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Kimberly B. Herman is a partner in the Intellectual Property and Corporate Departments in the Boston office of Sullivan & Worcester LLP. Ms. Herman s practice spans across the United States, Europe and the Middle East and emphasizes the law and business of intellectual property with a particular focus on structuring and negotiating complex commercial agreements dealing with software, life sciences, biotechnology, pharmaceuticals, new media, the Internet, publishing and entertainment as well as patent, trademark and copyright matters on behalf of leading high technology, financial services, venture capital, banking, start-up and emerging companies. Representative Client Work Represents companies in the biotechnology, pharmaceutical and medical device industries with particular focus on structuring and negotiating intellectual property collaboration, partnering, joint venture, co-marketing, co-promotion and strategic alliance transactions. Also, regularly drafts and negotiates complex licensing agreements and other life science commercial transactions dealing with pharmaceutical, biotechnology and medical device product research, development and commercialization. Represents 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 many Fortune 100 companies such as UBS and Manulife Financial. Represents North American media publishing conglomerate well-known for its trend-setting magazine, retail stores and clothing line, popular counter-culture website and record label. Enforced client's intellectual property rights against sponsor of Super Bowl 2008 celebrity party. Represents clients in both the acquisition of licensing rights and the exploitation of those rights. Routinely prepares and negotiates agreements for technology vendors including license and technology transfer agreements, distribution, manufacturing, co-packing, supply, development, OEM, VAR, and joint venture agreements. Advises clients as to the benefits and dangers of using open source software. Represents multi-national gaming company in connection with the preparation and negotiation of trademark and brand licensing agreements as well as product development agreements. Acts as outside intellectual property counsel for several high profile companies including GTECH Corporation, LoJack Corporation and Bain & Company. Manages all aspects of the Boston office's trademark and copyright practice focusing on strategic portfolio development, protection and enforcement. Manages worldwide trademark portfolios for several large public and privately held companies. Provides advice to magazine publishing companies on editorial issues including 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 in order to assess risks and avoid litigation. Represents well-known author of etiquette publications in connection with exploitation of author s rights in mass media. Negotiated writer/performer agreement for author with NBC Universal Television Studio Digital Development LLC. Routinely advises clients in responding to claims of infringement of adversely held trademarks and copyrights and prepare and respond to cease and desist letters regarding same. Provides advice on litigation settlements involving licensing. Advises multimedia companies in drafting and negotiating production and distribution agreements and sponsorships, endorsement and talent agreements relating to both traditional and online distributing of content. Negotiates and drafts podcast, webisode and blog agreements. Conducts audits and provides strategic counseling to assist clients in identifying, protecting and exploiting key intellectual property assets. Represented 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 developer of neonatal and prenatal screening software on dispute with former employee concerning ownership of intellectual property including source code. Represented major manufacturer of spectroscopy detection equipment in a patent infringement action seeking $130 million in damages in the U.S. District Court for the Eastern District of Tennessee. Successfully negotiated $10 million dollar settlement. Represented well-known cookie manufacturer with respect to licensing trade dress rights to co-packers. Handled numerous Internet-related transactions including domain name acquisition and litigation (including UDRP proceedings); online contests, agreements involving co-branding; joint site development; web hosting; web site development; content licensing and development; and copyright litigation and advice with emphasis on the application of the Digital Millennium Copyright Act. Bar & Court Admissions Massachusetts, 1995 U.S. District Court, District of Massachusetts U.S. Court of Appeals for the Federal Circuit Publications Verizon GPL Settlement Highlights Necessity of Open Source Compliance, S&W Client Advisory (March 25, 2008) New Patent Rules Significantly Alter U.S. Patent Prosecution Practice, S&W Client Advisory (October 4, 2007) SCO Update, S&W Client Advisory (August 22, 2007) Open Source Software GPLv2 vs. GPLv3, S&W Client Advisory (August 14, 2007) Is Open Source A Trap For Commerical Software Vendors?, Mass High Tech (April 5, 2004) "Enforcing Licensing of Downloaded Software Creates Challenges for Companies," Mass High Tech (October 9, 2001) ".biz Address Absorbs Lawyers, Not Marketers," Boston Business Journal (August 17-23, 2001) "Critical Audit," The Deal.com (July 12, 2001) "Acquisition of IP Assets Requires Due Diligence Process," Mass High Tech (July 9, 2001) Teaching & Speaking Engagements 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) Awards & Honors "Rising Star," Massachusetts Super Lawyers (2005, 2006, 2007) Professional & Civic Activities International Trademark Association Computer Law Association Massachusetts Bar Association Education J.D., Western New England College School of Law, 1995 B.A., cum laude, Northeastern University, 1992 |
