ZAG/S&W LLP -> Bio -> Kimberly B. Herman

Kimberly B. Herman, a partner in the Corporate and Intellectual Property Departments, is the leader of the Trademarks, Copyright & Licensing Group and a co-leader of the Intellectual Property Group, in the Boston office. Ms. Herman's practice spans the United States, Europe and the Middle East and emphasizes the law and business of intellectual property with a particular focus on structuring and negotiating complex commercial transactions dealing with software, gaming, music and entertainment-based products; new media, the Internet, and publishing; and life sciences, including biotechnology, pharmaceuticals, and health care on behalf of leading high-technology and consumer-products companies.

Represents clients in the acquisition of licensing rights and the exploitation of those rights. Routinely prepares and negotiates agreements for technology vendors including license and technology-transfer agreements, distribution, manufacturing, co-packing, supply, development, OEM, VAR and joint venture agreements.

Represents emerging-growth companies including several venture-backed software vendors in connection with the preparation and negotiation of complicated and multi-tiered software license agreements with their customers including many Fortune 100 companies such as UBS, HP and EMC.

Advises clients as to the benefits and drawbacks of using open-source software. Conducts open-source compliance audits and establishes-open source use policies and procedures.

Represents well-known consumer-products companies in connection with in and out licensing of famous brands such as Crayola, The Three Stooges, American Idol and Aerosmith.

Routinely prepares and negotiates agreements for technology and gaming vendors with companies, such as The Walt Disney Company, Fremantle Media North America, Inc., C3 Entertainment, Inc., Nestle S.A., MGM Consumer Products and Harrah�s License Company, LLC.

Advises multimedia companies in drafting and negotiating production and distribution agreements, as well as sponsorships and endorsement agreements relating to both traditional and online distribution of content.

Handles numerous Internet-related transactions including domain name acquisition and litigation (including UDRP proceedings); online contests, agreements involving co-branding; joint site development; Web site hosting; Web site development; content licensing and development; and copyright litigation and advice with emphasis on the application of the Digital Millennium Copyright Act.

Provides advice to magazine publishing companies on editorial issues, privacy and publicity rights, defamation, fair use and other potential litigation matters. Advises clients on content and manner of advertising in print and on product packaging to assess risks and avoid litigation.

Routinely advises clients in responding to claims of infringement of adversely held trademarks and copyrights and prepares and responds to cease and desist letters regarding same. Provides advice on litigation settlements involving licensing.

Represents a well-known author of etiquette publications in connection with exploitation of author�s rights in mass media. Negotiates and drafts podcast, webisode and blog agreements. Negotiated writer/performer agreement for author with NBC Universal Television Studio Digital Development LLC.

Conducts audits and provides strategic counseling to assist clients in identifying, protecting and exploiting key intellectual property assets.

Manages all aspects of the firm�s trademark and copyright practice, focusing on strategic portfolio development, protection and enforcement.

Represents companies in the biotechnology, pharmaceutical and medical device industries with a particular focus on structuring and negotiating complex licensing agreements including, but not limited to, joint venture agreements and strategic alliances.

Represented an Israeli company developing a blood test to diagnose early-stage lung cancer in connection with the negotiation and drafting of a joint research and development agreement focused on the development and commercialization of protein biomarker-based diagnostics.

Represented a company dedicated to the design, development, manufacturing and marketing of products for the surgical treatment of spinal disorders in negotiating an exclusive worldwide license with the Cleveland Clinic for an innovative robotic-assisted, percutaneous, interbody spinal fusion technology.

Represented a company in negotiating an exclusive license with Xenova, Ltd., a U.K.-based biopharmaceutical company focused on the development of novel drugs to treat cancer.

Represented a multinational life sciences company in a misappropriation of trade secrets case under the �inevitable disclosure� doctrine in connection with the unauthorized disclosure of trade secret information obtained during licensing negotiations.

Advised a developer of neonatal and prenatal screening software in a dispute with former employee concerning ownership of intellectual property, including source code.

Represented a major manufacturer of spectroscopy-detection equipment in a patent infringement action seeking $130 million in damages in the U.S. District Court for the Eastern District of Tennessee. Successfully negotiated a $10 million dollar settlement.

"Decades-Old Trademark Precedent Still Puts Owners at Risk," Massachusetts Lawyers Weekly (May 24, 2010)

"Facebook Username Functionality Creates Risk of Trademark Infringement," Client Advisory (June 12, 2009)

"Why Hasn�t Nanotechnology So Far Lived Up To The Hype," ACC Israel Chapter Newsletter (March 2009)

"Freedom to Operate (FTO) Opinions: Look Before You Leap," The Journal of BioLaw & Business (March 2009)

"The Nano-Bio Convergence and New Regulatory Challenges," The Journal of BioLaw & Business (March 2009)

"Application of Bilski Decision Raises Questions about Enforceability of Biotechnology Business Method Patents," Client Advisory (March 3, 2009)

"Nanotechnology - Key Legal Issues and Risks in 21st Century Technology, " Massachusetts Continuing Legal Education, Inc. (MCLE) Program (January 26, 2009)

"Licensing 101: Get It Done Right from the Start," Mass High Tech (October 2008)

"The Growing Use of Open Source Software in the Telecommunications Industry: Benefits & Risks,"Client Advisory (July 28, 2008)

"The Viability of Open Source Biotechnology," The Journal of BIOLaw & Business (June 2008)

"Recent Decision Undercuts Software License Restrictions," Client Advisory (June 12, 2008)

"Verizon GPL Settlement Highlights Necessity of Open Source Compliance," Client Advisory (March 25, 2008)

"Google Settles Trademark Case Involving AdWords Program; Faces New Suit by American Airlines," S&W Client Advisory (October 16, 2007)

"District Court Issues Interpretation of Open Source "Artistic License"; First U.S. Lawsuit Filed to Enforce GPL," Client Advisory (October 15, 2007)

"New Patent Rules Significantly Alter U.S. Patent Prosecution Practice", Client Advisory (October 4, 2007)

"Open Source Software GPLv2 vs. GPLv3," S&W Client Advisory (August 14, 2007)

"Is Open Source a Trap for Commercial Software Vendors?," Mass High Tech (April 5, 2004)

"Enforcing Licensing of Downloaded Software Creates Challenges for Companies," Mass High Tech (October 9, 2001)

".biz Address Absorbs Lawyers, Not Marketers," Boston Business Journal (August 17-23, 2001)

"Acquisition of IP Assets Requires Due Diligence Process," Mass High Tech (July 9, 2001)

"Software Licensing Pitfalls," Intellectual Property Group Update, Sullivan & Worcester LLP, Boston (May 10, 2010)

Panelist, Advanced Software Licensing Program, Massachusetts Continuing Legal Education (February 2010)

"Life Sciences & Public Health: Contemporary Issues & Challenges," Harvard School of Public Health (May 2009)

"Introducing and Growing Medical Technologies: Pitfalls and Opportunities," Boston MedTech Advisors (February 2009)

"Nanotechnology - Cutting Edge Issues: Key Legal Issues and Risks in 21st Century Technology," Massachusetts Continuing Legal Education (January 2009)

Frequent lecturer on intellectual property and licensing matters, Boston University School of Law

Faculty member, MCLE's annual New England Intellectual Property Law Conference

Frequent speaker on technology licensing, trademarks, domain name issues and other intellectual property matters to organizations such as Massachusetts Continuing Legal Education

"Parody" Massachusetts Continuing Legal Education Intellectual Property Conference, Boston, Massachusetts (June 2002)

"Bankruptcy and the Intellectual Property License: A Licensee's Perspective," Massachusetts Continuing Legal Education Intellectual Property Conference, Boston, Massachusetts (June 2001)

"Life after ICANN and the Anticybersquatting Act: Defining 'Bad Faith' in Cyberspace," Massachusetts Continuing Legal Education Intellectual Property Conference, Boston, Massachusetts (June 2000)