Intellectual Property

Our attorneys help clients with a wide variety of copyright, publishing and entertainment law, including publishing agreements, content development agreements and licenses, copyright registration and enforcement, rights clearance and regulatory compliance.

We've negotiated, reviewed and drafted a multitude of agreements in the publishing and entertainment industries, including publishing contracts for traditional print books, digital works, websites and works distributed online. In addition, we've worked on agreements and licenses for the creation and distribution of a wide variety of other media, including television programs, films, videos and music. Our attorneys have negotiated agreements on behalf of our clients with major firms in the entertainment industry and some of the largest publishing companies in the United States and internationally.

Our attorneys routinely advise clients on a multitude of copyright issues, from rights clearance to "fair use" of copyrighted materials to the challenges of protecting their rights on the Internet. We have vetted client content for all third-party rights issues, including defamation, rights of publicity and privacy, and trademark and copyright issues. We also help our clients secure any permissions they might need for their publications and productions, including copyright permissions and publicity releases. Protecting our clients' rights through copyright registration and enforcement is always a main goal.

In an effort to provide resources to students regarding intellectual property law, we assisted in the development and implementation of a comprehensive copyright education and compliance program for a local technical college. We continue to participate in the ongoing education of the students and staff regarding acceptable use of copyrighted materials in an educational setting. We're also helping many clients comply with the Digital Millennium Copyright Act and stay current on issues affecting education and copyright.

When Litigation Arises

Our team has been involved in many of the most significant copyright cases litigated in Wisconsin and the Seventh Circuit.

Changes in technology that have outpaced changes in copyright law have created a highly nuanced area of law with significant ramifications for creators and businesses alike. Our team is experienced in both copyright law and complex litigation, making our firm well-positioned to handle cutting-edge copyright litigation and to confidently and efficiently advise our clients in this area.

Our copyright litigation experience includes architectural works, computer software, comic books, motion pictures, photography and more. The team is especially experienced in the areas of computer software and publishing and broadcasting, having worked with a substantial client base of software and media companies. This in-depth knowledge of the copyright industries, coupled with our expertise in substantive copyright law and our litigation skills, provides our clients a significant advantage in copyright infringement litigation.

E-Commerce

Emerging technologies have changed the way companies do business. To remain competitive, businesses must embrace and understand such changes. Our attorneys help clients take advantage of e-commerce opportunities and emerging information technology systems that propel clients' business objectives forward. We provide business counsel to companies that encounter challenges when conducting business electronically. Our experience includes:

Intellectual Property

• Securing trademark registration for domain names
• Arbitrating or negotiating domain name disputes
• Obtaining Internet-related business method patents
• Negotiating copyright licenses and publishing rights for website content
• Litigating online copyright infringements
• Securing electronic re-publication rights
• Preparing website development and hosting agreements

Marketing and Selling

• Advising on online contests
• Preparing business-to-business and business-to-consumer online sales terms and conditions and disclaimers
• Drafting consumer privacy policies
• Advising on compliance with Childrens' Online Privacy Protection Act
• Counseling on third-party linking, meta-tagging, framing, and e-mail spamming
• Structuring joint marketing and co-branding agreements

Industry-Specific Regulations, including tracking and advising on Internet-specific regulations for:

• Financial institutions/electronic banking services
• Insurance companies
• Health care institutions
• Investment management firms

Godfrey & Kahn is an active member of the University of Wisconsin E-Business Consortium, an association comprised of a number of Fortune 250 and midsize companies that are implementing cutting-edge e-business strategies aimed at increasing sales and productivity.

Information Technology

Our firm represents many information technology companies, including software companies, application service providers, internet service providers, hardware manufacturers, and database service providers. We negotiate contracts for hardware, software and telecommunications systems on behalf of many of our corporate clients, including large financial and health care institutions and insurance companies.

Our experience includes:

• Preparing software and hardware patent applications
• Seeking copyright protection for software
• Drafting software licenses and software and hardware distribution agreements
• Negotiating joint marketing agreements between software and hardware vendors
• Drafting software development outsourcing agreements
• Counseling on legal issues surrounding offshore software development and support contracting

We focus on each client's business objectives, whether they aim to protect intellectual property to attain or maintain industry leadership, establish exclusivity in a market niche, increase company value or desire other counsel. We guide our clients in recognizing protectable rights, formulating strategies to obtain, protect and commercialize their intellectual property, and enforce and defend their rights.

Mechanical Devices

Our clients include large manufacturers, startups, and individuals seeking to protect mechanical inventions. We have extensive experience with inventions spanning a range of possibilities. Our IP attorneys have prepared and prosecuted patent applications covering manufacturing systems, material handling and processing systems, fluid-based devices and systems, robotics, printing systems and equipment, molding systems and equipment, internal combustion engines, automotive parts and systems, ignition systems, charging systems, lawn mowers, power tools, appliances, dispensers, bicycles, sporting goods, toys, and printed articles.

Electrical and Computer-Related Technology

Electronics and computers are a rapidly expanding area of innovation that includes electrical, electronic- and computer-related inventions. Drawing on direct industry experience and knowledge, our IP attorneys have prepared and prosecuted patent applications covering communications systems and equipment, computer hardware and software, electro-mechanical control systems, robotics, ignition systems, charging systems, semiconductor devices, analog circuits, digital circuits, microprocessors circuits, hybrid components, oscillator circuits, memory and logic systems, power supplies and systems, power supply conditioning, and optical systems.

Biomedical and Medical Devices

The firm's IP services for biomedical and medical devices help our clients meet challenges that arise throughout an invention's life cycle. Biomedical devices, such as prosthetic implants, involve an understanding of both biological systems and operational mechanics. Our IP attorneys have experience with these types of cases including those involving medical imaging equipment, radiation treatment equipment, and patient monitoring systems.

International Protection

We provide our clients with the highest level of domestic and international IP protection by enforcing and defending their rights in patent offices and courts throughout the world and assist them in intellectual property strategic planning and portfolio management. We are experienced in both licensing and contract negotiation covering a broad range of mechanical, electrical, and biomedical systems and technology. With experience and substantive knowledge of current advances in engineering and science, we support our clients as they drive toward new frontiers of mechanical, electrical, and biomedical technology.

As a necessary extension to our United States patent practice, our firm has strong working relationships with an extensive international network of foreign associates, enabling patent applications to be filed and prosecuted efficiently throughout the world. We maintain large international patent portfolios for several of our clients.

Management & Development of IP Assets

We have extensive experience providing strategic advice on the development of patent portfolios and the exploitation of technologies through licensing. This includes negotiating and preparing sophisticated patent license agreements, as well as structuring, drafting, and negotiating agreements relating to product development, professional services, joint ventures, and strategic alliances for patents, software, and other technology-related products and services.

We counsel clients regarding the use, structure, management, transfer, and protection of technology and IP assets in a wide variety of corporate, venture capital, and M&A transactions.

When Litigation Arises

Our counsel regularly calls for the preparation of opinions regarding scope, validity, and enforceability of patents. Such opinions are regularly issued with respect to litigation risks, often discovered through acquisition-related due diligence investigations conducted by our team. Although our team reviews risks and suggests paths to avoid disputes, sometimes litigation is inevitable.

In the event our clients find it necessary to enforce a patent or defend against alleged infringement, we put together an experienced litigation team to vigorously represent our clients. The legal and technical experience of our firm ensures that our clients' unique litigation needs will be efficiently and competently met.

We have the experience to help you obtain and enforce your rights. We advise clients in a wide variety of matters ranging from trademark clearance searching to analysis of advertisements and entire campaigns to setting up promotional contests and sweepstakes.

We counsel clients on the selection of brand names and the design of non-infringing products. We have also created sophisticated protection schemes for advertising campaigns, product designs, and trade dress.

The selection, adoption, use, and enforcement of brand names can be time-consuming, expensive, and fraught with unseen risks. We have the experience to help you obtain and enforce your rights for new and existing brand names. We'll guide you through the trademark registration process and enforce your rights when competitors infringe upon those rights. We also have the knowledge and skill to negotiate sophisticated trademark license agreements whether you are licensing out your rights or licensing in rights from others.

When Litigation Arises

Our team has broad experience litigating trademark and related disputes, including infringement suits in federal courts, Lanham Act false advertising claims, proceedings before the Trademark Trial and Appeal Board, domain name disputes and arbitrations, as well as proceedings in the National Advertising Division of the Council for Better Business Bureaus. We have litigated critical brand disputes and enforcement actions to conclusion but recognize the value of a negotiated solution and have achieved numerous creative settlements of complex disputes. Our experience also includes significant work involving rights of publicity and privacy, often in connection with our Media and First Amendment teams.

Our trademark and Lanham Act clients include national and international sporting goods companies, retailers, manufacturers of household goods, food companies, restaurants, insurance companies, professional service providers, and many of Wisconsin’s most recognized brand owners. Our work has spanned from disputes concerning national ad campaigns to brand conflicts between competitors and licensees. In each case, we bring to bear our deep knowledge of substantive trademark law and our expertise in successfully managing complex litigation with a practical, results-oriented approach.