Few Businesses Realize Full Potential of Royalty Revenues, says Venable Licensing Group Chair Joshua Kaufman

4 min

WASHINGTON, DC (June 3, 2004) – Commercial licensing is big business and it is getting bigger, but many companies and artists are not poised to take full advantage of opportunities, says Venable partner Joshua Kaufman.

A critical component of Venable’s new Consumer Products and Services Practice Area, the Licensing Group is an interdisciplinary group of attorneys providing counsel to retailers, designers, artists and others involved in the burgeoning, multi-billion dollar licensing industry. Mr. Kaufman heads the group.

Venable’s Licensing Group will send at least five attorneys to the Licensing Industry Merchants Association 2004 Convention, where they will be speaking with exhibitors and attendees from the press. The convention takes place June 8 - 10 at New York City’s Jacob K. Javits Convention Center.

“Intellectual property continues to gain importance in the business world generally,” said Mr. Kaufman, who has negotiated licensing deals with many of the largest companies in the U.S. Indeed, Venable’s Licensing Group is comprised of not only traditional IP licensing attorneys who practice in areas such as trademarks, patents, publicity and copyright, but also lawyers who practice in other critical areas such as advertising/marketing, import/export, bankruptcy, unfair trade, franchising, offshore transactions, tax and related regulatory areas.

With so much cross-selling and merchandising in America’s business marketplace, one of Venable’s primary goals is to find ways to better serve retailers and licensees, as well as licensors, designers and artists who create many of the country’s consumer products.

“We believe it’s important to treat licensing holistically and provide all of these services to the business and artistic community,” Mr. Kaufman said. “We wanted to break down the barriers that exist between the different legal specialties to provide better, more comprehensive advice to clients.”

The licensing industry makes up a significant part of the retail business and is an important segment of IP revenue. According to the Licensing Industry Merchants Association Survey, $110.7 billion of licensed products were sold in the United States in 2002 (the most recent year in which figures are available), and there were $5.8 billion in royalties paid on those products.

Venable enjoys widespread recognition for its work in the trademark, copyrights and licensing area:

  • Recently named one of the top trademark registration firms in the country by NameProtect, a leading research and monitoring company.
  • One of the leading franchise practices in the country.
  • One of the country’s most extensive copyright/infringement practices.
  • Successfully represented Wal-Mart in its Supreme Court case against Samara Brothers, which Legal Times named the most important trademark case litigated since 1998.
  • Obtained a unanimous verdict in the Supreme Court in the landmark case CCNV v. Reid, in which the Court decided that, by default, creators, not employers, hold copyrights on creative work done in the course of their employment.

“Businesses have become aware of the value of their brands; we hope to help companies fully realize the value of all their IP assets through more strategic use of licensing,” Mr. Kaufman said.

Besides Mr. Kaufman, Venable has several other attorneys attending the licensing show. They include:

  • Marcia Auberger, who has successfully prosecuted and obtained domestic registration of numerous trademarks and service marks for Venable clients. She also counsels clients in the field of copyright law, trademark and copyright litigation.
  • Roger Colaizzi, a seasoned trial lawyer with significant experience in intellectual property rights litigation, including trademark, trade dress, patent, copyright, false advertising, unfair competition and Lanham Act claims.
  • Jeff Eichen, who represents manufacturers and other businesses in connection with intellectual property litigation, licensing and counseling matters. Mr. Eichen focuses on the cosmetics, pharmaceuticals, computer and toy industries. His diverse practice includes significant litigation experience in patent, trademark, copyright and trade secret law, as well as negotiating patent and trademark licensing agreements.
  • Jeff Knowles, who manages Venable’s Government Division and heads the firm’s Advertising and Marketing Practice Group. Mr. Knowles focuses on national television advertising, direct-to-consumer marketing and e-commerce. He founded and served for 13 years as general counsel to the Electronic Retailing Association (formerly the National Infomercial Marketing Association).

Other core members of the Licensing Group, not attending the show but who are available for comment, include:

  • Lindsay Meyer, who heads Venable’s International Trade Practice and is a licensed U.S. Customs broker. Ms. Meyer assists companies with efficiently importing and exporting goods under U.S. laws and regulations. She develops and conducts compliance programs and also assists in defending clients in unfair trade actions alleging infringement of intellectual property rights.
  • Charles Rosolio, who heads Venable’s Franchise Practice. For those companies selling goods or services associated with a trademark Mr. Rosolio conducts a core analysis of their business model to determine if they are operating as a “hidden franchise.” He also advises on FTC regulatory and state disclosure requirements.

One of the American Lawyer’s top 100 law firms, Venable LLP has attorneys practicing in all areas of corporate and business law, complex litigation, intellectual property and government affairs. Venable serves corporate, institutional, governmental, nonprofit and individual clients throughout the U.S. and around the world from its headquarters in Washington, D.C. and offices in California, Maryland, New York and Virginia.