Representative Matters
$50M Multi-Site Community Service Organization Acquisitions and Dispositions
Representation of a $50M multi-site community service organization for all significant information technology acquisitions and development projects, including a series of multi-million dollar enterprise software and technology contracts with ADP and Oracle.
Asset Manager Portfolio of Hotels and Resorts Intellectual Property Protection
Representation of asset manager of portfolio of first class U.S. hotels and resorts in connection with intellectual property protection and licensing matters.
Heirs of Famous Author/Illustrator Rights to Copyrights
Represented heirs to famous author/illustrator in settlement of dispute over rights to copyrights in decedent’s works.
International Trademark and Business Model Licensing Strategy for Non-Profit
Developed and implemented an international trademark and business model licensing strategy for a New York-based non-profit organization engaged in promoting entrepreneurship through affiliates in Africa, the Middle East, Europe, the U.S., and Central and South America.
Manufacturer of Microwave Technology Treatment Systems
Represented manufacturer of microwave oven technology in collaboration with a clean coal technology company to design, develop, manufacture, and license coal treatment systems.
Non-Profit Teaching and Research Hospital Agreements
Representation of a major group of non-profit teaching and research hospitals in technology license agreements, collaboration agreements, and sponsored research agreements.
Retailers Brand Protection and Licensing Programs
Representing retailers of clothing, shoes, and accessories in connection with brand protection and licensing programs, e-commerce agreements, and various strategic ventures.
Software Vendors and Purchases Agreements
Advise software vendors and purchasers with regard to license agreements, services agreements, ASP/SaaS agreements, and website development and hosting agreements.
Trademark and Trade Dress Rights for Medical Devices
Representation of client in successfully enforcing the valuable trademark and trade dress rights associated with its medical devices.
Consortium Funding Agreement for International Medical Research
Crafted a new consortium funding agreement template for French research institute to fund transatlantic research in the areas of cardiovascular and neurovascular disease.
Formed and Represented Spin Out Company in Licensing of Medical Treatments
Formed and represented a university spin-out company to license founder’s therapeutic treatments for cataracts and dry eye from founder’s Nebraska-based medical center.
Master Service Agreement for Technology Company
Represented an online courseware developer entering into a $10M deal to provide entire K-12 curriculum to a non-profit education center.
Research, Licensing and Technology Transfer Counsel to Medical and Educational Institutions
Provide ongoing research, licensing and technology transfer counsel to academic medical centers, research institutions, and universities, advising on deals valued from thousands of dollars to over a hundred million dollars.
For-Profit Medical Journal Lifecycle
Represented a for-profit medical journal over its entire five-year lifecycle. The representation included the initial formation of a joint venture to launch the journal, the withdrawal of a co-founding partner, numerous personnel and operational matters, and the eventual sale of the journal assets to a non-profit academic consortium.
International Non-Profit Organization Intellectual Property Agreements
Represented an international non-profit organization in a regional intellectual property ownership and licensing agreement with another international non-profit. The project required establishing the scope of certain jointly owned rights based on collaborative work in one country and negotiating ground rules for each party to make independent use of that intellectual property and modified versions thereof in other territories.
Owners and Managers of Real Estate in Agreements for Artwork
Represent owners and managers of real estate in agreements to commission, license, or borrow public art, including original sculptures, murals, and other two- and three-dimensional artworks. Recent transactions have involved artworks installed in the Fenway, Seaport, and Back Bay districts of Boston and installations in three different locations on Boston’s Greenway.
Purchasers Software Development, Customization, and Licensing Transactions
Represent a wide range of purchasers in connection with software development, customization, and licensing transactions to support their business operations. Recent transactions have included the acquisition of rights to use cloud-based software and services for purposes such as accounting systems, telecommunication systems, investment management systems, tenant management systems, and web sites and e-commerce. Many of these transactions require particular sensitivity to the protection of personally identifiable information of the client and its customers and the vendor’s compliance with applicable data protection laws.
Trademark and Domain Name Matters
Handled and supervised numerous trademark and domain name matters over the past 20 years, including prosecution of applications to register trademarks in the United States, coordination of international trademark protection efforts, management of clients’ trademark portfolios, negotiation of assignments and licenses of trademarks and domain names, and counseling of clients with regard to trademark and domain name selection, registration, and disputes. Trademark portfolios under management at various times have covered over 1,000 trademarks for hundreds of different clients.
Women’s Apparel Company Intellectual Property Issues
Represented a women’s apparel company in brand protection, copyright advice, category licensing, its e-commerce fulfillment agreement, and the eventual sale of its intellectual property and other assets. The sale and license transactions were with one of the client’s licensees, which had purchased the client’s debt and was able to use that control as leverage in negotiations. Nonetheless, the Goulston & Storrs team was able to secure licenses back from the purchaser and save the client’s core business.