Intellectual Property & Technology

JORDEN BURT lawyers represent clients in the insurance, healthcare, financial services, manufacturing, university, technology, media companies and other industries in counseling and litigation involving trademarks, trade names, domain names, unfair competition, copyrights, trade secrets, privacy policies, data privacy, rights of privacy and publicity, libel, digital defamation, media access, e-commerce transactions, electronic signatures, electronic records, electronic contracts (e.g., shrinkwrap, clickwrap), and technology transactions such as software licensing, software development, telecommunications, outsourcing, technology transfer, patent licensing, web site development, web site hosting, web site terms and conditions of use, and application service provider agreements. Focal points of the Firm's practice in recent years include the protection of intellectual property rights in innovative financial products, as well as issues and litigation arising from the deployment and use of technology - metatags and domain names, digital copyrights, digital defamation, technology contract breaches, failed system disputes, data security breaches, and alleged violations of privacy rights.

Our lawyers were 'present at the creation' of the modern financial products industry and have decades of experience with sophisticated stratagems for intellectual property protection and development. Members of the Firm's Intellectual Property & Technology Practice Team include distinguished intellectual property, First Amendment, and Constitutional lawyers who are widely published and known nationally as leaders in their fields.

TRADEMARK AND OTHER INTELLECTUAL PROPERTY SERVICES

• Trademark Prosecution - JORDEN BURT's trademark lawyers offer individualized advice and counseling for each stage of the trademark process: conception of the trademark, conducting and analyzing a preliminary online search of the proposed trademark, obtaining and analyzing a comprehensive report from a specialized search firm, providing legal advice as to the availability of the trademark for use and registration, prosecuting the trademark from application through registration, ongoing maintenance of the registration, and licensing the trademark, and enforcing and defending the trademark in infringement and other legal actions. JORDEN BURT is experienced at filing documents electronically with the U.S. Patent and Trademark Office, a capacity which saves time and money for our clients. JORDEN BURT, through its network of foreign associates, assists clients with trademark prosecution throughout the world, including recommending and implementing the appropriate foreign trademark registration strategies based on the relevant international treaties and laws, and the clients' business and budget needs.

• Copyright - Our copyright lawyers advise and counsel on all issues concerning copyright, including determinations of copyrightability, applications for copyright registration, publishing agreements, copyright licensing, assignments, work made for hire agreements in the employee and the non-employee context, notice and takedown provisions of the Digital Millennium Copyright Act, fair use, joint ownership, and prosecuting or defending copyright infringement actions.

• Litigation and Enforcement - JORDEN BURT's lawyers have many years of experience with preliminary injunctions, summary judgments, contempt actions against infringers, arbitrations, and the resolution of disputes through civil and criminal proceedings. The Firm includes distinguished trial and appellate attorneys with extensive experience representing clients in matters involving technology, trademarks and trade dress, patents, copyrights, the misappropriation of trade secrets, and related intellectual property matters. The Firm's depth of knowledge and experience in traditional intellectual property litigation has been applied to the vast range of issues arising from our clients' use of the Internet and other new technologies. JORDEN BURT lawyers are actively engaged across a broad range of such actions, including claims arising from online trademark, patent and copyright infringement, cybersquatting, typosquatting and other types of domain name disputes, actions arising from digital defamation and other types of libel, actions related to software licensing and other technology transactions, and proceedings implicating statutory or common-law rights of privacy and publicity. The Firm successfully represented Fine Arts Lamps in copyright infringement lawsuits filed in China and France. (Click here to read press release.) The Firm has successfully enforced the marks of its clients against cybersquatters in several legal proceedings. (Click here to read press releases.)

• Due Diligence and Security Interests - The Firm's intellectual property and information technology lawyers conduct due diligence and provide counsel in mergers and acquisitions with regard to the intellectual property assets and information technology agreements. We also advise clients with regard to perfecting security interests in intellectual property assets and client inventory.

TELECOMMUNICATIONS

Merging and integrating the wide-ranging expertise and experience of its lawyers with technology and finance consultants, JORDEN BURT creates a formidable team to represent and advise clients, on a fully integrated basis, regarding the procurement of telecommunications products, networks and services:

• Telecom Assessment - The JORDEN BURT team will review and evaluate existing telecommunications contracts, rates and charges, service performance, and end-user satisfaction surveys to determine the alignment between objectives, expectations and performance. We will then prepare and present a comprehensive report to executive management regarding the current telecommunications infrastructure and specific recommendations for improvements and changes.

• Performance Review and Service Levels Improvement - The JORDEN BURT team will review and evaluate all elements of service level performance. We will then make recommendations for improved performance standards and suggestions for new SLAs and performance standards. JORDEN BURT has also broken brand new ground in this area, completing several outsourcing agreements with a dramatically different and much improved concept and approach towards the application of performance standards in telecommunications arrangements. Such a concept and approach dispels the traditional set of nominal monetary credits for short-term non-compliance with rudimentary metrics, and replaces it with a system of more meaningful performance standards and incentives guaranteeing the satisfaction of the client's long-term objectives.

• Financial and Pricing Review - The JORDEN BURT team will review and evaluate all financial parameters and cost and pricing information regarding the organization's telecommunications services. This will include benchmarking or other financial assessments, and the identification of issues with suppliers' proposed pricing structures, such as hidden costs and whether there is appropriate variability in the overall pricing.

• Contract Negotiation - The JORDEN BURT team will work "hand in glove" with executives, managers and technical staff in preparing bid documents, managing the contract procurement and bid evaluation processes, taking part in business and technical meetings, and fully negotiating and drafting the master agreements, statements of work, service level agreements, schedules of rates and charges, asset purchase and lease documents and transition plans on telecommunications procurement initiatives.

TECHNOLOGY TRANSACTIONS AND OUTSOURCING

Technology Transactions and Electronic Contracting - JORDEN BURT's information technology attorneys offer advice and counseling for every type of technology transaction through each stage of the contracting process, from developing and issuing requests for proposals, to evaluating submitted proposals and participating in the vendor selection process, to drafting the documentation, negotiating the terms and conditions, and closing the transactions. The Firm also counsels clients on post-closing compliance issues and represents clients in technology-related legal actions. The Firm's technology practice encompasses transactions ranging from the simple to the complex, including non-disclosure agreements, evaluation and beta test agreements, software licensing agreements, software and content subscription agreements, software and hardware maintenance agreements, professional services and consulting agreements, web site development, hosting and maintenance agreements, application service provider arrangements, marketing and distribution agreements and agreements involving digital signatures, digital certificates and electronic contracting.

• Outsourcing - In the course of their ongoing daily business and operations, organizations continually face the decision of whether to perform certain information technology and business process functions themselves or to buy those services from someone else. The decision to procure these services from the outside is known as "Outsourcing." Organizations outsource their information technology and business process functions for various reasons, including: (i) acquiring and leveraging the best technology and human resources; (ii) increasing availability of capital for investment in core businesses; and (iii) reducing costs and improving bottom line financial performance. Unfortunately, many outsourcing transactions do not deliver as organizations had hoped for a variety of reasons. Joining forces with some of the country's leading outsourcing consultants, JORDEN BURT has created a formidable team to represent and advise clients, on a fully integrated basis, regarding IT and business process outsourcing transactions in financial services, healthcare and government, through our Outsourcing Risk Assessment Program .

• Communications and Media Law - JORDEN BURT lawyers include prominent First Amendment lawyers, several of whom are among the "Best Lawyers in America." The Firm's practitioners have long been innovators in the development of concepts and legal precedent in communications and media law, with a distinguished record of landmark decisions in state and federal courts, including the U.S. Supreme Court, which have helped to shape the interaction of Constitutional principles and the law of defamation, information access, and rights of privacy and publicity. [Marketing to locate case listings and insert link to them.] The Firm's lawyers advise and represent clients in matters sounding in libel and slander, common law and statutory rights of privacy, and other issues arising from communications by means of public media, traditional and electronic, in both domestic and trans-national environments. The Firm has increasingly been called upon for counsel and for legal representation, at trial and appellate levels, in matters involving freedom of speech, and the manner in which statutory law and Constitutional principles affect information flows and new technology.