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Technology, Intellectual Property and Advertising

Our Practice

A company's unique intellectual properties are its most valuable – and potentially vulnerable – assets. Pedersen lawyers have extensive experience in identifying, developing, protecting, and defending our clients' intellectual property and technology assets.

We advise entrepreneurs, technology start-ups, and established middle-market manufacturing and service companies on a full spectrum of technology and intellectual property issues. Our clients include an industrial spray nozzle manufacturer and an online continuing education provider, musicians and locomotive manufacturers, a manufacturer of nuclear and plasma generators and a diet book author. All of our diverse clients share an overriding goal: to protect their varied intellectual properties.

Pedersen provides up-to-date counsel to both providers and customers of information technology, or IT, infrastructure services. We regularly advise medical, financial, and insurance industry clients on data security, content protection, and privacy issues in their highly regulated industries. We are experienced in protection issues involving the emergent area of cloud computing, or the delivery of software and other computing resources as a service.

Software industry clients benefit from our knowledge and experience. We regularly negotiate complex licensing, support, and maintenance agreements for software providers, such as system integrator services agreements, custom software licenses, and software or source code escrow arrangements. We protect and defend our clients' software properties against copyright and trademark infringement.

Our team has extensive experience in structuring intellectual property licensing and joint development agreements for industrial manufacturing and technology clients. We meet clients' needs with customized hardware and software licenses, joint development agreements with exclusive supply and support arrangements, consulting and engineering services arrangements, and distribution agreements. Our litigators have a solid track record in efficiently and effectively resolving disputes regarding any of these licenses or agreements.

E-commerce ventures are a core focus of our practice. For our e-commerce clients, we provide a full suite of services related to the hosting, development, and maintenance of e-commerce sites. We handle everything from the co-branding of websites and turnkey shopping cart agreements to website operation and fulfillment agreements. Our team also regularly negotiates subscription agreements between e-commerce enterprise clients and content service providers and networks. We secure and protect domain names and advise our clients on compliance with state and federal privacy laws and regulations. We help our e-commerce clients negotiate the shifting landscape of state tax, liability and jurisdictional issues, such as the affect of affiliate marketing on state tax liabilities. Pedersen litigators advocate aggressively on behalf of clients confronting cyber squatting and other e-commerce disputes.

We represent clients engaged in a variety of creative and innovative endeavors – from architecture and advertising, to music, furniture design, and the visual arts –seeking to protect their intellectual property assets with trademarks, copyrights, trade names, and service marks. We negotiate publishing and royalty agreements for musicians and authors and vigilantly protect copyrighted creative works against infringers. We further protect and defend client interests by litigating disputes involving trademark, copyright, and trade secret infringement, licensing, fair use, and First Amendment issues in arbitration proceedings as well as in state and federal forums.

Our technology and intellectual property lawyers provide advertising agency clients with a broad array of services – from negotiating and drafting agency-client, celebrity talent, event promotion, and licensing arrangements to structuring media and demographic research purchase agreements, from intellectual property protections to advertising copy clearance. We advise agency clients on relevant regulatory compliance and governance. We draw on our deep experience with unfair competition, truth-in-advertising, and related antitrust and First Amendment issues to formulate and defend effective agreements for our clients.

We regularly represent technology and telecommunication industry clients involved in the transfer and securitization of intellectual property in venture capital, merger, acquisition, or divestiture transactions.

Pedersen's Technology, Intellectual Property and Advertising practice offers all of our clients comprehensive legal services that include intellectual property agreements related to website maintenance and support, software licensing, branding and marketing, and trademark licensing. We regularly prosecute client trademark, service mark, and copyright registrations. Our team represents clients before the Trademark Trial and Appeal Board in both opposition and cancellation proceedings for trademarks.

Our technology clients include: developers of iPhone apps, industrial control software, mass text messaging distribution and response software, and energy smart grid software. We represent manufacturers of refrigeration systems, surgical and orthopedic devices, houseware, furniture, nuclear and plasma generators, locomotives, industrial spray nozzles, semiconductors, greeting cards, magnetic steel laminations, and electrical components and cables. Other clients include: wine distributors, trade journal publishers, art galleries, financial services companies, a radio show, bars and restaurants, a specialty goods printer, furniture designers, charities, venture capital funds, real estate developers, advertising agencies, grocery stores, interior designers, business consultants, auto dealerships, clothing designers, authors, personalized goods provider, cable television providers, beverage companies, driver's education chain, preschool chain, medical certification and education company, developer of lighter-than-air transportation, musicians, on-line continuing education provider, and artists.

Our Experience

  • Negotiated joint development, exclusive supply and service arrangement for mold inhibitor system for use in mass-market bakeries on behalf of the leading international developer of industrial spray nozzles.
  • Pursued intellectual property infringers in China and Germany on behalf of American semiconductor manufacturer.
  • Negotiated joint development agreement for hybrid and electrical vehicle components on behalf of leading magnetic steel lamination manufacturer.
  • Enforced a specialty paper and greeting card manufacturer's copyrighted designs against infringers making derivative works.
  • Negotiated A-list talent agreements on behalf of the advertising agency producing a national multi-channel marketing campaign for a leading American brewery.
  • Drafted and negotiated licenses and joint software development agreements for the creation of the first in-cab software system providing truck drivers with regulatory and safety guidelines for the transportation of hazardous materials.
  • Negotiated an advantageous agreement governing our web-based client's operation and fulfillment of orders of personalized products placed with one of the nation's leading big box online retail stores.
  • Negotiated enterprise subscription agreement on behalf of provider of on-line training resources for insurance and financial planning professionals.
  • Enforced software developers' copyrights and license agreements against customer who disassembled program without authorization.
  • Represented a manufacturer and its employees against a competitor who claimed eight figures in compensatory and punitive damages for misappropriation of trade secrets and breach of contract relating to confidentiality. After a five-week trial involving 24 witnesses and thousands of designated exhibits, the jury returned a verdict in favor of our clients on all counts.