Intellectual Property
ZAG/S&W intellectual property lawyers draw on their business judgment and legal insight to create cost-effective and innovative solutions to clients' intellectual property issues. We handle every aspect of intellectual property programs: conducting due diligence, acquiring and licensing of patents, trademarks and copyrights; initiating and maintaining extensive trademark and copyright registration programs, including defense and prosecution of opposition proceedings before the Trademark Trial and Appeal Board; and enforcing intellectual property rights worldwide against infringers, counterfeiters, dealers in gray market goods and cyber-squatters.
Practice Profile - Patents (PDF)
Practice Profile - Trademarks, Copyright & Licensing (PDF)
Trending Trademarks (Blog)
Representative Client Work
- Serve as outside intellectual property counsel for Bain & Company and other high profile companies
- Represented 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 Fortune 100 companies UBS and Manulife Financial
- Secured a favorable settlement for our client in a patent infringement lawsuit concerning temperature, time and tracking devices
- Represented a medical device company with the strategic development and prosecution of its patent portfolio related to breast biopsy and cryoablation devices
- Successfully represented a startup worldwide media conglomerate in enforcing its trademark rights against the world's leading nonfiction media company
- Obtained an injunction on behalf of renowned New York City restaurant in a trademark dispute against competitor seeking to open a restaurant in midtown Manhattan under a similar name
- Advised a subsidiary of a billion-dollar food conglomerate providing a wide variety of premium products throughout the United States, Europe and the Middle East, with respect to drafting and negotiation of various licensing and distribution deals for its product
- Represented GTECH, a leading gaming technology and services company, with respect to various copyright and rights clearance issues related to use of musical compositions on certain of its gaming machines, and assisted in drafting celebrity endorsement agreements, including a multi-year licensing agreement with the rock band Aerosmith and major motion picture studio brands
- Represented an electronic medical records company in the acquisition of various medical records technology and intellectual property assets
- Litigated and successfully settled patent infringement lawsuit brought on behalf of leading manufacturer of swimming pool cleaning chemicals
- Represent clients in connection with the licensing and distribution of content via Internet broadcasting, video and music on-demand and interactive television. Negotiated deals with companies in the United States and Europe such as Amazon Instant Video
- Act as general outside counsel for intellectual property matters on behalf of company launching a mobile application for hailing black cars in New York City
News
- May 23, 2013
Tips for IP Lawyers in Wake of Game-Changing Ruling
Massachusetts Lawyers Weekly - May 9, 2013
Sullivan & Worcester Adds M&A Tax Pro From Greenberg
Law360 - May 7, 2013
Sullivan & Worcester LLP Adds Leading Tax Lawyer in Boston
S&W Press Release - March 8, 2013
Tips For Defending Against Data Breach Class Actions
Law360 - February 18, 2013
Why President's Day Sales Don't Picture Ronald Reagan
American Public Media's "Marketplace" - October 2012
Legalized Poker in the United States?
Poker Pro - July 9, 2012
Et al. – News From Beyond the Border
Massachusetts Lawyers Weekly - March 2012
Design Protection Law Searches for the Right Pattern
IPRinfo - Winter 2012
Making Your Mark
Manhattan Chamber of Commerce's "Business Matters" - January 14, 2012
Mass. to Consider Online Lottery Sales
The Boston Globe - December 23, 2011
Challenges Await Brand Owners, ICANN, As ICANN Moves Forward With gTLD Program
Washington Internet Daily - August 17, 2011
Beware: Copyright Trolls Lurking in Cyberspace
Mass High Tech - April 29, 2011
Legal Briefs
Boston Business Journal - April 22, 2011
Sullivan & Worcester LLP is Advising Where Inc. in its Acquisition by eBay
S&W Press Release - March 29, 2011
New Top-Level Domain Names Worry Intellectual Property Industry
Washington Internet Daily - February 28, 2011
Needham Resident Parties with Aerosmith’s Steven Tyler
Needham Patch - February 18, 2011
Stephen Colbert vs. Arianna Huffington: What Their Spat is Really About
The Christian Science Monitor - January 7, 2011
Ginger Rogers Leads a Tricky Dance for Trademarks
Boston Business Journal - October 11, 2010
Lottery’s Future Looks Lackluster In Race For State Treasurer
Banker & Tradesman - October 5, 2010
Massachusetts Hopefuls Shun Privatization in Quest for Lottery Growth
GamblingCompliance - October 4, 2010
Facebook vs. Placebook
NECN - October 4, 2010
Fight is One for the ‘Books’
The Boston Globe - October 2, 2010
Local Firm in Trademark Fight Over ‘Placebook’
The Boston Herald - May 24, 2010
Decades-Old Trademark Precedent Still Puts Owners at Risk
Massachusetts Lawyers Weekly - February 1, 2010
Rhode Island’s Twin River Racino Looks For Online Rescue
GamblingCompliance - March 19, 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
Events
- May 29, 2013 (8:30 a.m. - 10:00 a.m.)
Commerce and Conversion: Turning Customers into Cash - January 28, 2013 (12:00 p.m. - 2:00 p.m.)
Social Media and Intellectual Property - The Good, Bad and Ugly - November 15, 2012
PluggedIn Ventures Breakfast Roundtable - October 23, 2012
Lawsuits Suck: Minimizing Risk in Behavioral Advertising and Social Marketing - October 23, 2012
PluggedIn Ventures Breakfast Roundtable - September 27, 2012
PluggedIn Ventures Breakfast Roundtable - May 9, 2012 (1:30 p.m. - 5:30 p.m.)
Distributing & Licensing Software & Other Technologies - May 1, 2012 (2:00 p.m. - 6:00 p.m.)
Best Practices for Generating, Investigating and Converting License Compliance Opportunities - June 20, 2011 (12:00-1:30 p.m.)
Insiders' Tips & Tricks for Trademark Administration - April 14, 2011
ABA Business Law Section Spring Meeting
Publications
- April 16, 2013
U.S. Court of Appeals Ruling Protects ISPs from Copyright Infringement
Client Advisory - March 13, 2013
Leahy-Smith America Invents Act
Client Advisory - January 7, 2013
Supreme Court Accepts Case Regarding the Reach of Monsanto’s Intellectual Property Rights to Second Generation Seeds
Client Advisory - November 12, 2012
District Court Says USPTO Miscalculates Patent Term Adjustment
Client Advisory - April 19, 2012
Second Circuit Muddies DMCA "Safe Harbor" Provisions
Client Advisory - March 26, 2012
Supreme Court Rejects Personalized Medicine Patent Claims as Unpatentable Laws of Nature
Client Advisory - March 7, 2012
Springing Back to Life: The Supreme Court in Golan v. Holder Upholds Statute that Applies Copyright to Foreign Works Once in the Public Domain
Client Advisory - January 5, 2012
Copyright in Classic Films Protects Famous Characters from Reach of Merchandisers
Client Advisory - October 20, 2011
Apple v. Psystar Underscores the Strength of Software License Agreements and the Limits of the Copyright Misuse Defense
Client Advisory - September 15, 2011
Keep Your Trademarks Out of the New Internet “Red Light” District
Client Advisory - June 29, 2011
Expanding Jurisdiction and Contracting Claims: The Supreme Court Declines to Review the Cassirer and Von Saher Cases
Client Advisory - June 27, 2011
Innocence is No Defense: Case Spotlights the Burden on the Owner
Client Advisory - April 5, 2011
Key Copyright Case Highlights Pitfalls of Appropriative Art
Client Advisory - August 2, 2010
Privacy & Data Security Law Developments: 2010 Mid-Year Update
Client Advisory - July 6, 2010
Bilski et al. v. Kappos
Client Advisory - December 29, 2009
Bad News for Technology Licensees? Sixth Circuit Rules that Internal Restructurings May Result in a Breach of IP Licenses
Client Advisory - December 9, 2009
First Circuit Finds Implied Duty to Develop and Promote Acquired Technology under Massachusetts Law
Client Advisory - October 28, 2009
U.S. and E.U. Court Decisions Uphold Internet Gambling Restrictions
Client Advisory - October 13, 2009
Federal Trade Commission Finds Disclosures in Sears' Click-Wrap License Agreements May be Deceptive Practice under Federal Trade Commission Act
Client Advisory - July 13, 2009
Federal Circuit Vacates Tafas Panel Ruling
Client Advisory - June 12, 2009
Facebook Username Functionality Creates Risk of Trademark Infringement
Client Advisory - March 4, 2009
Federal Court Affirms News Wire Services' Rights in "Hot News" under New York Law
Client Advisory - March 3, 2009
Application of Bilski Decision Raises Questions about Enforceability of Biotechnology Business Method Patents
Client Advisory
