The depth and breadth of our global, multidisciplinary copyright and trademark counseling and prosecution practice parallel the diversity of our client base. Our lawyers not only have extensive experience with copyright, trademark, and internet laws, but also know and understand a wide range of businesses and industries. Thus, we are well-positioned to assist with immediate legal needs and also serve as strategic business advisors to our clients.
Our team offers comprehensive copyright advice in transactional, counseling, legislative, regulatory, and prosecution matters. We advise and represent clients on the full range of copyright-related matters, including:
Our deep expertise puts us at the forefront of developments, from the advent of the internet and the DMCA to the latest innovations in artificial intelligence, NFTs, and the metaverse. We also have industry-leading 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, drawing on the expertise of our own in-house internet monitoring team.
Internet Investigations and Enforcement
Supporting both our Trademark and Copyright Practices, our Internet Investigations and Enforcement team designs and executes customized anti-piracy and brand protection programs, anticipating and providing highly effective solutions to our clients’ online challenges. This team includes highly skilled internet investigations specialists with decades of experience in protecting and enforcing intellectual property rights and advising clients on strategies for shielding their valuable brand assets. We take a comprehensive approach to meeting clients’ needs by combining our team’s expertise with custom-built, market-leading crawler technology and online forensic tools. As a result, our team is able to handle every aspect of our clients’ matters.
Our Internet Investigations and Enforcement team has worked on matters involving the following issues:
- Anti-Phishing
- Copyright Infringements
- Cybersquatting
- Disruption of Revenue Streams
- Domain Name Seizures
- Ecommerce Sites
- Educational and Study Materials
- IP Protection and Monetization
- Live Online Monitoring and Content Takedown
- Piracy of User Access Credentials
- Product Launch Campaigns
- Protecting Valuable Information
- Removing Illegal Footage
- Virus-Source Investigation
In each matter, our team works closely with the client to design and customize a program that serves that rights-holder’s unique requirements, from one-off projects to global notice and takedown campaigns with programs that are scalable and flexible.
Notice and takedown programs are provided alongside enhanced strategies, including the protection of a client’s brand using search engine de-listings, and targeting of revenue streams via advertising networks and payment providers.
Our clients also benefit from the team’s up-to-the-minute online reporting, including analysis of results and trends and identification of targets for escalated actions.
In the area of domain name-related enforcement and policy issues specifically, our capabilities are first rate, effective, and efficient. We regularly monitor newly-registered domain names for client marks or other keywords, flag any fraudulent activity, and take quick action to end such activity. In addition, we can work toward a long-term solution such as recovering the domain or pursuing the registrant directly. We have recovered around a thousand domain names through UDRP proceedings, litigation under the Anticybersquatting Consumer Protection Act, demand letters, and acquisitions.
Covington’s industry-leading lawyers provide legal support to the Investigations Practice in a seamless integration of technical, investigative, and legal services, when required. We use this combination of interdisciplinary expertise to handle law enforcement referrals, domain name disputes, and litigation.
Trademark Portfolio Management
From a client's first inquiry concerning a proposed mark, we consider the client's business needs and brand strategy. Our trademark advice takes into account the nature of the client's product or service; the manner, scope, geographic area, and duration of the use, marketing, and distribution of the product or service; the importance of the mark’s registrability to the client; and the client’s plans for licensing and other exploitation.
For U.S. clearance, we conduct searches of trademark databases, evaluate the search results, and, depending on a client's needs, provide summary or detailed analyses of search results, addressing both the prospects for registration and potential litigation risks. Our analyses may include recommended steps for reducing potential risks from third-party marks and inherent registrability issues. In addition, we offer real-world insights, such as whether a potential prior-rights holder is known to be litigious, the likely strength of a mark vis-à-vis other uses of similar marks in the same or related spaces, and whether any noted third-party marks have potential vulnerabilities.
For multi-country clearance, we oversee and coordinate such search projects working closely with our global network of trusted foreign counsel, including providing detailed instructions regarding the scope and timing of searches to be performed, reviewing and summarizing foreign counsel’s analyses, and assessing the overall prospects for registration and use of each searched mark.
Beyond the clearance stage, we have prosecuted or overseen the management of thousands of trademark registration applications for registration in the United States and in foreign countries and directly handled or overseen hundreds of administrative trademark litigation matters, including oppositions, cancellations, and invalidity proceedings across numerous jurisdictions. We inform clients promptly of all developments regarding their trademark applications, registrations, and litigation matters and prepare detailed monthly, quarterly, bi-annual, or as-needed trademark status and due dates reports customized from our computerized trademark database to meet their needs. These reports are a useful and cost-effective tool for monitoring developments in each client’s trademark portfolio, including deadlines for trademark prosecution, maintenance filings, and enforcement and litigation matters. We also offer our clients direct access to their own trademark records through a web-based software platform that permits clients to search and review their own trademark records and run individualized trademark status reports.
Finally, in addition to the day-to-day management of trademark applications and registrations, we conduct periodic reviews of our clients’ trademark portfolios to ensure that the portfolios’ depth and breadth are consistent with their brand strategies and business plans. As part of these audits, we prepare summary charts to identify gaps in coverage and propose actionable steps to strengthen our clients’ protection.
Trademark Transactions
In the trademark transaction sphere, our lawyers have extensive experience negotiating and drafting trademark licenses, assignments, coexistence and consent agreements, and other complex commercial IP agreements for clients. As needed, we provide factual and legal analyses of relevant business considerations, such as potential liability claims against the licensor, antitrust implications, and the like.
Our lawyers also serve as subject matter experts in domestic and international corporate transactions involving trademarks and other intellectual property assets, including corporate acquisitions, divestitures, and restructurings, for many Fortune 500 and Fortune 100 companies. In connection with such transactions, we frequently are called upon to conduct due diligence reviews of IP portfolios, draft and negotiate the IP aspects of the deal documents, perfect or release security interests in trademarks, prepare trademark assignments and licenses, and record chain of title updates throughout the world. Our U.S., European, and Chinese offices are designed to work seamlessly together on complex international acquisitions and divestitures with significant trademark elements.
Although these transactions span a range of industries, we have particular experience in the areas of entertainment, food and beverage, gaming, life science, media, sports, and technology.
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