Intellectual Property and Information Technology
Freeborn & Peters LLP's Intellectual Property and Information Technology Practice Group is a resource to our clients who possess or are involved with valuable intellectual property and technology assets. Our services focus on the components required to lawfully develop, perfect, exploit and protect intellectual property and technology throughout the world.
Our IP/IT Practice brings a strategic approach to corporate names, logos, trademarks, copyrights, trade dress and other trade identities. We manage our clients’ trademarks in the United States and in more than 58 countries. We have assisted hundreds of clients in connection with the protection, registration, maintenance and licensing of their trademarks and copyrights in the U.S. and globally through various international treaties, including the Madrid Protocol and a network of foreign associates. These clients span a variety of industries, from technology and Internet companies to "bricks and mortar" companies, from major universities to national assisted living service providers and from international automobile parts manufacturers to major consumer goods companies.
We assist our clients in the enforcement and protection of intellectual property before domestic and foreign administrative agencies and tribunals, including:
The U.S. Patent and Trademark Office;
The U.S. Trademark Trial and Appeal Board;
The Federal Trade Commission;
The U.S. Trade Representative;
The Japan Fair Trade Commission; and
Various U.S., international and foreign trademark, patent and copyright offices.
Freeborn & Peters serves as general or special intellectual property counsel for a number of world-recognized software and hardware companies, private and public consumer goods manufacturers and distributors, publishers, technology companies, direct marketing firms, advertising agencies, radio and television stations and entertainment companies. Our Group also includes the author of Intellectual Property and Antitrust Law; officers and former general counsel of several local and international trademark, licensing, advertising, computer and technology associations; and an Illinois Leading Attorney in the intellectual property and computer law practice area.
Freeborn & Peters has developed a particularly strong reputation as a leader in intellectual property and technology litigation. In fact, the Chicago Tribune has repeatedly referred to us as a "litigation powerhouse." Over the past two decades, we have litigated numerous trademark, trade secret and trade dress cases; patent infringement and validity issues; and Lanham Act and Copyright Act claims. Our experience and training leads to judicious early valuation of business and legal risks, and reliable estimates of litigation costs. And with our own in-house e-Discovery Lab, we can save clients as much as 90% on electronic document processing versus what an outside vendor normally charges.
We counsel in the development, protection, transfer, acquisition and licensing of various technologies, from traditional "bricks and mortar" industries to software, databases and biotech products;
We conduct "IP audits" for our clients to identify unprotected assets and potential threats to their intellectual property; and
Our practice area includes:
Copyrights, Literary and Artistic Matters
Trademarks, Trade Dress and Other Trade Identities
Licensing and Protection of Characters and Rights of Publicity
Trade Secrets and Non-Competition
Patent Litigation
Preparation and Negotiation of Technology Contracts and Licenses
Advertising, Marketing and Promotion Law
Outsourcing
Representative Matters
Clients that members of the IP/IT Practice have recently represented include:
A Big Ten University in opposition before the Trademark Trial and Appeal Board, including protecting their well-known mascot’s symbol.
A major university, at the dawn of the worldwide web, when developers left the university to form a communications company and offer the first web browser.
A leading legal and accounting information provider in connection with the unauthorized downloading of its proprietary online database, and when a competitor copied the design of its new online customer interface application.
A joint venture by the six major North American freight railroads, in the formation of a B2B e-commerce exchange.
A leading telecommunications provider in the negotiation of landmark deals, such as telecommunications outsourcing contracts and first-time software licenses with a multinational computer, technology and IT consulting corporation.
One of the top 20 life insurance companies in connection with the implementation of: (1) an enterprise-wide ASP system for trading, portfolio management and risk reporting; (2) an enterprise-wide comprehensive loan management software system; and (3) an enterprise-wide software system for trading, risk management and surveillance with respect to commercial mortgage-backed securities.
A State-run entity in the development of a suite of software license forms and non-disclosure agreements.
A leading legal and accounting information provider in connection with the outsourcing of its enterprise-wide systems to two Indian companies.
A leading provider of digital media and online media players in connection with its online and mainstream advertising campaign for its online music download services.
Various healthcare providers and related groups in the protection of their trademarks, company names and logos.
A leading doctor’s association in connection with the outsourcing of its computer systems.
A statewide HMO in connection with the outsourcing of its IT systems.
A multi-hospital healthcare group in connections with carious acquisitions of hardware and software systems.
A regional hospital in connection with its dispute with a computer systems vendor for a non-performing medical records system.
Publishers in the medical field in connection with copyright, trademark and domain name protection and enforcement.
Fictional characters, including the protection and/or licensing of Casper the Friendly Ghost, Barney the dinosaur, Barbie, Rocky & Bullwinkle, Furby and the California Raisins; and celebrities as famous as Michael Jordan and as infamous as John Wayne Gacy.
One of the largest software companies in Chicago on various matters, including bankruptcy, intellectual property and the establishment of a Chinese development arm of the company.
