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The depth and breadth of our global, multidisciplinary copyright and trademark counseling and prosecution practice parallel the depth and diversity of our client base. Our lawyers are not only experts in copyright, trademark, and Internet laws, but we also know and understand a diverse range of businesses and industries. Thus, we are not only well-positioned to assist with immediate legal needs, but our experience allows us to be strategic business advisors to our clients.
We offer comprehensive copyright advice in counseling, legislative, and prosecution matters, and have unusual depth and experience in internet anti-piracy and DMCA liability issues, which allows us to advise copyright holders on their broader anti-piracy programs as well as more targeted enforcement efforts, working in conjunction with our own in-house internet monitoring team.
Internet Investigations, Enforcement, and Litigation
Covington’s internet investigations team, consisting of highly skilled internet investigators and industry leading lawyers with decades-long experience, designs and executes customized online and offline anti-piracy and brand protection programs for clients. We support organizations in the software, publishing, eLearning, sports, media, branded goods and pharmaceutical industries, among others. We offer:
Piracy, Counterfeiting & Gray Market
We pioneered the concept of a coordinated global approach to protecting our clients’ intellectual property rights almost 20 years ago. We have implemented programs for the enforcement and enhancement of IP rights in some 60 countries worldwide, and have built an extensive international network of local counsel, investigators and government contacts to accomplish our clients’ goals.
Global Internet enforcement is a centerpiece of Covington’s anti-piracy practice. Our Internet enforcement group, comprised of in-house investigators, seasoned attorneys and state-of-the-art software tools, monitors the web daily to identify illicit activity in all parts of the world and across all protocols; conducts global, high-volume notice and take-down programs with an impressive rate of success; and coordinates civil and criminal actions against online infringers.
Our dynamic, global trademark practice has over sixty years of experience, and has designed and supervised worldwide registration, maintenance, opposition, cancellation, and policing programs for our clients in foreign countries all over the world, with assistance from our network of foreign trademark counsel in over 175 countries. We provide clients with advice on a wide variety of trademark issues, litigate trademark cases in courts throughout the country, prosecute applications through the United States Patent and Trademark Office, and represent clients in opposition and cancellation proceedings before the Trademark Trial and Appeal Board.
We have advised clients, and represented them in litigation, concerning many of the cutting-edge issues spawned by the Internet, including cybersquatting, domain name monetization, phishing, pharming, keyword use of trademarks to trigger banner and pop-up- advertising, counterfeiting, and abusive use of trademarks in metatags. We have extensive experience with the trademark aspects of corporate transactions and agreements, including due diligence review of IP portfolios, perfecting security interests in trademarks, and negotiating and drafting trademark licenses, assignments and coexistence agreements.
Trademark Portfolio Management
We have prosecuted thousands of trademark applications for registration in the United States and in foreign countries. We inform clients promptly of all developments regarding an application and prepare detailed monthly, quarterly, or as-needed trademark status reports, which we generate electronically from our computerized trademark database and customize to meet our client’s needs. These status reports are a useful and cost-effective tool for monitoring developments in each trademark portfolio. We also conduct periodic strategic reviews of our clients’ trademark portfolios to ensure that the portfolio's depth and breadth is consistent with the client's brand strategy and business plans.
Although we tailor each trademark management program to meet our client’s specific needs, a comprehensive management strategy typically entails:
Over the years, Covington has built a global network of trusted local trademark experts, who assist us in researching national trademark registries, registering foreign marks and recording assignments. Our trademark management database is specifically structured to track and manage all filing, registration, renewal, and other deadlines. To reduce the client’s overall costs, Covington employs specialist trademark paralegals to perform much of the day-to-day work associated with trademark maintenance.
Trademark Transaction Experience
Our trademark lawyers have extensive experience in negotiating and drafting trademark licenses, assignments, coexistence and consent agreements and other complex commercial IP agreements for numerous clients, including AstraZeneca, Boehringer Ingelheim, Bacardi, Borgata, Dunlap Slazenger, Goodyear, King Pharmaceutical, Major League Baseball, NASCAR, National Geographic Society, the National Football League, the National Hockey League, Public Broadcasting Service, UCB and Verizon. As needed, we provide factual and legal analyses of relevant business considerations, including potential liability claims against the licensor, antitrust implications, and the like.
Our trademark lawyers also have been integrally involved in domestic and international corporate transactions involving trademarks and other intellectual property assets, including corporate acquisitions and restructurings. We are frequently called upon to conduct due diligence review of intellectual property portfolios, to perfect security interests in trademarks, and to prepare, supervise and record trademark assignments throughout the world. Our US, European and China offices have worked seamlessly together on complex international acquisitions with significant trademark elements.
Representation of Microsoft Corp. in its purchase of substantially all of Nokia’s devices & services business and licensing of Nokia’s patents. Covington advised on IP, commercial and regulatory matters on the transaction.
Representation of Banco Bilbao Vizcaya Argentaria, an international financial group based in Spain, in its acquisition of financial technology company Simple. The $117 million acquisition is part of BBVA's strategy to lead the technology-driven change that is transforming the financial services industry. According to Francisco González, Chairman and CEO of BBVA, Simple will reinforce BBVA’s “global digital transformation while BBVA will provide the means to help Simple maximize its outstanding growth potential.”
Representation of AstraZeneca in its $1.26 billion acquisition of Ardea Biosciences. Under the agreement, AstraZeneca will pay $32 per share for all of the outstanding shares of Ardea. AstraZeneca is a global, innovation-driven biopharmaceutical business with a primary focus on the discovery, development and commercialization of prescription medicines for gastrointestinal, cardiovascular, neuroscience, respiratory and inflammation, oncology and infectious disease. Ardea is a biotechnology company based in San Diego, California, focused on the development of small-molecule therapeutics for the treatment of serious diseases.
Representation of Salix Pharmaceuticals, Ltd. in its acquisition of Santarus, Inc. for a total value of approximately $2.6 billion. The transaction closed on January 2, 2014. According to Carolyn Logan, Salix President and Chief Executive Officer, “The acquisition of Santarus is a transformational event for Salix and an important milestone in our growth as the leading gastroenterology-focused specialty pharmaceutical company in the United States.”
Representation of the National Football League in its $17 billion, 8-year U.S. network television programming agreements and in its agreements with AOL, SportsLine.com and others for the joint production of the official NFL websites.
Devised and coordinated anti-piracy strategies throughout Europe (including Russia and markets in Eastern Europe) to enforce the IPRs of leading software providers.
Provided strategic advice and advocacy support to the Business Software Alliance on the EU Copyright Directive, proposed Software Patents Directive and IP Enforcement Directive, and more broadly assisted in efforts to promote the protection of IP in the EU and third countries.
Representation of Microsoft in negotiating licenses for IP related digital output and copy protection technology for the Xbox 360 console.
Libel defense litigation and prepublication review of news and other content for broadcasters in some 35 states, including First Amendment, newsgathering, copyright, defamation and privacy advice, and opposing subpoenas from prosecutors and others.
Advising ING Insurance International on the sale of its mortgage business in Mexico, ING Hipotecaria, to the Mexican banking subsidiary of Banco Santander, Spain’s largest bank, for approximately $50 million.
Advising on copyright matters relating to rights to an extensive photographic archive and on wrongful publication of photographs in Europe.
Provide general copyright and fair use advice and counseling to publishers such as the National Geographic Society, the Washington Post Company, and Zomba Music Publishing, to various television broadcast stations, and to a number of leading online business and media ventures including The Microsoft Network, USA Interactive, and the National Football League. Covington is also special intellectual property counsel to the Smithsonian Institution.
Provided copyright advice on advertising issues, including with respect to copyright risk-assessment and worked with clients to develop copyright compliance strategies.
Assist the National Football League in registering copyright and combatting the unauthorized retransmission and public performance of NFL game telecasts over the internet.
Advise on cutting edge trademark strategies, domain name, social media, and keyword advertising issues, manage U.S. and global portfolios, and provided trademark advisory and prosecution services to leading US and global brand owners, including: American Automobile Association (AAA); AOL, Inc.; Astelllas US; Business Software Alliance; Dale & Thomas Popcorn; Expedia, Inc.; FeraDyne Outdoors; German American Chambers of Commerce; Lewis Bakeries, Inc.; Merck & Co. Inc.; Microsoft Corporation; National Basketball Association; National Football League; National Geographic Society; National Hockey League; Public Broadcasting Service; Phi Beta Kappa Society; Promontory Financial Group; and U.S. Soccer Federation.
Assist the client in preparation of a position paper concerning potential amendments to anti-circumvention provisions of Section 1201 of the Digital Millennium Copyright Act and in preparation of comments to the Copyright Office on proposed exemptions to Section 1201.
Representation of the Public Broadcasting Service (PBS) in proceedings before the FCC, U.S. Copyright Office and other policy settings, including with respect to the role and distribution of educational and other noncommercial media across the broadcast, online, mobile and other IP-based platforms.
Advise Public Broadcasting Service in negotiations and administrative proceedings relating to the distribution of statutory copyright royalties by the United States Copyright Office.
Representation of Allergy Therapeutics plc, the AIM-listed specialty pharmaceutical company, in its acquisition of Alerpharma, S.A. a Spanish-based allergy immunotherapy company which previously spun out from Spanish biopharmaceutical company, Zeltia S.A. Covington also advised Allergy Therapeutics on its recent £20.8 million placing of ordinary shares with institutional investors. The proceeds of the placing are being used to progress the clinical development of the company’s lead product, Pollinex Quattro Grass, through to FDA approval and planned launch in the United States in 2019.
Copyright and IP advice to Celestial Pictures, the owner of the Shaw Brothers library, the largest Chinese-language film collection in the world.
Advise Business Software Alliance in most of the major domestic and international copyright law reform efforts resulting from the advent of the digital age, including the U.S. Digital Millennium Copyright Act, the WIPO Treaties, the EU Copyright Directive, the EU Software Directive, implementation of the TRIPS Agreement, and amendments to existing copyright laws in over 30 countries worldwide.
Representation of Horizon Discovery Group plc, an AIM listed international life science company supplying research tools and services to organizations engaged in genomics research and the development of personalized medicines, on the acquisition of Sage Labs Inc. for a total of approximately $48 million (£29 million), comprising up to $16 million in cash and up to $32 million in new ordinary shares. The acquired business will be known as Sage Labs Inc., a wholly owned subsidiary of Horizon Discovery Group plc. The acquisition creates a fully integrated translational genomics platform and significantly expands Horizon’s product, service and research offerings.
Advise two of the major Hollywood studios on a number of different feature films in China. Film projects for the majors include both studio films intended for wide international release, as well as local Chinese-language productions. Work for the majors also include advice regarding cooperation agreements, development, copyright and IP infringement, and relationships with talent.
Representation of Verizon in a dispute with the Recording Industry Association of America over the application of safe harbor provisions of the Digital Millennium Copyright Act to subscribers’ sharing of music and other content using peer-to-peer services.
December 6, 2016, Covington Alert
On December 2, 2016, the English High Court ruled that the members of the band Duran Duran would be in breach of the contracts under which they assigned their publishing copyrights if they exercised their U.S. statutory right to terminate the transfer of the U.S. copyrights under section 203 of the Copyright Act. The case, Gloucester Place Music Limited v Simon ...
June 17, 2016
LONDON—Euromoney Legal Media Group has selected four Covington lawyers for its annual “Europe Women in Business Law Awards.” The awards honor women in the legal sector across Europe.
The Covington lawyers recognized are:
Louise Nash, Best in Mergers & Acquisitions. Ms. Nash focuses on M&A and other transactional matters for clients in the consumer brands, ...
July 2015, Bloomberg BNA World Data Protection Report
December 12, 2014, Bloomberg BNA’s Patent, Trademark & Copyright Journal
February/March 2014, World Trademark Review
June 21, 2013
LONDON, 21 June, 2013 — Euromoney LMG awarded Covington partners Lisa Peets and Hilary Prescott the "Best in Copyright" and "Best in Investment Funds" awards at its Europe Women in Business Law Awards 2013 ceremony in London. The awards honour firms that set “the standard in terms of female-friendly work practices, and women leading the field in the legal sector ...
March 27, 2013
WASHINGTON, DC, March 27, 2013 — For the second straight year, Covington & Burling has been nominated for the 2013 Chambers USA Awards for Excellence in five national practice areas. Chambers released its “shortlist” of the law firms nominated based on their pre-eminence and recent achievements in 21 distinct practice areas.
Covington is a finalist in each of ...
March 19, 2013, Intellectual Property Magazine
February 21, 2013, Law360
WASHINGTON, DC, November 7, 2012 — Covington & Burling received 97 first-tier practice rankings in the 2013 “Best Law Firms” survey by U.S. News-Best Lawyers, placing Covington among the top 10 firms nationwide. Covington was also named “Law Firm of the Year” in both FDA Law and Corporate Compliance Law. The honor is presented to one law firm in each of the ...
September 11, 2012, Covington E-Alert
August 27, 2012
WASHINGTON, DC, August 27, 2012 — Covington & Burling LLP lawyers received 196 individual mentions in 57 areas of law in the 2013 edition of The Best Lawyers in America. This annual compilation of top U.S. lawyers is based on peer-review surveys and is used as a referral guide in the legal profession.
The Covington lawyers recognized are as ...
August 14, 2012
WASHINGTON, DC, August 14, 2012 — Covington & Burling advised AstraZeneca in its agreement with Pfizer for over-the-counter rights to sell a nonprescription version of Nexium, a medication prescribed to treat the symptoms of gastroesophageal reflux disease.
The agreement gives Pfizer rights to sell a 20mg nonprescription version of AstraZeneca's Nexium ...
June 27, 2012
LONDON, 27 June, 2012 — For the second straight year, Euromoney Legal Media Group named Covington & Burling partner Lisa Peets “Best in Copyright” during its Europe Women in Business Law Awards.
Ms. Peets, whose practice encompasses legislative advocacy, trade and intellectual property enforcement, heads Covington’s European intellectual property group, and ...
June 22, 2012
NEW YORK, June 22, 2012 — Covington & Burling advised Ascom Holding AG in its acquisition of GE Healthcare’s nurse call medical device business.
The acquisition gives Ascom access to the North American nurse call market and creates opportunities to combine GE Nurse Call systems with Ascom’s existing mobility offering. With this acquisition, Ascom further ...
May 17, 2012
LONDON, 17 May, 2012 — Euromoney Legal Media Group has named Covington & Burling partners Natalie Diep, Lisa Peets and Hilary Prescott as finalists for its second annual Europe Women in Business Law Awards.
Ms. Diep, who advises clients on a wide range of corporate finance issues including mergers and acquisitions, equity offerings, private placements and ...
November 1, 2011
WASHINGTON, DC, November 1, 2011 — For the second consecutive year, U.S. News-Best Lawyers awarded Covington & Burling the most first-tier practice rankings for Washington, DC in the “Best Law Firms” survey. The 2011-12 survey also awarded the firm 82 first-tier practice rankings, placing Covington among the top 20 firms nationwide.
Additionally, U.S. ...
September 7, 2011
WASHINGTON, DC, September 7, 2011 — Covington & Burling LLP lawyers received 184 individual mentions in 56 areas of law in the 2012 edition of The Best Lawyers in America. This annual compilation of top US lawyers is based on peer-review surveys and is used as a referral guide in the legal profession.
The Covington lawyers recognized are as follows: ...
June 29, 2011
WASHINGTON, DC, June 29, 2011 — Covington & Burling LLP represented National Geographic Society in its agreement with Cengage Learning to sell its digital and print school publishing unit and to extend additional rights to use the National Geographic brand in higher education and library markets worldwide.
National Geographic’s school publishing unit includes ...
June 20, 2011, Covington E-Alert
April 2, 2010
WASHINGTON, DC, April 2, 2010 — Covington & Burling LLP has been nominated for two 2010 Managing Intellectual Property awards. In North America, the firm is a finalist for the ITC Litigation award. In Europe, the firm is on the shortlist for the New Media/Internet award.
Covington’s IP litigators have appeared in more than 65 Section 337 cases before the U.S. ...
2009/10, PLC Life Sciences Handbook 2009/10
WASHINGTON, DC, October 21, 2009 — Covington & Burling LLP has secured an important victory for The American Automobile Association, Inc. (AAA) ending a long-standing dispute over the valuable AAA.NET domain name. On October 19, a federal court in Pennsylvania entered a judgment on behalf of AAA transferring the AAA.NET domain name to AAA and permanently ...
October 9, 2009, The Bookseller
NEW YORK, September 24, 2009 — Boehringer Ingelheim, and its US animal health business Boehringer Ingelheim Vetmedica, Inc., has entered into an agreement with Pfizer to acquire certain assets of Wyeth’s Fort Dodge Animal Health business upon the closing of the global Pfizer-Wyeth merger. Covington & Burling LLP represented Boehringer Ingelheim on the ...
May 2009, Trademark World
April 15, 2009, Covington E-Alert
March/April 2009, Landslide
July/August 2008, Trademark World
May 1, 2008, Copyright World
LONDON, April 14, 2008 — Covington & Burling LLP received the “US IP Firm in Europe” award for the firm’s EU and regulatory work. The award was presented at the Managing Intellectual Property Global Awards 2008 ceremony on April 9 at Claridge’s in London. Covington’s European intellectual property practice, based in the firm’s Brussels and London offices, ...
WASHINGTON, DC, January 28, 2008 — LX Networks LLC, a leading producer of local television and broadband video programming under the LX.TV name, has been acquired by the NBC Local Media Division of NBC Universal. The announcement was made today. Covington & Burling LLP advised LX Networks in the deal. Founded in 2006 and based in New York, LX’s programming ...
WASHINGTON, DC, November 16, 2007 — Covington & Burling LLP was awarded the WORLDleaders International IP Award for trademark excellence at an awards dinner held at the Grosvenor House in London last night. The WORLDleaders IP Awards are presented annually by the publishers of Trademark World, Patent World, and Copyright World, the world’s leading titles for ...
October 19, 2007, Covington E-Alert
WASHINGTON, DC, October 15, 2007 — Covington & Burling LLP advised The Washington Post Company in its acquisition of CourseAdvisor, Inc. The Washington Post Company is a diversified media and education company whose principal operations include newspaper and magazine publishing, educational and career services, television broadcasting, cable television systems, ...
WASHINGTON, DC, September 28, 2007 — In its inaugural year, The Legal 500 US has recognized Covington & Burling LLP’s practice excellence in 23 fields. Compiled in four volumes published in 2007, the Legal 500 US singles out the following practices:
Broadcasting and Digital
Copyright - regional
Copyright Litigation - regional
July 24, 2007, DC Bar
July/August 2007, Copyright World
June 2007, Trademark World
January 19, 2007
WASHINGTON, DC, January 19, 2007 — Barclays has announced that it will pay an undisclosed amount for naming rights to the new Barclays Center located in Brooklyn, New York for a term of 20 years. Covington & Burling LLP advised Barclays on the transaction.The new Barclays Center is the core feature of the Frank Gehry designed $4 billion Atlantic Yards ...
November 2006, Trademark World
October 3, 2006, Covington E-Alert
April 7, 2006
WASHINGTON, D.C., April 7, 2006 - The STOLICHNAYA trademark decision handed down last Friday by the U.S. District Court for the Southern District of New York represents an important victory for defendant Spirits International N.V. ("SPI"), represented by Covington & Burling, and a major setback for the plaintiff, an agency of the government of Russia. At stake ...
April 6, 2006
SAN FRANCISCO, CA, April 6, 2006 - Covington & Burling announced today that Simon J. Frankel will join the firm's intellectual property litigation group as a partner. Mr. Frankel will be resident in the firm's San Francisco office.
Mr. Frankel's extensive IP litigation experience includes handling trademark, copyright, patent, anti-counterfeiting, and trade ...
January 25, 2006
WASHINGTON, D.C., January 25, 2006 - Today, Covington & Burling recognizes the tremendous effort and dedication of the Bulgarian National Services to Combat Organized Crime (NSCOC) agency and Microsoft Corporation, for the January 18-19 police raid that resulted in the arrest of eight individuals allegedly involved in an international criminal network that used ...
December 1, 2005
LONDON, UK, December 1, 2005 - Leading international law firm Covington & Burling has won the "Best Achievement in Protecting IP on the Internet" Award at the WORLDleaders European Awards in London last night.
The Covington team, led by a transatlantic team of lawyers and Internet specialists, including London partner Lisa Peets and Senior Internet specialist ...
October 3, 2005
WASHINGTON, D.C., October 3, 2005 - Covington & Burling announced the election of ten new partners, effective October 1. Stuart Stock, chair of the firm's management committee, commented: "These exceptional lawyers reflect the strength, excellence and diversity of the firm, and the continuing growth of our practices across the firm." Covington's newest partners ...
April 22, 2005
WASHINGTON, D.C., April 22, 2005 - Covington & Burling announced today that George Pappas, and Jeffrey Elikan have joined the firm as partners, and Kevin Collins has joined as of counsel. All three will be resident in the Washington, D.C., office. Messrs. Pappas, Elikan, and Collins, previously at Venable LLP, will join Covington's national patent and ...
April 19, 2005
Negotiations Culminate in NBC Return to NFL Broadcaster Lineup; Monday Night Football Moving to ESPN with Earlier Kickoff; Sunday Afternoon Partners CBS and FOX Renewing Agreements
Washington, DC, April 19, 2005 -- A team of Covington & Burling lawyers advised the NFL in the strategic planning, development, negotiation and implementation of the League's ...
September 2004, Trademark World
May 8, 2002
May 8, 2002 - WASHINGTON, NEW YORK, LONDON & SAN FRANCISCO - Covington & Burling has promoted seven attorneys to counsel positions effective April 1, 2002. The new counsel are Dennis B. Auerbach, Wendy L. Feng, Marie A. Lavalleye, John B. Maclay, Lucinda Osborne, Lisa Peets and Elaine W. Stone.
Mr. Auerbach is Of Counsel in the Washington office. His ...
11/21/2001, World eBusiness Law Report
January 1999, 84 CIPIC Journal 39
July 1994, Crafting as a Business
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