Intellectual Property

Our experienced intellectual property attorneys provide expert counsel to our clients on the proper protection, use, licensing, and enforcement of their proprietary rights.

Donahue Fitzgerald combines expertise and passion to provide the best service to our clients in all areas of intellectual property (IP), including trademark, copyright, and patent protection. We specialize in licensing and legal services unique to the entertainment industry. Our clients include cutting edge technology companies, retail manufacturers, publishers, programmers, designers, photographers, graphic artists and illustrators, musicians, and authors. Our IP group is fully integrated into our firm’s other practice areas. As a result, we are highly effective at recognizing and protecting our clients’ complex business interests as well as their legal interests. We understand that for an increasing number of businesses IP is your single most valuable asset, and we treat it that way.

We have particular expertise in the following areas:

Licensing

A core component of Donahue Fitzgerald’s work is helping our clients identify and fully realize the value of their intellectual property. We have extensive experience drafting and negotiating license arrangements of all kinds in connection with software, video games, music, merchandise, technology and cloud-based services, visual works, rights of publicity, and other intellectual property assets. We also understand the different interests within the chain of distribution, and have experience viewing licensing through the eyes of creators and inventors, manufacturers, distributors, resellers, independent contractors, and end-users. We prepare and negotiate agreements involving the purchase and sale of intellectual property assets and counsel our clients concerning the risks associated with acquiring third-party intellectual property assets and clearing title to those assets.

Trademark and Copyright Registrations

Donahue Fitzgerald attorneys assist clients with the selection, registration, use, licensing and enforcement of their trademarks, service marks, and copyrights. We conduct domestic and international trademark searches and maintain programs on behalf of many clients, including overseeing the protection of some of the most famous trademarks in the world, and maintain registrations in over 60 countries. We have extensive experience in registering copyrights through the U.S. Copyright Office, prosecuting trademark applications filed with the U.S. Patent and Trademark Office, representing clients in disputes before the Trademark Trial and Appeal Board, and working with foreign trademark counsel to secure trademark registrations overseas.

Articles: Copyright Registration: The Best Remedy For Infringement; Maximizing Copyright Protection at Minimal Cost – Why Foreign Companies Should Register with the U.S. Copyright Office

Music and Entertainment

For over twenty years, Donahue Fitzgerald has represented some of the world’s most prominent artists and their heirs. Please visit our Music and Entertainment page or contact Daniel J. Schacht for more information.

Franchising

Donahue Fitzgerald has one of the leading franchise practices in California. Please visit our Franchise page or contact Dawn Newton for more information.

Trade Secrets

Whether your business’ trade secrets are customer lists, internal pricing algorithms, R&D innovations, formulae, or secret recipes, their development often represents an enormous investment of time and money, and a competitive advantage in your market niche. Donahue Fitzgerald’s attorneys have been aggressively protecting client trade secrets for decades, and defend our clients when a competitor’s claim of trade secrets goes too far. We advise on non-disclosure agreements, business non-competition agreements and related protections, and are experts at obtaining temporary restraining orders when the leak of a valuable secret threatens your business’ future. In connection with our Employment group, we also enforce protection of trade secrets against rogue employees and help our clients draft realistic and enforceable employment terms governing employee inventions, discoveries and research.

Intellectual Property Enforcement

Donahue Fitzgerald was an early pioneer in the enforcement of software copyrights and now has 25 years of experience in the field. We have handled more than 15,000 license compliance investigations and recovered over $225 million in direct sales and penalties for our clients. As software licensing models evolve, so do we. Our practice now includes active search and removal of infringing content on the internet, including through DMCA takedown procedures. For patents, copyrights, trademarks, and rights of publicity, we provide active in-house monitoring services to locate infringing products and expediently and cost-effectively remove them from the market.

Donahue Fitzgerald’s Domain Name Enforcement Program monitors existing and new domain name registrations for domains that infringe our clients’ trademarks. We use all tools available to us in the most cost-efficient way, including the Trademark Clearinghouse for gTLDs, Uniform Rapid Suspension (“URS”), and Uniform Domain-Name Dispute-Resolution Policy (“UDRP”). When necessary, we bring lawsuits and injunctive relief to protect our clients against software piracy, cybersquatting, trademark infringement and counterfeiting, patent infringement, unfair competition, and other civil wrongs.

Litigation

Donahue Fitzgerald is a recognized leader in intellectual property litigation. Prelitigation settlement is the most common and usually the best solution for our clients. When that fails, we litigate vigorously and cost-effectively, whether in copyright, trademark, trade dress, trade secret, patent or unfair competition matters.

Representative Cases

  • Good Morning to You Productions Corp. et al. v. Warner/Chappell Music, Inc., CV 13-04460-GHK, U.S. District Court, Central District of California, 2015, (co-counsel, “Happy Birthday” class action lawsuit described by the New York Times as “a lawsuit for the ages”)
  • Autodesk, Inc. v. RK Mace Engineering, Inc., Case No. 603382, U.S. District Court, Northern District of California, 2004, (lead counsel, jurisdictional effects test for copyright infringement)
  • Adobe Systems, Inc. v. Kornrumpf, Case No. 12-16616, U.S. Court of Appeals, 9th Circuit, 2014, (oral argument assistance, software copyright and the first sale doctrine case)
  • Vernor v. Autodesk, Inc., Case No. 621 F.3d 1102, U.S. Court of Appeals, 9th Circuit, 2010, (co-counsel, software copyright and first sale doctrine case)
  • Symantec Corp. v. CD Micro, Inc., Case No. 286 F.Supp.2d 1265 and 286 F. Supp. 2d 1278, U.S. District Court, District Oregon, 2011, (lead counsel, $10 million treble damage award for trademark counterfeiting and copyright infringement, with officer’s personal liability)
  • PhoneDog v. Kravitz, Case No. 11-03474, U.S. District Court, Northern District of California, 2013, (Lead counsel, oft-cited trade secret case regarding Twitter accounts)

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