Licensing
Stites & Harbison’s Intellectual Property and Technology attorneys represent clients in all types of licensing and technology transfer agreements. We have helped private and public organizations commercialize technology through licensing in, licensing out, and cross-licensing strategies. For example, our attorneys recently prepared and negotiated a comprehensive license agreement between a U.S. client and an overseas entity involving the licensing of certain patent rights and technical information for use in the construction of industrial equipment. Our licensing lawyers frequently prepare and negotiate private label agreements and similar contracts that implicate trademark rights and the branding of products. The group is very experienced in developing and structuring a wide range of agreements that govern the licensing and use of software. Several of our attorneys are members of the Licensing Executives Society International. Others are active in the Association of University Technology Managers (AUTM).
In licensing matters, our attorneys often work closely with the firm's Business Services Group to advise clients on such matters as business structure, labor, employment, and employee benefits. Attorneys in the firm also have significant experience in venture capital, estate planning and succession issues, private placements, initial public offerings, recapitalization and various forms of debt and equity issues.
IP Rights That Go Bump in the Night: Horror Inc. v. Miller
It’s that time of the year. When the wind begins to chill and the nights grow longer, serving as harbingers for the inevitable truth, spooky season is upon us. As you and your neighbors begin to adorn your homes with your favorite ghouls and goblins in celebration of All Hallows’ Eve, I’d like to remind you of another reason to celebrate. For the second consecutive year, the Governor of Kentucky, Andy Beshear, has proclaimed October as Intellectual Property (IP) month in our commonwealth. In honor of this proclamation, I will share a story of IP rights that go bump in the night—the story surrounding the Second Circuit case, Horror Inc. v. Miller, 15 F.4th 232 (2d Cir. 2021). IP attorney Donovan Gibbs takes a look at the case in this Stites & Harbison Client Alert.
October 2024 is Intellectual Property Month in Kentucky
The Governor of Kentucky has officially proclaimed that October 2024 is Intellectual Property Month! This was achieved through efforts of the Kentucky Intellectual Property Association (KYIPA), in partnership with KY Innovation, Kentucky Science and Technology Corporation (KSTC), the Kentucky Bar Association (KBA) Intellectual Property (IP) Law Section, and many other organizations in the Commonwealth. IP attorney Mandy Decker takes a look at what intellectual property is in this Stites & Harbison Client Alert.
USPTO to Do a Deep Dive on Deepfakes
The United States Patent and Trademark office (“USPTO”) has stated that it will be holding a roundtable on August 5, 2024, to address whether current laws are sufficient to protect individuals from the unauthorized reproductions of their voice, image, or likeness commonly referred to as “deepfakes.” Attorney TJ Mihill takes a look at the what the USPTO is looking for in this Stites & Harbison Client Alert.
Managing IP Honors Stites & Harbison Attorneys on “IP Stars” 2024 List
LOUISVILLE, Ky. (June 20,—Managing Intellectual Property (Managing IP) magazine has named nine Stites & Harbison, PLLC attorneys to the 2024 “IP Stars” list. Managing IP recognizes the most highly regarded intellectual property attorneys in the U.S.
Junior Achievement of Kentuckiana Appoints Donovan D. Gibbs II to Advisory Board
Junior Achievement of Kentuckiana recently appointed Stites & Harbison, PLLC attorney Donovan D. Gibbs II to its Young Professionals Advisory Board.
Stites & Harbison Earns 2024 Top 10 Listing in Patent Lawyer Magazine
The Patent Lawyer Magazine has named Stites & Harbison, PLLC to the 2024 Top 10 Patent Firms and IP Practices in North America – South list. This is the firm’s third year being honored.
Who Owns TRAVIS KELCE?: An Example of the Legal Issues that Arise When Related Entities Apply for Similar Trademarks
The Lanham Act bars the registration of similar trademarks (or “marks”) that are likely to cause confusion with existing marks registered with the United States Patent and Trademark Office (“USPTO”). This concept of “likelihood of confusion” is a foundational principal of trademark law and one of the most beneficial aspects of acquiring a federal registration. IP attorney Donovan Gibbs takes a look at those benefits in this Stites & Harbison Client Alert.
Navigating Artificial Intelligence in PR and Communications
Time: 11:30 a.m. - 1:00 p.m.
Flash Cube Building, 9300 Shelbyville Road, 2nd Floor Community Room, Louisville, KY
The March PRSA Program entitled "Navigating Artificial Intelligence in PR and Communications," is a panel discussion surrounding the utilization of AI in communications and will feature Stites & Harbison IP attorney, Nick Stewart, who is a Registered Patent Attorney.
Is That Tattoo Infringing? The Complicated Copyright Questions Surrounding Tattoos
Tattoos have been at the core of several copyright cases over the last few years. One of the earliest well-known examples was a suit by Mike Tyson’s tattoo artist over the use of Tyson’s face tattoo design in the movie The Hangover Part II, which settled out of court in 2011. However, several more recently undecided cases have raised issues tied to tattoos and copyright infringement. TJ Mihill takes a look at this issue in the latest Stites & Harbison Client Alert.
Stites & Harbison Welcomes Donovan D. Gibbs II to the Louisville Office
LOUISVILLE, Ky.—Stites & Harbison, PLLC welcomes attorney Donovan D. Gibbs II to the firm based in the Louisville, Ky., office. He joins the Intellectual Property & Technology Service Group.
2024 INTA North America Roundtable; Annual Case Law Review (Nashville, TN)
Time: 12:00 p.m. - 2:00 p.m.
401 Commerce Street, Suite 800, Nashville, TN 37219
IP attorney Alex MacKay will co-host this roundtable in the firm's Nashville office on January 31, 2024.
USPTO Issues Enablement Guidelines Following Amgen v. Sanofi
On January 10, 2024, the United States Patent and Trademark Office (USPTO) released Guidelines for Assessing Enablement in Utility Applications and Patents in View of the Supreme Court Decision in Amgen Inc. et al. v. Sanofi et al. The Guidelines are intended to inform U.S. patent examiners and the public about the process to be followed when assessing whether a claim satisfies the enablement requirement under 35 U.S.C. 112(a), after the U.S. Supreme Court’s holding in Amgen v. Sanofi. IP attorney Patrick Torre takes a look at the guidelines in this Stites & Harbison Client Alert.
Gifts from the USPTO for Prospective Patentees Heading into the New Year
Irrespective of the Naughty and Nice List, the United States Patent and Trademark Office (“USPTO”) has rolled out a series of programs over the course of 2023 that may serve to make the spirits of the inventors in your lives merrier and brighter heading into the new year. IP attorney Nick Stewart takes a look at those programs in this Stites & Harbison Client Alert.
Monetizing Intellectual Property: The Basics and Benefits of Licensing
Owners of intellectual property (“IP”) rights associated with inventions and creative works have discovered that “licensing” is an effective way to monetize their IP. IP attorney Scot Duval takes a look at the ways to do that in this Stites & Harbison Client Alert.