Intellectual Property and Technology Transaction Counsel for Nonprofits



Intellectual property.

We represent clients in all aspects of intellectual property law, including patents, technology licensing and transactions, trademark, copyrights, domain names, trade secrets and antitrust and unfair competition.

More than 60 Venable attorneys advise nonprofit clients on intellectual property law and address the unique issues that nonprofits face, such as:

  • the role that directors, committee members and volunteer authors and speakers play in the creation of copyrightable works;
  • descriptiveness of nonprofit trademarks;
  • use of association logos by members;
  • peculiarities of certification and collective marks; and
  • unique social media issues.

We prepare trademark, copyright and patent registration applications (both in the United States and in dozens of foreign countries); offer opinions regarding trademark, copyright and patent clearances, infringement, validity and enforceability; and prosecute and defend intellectual property claims in court and other forums.

For instance, we manage the worldwide trademark portfolio of the Project Management Institute; conducted an intellectual property audit for the Refrigeration Service Engineers Society; provided staff training to the American Orthotic and Prosthetic Association on copyright and trademark practices and compliance; and regularly assist the Romance Writers of America and The Authors Coalition on copyright protection and enforcement.

We also negotiate and draft domestic and international intellectual property and technology licenses, technology-transfer contracts, joint venture agreements and research contracts. Our experience with every aspect of complex technology-related contracts is deep and extensive.

We are fluent in all aspects of domain name protection and enforcement, and regularly arbitrate and litigate claims in this area.

Electronic communications and privacy law.

Our attorneys are well versed on federal and state laws and regulations governing electronic mail (such as the CAN-SPAM Act), faxes and telemarketing (such as the Telephone Consumer Protection Act), and their unique applicability to nonprofit organizations. For instance, we work with both the Direct Marketing Association and the American Association of Retired Persons in these areas.

We also have extensive experience with privacy issues - both from a compliance and policymaking persepective - and have one of the foremost practices in the country in this area.

Finally, we have done an ever-increasing amount of work – both for clients and in connection with speeches and articles – with respect to the legal aspects of social media and social networking sites when used by associations and other nonprofits.  The legal issues in this area are diverse, complex, and very much still developing, but yet are critically important for virtually every nonprofit that ventures into this arena.  From copyrights to trademarks to defamation to privacy to employment matters, there is no shortage of challenges and opportunities for nonprofit organizations.