Kimberly B. Herman

Representative Client Work

Mergers & Acquisitions

• Represented PayPal Media Network (formerly Where, Inc.), a Boston-based location media company, in its acquisition by PayPal, a division of eBay, Inc.

Software, Gaming and New Media

• Represents lottery systems suppliers, video lottery terminal manufacturers, gaming software developers and software services providers.
• Represents a popular music streaming service in connection with a wide range of licensing issues including credit card processing and gift card initiatives.
• Represents clients in connection with the licensing and distribution of content via Internet broadcasting, video and music on-demand and interactive television. Negotiated deals with companies in the United States and Europe such as Amazon Instant Video.
• Represents clients in 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.
• 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 Whole Foods Market Services, Inc., Tiffany & Company, Hyatt, Symphony Teleca Corp., VeriFone, Inc., UBS, HP and EMC.
• Advises clients as to the benefits and drawbacks of using open-source software. Conducts open-source compliance audits and establishes-open source use policies and procedures.
• Represents well-known consumer-products companies in connection with in and out licensing of famous brands such as Who Wants To Be A Millionaire, World Series of Poker, Larry the Cable Guy, PopCap Games, Crayola, The Three Stooges, American Idol and Aerosmith.
• Routinely prepares and negotiates agreements for technology and gaming vendors with companies such as The Walt Disney Company, Fremantle Media North America, Inc., C3 Entertainment, Inc., Nestle S.A., MGM Consumer Products and Harrah’s License Company, LLC.
• Advises multimedia companies in drafting and negotiating production and distribution agreements, as well as sponsorships and endorsement agreements relating to both traditional and online distribution of content.
• Represents independent production companies and distributors of video entertainment by assisting clients with licensing through both traditional new media such as Internet, Cable, Satellite, TV and DVD. Also provides and negotiates manager, performer and producer agreements for film and video projects. 
• Handles numerous Internet-related transactions including domain name acquisition and litigation (including UDRP proceedings); online contests and agreements involving co-branding; joint site development; Web site hosting; Web site development; content licensing and development; and copyright litigation and advice with emphasis on the application of the Digital Millennium Copyright Act.
• Provides advice to magazine publishing companies on editorial issues, 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 to assess risks and avoid litigation.
• Routinely advises clients in responding to claims of infringement of adversely held trademarks and copyrights and prepares and responds to cease and desist letters regarding same. Provides advice on litigation settlements involving licensing.
• Asserts claims on behalf of clients relating to anti-counterfeiting and anti-piracy efforts.
• Represents a well-known author of etiquette publications in connection with exploitation of author’s rights in mass media. Negotiates and drafts podcast, webisode and blog agreements. Negotiated writer/performer agreement for author with NBC Universal Television Studio Digital Development LLC. 
• Conducts audits and provides strategic counseling to assist clients in identifying, protecting and exploiting key intellectual property assets.
• Manages all aspects of the firm’s trademark and copyright practice, focusing on strategic portfolio development, protection and enforcement.
• Represents clients in a wide variety of copyright enforcement and defense matters.

Life Sciences and Healthcare

• Represents companies in the biotechnology, pharmaceutical and medical device industries with a particular focus on structuring and negotiating complex licensing agreements including, but not limited to, joint venture agreements, clinical trial agreements, contract manufacturing agreements and strategic alliances.
• Represented an Israeli company developing a blood test to diagnose early-stage lung cancer in connection with the negotiation and drafting of a joint research and development agreement focused on the development and commercialization of protein biomarker-based diagnostics.
• Represented a company dedicated to the design, development, manufacturing and marketing of products for the treatment of spinal disorders in negotiating an exclusive worldwide license with the Cleveland Clinic for an innovative robotic-assisted, percutaneous, interbody spinal fusion technology.
• Represented a company in negotiating an exclusive license with Xenova, Ltd., a U.K.-based biopharmaceutical company focused on the development of novel drugs to treat cancer.
• Represented a 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 a developer of neonatal and prenatal screening software in a dispute with former employee concerning ownership of intellectual property, including source code.
• Represented a 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 a $10 million settlement.

Bar & Court Admissions

• Massachusetts, 1995
• U.S. District Court, District of Massachusetts
• U.S. Court of Appeals for the Federal Circuit

Publications

• Tips for IP Lawyers in Wake of Game-Changing Ruling, Massachusetts Lawyers Weekly (May 23, 2013)
• Et al. – News From Beyond the Border, Massachusetts Lawyers Weekly, Quoted (July 9, 2012)
• Mass. to Consider Online Lottery Sales, The Boston Globe, Quoted (January 14, 2012)
• Beware: Copyright Trolls Lurking in Cyberspace, Mass High Tech (August 17, 2011)
• Legal Briefs, Boston Business Journal, Quoted (April 29, 2011)
• Needham Resident Parties with Aerosmith’s Steven Tyler, Needham Patch, Quoted (February 28, 2011)
• Ginger Rogers Leads a Tricky Dance for Trademarks, Boston Business Journal (January 7, 2011)
• Lottery’s Future Looks Lackluster In Race For State Treasurer, Banker & Tradesman, Quoted (October 11, 2010)
• Massachusetts Hopefuls Shun Privatization in Quest for Lottery Growth, GamblingCompliance, Quoted (October 5, 2010)
• Facebook vs. Placebook, NECN, Quoted (October 4, 2010)
• Fight is One for the ‘Books’, The Boston Globe, Quoted (October 4, 2010)
• Local Firm in Trademark Fight Over ‘Placebook’, The Boston Herald, Quoted (October 2, 2010)
• Decades-Old Trademark Precedent Still Puts Owners at Risk, Massachusetts Lawyers Weekly (May 24, 2010)
• Why Hasn't Nanotechnology So Far Lived Up to the Hype?, ACC Israel Chapter Newsletter (March 19, 2009)
• Freedom to Operate (FTO) Opinions: Look Before You Leap, The Journal of BioLaw & Business (March 2009)
• The Nano-Bio Convergence and New Regulatory Challenges, The Journal of BioLaw & Business (March 2009)
• Nanotechnology - Key Legal Issues and Risks in 21st Century Technology, Massachusetts Continuing Legal Education, Inc. (MCLE) Program (January 26, 2009)
• "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)

Client Advisories

• U.S. Court of Appeals Ruling Protects ISPs from Copyright Infringement
• District Court Says USPTO Miscalculates Patent Term Adjustment
• Supreme Court Rejects Personalized Medicine Patent Claims as Unpatentable Laws of Nature
• Copyright in Classic Films Protects Famous Characters from Reach of Merchandisers
• Apple v. Psystar Underscores the Strength of Software License Agreements and the Limits of the Copyright Misuse Defense
• Keep Your Trademarks Out of the New Internet “Red Light” District
• 2010 Roundup and 2011 Forecast
• Federal Trade Commission, Department of Commerce Seek Comment on Regulatory Proposals for Data Privacy
• Congress Passes Clarification to Red Flags Requirement
• Update: Recent Decision Reaffirms Software License Restrictions
• Privacy & Data Security Law Developments: 2010 Mid-Year Update
• Privacy & Data Security Law Developments: 2009 Roundup and 2010 Forecast
• Bad News for Technology Licensees? Sixth Circuit Rules that Internal Restructurings May Result in a Breach of IP Licenses
• First Circuit Finds Implied Duty to Develop and Promote Acquired Technology under Massachusetts Law
• U.S. and E.U. Court Decisions Uphold Internet Gambling Restrictions
• Federal Trade Commission Finds Disclosures in Sears' Click-Wrap License Agreements May be Deceptive Practice under Federal Trade Commission Act
• Massachusetts Revises Privacy Regulations and Gives Businesses Further Time to Comply
• Facebook Username Functionality Creates Risk of Trademark Infringement
• Application of Bilski Decision Raises Questions about Enforceability of Biotechnology Business Method Patents

Teaching & Speaking Engagements

• "Lawsuits Suck: Minimizing Risk in Behavioral Advertising and Social Marketing," MITX's FutureM Conference (October 23, 2012)
• "Best Practices for Generating, Investigating and Converting License Compliance Opportunities," v.i.labs (May 1, 2012)
• "When Does the Public's Interest in Free Expression Outweigh a Trademark Owner's Rights?" International Trademark Association (INTA) (May 14-18, 2011)
• "Software Licensing Pitfalls," Intellectual Property Group Update, Sullivan & Worcester LLP, Boston (May 10, 2010)
• Panelist, Advanced Software Licensing Program, Massachusetts Continuing Legal Education (February 2010)
• "Life Sciences & Public Health: Contemporary Issues & Challenges," Harvard School of Public Health (May 2009)
• "Introducing and Growing Medical Technologies: Pitfalls and Opportunities," Boston MedTech Advisors (February 2009)
• "Nanotechnology - Cutting Edge Issues: Key Legal Issues and Risks in 21st Century Technology," Massachusetts Continuing Legal Education (January 2009)
• 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 (2005-2008)

Professional & Civic Activities

• Member, International Masters of Gaming Law
• International Trademark Association
• Computer Law Association
• Massachusetts Bar Association
• Managing Director, Golden Seeds
• Licensing Executives Society (U.S.A. and Canada), Inc.
• International Association of Privacy Professionals (IAPP)
• Academic Committee, International Trademark Association, 2010-2011
• Member, American Intellectual Property Law Association (AIPLA)

Education

• J.D., Western New England College School of Law, 1995
• B.A., cum laude, Northeastern University, 1992