Intellectual Property Transactions

Paul, Weiss recognizes that almost every corporate deal encompasses intellectual property. Our Intellectual Property Transactional Practice Group was one of the first to structure itself around deal-savvy corporate generalists with specific knowledge in all areas of the law involving intellectual property assets.  This unique combination of transaction savvy and an understanding of the subtleties of intellectual property as a legal discipline means that we can address any client’s intellectual property needs and help explore opportunities and invent strategies across many transactions and intellectual property asset classes.

Jump to:  Why Paul, Weiss? | Our Practice | Clients | Industries | Recognitions | Representative Engagements

Why Paul, Weiss?

Our intellectual property practitioners are deal lawyers who specialize in intellectual property issues. We are versatile, experienced transactional lawyers who understand the interplay of business objectives, practical pressures and timing; we understand how intellectual property asset issues fit into the overall structure of a deal. Through our broad corporate experience we have seen every kind of deal and know how to help our clients avoid the pitfalls and take advantage of the opportunities that accompany intellectual property issues. We also assist our clients in every stage of the transaction, from negotiating a transition services agreement to assisting with post-acquisition integration.  Our Intellectual Property Transactional Practice Group regularly represents multinationals as well as U.S.-based companies in cross-border mergers, securitizations and divestitures.

Along with our exceptional deal experience, we offer boutique service for purely intellectual property-related issues. Our close partnership with the firm’s Entertainment Department provides clients an edge in deals involving soft intellectual property assets such as film, TV, music publishing and recorded music catalogs as well as intellectual property issues faced by individual artists. Our technology expertise is also particularly important to our clients as technology assets become more and more intertwined in the fundamental value of the company.

Our clients rely on Paul, Weiss for the protection, maintenance and exploitation of their intellectual property assets. We represent clients in all manner of licensing, portfolio acquisitions and divestitures, and whole company deals encompassing trademark, copyright, e-commerce and internet law, false advertising and every type of entertainment content and technology imaginable. We provide counsel to our clients in relation to IP audits, licenses and due diligence in addition to general corporate support in protecting their portfolios of intellectual property assets.

Our Practice

We tackle evolving intellectual property issues within transactions and also in response to strategic questions regarding the protection or exploitation of important intangible assets. Our practice involves all types of intellectual property, copyrights, trademarks, patents, Internet law, rights of publicity, trade secrets and privacy and spans the full range of intellectual property issues that arise in transactional settings:

Brand licensing Content licensing Counseling Due diligence Intellectual property audits

Patent licensing Portfolio acquisitions and divestitures Software licensing and development Sponsorship arrangements Trademark prosecution

» Top

Our Clients

The scope of our clientele runs the gamut from Fortune 500 companies to celebrity-brand entrepreneurs. We have offered legal counsel on the acquisition, ownership and possible exploitation of intellectual properties; clients have included:

Citigroup Danone Discovery Communications Doosan Ericsson General Atlantic Iconix Ina Garten Intermedia Partners Liz Claiborne Marc Ecko Marchon Eyewear Marvel Entertainment

Polo Ralph Lauren  Sony Sumitomo Metal Industries The U.S. Department of Energy The Weinstein Company Theory Time Warner Toshiba Vera Wang Viacom Warner Music Weight Watchers Zagat Survey

» Top

Industries

We have represented private and public companies as well as individuals across a wide range of industries, including:

• Investment and commercial banking
• Media and entertainment
• Retail and apparel
• Technology and telecommunications

Recognitions

Our practice is frequently recognized for its intellectual property work. Recent acknowledgements have included:

Chambers USA and Legal 500:
Practitioner noted for media and entertainment-related intellectual property work. (2007, 2010 and 2011)

» Top

Representative Engagements

Paul, Weiss lawyers have represented some of the world’s largest corporations in the most notable intellectual property transactions and controversies of recent times. Matter engagements have included:

Citigroup in connection with various intellectual property and licensing matters.

Discovery Communications in connection with a long-term 50/50 joint venture with Oprah Winfrey and her Harpo subsidiary to launch OWN: The Oprah Winfrey Network and in connection with a joint venture with Hasbro that will operate a children’s television network featuring some of Hasbro’s iconic trademarks.

Iconix Brand Group’s definitive agreement to acquire a controlling interest in the Ecko portfolio of brands from our client Marc Ecko, which represents more than $1 billion of annual global retail sales.

Liz Claiborne in connection with an exclusive license to J.C. Penney for use of the Liz Claiborne and related trademarks.

Marvel Entertainment in connection with theme park and film licenses.

Sony in connection with various technology and intellectual property agreements.

Theory in day-to-day licensing activities and in the acquisition of the “Jean-Michel Cazabat” trademark and the formation of a joint venture with the French shoe designer; and the acquisition of the Helmut Lang trademarks and certain related worldwide intellectual property rights and business archives from the Prada Group.

The Weinstein Company and Hilco Consumer Capital in connection with the acquisition of the Halston fashion brand.