Sullivan
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We represent our clients as both sellers and purchasers of commercial licensing rights. Our lawyers have negotiated licensing agreements involving a comprehensive array of products and services, including transactions that involve complex software applications.

Our transactions are designed to establish the most effective business advantage for our client, protect the license from infringement and maximize the return on the license investment.

Representative Client Work

  • Advised a subsidiary of a billion-dollar food conglomerate providing a wide variety of premium products throughout the United States, Europe and the Middle East, with respect to drafting and negotiation of various licensing and distribution deals for its product
  • Represented Challengeme Esports GmbH (CME), a provider of one of the most sophisticated eSport matchmaking and tournament platforms, in its acquisition of US-based platform provider, eSports Hero Inc. Also advised CME in connection with a strategic investment in the company by eSports Mogul (ESM), an ASX-listed eSports media company, as well as a multi-year licensing agreement with ESM for the Asia-Pacific region
  • Represented IGT, a leading gaming technology and services company, with respect to various copyright and rights clearance issues related to use of musical compositions on certain of its gaming machines, and assisted in drafting celebrity endorsement agreements, including a multi-year licensing agreement with the rock band Aerosmith and major motion picture studio brands
  • Represented IGT in licensing and renewal agreements with some of the largest brands in the gaming industry, including:
    • Executed an exclusive License and Representation Agreement with Caesars Interactive Entertainment, Inc. for the World Series of Poker® Brand
    • Executed an exclusive License and Representation Agreement with Caesars Entertainment Operating Company, Inc. for rights to licensed content
    • Renewed IGT’s Exclusive Trademark License Agreement with Prometheus Global Media, LLC for rights to the Billboard Brand
  • Represent clients in connection with the licensing and distribution of content via Internet broadcasting, video and music on-demand and interactive television. Negotiate deals with companies in the United States and Europe, such as Amazon Instant Video
  • Represented emerging growth companies including several venture-backed software vendors in connection with the preparation and negotiation of complicated and multi-tiered software license agreements with their customers, including Fortune 100 companies UBS and Manulife Financial
  • Obtained preliminary injunction preventing opposing party from terminating certain supply and license agreements to preserve client's ability to continue the manufacture and sale of principal telephony product
  • Participated in developing municipal licensing programs for the benefit of the New York City Police and Fire Departments
  • Represented developer of low-frequency RFID tags in licensing matters
Viewpoints
All Viewpoints
U.S. Department of Commerce Weighs Patent Tax with Significant Implications for Innovation and Patent Strategy
On July 28, 2025, The Wall Street Journal reported that the U.S. Department of Commerce is considering a new proposal to impose a tax of 1% to 5%  on the “value” of issued patents. If implemented, the tax would be in addition to the existing maintenance fees currently charged at only three times after a patent issues. Background: The Existing Patent System and Economic Incentives The patent system is a core business right enshrined in the United States Constitution. Article 1, Section 8, clause 8 grants Congress the power to “promote the progress of science and useful arts” by granting exclusivity to inventors and authors for limited times. The U.S. patent system provides a tradeoff between the government and inventors. In exchange for full public disclosure of an invention, the U.S. government provides a 20-year right of exclusivity. The rationale for this system is that without some incentive for full disclosure, ideas will be kept secret, thus inhibiting technological improvements and innovation. Key Concerns: Patent Valuation and Market Impact The proposed tax raises several practical and policy concerns. First, the proposed basis for the tax is the value of the patent, a figure that is often difficult to determine. The true value of a patent may not become apparent until it can be tied to an exclusive benefit, which may not be realized until late in the 20-year patent term. Second, most patents lack any economic value as determined by success in litigation, licensing, or sale of the patent. Any deterrent value of a patent absent hard economic data (i.e., a sale, license revenue, or damages in litigation) is speculative at best. Third, a tax on patents could reduce the number of patent applications filed, especially in cash-strapped industries such as biotechnology. A value-based tax could deter patent filings among startups and companies that lack the resources to pay increased fees without clear commercial returns. That may result in companies in the innovation economy making every effort to keep technology secret, further deterring innovation. Fourth, taxing patents may have an adverse economic impact on the United States, akin to what we have observed in Europe where patents and patent applications suffer annual taxes called “annuities.” The result of the annuities in Europe is that companies limit their filings and focus their market strategy on low-tax jurisdictions, such as the United States, where they can currently file more applications at low cost. The exclusivity that results from robust patent filing here is an incentive for companies to focus on the U.S (in addition to other market incentives). Looking Ahead While the proposal is still under consideration and no formal regulatory action has been taken, stakeholders across industries should monitor developments. A tax on the perceived value of patents is likely to have an adverse impact on innovation and negative economic consequences for the United States. If implemented, the tax could represent a fundamental shift in the cost-benefit analysis of participating in the U.S. patent system. For more information or guidance on how these potential changes could affect your business or intellectual property strategy, contact one of the Sullivan lawyers listed above.
Intellectual Property Right Assignments Q&A: U.S.
The Q&A provides U.S.-focused commentary on the key issues in cross-border intellectual property rights assignments. The Q&A comments specifically on the following form documents made available through the Practical Law Cross-Border Resource Center: Assignment of intellectual property rights: Cross-border Assignment of trademarks: Cross-border Assignment of copyright: Cross-border Assignment of patents: Cross-border Assignment of industrial designs: Cross-border Waiver of moral rights: Cross-border Letter confirming assignment of intellectual property rights: Cross-border Click here to view a PDF of the Q&A, or visit Practical Law (subs. req'd.). Reproduced from Practical Law with the permission of the publishers. For further information, visit practicallaw.com.
Intellectual Property Group Earns Repeat Recognition in WTR 1000 Rankings
Boston, MA – Sullivan & Worcester LLP is pleased to announce that its Intellectual Property Group has once again been recognized in the 2026 edition of the World Trademark Review 1000: The World’s Leading Trademark Professionals (WTR 1000), a leading global directory that highlights top trademark practitioners and firms worldwide. Sullivan & Worcester earned a Bronze Band ranking for trademark prosecution and strategy. Individually, Kimberly Herman was recognized with a Gold Band ranking for prosecution and strategy in Massachusetts, and Michael Palmisciano received a Bronze Band ranking for prosecution and strategy in New York. Editorial Comments from WTR 1000 "A safe pair of hands for clients seeking high-level trademark strategy, Sullivan & Worcester delivers sharp guidance across all aspects of brand management, helping businesses confidently navigate domestic and international challenges." “'Superstar' Kimberly Herman is celebrated as 'a recognised expert in the field. She combines deep knowledge and practical skill with a client-friendly approach. She is flexible, strategic, and unafraid to be tough when the situation calls for it. Her presence offers clients confidence and clarity, making her a valuable member of this community.'" "Michael Palmisciano is a sought-after name housed at Sullivan & Worcester. 'Mike is very experienced and knowledgeable in trademark practice and is great at finding pragmatic solutions to achieve the best possible outcome for the client. His responsiveness and commercially strategic approach make him one of the best in the business.'” About Sullivan & Worcester Sullivan & Worcester (Sullivan) is a global, mid-sized law firm with lawyers in Boston, London, New York, Tel Aviv and Washington, D.C. Sullivan’s clients, including Fortune 500 companies, leading financial services firms and asset managers, boards of directors, real estate companies and emerging businesses, rely on Sullivan’s ability to navigate complex legal and operational landscapes, the impeccable judgment of its lawyers and its commitment to best‑in‑class client service.
Sullivan & Worcester’s Intellectual Property Group Honored in WTR 1000 2025 Rankings
Boston, MA – Sullivan is proud to announce that its Intellectual Property Group has been ranked in the 2025 edition of the World Trademark Review 1000: The World’s Leading Trademark Professionals (WTR 1000). The WTR 1000 is a premier directory dedicated to recognizing top-tier trademark legal service providers worldwide. Sullivan & Worcester LLP received a Bronze Band Ranking for prosecution and strategy. Kimberly Herman received a Gold Band Ranking for prosecution and strategy in Massachusetts. Michael Palmisciano received a Bronze Band Ranking for prosecution and strategy in New York. Editorial Comments from WTR 1000: "Sullivan & Worcester is a well-versed firm that balances legal risk with business practicalities to offer elevated strategic advice to its clients. Representing the firm in Boston, Kimberly Herman is appreciated for her 'clear and concise advice which is always delivered in a timely manner.' She keeps abreast of evolving laws in her clients' industries, ensuring that she delivers commercial insights carefully tailored to their needs." "Sullivan & Worcester’s Michael Palmisciano is a particular favourite for foreign companies looking to protect their marks in the United States. Well equipped to advise clients from all manner of industries, Palmisciano is praised for being 'an absolute pleasure to work with; he balances commercial realism with legal risk very well for clients and has a handle on pretty much every commercial field of interest.'" About Sullivan Sullivan & Worcester (Sullivan) is a global, mid-sized law firm with lawyers in Boston, London, New York, Tel Aviv and Washington, D.C. Sullivan’s clients, including Fortune 500 companies, leading financial services firms and asset managers, boards of directors, real estate companies, and emerging businesses, rely on Sullivan’s ability to navigate complex legal and operational landscapes, the impeccable judgment of its lawyers, and its commitment to best‑in‑class client service.