Intellectual Property

Intellectual Property

Corporations, startup businesses and individuals rely on Doerner to protect their intellectual property and trade secrets.  Along with extensive copyright protection capabilities that support a robust media law practice, our lawyers have established and asserted trademarks, and managed trademark portfolios for a variety of organizations. We use the latest tools so that trademark portfolios get assessments and renewals that are timely and complete. 

Doerner is supported by a global network of correspondent law firms to prosecute patents that protect intellectual property assets or that reduce infringement risks using carefully drafted licensing agreements. We help clients safeguard their patent-related trade secrets through effective non-competition agreements and other confidentiality tools. With the help of experienced employment lawyers, we help our clients prevent the disclosure of sensitive information, or to secure their rights to all legitimate information from new hires. 

We integrate our services to protect trademarks, copyrights, patents and trade secrets in ways that meet a client’s business objectives.  Our firm has offered intellectual property audits, a due diligence procedure in which our lawyers work in collaboration with clients to identify any necessary steps to change the way they protect IP rights – including trade secrecy procedures, copyright and trademark registration, employment agreements and infringement enforcement.

Our lawyers identify and resolve any actual or potential intellectual property problem involving copyrights or trademark infringement, and protect our clients from infringement or disparagement by competitors.   And in traditional publishing we ensure that our clients have proper registration with the U.S. Copyright Office covering all works of authorship, including academic publications.

Recent Doerner Experience

  • Handled multimedia software licensing issues, particularly in relation to video game development and production.
  • Prepared talent agreements and rights protection involving trademarks and copyrights for motion pictures and musical talent.
  • Advised one of Oklahoma’s largest Native American tribes on copyright issues.
  • Represented national sports entertainment and video entities in the successful resolution of federal court lawsuit involving copyright infringement claims.
  • Offered intellectual property advice and litigation assistance to universities, libraries and other nonprofit organizations.
  • Advised Vietnam's Ministry of Education and Training regarding the development and protection of intellectual property within the country's university system.

Top Areas of Focus

  • Registration and enforcement of copyrights, trademarks and patents.
  • Due diligence review of intellectual property during mergers, acquisitions, licensing arrangements and other business transactions.
  • Protection of trade secrets and enforcement of confidentiality agreements.
  • Provide comprehensive copyright counsel to authors and publishers.
  • Guidance on intellectual property aspects of multimedia use, both online and in traditional broadcast media.

Case Study:  Securing Reversal of an Adverse Trademark Infringement Judgment

  • Opportunity:  Our client, a small software developer, owned a trademark used in connection with mainframe software.  The company filed a petition with the Trademark Trial and Appeal Board’s (TTAB) to cancel an identical trademark registration owned by the board of regents of a major university system for a different type of software.  After the TTAB granted the cancellation petition, the university system sued in federal district court in its home state for reversal.
  • Solution:  When the district court supported the university, we took our client’s claims to the Seventh Circuit Court of Appeals. After a second rehearing the court reversed the district court and found for our client. The circuit court held that the university could have brought a state court action against our client before the cancellation proceedings began or appealed the TTAB decision directly to the Federal Circuit.  By going to the district court, the circuit court concluded that the university voluntarily invoked federal jurisdiction and, hence, waived its sovereign immunity.   
  • Result:  The circuit court reversed the district court’s grant of summary judgment, reinstated our client’s counterclaims and remanded for further proceedings.

Note:  This case is Board of Regents of the University of Wisconsin System v. Phoenix International Software, Inc., 653 F. 3d 448 (7th Cir. 2011)

Take Action

Intellectual property assets represent a major investment of time and money for any organization. Doerner’s integrated IP capability offers our clients a multi-disciplinary approach to the key issues in the development, protection and profitable exploitation of their intellectual property assets.  Our approach reflects the firm’s diverse strengths in areas ranging from employment law to litigation to business transactions.

Key Contacts

P: 918.591.5316
F: 918.925.5316
Managing Partner
P: 918.591.5308
F: 918.925.5308

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Justin B. Munn

Justin B. Munn

Justin represents clients throughout Oklahoma in family law, civil litigation, guardianships, adoptions, estate planning, trust and probate matters. 

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