Intellectual Property & Technology

Contact Information

Carole F. Barrett
415.426.3568

Today, more than ever before, innovation, entrepreneurship and intellectual assets are the drivers of economic growth. At Griesing Law, our goal is to provide exceptional and cost-effective legal solutions that will protect our clients and enable them to succeed by leveraging their assets to gain a competitive advantage. Our significant practical experience in IP and technology is complimented by our thought leadership in these rapidly evolving areas. Our clients include Fortune 500 companies, privately held businesses, non-profit organizations, and individuals across a range of industries.

IP Counseling & Transactions

Our team has an unparalleled understanding of new and emerging technologies. We guide clients on how to structure and negotiate technology transactions, leverage new business models, and develop effective long term IP strategies.  We represent clients in connection with a variety of commercial transactions, including negotiating, drafting, and reviewing technology platform and services agreements, vendor/supplier agreements, IP licensing, professional services agreements, web and mobile terms of use, and privacy policies. We also advise businesses and higher education institutions on privacy and data security, including how to best protect sensitive data, such as through the review and negotiation of agreements with third party cloud vendors.

Our clients understand that their brand is a key strategic asset. We work closely with them to develop an outcome oriented trademark strategy. To this end, we assist our clients with selecting, securing, and defending trademarks nationally and internationally. To help clients achiever their business goals, we may advise on trademark licensing and co-existence arrangements where appropriate. In addition, we manage and leverage extensive trademark portfolios.

Recent Representative Matters:
  • Drafted and negotiated master services agreements, end user license agreements, software licensing agreements, service schedules, service level agreements, and procurement of vendor services agreements for a Fortune 100 technology company.
  • Negotiated a wide range of intellectual property and technology agreements for colleges and universities, including agreements related to online education.
  • Prepared a Software as a Service (SaaS) agreement for a Fortune 100 financial services company and negotiated the agreement with the vendor.
  • Counseled major healthcare services provider on strength and availability of brands.
  • Negotiated mobile app development and license agreement for international nonprofit.
  • Counseled educational technology company on compliance with the Children’s Online Privacy Protection Act (COPPA).
  • Prepared fair use opinion letter for museum.
  • Counseled library and archives on IP policies and collections management policies.
  • Counseled a Fortune 100 financial services company on social media policy.
  • Drafted a social media policy and provided training to employees of hospitality organization.
  • Counseled hospitality organization on social media advertising campaigns, promotions, and sweepstakes/contests, including Federal Trade Commission (FTC) regulatory compliance.
  • Counseled online content providers in connection with Digital Millennium Copyright Act (DMCA) regulatory compliance.
  • Drafted foreign language license agreement, copyright assignment agreement and publishing agreement for publisher of educational books.
  • Counseled clients in a variety of industries on independent contractor agreements to protect IP rights.

IP Dispute Resolution & Litigation

IP disputes are often risky and fast paced, requiring specialized knowledge of the industry and an appreciation that time is of the essence. We handle sophisticated commercial litigation in the areas of trade secret, copyright, trademark, and unfair competition law. We guide clients on how to minimize litigation and legal exposure when possible, and identify creative business resolutions that are consistent with their business goals. When a dispute arises, we represent clients in federal and state court, as well as before various administration bodies including the World Intellectual Property Organization (WIPO), the National Arbitration Forum (NAF), and the Trademark Trial and Appeal Board (TTAB).

Recent Representative Matters:
  • Successfully defended six major retail defendants in a copyright infringement case in federal court resulting in the case being dismissed against all of our clients on an initial motion to dismiss.
  • Achieved favorable settlement on behalf of biotechnology client in high-stakes trade secret misappropriation litigation.
  • Protected medical device client’s trade secrets in multinational litigation.
  • Successfully represented a global online retainer in several matters arising out of alleged misrepresentations on its website as to price and source of goods.
  • Successfully defended a Fortune 100 company in copyright litigation against a dozen large company defendants arising out of the sale of music CDs resulting in our client being the only defendant being dismissed from the case without paying any damages or settlement.
  • Successfully stopped a third party’s use of a confusingly similar trademark on behalf of a major healthcare services provider without litigation resulting in cost-effective and prompt resolution.
  • Advised hospitality client to resolve potential disputes with two different customers and negotiated revised contracts with customers to achieve a positive outcome for the client.
  • Successfully pursued online copyright and trademark infringement resulting in infringer paying damages and fees to client without litigation.
  • Achieved favorable settlement for Swiss company in a domain name dispute subject to the Anticybersquatting Consumer Protection Act (ACPA) in the Eastern District of Virginia working with Swiss counsel.

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Philadelphia (Headquarters)

New York

Cincinnati

Contact Us | P 215.618.3720 | F 215.814.9049

Philadelphia
1717 Arch Street Suite 3630 Philadelphia, PA 19103
New York
68 3rd Street Brooklyn, NY 11231
Cincinnati
11 Garfield Place Cincinnati, OH 45202

Philadelphia (Headquarters)

New York

Cincinnati

Contact Us P 215.618.3720 F 215.814.9049

Philadelphia 1717 Arch Street, Suite 3630 | Philadelphia, PA 19103
New York 68 3rd Street | Brooklyn, NY 11231
Cincinnati 11 Garfield Place | Cincinnati, OH 45202