WTR 1000: The World’s Leading Trademark Professionals 2022 - Kimberly B. HermanKim is a corporate attorney with a focus on contract negotiation and intellectual property. She leads Sullivan's Intellectual Property, Technology and Media & Entertainment Groups. Her practice spans the United States, Europe, Asia and the Middle East. Kim’s practice is varied and extensive and includes advising clients on numerous issues relating to licensing, copyrights, trademarks, patents and trade secrets. She also has specialized expertise in business strategy and negotiating in-bound and out-bound transactions and drafting related agreements for a wide range of commercial deals and litigation settlements in the media and entertainment, software (including open source, SaaS and business software platforms) and life sciences industries.

Kim is also well-versed in providing legal advice concerning the ever-changing state and federal laws applicable to online sports betting, online gambling and fantasy sports including the representation of a billion-dollar multi-national gaming and lottery services company in connection with its licensed content deals. Kim’s gaming clients include IGT, Bally’s Corporation and Novomatic.

On any given day, Kim may go from working on a film production agreement for a streaming platform in the morning to a clinical trial agreement for a life sciences or medical device company in the afternoon to evaluating state gaming regulations in the evening.

As acting General Counsel for a Series C funded technology company in Boston, Kim has also become well-versed in juggling the multitude of legal issues that GCs face on a daily basis. This experience has reinforced her ability to provide innovative and efficient solutions to her clients.

In particular, Kim’s practice focuses on structuring and negotiating complex commercial transactions dealing with media and entertainment (including representation of clients in the news, documentary, motion picture and cable network industries), First Amendment and privacy issues, gaming, sanctioned gambling and e-sports, software, music and art on behalf of leading media, entertainment, technology and consumer-products companies, as well as filmmakers, project financiers, artists, museums and art galleries. This representation extends to Kim assisting her clients in exploiting their brands, content and programming into different markets and entertainment distribution platforms through a variety of licensing, merchandising, publishing, sponsorship, agency and endorsement deals.

Kim conducts audits and provides strategic counseling to assist clients in identifying, protecting and exploiting key intellectual property assets and represents clients in a wide variety of trademark and copyright enforcement and defense matters. In addition, she advises clients in responding to claims of infringement of adversely held trademarks and copyrights, prepares and responds to cease and desist letters regarding the same, and provides advice on litigation, litigation settlements and mediation.

Kim has been ranked in World Trademark Review 1000, The World's Leading Trademark Professionals each year since 2015. Clients describe her as "incredibly responsive" and "always looking out for your company's interest." She has also been recognized in the WTR's Global Leaders Guide, which identifies the "best of the best" in trademark practice. In 2021, Kim was named a “Go To IP Lawyer” by Massachusetts Lawyers Weekly.

Kim is a guest speaker at Northeastern University in Boston, where she speaks on developments in intellectual property law, copyright, fair use and First Amendment issues. She completed the courses "Museums and the Law;" "Museum Exhibition Content Development;" "History of Museums;" and "Collections Management: Issues and Solutions" at Harvard University.

Representative Client Work

Media, Entertainment and Copyright Matters
  • Represents the media and publishing interests of Lynn Roy, the mother of Conrad Roy III, whose former girlfriend was convicted by the Massachusetts Supreme Judicial Court in connection with her role in the texting-suicide of Conrad. The HBO documentary I Love You, Now Die: The Commonwealth v. Michelle Carteris a two-part documentary that treats difficult questions about social media, mental health and the use of technology and whether someone can be held liable for causing the suicide of another. See here: https://www.hbo.com/documentaries/i-love-you-now-die-the-commonwealth-v-michelle-carter.
  • Successfully represented the estate of a world-renowned Israeli artist Menashe Kadishman in a copyright infringement dispute against a global television network for its unauthorized use of the artist's magnum opus Shalekhet (Fallen Leaves)in the network's wildly popular television series. She also represents street artists in connection with misappropriation of their works by big businesses, including evaluation of whether the Visual Artists Rights Act may offer protection. She also recently settled a copyright dispute against NBCUniversal for its use of her client's recognized street art in a popular television series.
  • Represents a number of well-known film directors, including Oscar winner Errol Morris, with respect to film copyright clearance and title matters. In addition, she represents investors and filmmakers in connection with the adaptation of books into feature films.
  • Represents a rights holder in connection with the works of master mystery writer John Bellairs.
  • Provides counsel to media and other content publishers in the areas of trademark, copyright clearance and fair use, and frequently conducts pre-publication and pre-broadcast content reviews for television, cable and Internet networks. Kim regularly conducts pre-publication reviews of content on the following platforms: Facebook, Instagram, Snapchat, Twitter, YouTube and others.
  • Provides advice to magazine publishing companies, television networks and content publishers on editorial issues, privacy and publicity rights, defamation, fair use and other potential litigation matters. Advises clients on content and manner of advertising in print and on product packaging to assess risks and avoid litigation.
  • Regularly provides advice and counseling to entertainment and media clients, including television and film production companies; film and television producers; on-air talent; as well as investors, developers and licensees of film, television, music and Internet content.
  • Drafts and negotiates music licensing agreements, talent agreements, event production agreements, including live event contracts, life story rights agreements and other entertainment-related contracts.
  • Advises multimedia companies in drafting and negotiating production and distribution agreements, syndication agreements, insertion orders as well as sponsorships and endorsement agreements relating to both traditional and online distribution of content.
  • Represents companies in the United States and Europe including independent production companies with the licensing and distribution of content via Internet broadcasting, streaming video, music on-demand and interactive television, including VOD. Also negotiates manager, performer and producer agreements for film and video projects.
Gaming and Online Activities
  • Recently 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., and 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.
  • Provides advice relating to compliance with the ever-changing state and federal laws in the United States regarding Internet gaming including the representation of a billion-dollar multi-national gaming and lottery services company in connection with its licensed content deals.
  • Represents 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 electronic devices.
  • Assists clients in developing, implementing and administering all aspects of promotions, including auctions, contests, and sweepstakes. Drafts promotion rules to protect clients’ interests and reviews advertisements such as direct mail, websites and banner advertisements related to promotions.
  • Represents clients in the development and commercialization of mobile apps through Facebook, Apple, Google Play and other social media sites.
  • Represents consumer products companies in connection with credit card processing activities and gift card initiatives related to the sale of goods online and through mobile apps.
  • Reviews advertisements and advises on unfair and deceptive trade practices. Counsels clients on compliance issues relating to the Federal Trade Commission as well as state and other regulatory laws.
Software and Hardware Deals
  • Represents software clients in the United States and around the world in connection with the drafting and negotiation of a wide array of commercial contracts including Tier 1 customer agreements, VAR/OEM/distributor agreements, master services agreements, subcontract agreements, alliance partner agreements, offshore IT and development outsourcing agreements, hosting agreements and data access agreements with companies such as The Home Depot, Inc., The Neiman Marcus Group, Tiffany and Company, Visa International Service, ExxonMobil Global Services Company, Fujitsu America, Inc., PayPal, Inc., Supervalu, Inc., IBM, Hewlett Packard Company, 7-Eleven, Inc., Best Buy Purchasing LLC, Target Corporation and Walgreen Co.
  • Handles the negotiation of numerous multi-million dollar software deals for clients involving complex agreements for technology and emerging company vendors including license and technology-transfer agreements, distribution, manufacturing, co-packing, supply, development and joint venture agreements.
  • Advises business development executives on strategies for commercializing software products and establishing national and international distribution. Strategies include inbound and outbound licensing, sales representative programs and the use of OEMS, resellers and strategic partners.
  • Represents OneTen Coalition, a startup 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.
  • Establishes strategic alliances and partnerships for the development of new software and hardware products and expansion of existing product lines. Drafts and reviews proposals, evaluates potential partners in conjunction with clients and assists clients in selecting the best partners to achieve their goals.
  • Advises clients as to the benefits and drawbacks of using open-source software. Conducts open-source compliance audits and establishes open-source use policies and procedures.
  • Represents a billion dollar multi-national gaming and lottery services company in connection with a wide array of software, hardware and distribution deals.
Trademark and Domain Names Matters
  • Manages worldwide trademark portfolios of several internationally known brands.
  • Manages the worldwide trademark portfolios of Bally’s Corporation and Bain & Company, among others, including in connection with defensive and offensive enforcement proceedings in the United States and abroad.
  • Routinely engaging in cease and desist campaigns for a global youth media company that includes print, event, music, online, television, and feature film divisions that operate in more than 30 countries, in connection with enforcement of its trademarks, and routinely filing oppositions in support of such campaigns.
  • Represents companies in connection with the preparation and negotiation of trademark and brand licensing agreements as well as product development agreements.
  • Handles numerous Internet-related transactions including domain name acquisition and litigation (including UDRP proceedings); online contests and agreements involving co-branding; joint site development; website hosting; website development; content licensing and development; and copyright litigation and advice with emphasis on the application of the Digital Millennium Copyright Act.
Life Sciences and Healthcare Matters
  • Represents companies in the biotechnology, pharmaceutical and medical device industries with a particular focus on structuring and negotiating complex licensing agreements including, but not limited to, joint venture agreements, clinical trial agreements, contract manufacturing agreements and strategic alliances.
  • Represented an Israeli company developing a blood test to diagnose early-stage lung cancer in connection with the negotiation and drafting of a joint research and development agreement focused on the development and commercialization of protein biomarker-based diagnostics.
  • Represented a company dedicated to the design, development, manufacturing and marketing of products for the treatment of spinal disorders in negotiating an exclusive worldwide license with the Cleveland Clinic for an innovative robotic-assisted, percutaneous, interbody spinal fusion technology.
  • Represented a company in negotiating an exclusive license with Xenova, Ltd., a U.K.-based biopharmaceutical company focused on the development of novel drugs to treat cancer.
  • Represented a multinational life sciences company in a misappropriation of trade secrets case under the “inevitable disclosure” doctrine in connection with the unauthorized disclosure of trade secret information obtained during licensing negotiations.
  • Advised a developer of neonatal and prenatal screening software in a dispute with former employee concerning ownership of intellectual property, including source code.
  • Represented a major manufacturer of spectroscopy-detection equipment in a patent infringement action in the U.S. District Court for the Eastern District of Tennessee. Successfully negotiated a $10 million settlement.
Mergers & Acquisitions
  • 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 PayPal Media Network in its acquisition by PayPal, a division of eBay, Inc.

  • Manages intellectual property diligence for clients' acquisition and divestiture activities as well as financings and credit facilities.

Bar & Court Admissions

  • Massachusetts
  • U.S. District Court, District of Massachusetts
  • U.S. Court of Appeals for the Federal Circuit

Education

  • J.D., Western New England College School of Law
  • B.A., cum laude, Northeastern University

Community Engagement

  • Board of Directors, Riverside Community Care
  • Member, International Masters of Gaming Law
  • International Trademark Association
  • Computer Law Association
  • Massachusetts Bar Association
  • Boston Bar Association
  • Licensing Executives Society (U.S.A. and Canada), Inc.
  • International Association of Privacy Professionals (IAPP)
  • Academic Committee, International Trademark Association, 2010-2011  
  • Member, American Intellectual Property Law Association (AIPLA)
  • Board Member, Needham Steps Up

Awards & Honors

  • Boston Magazine 2021 Top Lawyers, Corporate Law (2021)
  • World Trademark Review 1000, The World's Leading Trademark Professionals (2015-2021)
  • Massachusetts Lawyers Weekly, "Go To" Lawyer, Intellectual Property (2021)
  • World Trademark Review, Global Leaders Guide (2021)

Seminars & Presentations

  • Frequent lecturer on intellectual property and licensing matters, Boston University School of Law
  • Faculty member, MCLE's annual New England Intellectual Property Law Conference
  • Frequent speaker on technology licensing, trademarks, domain name issues and other intellectual property matters to organizations such as Massachusetts Continuing Legal Education
  • "Parody" Massachusetts Continuing Legal Education Intellectual Property Conference, Boston, Massachusetts (June 2002)
  • "Bankruptcy and the Intellectual Property License: A Licensee's Perspective," Massachusetts Continuing Legal Education Intellectual Property Conference, Boston, Massachusetts (June 2001)
  • "Life after ICANN and the Anticybersquatting Act: Defining 'Bad Faith' in Cyberspace," Massachusetts Continuing Legal Education Intellectual Property Conference, Boston, Massachusetts (June 2000) 

Practices

Industries

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