Intellectual Property Law practice

Securing your creativity and brand

  • Copyright
  • Trademark
  • Licensing
  • Non-Disclosure agreements (confidentiality agreements)
  • Website and mobile application documents (Terms of Service, Privacy Policy, End User License Agreement, and more)

General Questions and Answers

I focus on intellectual property, technology, and general business agreements.  This can include monetizing creative works, cross-licensing agreements, and general technology licenses.  I’ve reviewed and drafted many, for clients in various stages of business maturity, and on a wide variety of topics.  I enjoy the process of getting to know your business and understanding what makes you unique.  Then we’re able to address current questions and potential future challenges to minimize headaches and exposure, and maximize your return on investment.  It sounds like a cliché, but it’s true.  If I ask you, “what potential issues keep you up at night?”, it’s because I want to address those issues in advance.  This holds true whether it’s a 10-page agreement or a 100-page agreement.

Questions and Answers for Established Businesses

It depends on a several factors, including: the relative sizes of the companies, the importance of the deal to each company, and the cost to each company of drafting and revising the agreement. As a general rule, it often costs less for me to draft a document and then revise it, vs. revising another company’s template to ensure that it sufficiently addresses the needs of my client. Legal drafting is precise; terms and logistics need to be outlined, and then applied consistently throughout an agreement. This is why it can take more time to modify an existing agreement than to develop a new one.

I work with clients so that they can make the choice that works for them, all while ensuring that their priorities are addressed.

Boilerplate provisions can include such items as limitations of liability, indemnification, dispute resolution, breach/termination, jurisdiction and venue, modification, assignment, and force majeure (act of God) clauses. The success or failure of an agreement can depend on these provisions, and experienced lawyers know to review them carefully. Here are a few questions that are addressed by these provisions:

  • If someone is harmed by the product or service, who is liable, and what limits apply?
  • If one of the parties fails to protect the proprietary information of the other party or the personal data of consumers, how does the party at fault indemnify the other party?
  • If there’s an actual or anticipated breach of the agreement, what happens? Is there an opportunity to cure the breach? What is the timeframe for termination? Can either or both parties terminate for any reason, or does there need to be cause for such termination? (Remember that the agreement’s price/fee can be tied to these answers).
  • If there’s a dispute, is it resolved by mediation, arbitration, litigation, or some combination? What jurisdiction’s laws apply? Where is the dispute resolved?
  • How can the agreement be changed? What happens if one of the companies merges, dissolves, or is acquired by another company?
  • In the event that one of the parties can’t perform its obligations for reasons beyond its control, what is the timeframe and process for addressing this?

Every boilerplate provision needs to be carefully reviewed and drafted, so that it meets the current and future needs of the parties.

As a general rule, the company should own its own intellectual property (IP). However, there can be strategic reasons for another entity to own intellectual property. Using a holding company to own and license the IP can result in financial benefits for the licensee and licensor, and can protect company assets in the event of litigation. Startups need to remember that the initial author/owner/inventor of a copyright/trademark/patent needs to ensure that their company has the rights to monetize this IP (usually via an assignment, license, or transfer); otherwise, very large problems can arise when the startup attempts to monetize something to which it lacks the rights.