JAMES P. MARTIN
Mr. Martin is a partner specializing in patent and intellectual property law. James’ practice includes trial work, transactional work and counseling. He has represented a variety of technology companies and their employees in intellectual property transactions and disputes. He has also worked with non-technical clients, such as wineries, restaurants, authors, artists and entrepreneurs, to protect and enforce their intellectual property rights. James has substantial experience in all aspects of intellectual property law, including patents, trademarks, copyrights, trade secrets, computer law, Internet law and the protection of technology.
INTELLECTUAL PROPERTY LITIGATION
James is a trial lawyer who has successfully represented numerous clients in intellectual property disputes and other commercial litigation. After understanding his client’s goals and objectives, James provides strategic advice and is a powerful advocate for his client’s interests. Where appropriate, he adopts and implements innovative strategies to obtain successful early outcomes. Such strategies are discussed with the client along with other options and alternatives so that each client can make informed business decisions with respect to the litigation.
Representative matters include:
- Patent infringement cases on behalf of patent holders and alleged infringers in technology areas including semiconductors, software, electronics, mechanical devices, chemical compositions, e-commerce, and Internet.
- Trademark prosecution and defense across all industries, including technology, consumer goods, financial and investment services, food and beverage, restaurants and wine.
- Copyright litigation, including cases involving the Digital Millennium Copyright Act (DCMA), fair use and other emerging issues relevant to software, social media and Internet businesses.
- Trade secret cases on behalf of corporate employers and former employees in cases involving intellectual property misappropriation and ownership, breach of fiduciary duty, unfair competition and unfair business practices.
- Internet disputes, including cybersquatting, defamation and privacy cases relating to website content, blogs, message boards, chat rooms and social media.
- Breach of license and breach of contract cases, false advertising and other complex litigation with intellectual property implications.
TECHNOLOGY TRANSACTIONS AND COUNSELING
James counsels, drafts and negotiates transactions and agreements involving a broad array of technologies. James also acts as outside general counsel to companies of various sizes, ranging from early-stage startups to publicly traded companies. James creates intellectual property protection plans specifically tailored to each client to help protect and secure patents, trademarks, and copyrights, and advises employers and employees regarding trade secrets issues and covenants not to compete. James also counsels clients regarding Internet web sites and online businesses, and conducts due diligence on patents and other intellectual property assets in mergers and acquisitions.
Representative matters include:
- Licensing (inbound and outbound) of computer software, patents, trademarks, copyrights and other intellectual property.
- Technology agreements, including research and development, strategic alliance, marketing, private label and co-branding agreements.
- Software and application agreements, including end user licenses, support and maintenance, hosting, escrow, open source and software as a service (SAAS) agreements.
- Sales and distribution agreements, including customer, reseller, OEM and sales representative agreements.
- Outsourcing agreements, manufacturing and supply agreements and master services agreements.
- Confidentiality and nondisclosure agreements, employment agreements, independent contractor agreements, subcontractor agreements and invention assignment agreements.
- Representation of officers and executives in negotiations with new employers, and advice and counseling regarding preparations to compete.
- Due diligence on behalf of buyers and investors with respect to patents, trademarks, copyrights, trade secrets, and open source software.
- Intellectual property advice and counseling, trade secret audits and protection programs, copyright and trademark applications, and branding.
James monitors and analyzes patent and intellectual property litigation for our investment adviser clients for cases in which the firm is not representing one of the litigants. He provides legal analysis relating to trials, motions, claim construction hearings and other significant events in cases of market significance for publicly-traded companies. Our clients have made successful investment decisions based in part on the information provided through this unique service.
James is a member of the United States Patent Bar and is registered to practice before the United States Patent and Trademark Office. James is also a member of the American Intellectual Property Law Association (“AIPLA”), the Intellectual Property Owners (“IPO”) Association and the Intellectual Property Law Sections of the American Bar Association and the Bar Association of San Francisco. He has written and lectured on a variety of topics related to intellectual property and the Internet.
EDUCATION AND PRIOR WORK EXPERIENCE
James earned a B.S. degree in electrical engineering with an emphasis on computers and a minor in business administration from the University of Florida, where he graduated with highest honors. James graduated cum laude from the University of Michigan Law School.
Before joining the Firm, James served as a law clerk to the Honorable Laughlin E. Waters in the United States District Court for the Central District of California. Prior to attending law school, James worked for Hewlett-Packard and IBM.
AREAS OF EXPERTISE