INTELLECTUAL PROPERTY LAW

In many cases, a company’s intellectual property represents the lion’s share of its underlying value. As intellectual property attorneys, our firm seeks to protect these important proprietary rights for our clients.

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Intellectual property litigation is generally brought in federal court because trademark and copyright filings are typically federal in nature. The Nissenbaum Law Group not only files trademarks and copyrights, but also defends them from infringement. It handles both the transfer of rights to such intangible property, and also the resulting litigation if those rights are violated.

While there are common law copyright protections that apply when someone creates a work but does not file a copyright application with the United States Copyright Office, it is almost always better to file, as well. If one has to file a lawsuit for infringement, a federal copyright registration will allow the court to award enhanced damages.

Intellectual Property as a Business Asset

In many cases, a company’s intellectual property represents the lion’s share of its underlying value. Examples of industries in which this is particularly true are (a) digital and high tech, (b) pharmaceutical, (c) entertainment and (d) licensing. Each of those types of business clients requires our firm to provide a careful analysis of the necessary copyright and trademark filings; the appropriate agreements that need to be drafted to provide trade secret protection; and the extent to which the company’s intellectual property affects its valuation. At the outset, it is essential that a law firm review its clients’ copyrights, trademarks and intellectual property agreements to assess whether there are adjustments that need to be made.

Intellectual Property Issues Facing Businesses

Intellectual property is a surprisingly complicated area of law. Here are three examples:

1. Many clients assume that if an employee or independent contractor creates intellectual property and is compensated, that automatically means the employer owns it. Unfortunately, under certain circumstances, that assumption would be incorrect. There are many exceptions to that principle of law. The recommended way of handling this ambiguity is to have the employee or independent contractor sign an assignment or other such transfer of property rights.

2. The public generally assumes that registering an Internet domain name or filing incorporation papers with the state automatically confers complete trademark and copyright protection. Once again, that is not true. While the use of a trademark or copyright may confer certain very basic common law rights, the enhanced protections afforded under the trademark and copyright statutes are solely obtained through filing with the appropriate government entity; for trademarks, that would be the United States Patent and Trademark Office (USPTO); for copyrights, the United States Copyright Office.

3. Filing an intent-to-use application with the USPTO is not the equivalent of filing an actual trademark application. Indeed, the Internet contains many advertisements for discount trademark filings at a very low price. It is only when one reads the fine print that it becomes clear the service being offered is nothing more than filing an intent to use application. The point is that someone might assume they have filed for trademark protection when all they have actually done is reserve their place in line, so to speak, for a limited time to allow them to later file a trademark application.

The Nissenbaum Law Group’s Intellectual Property Legal Practice

The firm’s intellectual property practice ranges widely between transactional and litigation matters. The firm’s legal representation can include the following:

Copyright Law
Copyrights protect the expression of an idea, not the idea itself. The Nissenbaum Law Group not only registers copyrights with the U.S. Copyright Office, but also is prepared to handle contested claims with regard to those copyright filings. This includes

online copyright registration filings;
litigation to enforce copyright ownership;
World Intellectual Property Organization (WIPO) arbitration and compliance (with local counsel); and
litigation related to copyright infringement, ownership and utilization.

Trademark Law
As intellectual property attorneys, our firm is often in the position of determining whether the use of the same name in commerce by two businesses constitutes a likely infringement by one against the other. Since a trademark is how a person or entity is recognized in commerce, there are literally hundreds of categories under which the law will allow a trademark of the same name to be used by different businesses. The typical example would be when each such business employs the mark for different commercial uses. This is only one aspect of the many trademark-related issues the Nissenbaum Law Group handles for its clients. Others include

trademark and servicemark registration filings and appeals;
litigation of disputes related to trademark law;
protecting trade dress rights; and
asserting cybersquatting claims (which may not necessarily involve trademark rights, as such).

Intellectual Property Agreements
While copyright and trademark law allows for protections as to the public at large, intellectual property agreements generally set forth the rights of the respective contracting parties themselves. Nevertheless, they are an important tool for monetizing the value of commercial copyrights, trademarks and other intellectual property. This includes

royalty agreements providing for audits regarding the client’s payment for use of its intellectual property;
assignment agreements for use of one’s intellectual property by another;
franchise agreements allowing the franchisee to use the franchisor’s intellectual property in a given territory;
Contractual protection of trade secrets;
Non-disclosure agreements; and
Patent licensing and assignment agreements; and

Intellectual Property Litigation
The Nissenbaum Law Group has a robust litigation team of attorneys and paralegals with experience enforcing its clients’ intellectual property rights. This includes

federal district court litigation over allegations of infringement and other misuse of intellectual property;
litigation of disputes related to trade secret theft and unfair competition in both the federal and state courts;
representation before the Federal Trademark Trial & Appeal Board; and
state court lawsuits concerning enforcement of trade secret protections.

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Publications & Presentations

Gary D. Nissenbaum, Esq.

Augmented Reality: Gotta Protect That IP, by Gary D. Nissenbaum, Esq. and Laura J. Magedoff, Esq., Apptentive, September 22, 2016
Profiled in: Gary D. Nissenbaum: Ace Gaming Attorney, by David Radd, Gamesauce, September 10, 2016
The Increasing Pace of Digital Change: Why Does Our Culture Always Seem so Blindsided?, Huffington Post, August 4, 2016
The Intriguing Legal Ramifications of Pokémon GO, BrettTerpstra.com, July 25, 2016
Potential Legal Approaches to a Cyberbullying (Co-author), The Young Lawyer, American Bar Association Young Lawyers Division, 2013
Receiving Classified Information: Government Secrecy and the Litigation Process(Co-author), NJ Lawyer Magazine, October 2009
Wrongful Posting on the Internet: The Privacy You Save Could be Your Own, NJ Lawyer Magazine, April, 2008
3/1/18 Interview of Mr. Nissenbaum, Systematic, “The Psychodynamics of Lawyering with Gary Nissenbaum”
1/22/18 Interview of Mr. Nissenbaum, Game Dev Unchained, “The Indie Legal Guide With Gary Nissenbaum”
11/21/17 Interview of Mr. Nissenbaum, Gamesindustry.biz Podcasts, “Licensing Your Intellectual Property”
11/3/17 Interview of Mr. Nissenbaum, Developer Tea Podcast, “The Future (and Past) of Legal for Developers w/Gary Nissenbaum (part 1)”
11/3/17 Interview of Mr. Nissenbaum, Developer Tea Podcast, “The Future (and Past) of Legal for Developers w/Gary Nissenbaum (part 2)”
10/19/17 Interview of Mr. Nissenbaum, Complete Developer Podcast, “Developers and the Law”
10/13/17 Interview of Mr. Nissenbaum, Hansel Minutes Podcast, “Latest Developments in App and Website Law Regarding Clickable Terms and Conditions”

Laura J. Magedoff, Esq.

Augmented Reality: Gotta Protect That IP, by Gary D. Nissenbaum, Esq. and Laura J. Magedoff, Esq., Apptentive, September 22, 2016
Potential Legal Approaches to a Cyberbullying Case (Co-author), The Young Lawyer, American Bar Association Young Lawyers Division, 2013
New York County Lawyer’s Association, EMIPS Committee Comments to New York State Bar Association Report of the Privacy Task Force, Contributing Author, March 2009

Wrongful Posting on the Internet: The Privacy You Save Could be Your Own, NJ Lawyer Magazine, April, 2008
Panelist, Intellectual Property Protection & Enforcement, New Jersey Bar Association Annual Conference, Atlantic City, NJ, May 2017
Presented Seminar, 2014 Trademark Primer: Prosecution & Enforcement Strategies Every Attorney Should Know, NJICLE, New Brunswick, NJ, November 2013
Presented Seminar, Entertainment Law: A Crash Course in Representing Entertainers & Other “Personalities” for Every Attorney, NJICLE, New Brunswick, NJ, September 2013
Presented Seminar, Entertainment Law 101, National Business Institute, Newark, NJ, March 2013
Presented Seminar, Theatre and the Law, American Association of Community Theatre National Convention, New York, NY, July 2012
Panelist, Emerging Issues in Reality Television, Seton Hall Law School Sports and Entertainment Law Symposium, Newark, New Jersey, March 2012
Panelist, Empower – I Create Nothing. I Own it: A Panel about Establishing and Protecting your Intellectual Property as a Business Asset, New Jersey Association of Women Business Owners’ Annual Conference, New Brunswick, New Jersey, October 2010
Moderator, Engage – The most Powerful Commodity I know is Information, New Jersey Association of Women Business Owners’ Annual Conference, New Brunswick, New Jersey, October 2010
Panelist, Casino Law 2010: Game On!, 2010 South CLEFest, Atlantic City, NJ, August 2010
Presented Seminar, Protecting Your Online Image, Various 2009-Present
Presented Seminar, Comedy and Drama: The Legal Aspects of Community Theatre, American Association of Community Theatre National Convention, New York, NY, July 2008

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