A competitive edge is tied to marketing strategies and technology development. Organizations both public and private, from Fortune 500 to entrepreneurial start-ups, turn to Bodman for strategic counsel on the commercialization and protection of their ideas and other creative work product.
Our clients are innovative companies and individuals in the fields of computer science, social and business networking, biomedical engineering, advertising, entertainment, energy, education and research, museum studies, manufacturing, financial services, health care, construction, and professional sports. As part of the client team, our attorneys share that spirit of imagination and inventiveness. We deliver legal services that help clients achieve their goals.
We have clients in a wide variety of industries, including automotive, financial services, artificial intelligence (AI), consumer products and devices, military equipment suppliers, communications and media, publishing, computer software and hardware, medical technology, biotechnology, construction materials and operators, and general merchandising and manufacturing operations.
They also range in a variety of sizes and stages, from individuals and small companies at formation and startup stage to large, publicly traded corporations that are celebrating their centennial anniversaries. Our clients are also located throughout the United States and globally. To ensure that we are able to service all of their IP needs, we maintain strategic relationships with law firms worldwide.
Services
Bodman’s IP attorneys assist clients in national and international protection, licensing, and litigation of trademark, copyright, trade secret, right of publicity, and patent matters.
Patents
- Global patent portfolio strategy and management
- Preparation and prosecution of utility and design patent applications in the United States Patent & Trademark Office (USPTO), under the Patent Cooperation Treaty (PCT), and other countries and jurisdictions around the world
- Patent landscape searching and evaluations to identify protection opportunities, competitors, and potential infringers
- Patent reexaminations and reissues
- Appeals to the U.S. Patent Trial and Appeal Board (PTAB)
- Clearance evaluations including patent validity and non-infringement
- Analyze alternative protection opportunities and assist with trade secret protection measures
Trademark and Brands
- Brand selection
- Global trademark clearance and due diligence
- Trademark registration in the USPTO and internationally
- Brand management and portfolio management
- Counseling on trademark enforcement programs
- Oppositions and cancellations in the U.S. Trademark Trial and Appeal Board (TTAB)
- Uniform Dispute Resolution Policy (UDRP) actions
- Counterfeiting
- Advertising
- Trademark fair use
Copyright, Arts, and Entertainment
- Deeds of gift, purchasing, accessioning, de-accessioning, and licensing of collections
- Policies for public and commercial use of photographs of artifacts
- Artistic collaboration
- Architectural protections under the Visual Artists Rights Act
- Risk management of user-generated content; response to Digital Millennium Copyright Act take-down notices
- Publishing and development of new media
- Film and music production protection and licensing
- Disputes in the creative process, including infringement, libel and slander, defamation, plagiarism, fair use, and the protections of the First Amendment
Trade Secrets
- Comprehensive trade secret protection and counseling on matters involving complex technology
- Protection of data as trade secrets and licensing of proprietary data
- Data protection and records retention policies and agreements
- Complex business process outsourcing arrangements, including negotiations, drafting, implementation, and termination
- Insourcing of previously outsourced programs, including knowhow transfer and management of supply chain data and relationships
- Collection, storage, use, and distribution of employee and customer data
Licensing and IP Transactions
- Due diligence reviews of IP portfolios for M&A transactions and secured creditors
- Joint development agreements, licensing agreements, and other commercial and technology agreements
- Sponsored research agreements, co-development, and collaboration agreements with research institutions
- Tech transfer agreements from leading research institutions, including Duke University, The University of Michigan, Michigan State University, and Wayne State University
- Protection and licensing of the right of publicity
- Franchisee requirements and management
- Franchise compliance, contracts, and operations manuals
Representative Matters
- We represented a claimant in patent infringement litigation involving a revolutionary patented method of tooth extraction. After a ten day hearing, an arbitrator found the respondent guilty of willful infringement, entitling our client to treble damages, and awarded a permanent injunction against the respondent enjoining it from selling our client’s patented product.
- Bodman serves as national IP and contracts counsel to a major commercial bank. We handle all trademark and copyright issues and World Intellectual Property Organization (WIPO) actions for the bank, and negotiate more than 500 IP-related contracts annually.
- We serve as trademark and IP contract counsel to a major league sports franchise, negotiating all sponsorship agreements, video usage agreements, and the licensing of team intellectual property in connection with the merchandising of third-party products.
- We represented a publicly-traded software services provider in a trademark infringement suit against a similarly-named manufacturer of mailroom processing products. When the defendant announced an expansion of its business, we filed suit and sought a preliminary injunction. Within days, the defendant agreed to change its name and entered into a permanent injunction.
- We are representing a screenwriter as defendant in $300 million copyright infringement action involving a television show airing on a major broadcast network.
- Dozens of companies entrust Bodman with the management of their international trademark portfolios. For example, we represent a medical device manufacturer in trademark protection matters around the world, including overseeing cost-effective trademark clearance and protection strategies for the company’s portfolio of marks.
- Our client, a specialty pharmaceutical manufacturer, licensed cutting edge data relating to human gastrointestinal absorption to a firm that wrote new software incorporating our client’s data. When the software company unilaterally stopped paying our client royalties after 17 years, we created a legal framework challenging the assumptions of the software company and its Silicon Valley-based law firm. After a day-long negotiation, the software company agreed to a settlement in which it paid our client more that it had been paid in royalties over the past 17 years.
- Our attorneys represented a leading provider of information technology management services in negotiations with one of the largest telecommunications companies regarding an applications service provider arrangement. The negotiations uncovered a flaw in the vendor’s management of highly sensitive information.
- We represented a large financial institution in the negotiation of various outsourcing arrangements, including arrangements in the areas of procurement and sourcing, security, document management, human resources, loan origination and servicing, information technology support and services, managed print services, and facilities management.