Kimberly B. Herman is a partner in the Corporate Department of our Boston office and leader of the firm’s Intellectual Property Group. Kim’s practice spans the United States, Europe and the Middle East and emphasizes the law and business of intellectual property. In particular, her practice focuses on structuring and negotiating complex commercial transactions dealing with media and entertainment (including representation of clients in the news, documentary, motion picture and cable network industries), First Amendment and privacy issues, gaming, sanctioned gambling and e-sports, software, music and art on behalf of leading media, entertainment, technology and consumer-products companies, as well as filmmakers, project financiers, artists, museums and art galleries. This representation extends to Kim assisting her clients in exploiting their brands, content and programming into different markets and entertainment distribution platforms through a variety of licensing, merchandising, publishing, sponsorship, agency and endorsement deals.
Kim conducts audits and provides strategic counseling to assist clients in identifying, protecting and exploiting key intellectual property assets and represents clients in a wide variety of trademark and copyright enforcement and defense matters. In addition, she advises clients in responding to claims of infringement of adversely held trademarks and copyrights, prepares and responds to cease and desist letters regarding the same, and provides advice on litigation, litigation settlements and mediation.
Kim was recently ranked in World Trademark Review 1000, The World’s Leading Trademark Professionals. She was described as “incredibly responsive” and “always looking out for your company’s interest.” 2018 marks the fourth consecutive year Kim has been named.
Kim successfully represented the estate of a world-renowned Israeli artist Menashe Kadishman in a copyright infringement dispute against a global television network for its unauthorized use of the artist’s magnum opus Shalekhet (Fallen Leaves) in the network’s wildly popular television series. She also represents street artists in connection with misappropriation of their works by big businesses, including evaluation of whether the Visual Artists Rights Act may offer protection. She also recently settled a copyright dispute against NBCUniversal for its use of her client’s recognized street art in a popular television series.
Kim represents a number of well-known film directors, including Oscar winner Errol Morris, with respect to film copyright clearance and title matters. In addition, she represents investors and filmmakers in connection with the adaptation of books into feature films.
Kim represents the media and publishing interests of Lynn Roy, the mother of Conrad Roy III, whose former girlfriend was convicted by the Massachusetts Supreme Judicial Court in connection with her role in the texting-suicide of Conrad.
Kim is a guest speaker at Northeastern University in Boston, where she speaks on developments in intellectual property law, copyright, fair use and First Amendment issues. She completed the courses “Museums and the Law;” “Museum Exhibition Content Development;” “History of Museums;” and “Collections Management: Issues and Solutions” at Harvard University.
Kim’s copyright enforcement activities also extend to representing a billion dollar multi-national software company Dassault Systèmes in connection with its software anti-piracy and software compliance initiatives in North America.
Kim represented Vice Media in its first-ever production of a TV game show for UKTV called Beat the Internet. The show is a comedy quiz show where contestants try to finish sentences based on some of the internet’s most popular search terms, with the host ably assisted by fact-master Sunil Patel.
Kim recently represented Challengeme Esports GmbH (CME), a provider of one of the most sophisticated eSport matchmaking and tournament platforms, in its acquisition of US-based platform provider, eSports Hero Inc., and also advised CME in connection with a strategic investment in the company by eSports Mogul (ESM), an ASX-listed eSports media company, as well as a multi-year licensing agreement with ESM for the Asia-Pacific region.
Representative Client Work
Entertainment and Copyright Matters
- Provides counsel to media and other content publishers in the areas of trademark, copyright clearance and fair use, and frequently conducts pre-publication and pre-broadcast content reviews for television, cable and Internet networks. Kim regularly conducts pre-publication reviews of content on the following platforms: Facebook, Instagram, Snapchat, Twitter, YouTube and others.
- Provides advice to magazine publishing companies, television networks and content publishers 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.
- Regularly provides advice and counseling to entertainment and media clients, including television and film production companies; film and television producers; on-air talent; as well as investors, developers and licensees of film, television, music and Internet content.
- Drafts and negotiates music licensing agreements, talent agreements, event production agreements, including live event contracts, life story rights agreements and other entertainment-related contracts.
- Advises multimedia companies in drafting and negotiating production and distribution agreements, syndication agreements, insertion orders as well as sponsorships and endorsement agreements relating to both traditional and online distribution of content.
- Represents companies in the United States and Europe including independent production companies with the licensing and distribution of content via Internet broadcasting, streaming video, music on-demand and interactive television, including VOD. Also negotiates manager, performer and producer agreements for film and video projects.
Gaming and Online Activities
- Provides advice relating to compliance with the ever-changing state and federal laws in the United States regarding Internet gaming including the representation of a billion-dollar multi-national gaming and lottery services company in connection with its licensed content deals.
- Represents 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 electronic devices.
- Assists clients in developing, implementing and administering all aspects of promotions, including auctions, contests, and sweepstakes. Drafts promotion rules to protect clients’ interests and reviews advertisements such as direct mail, websites and banner advertisements related to promotions.
- Represents clients in the development and commercialization of mobile apps through Facebook, Apple, Google Play and other social media sites.
- Represents consumer products companies in connection with credit card processing activities and gift card initiatives related to the sale of goods online and through mobile apps.
- Reviews advertisements and advises on unfair and deceptive trade practices. Counsels clients on compliance issues relating to the Federal Trade Commission as well as state and other regulatory laws.
Software and Hardware Deals
- Represents software clients in the United States and around the world in connection with the drafting and negotiation of a wide array of commercial contracts including Tier 1 customer agreements, VAR/OEM/distributor agreements, master services agreements, subcontract agreements, alliance partner agreements, offshore IT and development outsourcing agreements, hosting agreements and data access agreements with companies such as The Home Depot, Inc., The Neiman Marcus Group, , Tiffany and Company, Visa International Service, ExxonMobil Global Services Company, Fujitsu America, Inc., PayPal, Inc., Supervalu, Inc., IBM, Hewlett Packard Company, 7-Eleven, Inc., Best Buy Purchasing LLC, Target Corporation and Walgreen Co.
- Handles the negotiation of numerous multi-million dollar software deals for clients involving complex agreements for technology and emerging company vendors including license and technology-transfer agreements, distribution, manufacturing, co-packing, supply, development and joint venture agreements.
- Advises business development executives on strategies for commercializing software products and establishing national and international distribution. Strategies include inbound and outbound licensing, sales representative programs and the use of OEMS, resellers and strategic partners.
- Establishes strategic alliances and partnerships for the development of new software and hardware products and expansion of existing product lines. Drafts and reviews proposals, evaluates potential partners in conjunction with clients and assists clients in selecting the best partners to achieve their goals.
- 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 a billion dollar multi-national gaming and lottery services company in connection with a wide array of software, hardware and distribution deals.
Trademark and Domain Names Matters
- Manages worldwide trademark portfolios of several internationally known brands.
- Manages the worldwide trademark portfolios of A.T. Cross, Bain & Company and Vice Media, among others, including in connection with defensive and offensive enforcement proceedings in the United States and abroad.
- Routinely engaging in cease and desist campaigns for a global youth media company that includes print, event, music, online, television, and feature film divisions that operate in more than 30 countries, in connection with enforcement of its trademarks, and routinely filing oppositions in support of such campaigns.
- Represents companies in connection with the preparation and negotiation of trademark and brand licensing agreements as well as product development agreements.
- Handles numerous Internet-related transactions including domain name acquisition and litigation (including UDRP proceedings); online contests and agreements involving co-branding; joint site development; website hosting; website development; content licensing and development; and copyright litigation and advice with emphasis on the application of the Digital Millennium Copyright Act.
Life Sciences and Healthcare Matters
- 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, clinical trial agreements, contract manufacturing 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 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 in the U.S. District Court for the Eastern District of Tennessee. Successfully negotiated a $10 million settlement.
Mergers & Acquisitions
- Represented Challengeme Esports GmbH (CME), a provider of one of the most sophisticated eSport matchmaking and tournament platforms, in its acquisition of US-based platform provider, eSports Hero Inc.; also advised CME in connection with a strategic investment in the company by eSports Mogul (ESM), an ASX-listed eSports media company, as well as a multi-year licensing agreement with ESM for the Asia-Pacific region.
- Represented PayPal Media Network in its acquisition by PayPal, a division of eBay, Inc.
- Manages intellectual property diligence for clients’ acquisition and divestiture activities as well as financings and credit facilities.