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Melinda Burrows
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Corporate Counsel (ip)
Refer job# IIGI137660
 
Corporate Counsel (IP) The candidate will work with Firm s international businesses and brand counsel on a wide range of IP matters including: IP licensing agreements and provisions, rights clearance, intellectual property rights enforcement and defense, and related counseling. Will be the principal attorney handling DMCA content, domain name, keyword and trademark complaints and site takedowns. Assist in strategically advising the business on general IP matters, adversarial proceedings and intellectual property litigation. Drafting, negotiating, and managing inbound and outbound intellectual property licensing agreements, joint development agreements and other complex intellectual property agreements/transactions. Acting in a consultative capacity to Firm s transactional and brand attorneys on the intellectual property aspects of commercial agreements. Reviewing and resolving both offensive and defensive claims/potential claims of intellectual property infringement, including trademark and domain name disputes, UDRP and URS actions, and DMCA and other copyright infringement claims. Responding to and preparing keyword bidding objections and assisting with contractual keyword provision drafting and enforcement. Developing and maintaining copyright claim procedures and DMCA notice and designation programs across brands. Managing outside counsel in relation to intellectual property litigation and disputes in a cost effective manner; partnering effectively with Firm s litigation team as appropriate (excludes patent litigation). Consulting with internal business teams on content acquisition and use; drafting and negotiating related content agreements. Developing strong client relationships that increase opportunities to identify, create and/or protect intellectual property. Reviewing and preparing trademark clearance and availability reports, and advising the business in relation to the same. Assist in developing, conducting, and maintaining an effective intellectual property education and training program for business and legal colleagues.

The candidate should have 5-7 years Intellectual Property experience, including 2+ years experience in a fast-paced, in-house legal environment, preferably as part of a multi-national team and with an international remit. Extensive experience with trademarks, licensing, domain names and copyright in the online business environment is essential. Some experience with trade secrets, open source licenses and patents is preferred. Excellent oral and written communication skills, with an ability to influence for positive outcomes is essential. Track record of establishing and cultivating strong working relationships with both business clients and legal department colleagues is essential.
 
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