James counsels clients with a principal focus on intellectual property assets and transactions. His practice includes all aspects of trademark and copyright law both U.S. and international, international trademark portfolio management, inter-company arrangements involving intellectual property assets, Internet and domain name counseling and enforcement, licensing of intellectual property assets, corporate and other business transactions for the IP-focused client, and intellectual property disputes.
James has extensive experience advising clients in industries ranging from pharmaceuticals to financial services to consumer products to technology companies. Previously, James served as Corporate Counsel and then as Vice President and Trademark Counsel for GlaxoSmithKline plc, one of the largest multi-national pharmaceutical companies, where he spent over three years based in Research Triangle Park, North Carolina and seven years working in the company’s European headquarters handling various research and licensing transactions, international domain name and online enforcement, and other IP-related transactions as well as all aspects of trademark and copyright law in the United States, Europe and internationally.
Representative Experience
Intellectual Property Counseling
Handling large global trademark portfolios, including the full trademark lifecycle of search and clearance, prosecution, opposition, litigation and enforcement and licensing and disposal
Advising in all US and international aspects of pharmaceutical trademark clearance; application filing and prosecution; opposition, cancellation and invalidation proceedings; enforcement; parallel imports and reimportation; and regulatory issues related to trademark submissions to the FDA
Managing the merger of company portfolios along with associated legal issues, setting up advanced client-focused trademark reporting systems for viewing international holdings and handling corporate group ownership and licensing programs designed to maximize the value of international intellectual property holdings
Counseling on trademark and packaging issues involving parallel importation/reimportation
Advising on copyright issues, including US and multi-national copyright licensing, inter-company arrangements, arrangements between employers and employees/independent contractors, US and international copyright collecting agencies, online copyright, fair use issues including the use and/or copying of scientific, technical and medical publications by research organizations, and corporate library issues
Handling anti-counterfeiting investigations, US and international Customs interdiction, corporate anti-counterfeiting programs, and related matters
Advising on actual and/or potential cases of infringement and other intellectual property disputes
Internet and Online IP Counseling
Created, implemented, and maintained a complete online protection, monitoring, and enforcement service for several top Global 500 companies
Developed turnkey online compliance and enforcement policies for multi-national IP owners in financial services and pharmaceuticals industries
Overseen and/or handle the review and analysis of over 75,000 potential domain name abuses and over 100,000 reported website abuses; the investigation, take-down, recovery, and/or enforcement of IP rights in over 600 domain name and online cases; and the filing of over 270 UDRP and similar dispute resolution proceedings with favorable decisions in over 99% of the cases
Managing, analyzing and implementing online investigation methods and tools to discover, track, and locate counterfeit activities involving client brands and products
Chaired UK industry electronic copyright task force, which was responsible for fashioning lobbying efforts and position statements during drafting/passage of EU database right and copyright directives and developing industry model agreements for photocopying and digital scanning licenses in the US and UK
Advised on and establish procedures for responding to defacement of company websites and/or online IP assets
Transactional
Disposal of US and Canadian IP rights to major branded product pursuant to FTC-approved $182 billion merger between two large multi-national pharmaceutical companies
IP licenses in formation of OTC medicines joint venture, which had initial sales of $1.6 billion, including handling of restructurings in subsequent years
Multiple private offerings for technology, service, and other companies
Formation of $50 million joint venture between multi-national pharmaceutical company and computer technology company for development and marketing of new computerized medical records technology
Acquisition of IP assets as part of acquisition of genetic research company by multi-national pharmaceutical company
Research, tech transfer, and product license agreements with a wide variety of pharmaceutical companies, government research institutions, and US and international universities
Numerous other IP transactions with many large, international technology and research companies in the US, Canada, European Union, Asia-Pacific, Eastern Europe, and other countries
Publications
“The Errors of Error Testing: Potential Liability Issues for Medication Error Testing of Pharmaceutical Trademarks Under U.S. Law,” 59 Food and Drug L.J. 325-37, 2004
Presentations and Speaking Engagements
“Quaid v Baxter: Where US Trade Mark Law and Product Liability Meet,” Pharmaceutical Trade Marks Group 77th Conference, Istanbul, Turkey 2008
“Chasing Counterfeit Pharmaceuticals Beyond the Borders,” Wake Forest School of Law Symposium, Winston-Salem, NC, 2008
“Designs and Copyright in the USA,” Pharmaceutical Trade Marks Group 74th Conference, Scotland, 2007
“Top Ten Countdown of Copyright Issues Facing Pharma in the EU and US,” Mid-Year Meeting of the Pharmaceutical Trade Marks Group, London 2004
“European Medicines Evaluation Agency-Trademark Guidelines an Related Issues,” Mid-Year Meeting of the Pharmaceutical Trade Marks Group, Germany 2003
“Case Study on Securing Domain Names and Protecting Copyrights at the Time of a Merger,” IP Law & the Internet Conference, London, 2000
“Electronic Copyright,” Annual Conference, London, 2000