Leveraging Intellectual Property Licensing Agreements for Your Protection and Benefit

Intellectual Property Licensing Legal Services

A key objective of any intellectual property (IP) portfolio is to monetize its potential fully. In today’s market, this can present significant challenges. At Messner Reeves LLP, our intellectual property attorneys are well-equipped to help your business navigate these challenges effectively.

Licensing Agreements

We have extensive experience with licensing agreements, whether they arise organically or through litigation. Licensing agreements often emerge from infringement cases, and our background in this area allows us to seamlessly transition from litigation to negotiation, always to secure the best possible outcomes for our clients.

Our real-world negotiation experience equips us to offer strategic advice and guidance, helping manage complex IP transactions across various issues.

Our licensing services cover the following areas:

Inbound

Inbound

Inbound licensing can be an excellent way to boost sales, but it must be done carefully and in accordance with the law. Under inbound licensing agreements, you can utilize another company’s IP with your products. Whether your business is requesting inbound licensing from another entity or that entity has approached you about an agreement, the Messner Reeves licensing team is here to help.

Outbound

Outbound

Outbound licensing agreements can also be beneficial for your company. These agreements give limited rights to your IP to another business. However, they are just as tricky as inbound agreements, as you must protect your IP. This can be difficult to accomplish without an experienced licensing attorney on your side.

Celebrity

Celebrity

Celebrity licensing is when a celebrity grants a third party the legal right to use their name, image, brand, or likeness for the third party’s benefit. Usually, this means that the third party uses the celebrity in a promotion or to sell its goods or services. In return, the celebrity is compensated financially, often with royalties. Celebrity licensing agreements may restrict what the third party can use or how long they can use it. If you require legal help in a celebrity licensing matter, a Messner Reeves licensing attorney can assist you in setting up the desired arrangement.

Voice and Likeness

Voice and Likeness

Voice and likeness licensing isn’t simply about celebrities anymore. Instead, it’s redesigning how we interact regarding entertainment, music, sports, and even reality. With the explosion of artificial intelligence or AI, protecting and utilizing voice and likeness is now more critical than ever. Whether you are exploring using voice or likeness for your gain or want to protect your voice and likeness, the licensing attorneys at Messner Reeves have the knowledge and experience you need to protect yourself in this ever-evolving landscape.

Music

Music

A music license grants another party the right to use the music publicly, typically in exchange for a flat fee or royalties. Either way, these arrangements must be protected by a licensing agreement under the confines of the law. These agreements should include how long the agreement is for— some are for a specific amount of time, and others are indefinitely or purchased outright from the legal owner. Our team of licensing agreement lawyers has extensive experience in the music industry with licensing agreements and can leverage that to help you.

Software

Software

A software licensing agreement allows the software company to sell the use of its software to other parties but still retain ownership of its code and programs. A software license agreement determines the terms for what you can and cannot do with the software. Such contracts need to be specific to protect all parties involved. Our attorneys can help ensure that all of these agreements are considered to protect your business and help it get the most out of the contract.

Patents, Trademarks, Trade Dress, Trade Secrets, Copyrights

Patents, Trademarks, Trade Dress, Trade Secrets, Copyrights

Legal protections for IP include:

  • Patents: Protect the design and functionality of an invention for a limited time, usually 20 years. In exchange for the patent, the inventor must disclose their invention to the public.
  • Trademarks: Trademarks identify the source of a product or service to avoid confusion among consumers. They are also used to distinguish a brand from its competitors.
  • Trade dress: A type of trademark that is protected under the Lanham Act. Trade dress must be distinctive and non-functional. It can be registered with the US Patent and Trademark Office (USPTO).
  • Trade secrets: This is a business’s secret information that has economic value. Trade secrets give an advantage over competitors and can include ingredient formulas and secret processes.
  • Copyrights: Protect creative works, such as literary, artistic, educational, and musical works. Copyrights give the creator the sole authority to manage and profit from their work.

Whatever IP legal protections your company is dealing with, our licensing team can represent your interests to secure the best possible outcome. We represent clients of all sizes, including multinational companies, non-profit organizations, and sole inventors. Our IP attorneys handle licensing across numerous sectors, such as hospitals, medical devices and technologies, software, engineering, blockchain architecture, cellular/telecom, sports, entertainment, music and book publishing, cannabis, technology, artificial intelligence (AI), and music. Our attorneys also serve as patent acquisition and licensing counsel for several research institutions’ technology transfer offices.

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Intellectual Property Attorneys

Messner Reeves is your best possible choice for complex intellectual property issues. Our team of attorneys is highly trained and effective communicators, both inside and outside the courtroom. If a heavy or technical analysis is required, we have you covered. You can count on Messner Reeves for top-tier intellectual property representation.

Hettie L. Haines

Associate
Phoenix

Phone: 602.457.5059
Email: hhaines@messner.com

Jonathan S. Weilbacher

Associate
Orange County

Phone: 949.386.8355
Email: jweilbacher@messner.com

LINDSEY PHO

Lindsey Pho

Associate
Silicon Valley

Phone: 408.792.5924
Email: lpho@messner.com

Neil C. Evans

Partner
Orange County

Phone: 818.802.8333
Email: nevans@messner.com

Image of Attorney Hawranek

Scott Hawranek

Partner
Colorado Springs

Phone: (719) 344-9907
Email: shawranek@messner.com

Attorneys for Intellectual Property, Patents, Trademarks, and Copyrights



R&D, Product Development, and Clearance

R&D

• Educate Employees on Process
• Collect Ideas and Inventions
• Patentability Analysis
• Secure IP Protection

Product Development

• Map of Competitive IP
• Joint Development and Ownership
• Clearance
• Licensing

Clearance

• Non-Infringement
• Invalidity
• Unenforceability


Brand Protection

Portfolio Strategy and Development

• Development, Maintenance, Utilization, and Monetization of Assets
• Counseling Regarding Expansion, Licensing and Procurement of Assets

Rights Protection

• US and International Registration for Copyrights, Trademarks, and Patents
• Prosecution of Patent Applications
• Prosecution of Applications for Federal, State and International Trademark Registrations
• Registrations for Copyrights
• Clearance Reports Regarding Planned or Existing Assets
• Due Diligence Regarding Assets Acquired from Third-Parties.

Development of Best Practices

• Establishment and Maintenance of Trade Secrets
• Advisement for IP Markings, Disclaimers, Disclosures, User Agreements and Regulatory Requirements
• Drafting of Non-Disclosure Agreements (NDA’s) and Other Methods to Maintain Confidentiality


Digital Devices, Apps, and Data

Software, SaaS, PaaS, (I)IoT, and the Web

• Practical, Strategic IP Development and Management
• Software Licensing and Terms of Use
• Open Source Licensing and OSS Usage Policies
• Patent Acquisition and Patent Clearance
• Trade Secrets and Trade Secrecy Training
• Third-party Developer Agreements
• Service Provider Agreements
• Auditing of Corporate Software (e.g., for Compliance)

Data OSPAM (Ownership, Security, Privacy, Analytics, and Monetization)

• Joint Development and Data Sharing Agreements
• Privacy Law Compliance – HIPAA, GDPR, CCPA, and the Like
• Privacy and Data Security Policies
• Data Breach Remediation

Blockchain, Crypto, and NFTs

• Patents, Patent Searches, and Patentability and Validity Opinions
• Smart Contract Drafting, Implementation, and Auditing
• App Development/Service Agreements
• Regulatory Analysis and Advice
• Strategic Counsel on ICOs
• Creating, Buying, Selling, and Validating NFTs

Technical Expertise in Networking, TeleCom, and Cloud Computing Infrastructure

• This helps a lot when reading and writing contracts and patents!


Licensing, Arts and Entertainment

Licensing, Arts and Entertainment

Licensing

• Inbound
• Outbound
• Celebrity
• Voice and Likeness
• Music
• Software
• Patents, Trademarks, Trade Dress, Trade Secrets, Copyrights

Arts & Entertainment

• IP (Copyrights, Trademarks, Publicity Rights, Licenses) Management and Enforcement
• Rep for Either Side of Publisher/Promoter/Distributor/Manager/Label Deals
• Collaborator Agreements and Talent/Image/Rights Releases
• PRO Relationships
• Song Placement
• Beat Leases
• NFTs


Enforcement and Defense

Enforcement and Defense

Identification, Analysis and Prevention of Threats

• Identification of Infringing Activities or Other Violations
• Analysis of Third-Party Claims Regarding Alleged Infringements or Violations

Enforcement

• Cease and Desist Demands
• Takedowns of Websites, Selling Pages, and Social Media Postings
• Federal Court Litigation Within District Courts, Courts of Appeal, and the Federal Circuit
• State Court Litigation Including Claims Related to Rights of Publicity and Other Violations of State Laws
• Representation in Administrative Forums Including the ITC, USPTO, PTAB, TTAB and CBP
• Prevention and Enforcement against Counterfeiting, Gray Mark Goods and Other Importations
• Alternative Dispute Resolution (ADR) Including Arbitration and Mediation
• Domain Name Disputes
• Enforcement of and Response to DMCA Takedown Notices
• Response to Third-Party Demands Including Cease and Desist, Takedowns, and Litigation
• Negotiation of Settlements, Acquisitions, Licensing Agreements, and Coexistence Agreements.


Start Ups and Formation

• Contracts
• Branding
• Product Development
• Securing Capital
• Employment
• Real Estate

Joint Development:

• Confidentiality
• Ownership
• Assignment
• Licensing
• Improvements
• Branding
• Quality Control


Mergers & Acquisitions, Due Diligence, Valuation

• Sale of IP Assets
• Purchase of IP Assets
• Ownership
• Improper Use
• Assignability
• Third Party Infringement Claims
• Trade secret
• customer lists
• marketing plans
• technological know-how
• Copyrighted materials
• marketing brochures and media
• website contents
• customer manuals
• Trademarks and brand names
• Software code and technology holdings
• Valuation


Alternative Fee Arrangements

We are proud to offer a variety of fee arrangement structures to better serve and fit our customer’s needs. Some of the most common types are listed below.

Traditional:

• Fixed Fees
• Capped Fees
• Blended Rates
• Discounted Services

Litigation:

• Traditional
• Contingent
• Litigation Financed


Locations We Serve

At Messner Reeves, we have a wide footprint. We pride ourselves in serving locations all over the United States, including Colorado (Denver, Greenwood Village, Colorado Springs); California (Orange County, Silicon Valley); Nevada (Las Vegas); Phoenix, AZ; and New York City. From Coast to Coast, we’ve got you covered in protecting your copyrights, trademarks, patents, and general intellectual property. With the Messner Reeves team on your side, you know your intellectual property rights are covered.

Learn More About Our Capabilities

We’ve built a team we are proud of.
Learn how we’ve grown over the past 30 years.

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Messner Reeves LLP
1550 Wewatta St. Suite 710
Denver, CO 80202
Phone: (303) 623-1800