Kimberly B. Herman
Kimberly B. Herman is a partner in the Corporate Department of our Boston office and leader of the firm's Intellectual Property Group. Ms. Herman’s practice spans the United States, Europe and the Middle East and emphasizes the law and business of intellectual property. In particular, her practice focuses on structuring and negotiating complex commercial transactions dealing with media and entertainment (including representation of clients in the news, documentary, feature film and video industries), First Amendment and privacy issues, gaming and sanctioned gambling including wager-based, free-play and social gaming and e-sports, software, and all things Internet, music and art on behalf of leading media, entertainment, technology and consumer-products companies, as well as artists, museums and art galleries.
Ms. Herman conducts audits and provides strategic counseling to assist clients in identifying, protecting and exploiting key intellectual property assets and represents clients in a wide variety of trademark and copyright enforcement and defense matters. In addition, she advises clients in responding to claims of infringement of adversely held trademarks and copyrights and prepares and responds to cease and desist letters regarding the same, as well as providing advice on litigation settlements.
Recently, Ms. Herman successfully represented the estate of a world-renowned Israeli artist in a copyright infringement dispute against a global television network for its unauthorized use of the artist's magnum opus in the network's wildly popular television series. Ms. Herman also recently settled a copyright dispute against NBCUniversal for its use of her client's recognized street art in a popular television series.
She completed the courses "Museums and the Law;" "Museum Exhibition Content Development;" "History of Museums;" and "Collections Management: Issues and Solutions" at Harvard University.
Ms. Herman's copyright enforcement activities also extend to representing a billion dollar multi-national software company in connection with its anti-piracy initiatives in North America.
Ms. Herman recently represented Challengeme Esports GmbH (CME), a provider of one of the most sophisticated eSport matchmaking and tournament platforms, in its acquisition of US-based platform provider, eSports Hero Inc., and also advised CME in connection with a strategic investment in the company by eSports Mogul (ESM), an ASX-listed eSports media company, as well as a multi-year licensing agreement with ESM for the Asia-Pacific region.
Ms. Herman represents a variety of clients from Fortune 500 companies to smaller businesses. Some of Ms. Herman's more well-known clients include IGT, Bain & Company, Vice Media, A.T. Cross and Dassault Systems.
Representative Client Work
Entertainment and Copyright Matters
- Provides counsel to media and other content publishers in the areas of trademark, copyright clearance and fair use, and frequently conducts pre-publication and pre-broadcast content reviews for television, cable and Internet networks.
- Provides advice to magazine publishing companies, television networks and content publishers 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.
- Regularly provides advice and counseling to entertainment and media clients, including television and film production companies; film and television producers; on-air talent; as well as investors, developers and licensees of film, television, music and Internet content.
- Drafts and negotiates music licensing agreements, talent agreements, event production agreements, including live event contracts, life story rights agreements and other entertainment-related contracts.
- Advises multimedia companies in drafting and negotiating production and distribution agreements, syndication agreements, insertion orders as well as sponsorships and endorsement agreements relating to both traditional and online distribution of content.
- Represents companies in the United States and Europe including independent production companies with the licensing and distribution of content via Internet broadcasting, streaming video, music on-demand and interactive television, including VOD. Also negotiates manager, performer and producer agreements for film and video projects.
Gaming and Online Activities
- Provides advice relating to compliance with the ever-changing state and federal laws in the United States regarding Internet gaming including the representation of a billion-dollar multi-national gaming and lottery services company in connection with its licensed content deals.
- Represents a leading gaming technology and services company with respect to various copyright and rights clearance issues related to use of musical compositions on certain of its electronic devices.
- Assists clients in developing, implementing and administering all aspects of promotions, including auctions, contests, and sweepstakes. Drafts promotion rules to protect clients’ interests and reviews advertisements such as direct mail, websites and banner advertisements related to promotions.
- Represents clients in the development and commercialization of mobile apps through Facebook, Apple, Google Play and other social media sites.
- Represents consumer products companies in connection with credit card processing activities and gift card initiatives related to the sale of goods online and through mobile apps.
- Reviews advertisements and advises on unfair and deceptive trade practices. Counsels clients on compliance issues relating to the Federal Trade Commission as well as state and other regulatory laws.
Software and Hardware Deals
- Represents software clients in the United States and around the world in connection with the drafting and negotiation of a wide array of commercial contracts including Tier 1 customer agreements, VAR/OEM/distributor agreements, master services agreements, subcontract agreements, alliance partner agreements, offshore IT and development outsourcing agreements, hosting agreements and data access agreements with companies such as The Home Depot, Inc., The Neiman Marcus Group, , Tiffany and Company, Visa International Service, ExxonMobil Global Services Company, Fujitsu America, Inc., PayPal, Inc., Supervalu, Inc., IBM, Hewlett Packard Company, 7-Eleven, Inc., Best Buy Purchasing LLC, Target Corporation and Walgreen Co.
- Handles the negotiation of numerous multi-million dollar software deals for clients involving complex agreements for technology and emerging company vendors including license and technology-transfer agreements, distribution, manufacturing, co-packing, supply, development and joint venture agreements.
- Advises business development executives on strategies for commercializing software products and establishing national and international distribution. Strategies include inbound and outbound licensing, sales representative programs and the use of OEMS, resellers and strategic partners.
- Establishes strategic alliances and partnerships for the development of new software and hardware products and expansion of existing product lines. Drafts and reviews proposals, evaluates potential partners in conjunction with clients and assists clients in selecting the best partners to achieve their goals.
- 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 a billion dollar multi-national gaming and lottery services company in connection with a wide array of software, hardware and distribution deals.
Trademark and Domain Names Matters
- Manages worldwide trademark portfolios of several internationally known brands.
- Manages the worldwide trademark portfolios of A.T. Cross. Bain & Company and Vice Media, among others, including in connection with defensive and offensive enforcement proceedings in the United States and abroad.
- Routinely engaging in cease and desist campaigns for a global youth media company that includes print, event, music, online, television, and feature film divisions that operate in more than 30 countries, in connection with enforcement of its trademarks, and routinely filing oppositions in support of such campaigns.
- Represents companies in connection with the preparation and negotiation of trademark and brand licensing agreements as well as product development agreements.
- Handles numerous Internet-related transactions including domain name acquisition and litigation (including UDRP proceedings); online contests and agreements involving co-branding; joint site development; website hosting; website development; content licensing and development; and copyright litigation and advice with emphasis on the application of the Digital Millennium Copyright Act.
Life Sciences and Healthcare Matters
- 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.
Mergers & Acquisitions
- Represented Challengeme Esports GmbH (CME), a provider of one of the most sophisticated eSport matchmaking and tournament platforms, in its acquisition of US-based platform provider, eSports Hero Inc.; also advised CME in connection with a strategic investment in the company by eSports Mogul (ESM), an ASX-listed eSports media company, as well as a multi-year licensing agreement with ESM for the Asia-Pacific region.
Represented PayPal Media Network in its acquisition by PayPal, a division of eBay, Inc.
Manages intellectual property diligence for clients' acquisition and divestiture activities as well as financings and credit facilities.
- Protect Your Website’s Look and Feel from Copycats
- A Win for Innovation: Supreme Court’s Denial of Review of Jaffe v. Samsung Electronics Co. Preserves U.S. Rights of Licensees of Chapter 15 Foreign Debtors
- Wrong To Be Forgotten? European Court’s Privacy Ruling a Blow to Google, U.S. Tech Companies
- New California Privacy Law Amendments to Take Effect January 1, 2014
- 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
- Update: Recent Decision Reaffirms Software License Restrictions
- 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
- Facebook Username Functionality Creates Risk of Trademark Infringement
- Application of Bilski Decision Raises Questions about Enforceability of Biotechnology Business Method Patents
News & Publications
- Sullivan & Worcester Represents Challengeme Esports GmbH in Multiple Deals (March 9, 2017)
- Mission Accomplished … First Circuit Bankruptcy Appellate Panel Acknowledges Post-Rejection Rights of Licensee of Trademarks, S&W Client Advisory (January 18, 2017)
- IP Partner Kim Herman Gives Some Tips on How to Protect Your Company's Digital Assets
- TTAB Refuses 'Swiss Grills' Mark For Lack Of Intent, Law360 (September 14, 2015)
- Copyright Law Needs To Catch Up To Trade Dress Law, Law360 (June 8, 2015)
- Protecting Your Company’s Website From Imitators, Banker & Tradesman (January 5, 2015)
- Copyright Law: One Route to Removing Revenge Porn, Massachusetts Lawyers Weekly (November 13, 2014)
- In Wake of Tragedy, Tricky Questions for IP Lawyers, Massachusetts Lawyers Weekly (December 23, 2013)
- Who Owns Vernacular Memorial Art? — Can Anonymous Works Be Copyright Protected?, Intellectual Property Today (October 2013)
- Tips in Wake of Game-Changing Ruling in IP Case, 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)
- Sullivan & Worcester LLP is Advising Where Inc. in its Acquisition by eBay, S&W Press Release (April 22, 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)
Seminars & Presentations
- Risky Business - Identifying and Allocating Contract Risks
Sheraton Needham Hotel, Needham, MA (October 8, 2015)
- Emerging Issues in Social Media Liability
Suffolk University Law School, 120 Tremont Street, Boston, MA (November 14, 2014)
- S&W Startup Series - IP 101: Trademarks, Copyrights, Patents and Everything Else in Between
S&W Startup Series, Sullivan & Worcester, Boston, MA (December 12, 2013)
- Trademark Bad Faith Applications: Famous and ‘Almost Famous’ Trademarks Under Attack!
International Bar Association Annual Conference (October 9, 2013)
- IP Protection for Start-ups
PayPal Boston: The Start Tank (July 23, 2013)
- Social Media and Intellectual Property - The Good, Bad and Ugly
Sullivan & Worcester Conference Center, Boston, MA (January 28, 2013)
- Lawsuits Suck: Minimizing Risk in Behavioral Advertising and Social Marketing
MITX's FutureM, Hynes Convention Center, Boston (October 23, 2012)
- Best Practices for Generating, Investigating and Converting License Compliance Opportunities
Westin Waltham, Waltham, Massachusetts (May 1, 2012)
- When Does the Public's Interest in Free Expression Outweigh a Trademark Owner's Rights?
San Francisco, CA (May 18, 2011)
- Advanced Software Licensing
MCLE Conference Center, Boston, MA (February 4, 2010)
- Introducing and Growing Medical Technologies: Pitfalls and Opportunities
(February 5, 2009)
- Nanotechnology - Cutting Edge Issues: Key Legal Issues and Risks in 21st Century Technology
(January 26, 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)