how critical it is to protect these assets. From copyrights and trademarks to patents and trade secrets, our attorneys operate at the intersection of corporate law and litigation, state-of-the-art science and regulatory experience to advance our clients’ most ambitious intellectual property objectives.
From copyrights and trademarks to patents and trade secrets, our attorneys operate at the intersection of corporate law and litigation, state-of-the-art science and regulatory experience to advance our clients’ most ambitious intellectual property objectives.
Our firm maintains an interdisciplinary team well versed in all aspects of intellectual property and corporate law. Clients benefit from our depth of knowledge as well as ready access to all of the resources of a national firm with 24 U.S. offices.
Our copyright practice is multifaceted, with cases involving literary and theatrical works, musical compositions, software, luxury goods, apparel, consumer products, and sales and instructional manuals. We counsel clients on registration of copyrights with the U.S. Copyright Office, explain the effects of new technology and legislation on copyright law, enforce our clients’ rights and litigate or defend against charges of copyright infringement.
Wilson Elser is involved in obtaining, securing, maintaining and enforcing trademark rights of clients worldwide. We understand that a company’s investment in name and brand recognition often equates with increased profits and asset growth. Our firm has experience with the U.S. Patent and Trademark Office, including registrations and proceedings before its Trademark Trial and Appeal Board. Our clients are not focused only on the U.S. market, and neither are we. We counsel clients on international safeguards, register marks where available and coordinate with foreign correspondents to ensure our clients have the necessary protection. We monitor these international portfolios and enforce rights when necessary.
Wilson Elser helps clients develop programs that increase trade secret protection through the use of restrictive covenants in contracts for company executives and key employees. Confidential information pertaining to, for example, devices, formulas, patents, programs or methods requires protection because it has economic value.
Our patent practice comprises attorneys with broad-based scientific backgrounds who are admitted to the patent bar. The team can staff patent matters appropriately, deploying attorneys with experience in biological, chemical, mechanical and computer sciences. From patent counseling to prosecution and enforcement or defense, our team preserves these rights for our clients.
We provide an array of other legal services complimentary to traditional intellectual property assignments, such as mergers and acquisitions, audits for compliance and preparation of agreements for licensing. Wilson Elser attorneys understand the power of ideas and innovation – and the ways to protect them.
In addition, our attorneys have significant experience in the area of multimedia law, including the representation of web-based clients, product developers and creative content owners. We also have drafted contractual terms and conditions as well as secured and protected intellectual property rights for creators of downloadable applications for use on electronic devices.
Defamation & Trade Libel
In the area of defamation law, the public right of freedom of speech and the private right to protect one’s reputation often come into conflict, especially in today’s super-connected world of multimedia and the resulting ease with which one can publish information on the Internet. Our defense approach stresses early disposal of defamation claims using the judicially promulgated state and federal protections afforded publishers. When enforcing such claims, we seek to aggressively restore the reputation of our client before further damage is done and without perpetuating misinformation.
Our practice attorneys follow the developing law to learn of new exposures and theories. We are at the forefront of claims involving bloggers and, significantly, whether they should be provided the same protections as traditional journalists. Our efforts are focused on obtaining summary dismissals at the earliest possible juncture.
We are also experienced in trial and appellate defamation litigation. In connection with our defense of publishers in both venues, we established several of the controlling precedents now cited in the New York State Pattern Jury Instructions regarding qualified privileges. These precedents have played a significant role in extending the protection afforded publishers pursuant to the qualified privilege doctrine.
Trade libel can involve our clients as defendants or plaintiffs. Advertisements can be misleading or appear misleading when they cite the products or services of other entities. Such statements can be damaging to the reputation and goodwill of the target. Our involvement in these cases has included representing international products manufacturers and service providers, accounting firms, publishers, authors, health care providers and bloggers.
Digital Media & E-Commerce
With digital media and e-commerce increasingly widespread, risks are inescapable and protection is required to guard intellectual property assets. Wilson Elser advises clients on domain name registration and disputes. When necessary, we litigate disputes against cyber-squatters and infringers before relevant arbitration forums, and we defend against domain hijackers. We also protect domain name owners from unwarranted challenges to the propriety of their domains, we are at the forefront of novel domain name litigation and we are experienced in eradicating foreign-based websites that offer counterfeit products using our clients’ trademarks.
We also represent a broad variety of clients on Internet issues that include but are not limited to jurisdiction, copyright infringement, trademark infringement, domain name issues, defamation, identity theft, data protection, online indecency, email risks and policies, and encryption.
When all other remedies have been exhausted, litigation is a route available to businesses to protect and defend their intellectual property rights. Our practice attorneys have extensive experience in diverse intellectual property infringement matters, including copyrights, trademarks, trade dress, trade secrets, patents, licensing issues, privacy rights, false advertising, domain name disputes and other claims of unfair competition.
Whether enforcing rights for patent owners or defending alleged patent infringers, our national presence allows us to litigate multijurisdictional cases cost-effectively. We have litigated patent cases involving a variety of industries and technologies.
Our attorneys have significant experience in preventive advice, analysis of substantive issues and enforcement relating to unfair competition law. We use the firm’s nationwide resources and knowledge of the trademark group to represent our clients with respect to trademark and false designation issues on a local, national and international scale. With 24 offices strategically located nationwide, we are familiar with unfair competition laws in various states. When a case involves multidistrict litigation or litigants who engage in “forum shopping,” our practice attorneys have the flexibility and diversity to protect our clients regardless of where they are sued or who has violated their rights.
Transactional, Counseling & Registration Services
Our practice attorneys have extensive experience in all aspects of transactional services relating to intellectual property. We readily recognize that a company’s investment in name and brand recognition is central to asset management and increased revenue.
We offer an extensive range of services, including advice on trademark selection, adoption, use, registration, exploitation, licensing and dispute resolution. We also assist clients in exploiting their patent rights and related technology, know-how, trademarks and copyrights.
Our attorneys are experienced in trademark registration and management as well as pursuing and defending opposition and cancellation proceedings. From the outset, we conduct comprehensive trademark searches for availability and clearance purposes. We prepare clearance opinions, apply for registration, and work closely with our clients to ensure that their trademarks remain protected and enforceable. We manage several international portfolios of trademarks to protect our clients not only in the United States but everywhere they do business.
We also advise on commercial matters, including business formation and combinations, joint ventures, license agreements, technology transfers and assignments. We assist in negotiating technology development, license and transfer arrangements that make trade secrets and know-how available to clients or to others while maintaining sufficient prohibitions on disclosure to protect intellectual property rights.
We advise and provide negotiation assistance in connection with all aspects of licensing arrangements, such as analysis of patents for validity, scope of protection and protection from infringement, review of relevant domestic and international intellectual property laws, and assisting clients in enhancing the return on intellectual property rights. To maintain trademark rights, it is critical to see that licenses are properly crafted and effectuated. Our attorneys draw on their vast experience to help protect marks and, when necessary, litigate disputes.
The ability to legally exclude others from manufacturing and/or selling a product can be a powerful business asset. It is critical to determine whether a new product under development might constitute an infringement on the rights of others. It is similarly important to secure appropriate rights for a new product to ensure its competitive viability within the marketplace.
Wilson Elser attorneys consult with clients on the patentability of inventions. We collaborate with the research and development, marketing, branding and executive teams at a client’s company to help ensure that new products will not infringe on other patents and will be considered “new and novel” within their respective industries. We conduct prior-art searches – searches of earlier existing public knowledge that is relevant to a patent's claims of originality – to assure investors, manufacturers, vendors and distributors that their conduct is permissible. When necessary, we prosecute patents for appropriate protection. Our practice attorneys also seek to enforce patent rights through “cease and desist” letters and patent infringement lawsuits.
We represent domestic and foreign clients across a wide array of industries and matters, including
- Patent preparation and prosecution
- Patent investigation and analysis
- Enforcement of rights, including litigation
- Defense of patent infringement claims
- Patent licensing
- Patent searching
- Patent portfolio development and management
- Patent advice and education
- General counseling
Entertainment & Sports
Intellectual property plays an increasingly pivotal role in entertainment and sports. Our practice attorneys handle a broad range of related litigation matters, including breach of contract and fiduciary obligations, right of publicity and privacy, and court confirmation of minors’ contracts.
We represent clients in such industries as:
- Fashion, inclusive of models/agencies, fashion designers, industry executives, photographers, fashion editors and fashion public relations companies
- Film, stage and television, inclusive of actors, producers, directors, screenwriters, on-air and off-air talent, and production companies
- Sports, inclusive of professional athletes
- Publishing, inclusive of authors, syndicated columnists, literary agents, magazine editors, photographers and graphic designers.