Cleary Gottlieb’s intellectual property practice offers our clients the complete range of legal services for enforcing, defending, commercializing, exploiting and acquiring patents, copyrights, trade secrets, trademarks, and data, whether standalone, in M&A deals, or in a variety of other transactions.
Our clients’ most valuable assets are often their intellectual property and data, and associated products and technology. Cleary lawyers leverage a full-service global practice to address corporate, privacy, tax, antitrust, and other issues that impact IP in financial services, telecommunications, information technology, e-commerce, computer hardware and software, consumer products, fashion, media and entertainment, metals and mining, pharmaceuticals, manufacturing, and other industries.
Clients from around the world and a wide range of industries rely on the firm’s intellectual property litigation and arbitration experience, and when intellectual property disputes are fought in multiple jurisdictions, Cleary’s global reach sets us apart.
Notable Experiences
Transactions
3M in privacy and IP issues associated with various acquisitions and business divestures, including the sale of its electronic monitoring business, $1 billion acquisition of M*Modal’s technology business, and $6.7 billion acquisition of Acelity.
Allergan on the IP aspects of its proposed $160 billion combination with Pfizer and $40.5 billion sale of its generics business to Teva Pharmaceuticals.
American Express on IP, data, and privacy matters related to number of co-branded credit card arrangements.
Coca-Cola in the assignment and cross-license of a number of key brands and trademarks in a two-stage acquisition of a leading branded drinks manufacturer active in Africa.
Donatella Versace and GiVi Holding on the IP aspects of its $2.13 billion sale of Versace to Michael Kors.
Dun & Bradstreet on IP matters related to its $6.9 billion sale to a consortium.
ESL Investments on IP and privacy matters related to its $5.2 billion acquisition of Sears.
FIFA in the evaluation of the United States’ bid to host the 2026 Soccer World Cup and in merchandising, brand, and copyright work.
Film directors and producers in the financing, production, distribution, and licensing of 11 award-winning documentary motion pictures.
Google in numerous matters, including its $2.6 billion acquisition of Looker, acquisition of Fossil’s smartwatch technology, $1.1 billion business cooperation agreement with HTC, acquisition of virtual reality video game developer Owlchemy Labs, sale of its Terra Bella satellite business to Planet Labs, $1 billion investment in SpaceX, $2.9 billion sale of Motorola Mobility’s mobile devices business to Lenovo, $2.35 billion sale of Google’s Motorola Mobility home business to ARRIS, and acquisitions of Waze, DeepMind, Redwood Robotics, and Socratic.
Honeywell in its strategic licensing of the “HONEYWELL” brand in the spin-off of its homes business.
Lavazza in its acquisition of Mars Drinks and in its acquisition of the “CARTE NOIRE” brand in Europe.
Lowe’s on the IP, data privacy, licensing, and related aspects of its acquisition of Boomerang’s retail analytics platform.
McCormick & Company on IP matters related to its $4.2 billion acquisition of Reckitt Benckiser’s famous food brand names such as “FRENCH’S” Yellow Mustard and “FRANK’S REDHOT” Sauce.
Nortel Networks in numerous matters, including in its unprecedented $4.5 billion auction sale of more than 6,000 patents to a consortium that included Apple and Microsoft—the largest standalone patent sale in history.
OpenText in complicated licensing arrangements and complex asset divestitures (including data transfer issues) related to its $1.42 billion acquisition of Carbonite, $1.62 billion acquisition of Dell EMC’s enterprise content division, as well as its acquisitions of Liaison Technologies and Guidance Software, its $1.165 billion acquisition of GXS Group, and HP’s customer experience and customer communications management software businesses.
Tom Ford in connection with various matters, including license and distribution agreements.
Virgin Group in various brand licensing matters.
An exclusive patent and technology license from a Delaware company to China in the field of stroke treatment.
Litigation and Arbitration
United Test and Assembly Center in a patent licensing dispute and ultimate settlement agreement with Tessera relating to semiconductor technology.
Texas Instruments and Broadcom in global litigation against Qualcomm for breach of undertakings given in connection with the licensing of patents for 3G mobile telephone standards worldwide, including successful appeal proceedings in the United States, and settlements resulting in payment above $2 billion to our clients.
People’s United Bank in successfully defending against trademark infringement claims by PeoplesBank of Holyoke, Massachusetts and Peoples Federal Savings Bank of Boston, Massachusetts, relating to bank naming rights, including defeating claims for injunctive relief before the district court and on appeal.
Atlantic Tele-Network in defending against claims of misappropriation of trade secret brought by Verizon Wireless, following ATN’s hiring of a Verizon Wireless employee (including defeating multiple requests for injunctive relief).
The Heisman Trophy Trust in winning preliminary and permanent injunctions against Smack Apparel Company as the result of its infringement of Heisman Trophy trademarks.