Sullivan
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Biography

Licensing and Technology Transactions

  • A Finnish clinical-stage drug delivery and development company, in negotiating an exclusive license agreement with a global pharmaceutical company, with potential milestone payments to our client of up to $200 million in addition to royalties on net sales.
  • A famous kitchen and home goods brand in negotiation and drafting of exclusive product category trademark license agreements.
  • A startup consumer packaged goods (CPG) information supply chain provider, in commercial and intellectual property matters, platform development, customer and supplier agreements, and branding.
  • A U.S. preclinical stage gene therapy company focused on hearing loss treatments in its negotiation of an exclusive patent license with a German university, and subsequent asset sale to an Austrian medical device company.
  • DarioHealth Corp. in negotiating a strategic partnership with Amwell to deliver Dario's market-leading cardiometabolic solution to Amwell customers.
  • An enterprise software intelligence platform provider in negotiating and drafting outbound software license agreements, SaaS agreements and professional services agreements.
  • An Israeli provider of next-generation satellite communication systems, in its negotiation of a commercial agreement with a Canadian space operations and satellite systems provider.
  • A national non-profit organization as outside general counsel, including in negotiating and drafting master services agreements, SaaS agreements, software and technology licensing agreements and non-disclosure agreements.
  • A European connected health provider for diabetes health management and monitoring, in drafting U.S. form of master subscription agreement for enterprise customers.

Sports, Media, Entertainment and Advertising

  • The Association of Volleyball Professionals (AVP) in negotiating a content distribution deal with ESPN for streaming and broadcast of the 2023 AVP Pro Series Beach Volleyball Tour on various platforms including ESPN+.
  • An English Premier League team in U.S. trademark strategy, prosecution and enforcement matters, including before the Trademark Trial and Appeal Board.
  • A digital adtech ecommerce monitoring and intelligence provider, in negotiating and documenting numerous enterprise software-as-a-service agreements with its global Fortune 500 customers.
  • A UK-based news organization in negotiating and drafting literary option agreements with film and television studios including Disney, Universal, Warner Bros., Sony and CBS.
  • A New York- and Singapore-based creative agency in drafting and negotiating creative services agreements with major global brands.
  • A UK television production studio in connection with entry into the U.S. market, including branding and merchandise strategy.
  • A global digital media and broadcasting company in clearance of news and documentary video content, including copyright fair use, trademark, publicity, privacy and First Amendment issues.
  • An advertising and white label content studio in pre-publication review of video content for brands including Google, IBM, Nike, Adidas, Geico and L’Oréal.
  • A global youth media company in its acquisition of trademark rights and domain names and negotiation of manufacturing, sales, distribution and licensing agreements.

Trademark and Copyright Advising and Enforcement

  • Provide U.S. and international trademark clearance, prosecution, and maintenance for clients across diverse industries, including media and entertainment, gaming and gambling, fantasy sports, consumer products, fitness, apparel, software and technology, consulting and professional services, food and beverage, and financial services.
  • Create and implement complex strategies for the introduction, development, management, enhancement, and enforcement of core brand rights and large portfolios in the United States and globally.
  • Work closely with in-house counsel, managers, and marketing executives on the day-to-day management of worldwide trademark portfolios, including international clearance and registration, worldwide policing, scope of rights assessment and expansion, and transactional matters related to brands.
  • Manage hundreds of pre-litigation trademark, copyright, and domain name enforcement actions worldwide, including through cease-and-desist letters, oppositions, cancellations, and UDRP actions.
  • Advise clients on brand strategy, including trademark selection, usage guidelines, and marketing strategies to enhance brand visibility and compliance.
  • Navigate complex international trademark laws and regulations, assisting clients with global trademark registration and enforcement.
  • Advised Bally's Corporation, Bain & Company, Uncommon Creative Studio, Vice Media, and The Guardian, among others, in Trademark Trial and Appeal Board proceedings.
  • Represent clients in volume antipiracy programs, including converting infringers of valuable software into paid licensees.
  • Represented a brand licensing company in its acquisition of a legacy kitchenware brand and related trademark rights in 16 countries.

    Matters

    Licensing and Technology Transactions

    • A Finnish clinical-stage drug delivery and development company, in negotiating an exclusive license agreement with a global pharmaceutical company, with potential milestone payments to our client of up to $200 million in addition to royalties on net sales.
    • A famous kitchen and home goods brand in negotiation and drafting of exclusive product category trademark license agreements.
    • A startup consumer packaged goods (CPG) information supply chain provider, in commercial and intellectual property matters, platform development, customer and supplier agreements, and branding.
    • A U.S. preclinical stage gene therapy company focused on hearing loss treatments in its negotiation of an exclusive patent license with a German university, and subsequent asset sale to an Austrian medical device company.
    • DarioHealth Corp. in negotiating a strategic partnership with Amwell to deliver Dario's market-leading cardiometabolic solution to Amwell customers.
    • An enterprise software intelligence platform provider in negotiating and drafting outbound software license agreements, SaaS agreements and professional services agreements.
    • An Israeli provider of next-generation satellite communication systems, in its negotiation of a commercial agreement with a Canadian space operations and satellite systems provider.
    • A national non-profit organization as outside general counsel, including in negotiating and drafting master services agreements, SaaS agreements, software and technology licensing agreements and non-disclosure agreements.
    • A European connected health provider for diabetes health management and monitoring, in drafting U.S. form of master subscription agreement for enterprise customers.

    Sports, Media, Entertainment and Advertising

    • The Association of Volleyball Professionals (AVP) in negotiating a content distribution deal with ESPN for streaming and broadcast of the 2023 AVP Pro Series Beach Volleyball Tour on various platforms including ESPN+.
    • An English Premier League team in U.S. trademark strategy, prosecution and enforcement matters, including before the Trademark Trial and Appeal Board.
    • A digital adtech ecommerce monitoring and intelligence provider, in negotiating and documenting numerous enterprise software-as-a-service agreements with its global Fortune 500 customers.
    • A UK-based news organization in negotiating and drafting literary option agreements with film and television studios including Disney, Universal, Warner Bros., Sony and CBS.
    • A New York- and Singapore-based creative agency in drafting and negotiating creative services agreements with major global brands.
    • A UK television production studio in connection with entry into the U.S. market, including branding and merchandise strategy.
    • A global digital media and broadcasting company in clearance of news and documentary video content, including copyright fair use, trademark, publicity, privacy and First Amendment issues.
    • An advertising and white label content studio in pre-publication review of video content for brands including Google, IBM, Nike, Adidas, Geico and L’Oréal.
    • A global youth media company in its acquisition of trademark rights and domain names and negotiation of manufacturing, sales, distribution and licensing agreements.

    Trademark and Copyright Advising and Enforcement

    • Provide U.S. and international trademark clearance, prosecution, and maintenance for clients across diverse industries, including media and entertainment, gaming and gambling, fantasy sports, consumer products, fitness, apparel, software and technology, consulting and professional services, food and beverage, and financial services.
    • Create and implement complex strategies for the introduction, development, management, enhancement, and enforcement of core brand rights and large portfolios in the United States and globally.
    • Work closely with in-house counsel, managers, and marketing executives on the day-to-day management of worldwide trademark portfolios, including international clearance and registration, worldwide policing, scope of rights assessment and expansion, and transactional matters related to brands.
    • Manage hundreds of pre-litigation trademark, copyright, and domain name enforcement actions worldwide, including through cease-and-desist letters, oppositions, cancellations, and UDRP actions.
    • Advise clients on brand strategy, including trademark selection, usage guidelines, and marketing strategies to enhance brand visibility and compliance.
    • Navigate complex international trademark laws and regulations, assisting clients with global trademark registration and enforcement.
    • Advised Bally's Corporation, Bain & Company, Uncommon Creative Studio, Vice Media, and The Guardian, among others, in Trademark Trial and Appeal Board proceedings.
    • Represent clients in volume antipiracy programs, including converting infringers of valuable software into paid licensees.
    • Represented a brand licensing company in its acquisition of a legacy kitchenware brand and related trademark rights in 16 countries.

      Matters

      Nonprofit Network Drives Skills-First Movement for a More Equitable and Inclusive Future Workforce

      Sullivan acts as outside general counsel for Skillsright, Inc., a nonprofit coalition of the country’s top employers and their CEOs with a mission of driving a skills-first movement to unlock career opportunities for talent without four-year degrees, for a more equitable and inclusive future workforce. Sullivan handles a wide range of matters including obtaining the organization’s nonprofit (Internal Revenue Code Section 501(c)(3)) status, advising on a variety of legal issues associated with the organization’s work, negotiating intellectual property rights, drafting employment offers and dealing with related employment and benefits issues, overseeing all contracting issues and advising on corporate governance.

      Kimberly Herman, David A. Guadagnoli, Judith G.H. Edington, Erika L. Todd and Michael S. Palmisciano

      Matters

      Matters