Practice Areas

Neff Law Firm specializes in:

  • Technology and Internet Counseling, Licensing and Transactions
  • Internet and eCommerce Counseling and Transactions
  • Media Law
  • Intellectual Property Counseling and Transactions
  • International Law and Issues [sometimes using international network]
  • Latin American Legal Issues and Expansion
  • Trademarks
    • Trademark Advice & Counseling; Portfolio Management; Proper Use
    • Comprehensive Search, Analysis, Applications, Prosecution to Registration
    • International Programs & Registration
    • Antipiracy; Takedown and UDRP Proceedings
    • Transactions; M&A, Trademark Assignments, Coexistence Agreements
  • Mergers and Acquisitions
  • Startup, Early Stage and Emerging Growth Companies
    • Formation
    • Capital Raises (Seed, Friends & Family, Series A, Venture Capital, Private Equity)
    • Federal & State Securities Laws
    • Exit & Liquidity Events (M&A, Acquisitions, Asset Sales, IPOs)
  • Copyright: Registration, Fair Use, Antipiracy and Takedowns
  • Structuring International Presence, Distribution and Channel Arrangements
  • Privacy and Data Protection
  • Franchising and Franchise Law
  • California Employment Law Issues [using correspondent counsel]
  • Intellectual Property Enforcement and Disputes
  • Dispute Resolution (up to the point of litigation)
  • General Counsel Issues
  • Online Contests and Sweepstakes

TECHNOLOGY

The continued strength of the technology sector has ensured California’s dominant position in the U.S. economy and continues to contribute enormously to global growth. New technologies and new media, and the convergence of technology and media, are of increasing importance at Neff Law Firm.

In the technology area, Neff Law Firm operates a Silicon Valley-type practice. We represent a number of important software, ecommerce and technology companies, the majority in Northern and Southern California, but quite a few out-of-state and even overseas, for which we undertake a wide variety of licensing and other transactions. We have (and/or have represented) technology clients based in the United Kingdom, South Africa, Germany, Canada, France, Belarus, Brazil and various other Latin American countries.

Neff Law Firm also provides niche specialty counsel in international transactions for technology and other companies. We have great depth in international legal work and transactions, and offer legal services in Spanish, French and Portuguese. Many of our US clients engage us in transactions involving at least some foreign aspect, such as software licensing or services or an acquisition involving a foreign party.

In the new media sector, we have been at the forefront of designing licenses for novel content distribution methods. We are an ideal choice as strategic counselors to navigate the juncture of technology and content. For a variety of clients, Neff Law Firm has designed their technology template agreements, especially in relatively recent areas such as cloud and software-as-a-service technology.

We also represent numerous Internet companies, as well as the Internet businesses of media and brick-and-mortar companies. We handle the broad array of matters that Internet companies generally require, from advertising agreements to content licenses, terms and conditions of use or service, and privacy policies. Indeed, data privacy and personal privacy and related security and internet security considerations are at the forefront of corporate concerns, and we are international data privacy counselors with considerable experience working with a broad range of international data privacy and personal privacy laws.

We prepare and negotiate an impressive variety of technology and Internet agreements including OEM, VAR, Systems Integrator, distribution, reseller and development agreements, professional services agreements, cloud agreements and web development agreements. As mentioned, we often prepare template agreements for technology and media companies, and then negotiate them with prospects. In addition, our Firm maintains an active practice in eCommerce, Internet and web development deals for a wide variety of clients.

INTERNATIONAL

As the Internet has leveled the earth and blurred international borders, our unique knowledge of international issues, including international tax issues, has helped our clients take advantage of the instant international presence that the Internet permits.

We have (and/or have represented) technology clients based in the United Kingdom, South Africa, Germany, Canada, France, Belarus, Brazil and various other Latin American countries. In addition, we have done business on behalf of clients in virtually every country in Latin America, most in Europe, about half of the countries in the Pacific Rim, plus Israel and South Africa.

Moreover, we are also able to assist our clients in Spanish, French and Portuguese.

The international legal experience of Neff Law Firm cuts across our principal practice areas of intellectual property, technology, ecommerce and media, and includes wide experience in commercial issues and channel distribution overseas, reseller agreements, personal and data privacy issues, employment and tax issues. We have handled international and European Union antitrust inquiries for a variety of technology clients.

We handle complex inbound and outbound transactions for business entities, media and entertainment companies, including without limitation complex licensing transactions for a variety of technology companies.

Neff Law Firm also manages international trademark portfolios and trademark and service mark registrations for leading companies in the technology and media sectors, and for companies in many other sectors who just seek our trademark expertise. For example, one of our largest trademark clients, for which we have handled registrations all over the world, is in the textile and shoe business. We have an excellent series of overseas associates who act on our behalf in the trademark area.

Neff Law Firm counsels U.S. companies conducting business overseas. We also represent foreign companies investing in U.S. media and other business assets. In these areas, we often advise on all business and tax structuring, sometimes bringing in additional legal and accounting expertise as necessary.

We provide clients with a comprehensive range of talent and representation at very reasonable rates. Areas of experience include cross-border tax and business structuring and intellectual property. We regularly provide international counsel on anti-piracy programs for business software, entertainment, media, software and book publishing. Richard Neff, the founding partner, has managed copyright and trademark enforcement anti-piracy programs overseas for the Business Software Alliance, as well as similar programs for the Association of American Publishers and for major software and games publishers (e.g., for Bentley Systems, and for IDSA, the forerunner of the Entertainment Software Association). He also has worked on reforms of many of the world’s copyright laws, and language he has drafted appears in several Latin American copyright laws and in Brazil’s software law.

Our clients enjoy the benefits of global representation but without the potentially exorbitant associated expense. Working across borders, time zones and international matters of law, we counsel clients wherever their legal needs arise.

INTELLECTUAL PROPERTY

Intellectual property (“IP”) lies at the heart of the post-industrial technology, media and entertainment-oriented economy centered in both Northern and Southern California, and of our many clients based in and around Silicon Valley. We operate at the nexus of innovation, technology, games and ecommerce. We provide clients with the depth of skill and experience necessary to meet all their intellectual property protection needs.

Richard Neff has long been known as one of the principal antipiracy figures in the legal world, and is a founder and former Chairman of the Business Software Alliance. He initiated many of the antipiracy programs of companies such as Microsoft, Adobe, Autodesk, Symantec, Apple, Novell and others in Latin America, Australia, Canada and the Pacific Rim. The focus of the antipiracy efforts were based on both copyright and trademark laws, depending on the country and the nature of the infringement. In addition, he has represented the Association of American Publishers in several overseas antipiracy programs, as well as the Interactive Digital Software Association (IDSA), the forerunner of the Entertainment Software Association (ESA).

Neff Law Firm engages in copyright counseling for many clients, on a regular basis for the world’s largest video training website, lynda.com, and for companies such as Roland Corporation, a leader in electronic keyboards.

We are also trademark counsel to many companies both in the technology and ecommerce sector, and to quite a few in areas unrelated to technology, such as Pepper Gate Footwear, which have an extensive worldwide trademark portfolio. We have handled many trademark-based and domain name-focused antipiracy proceedings, including proceedings under UDRP, ICANN’s Uniform Dispute Resolution Policy.

Neff Law Firm also advises in other areas such as rights of publicity, domain names and trade secret.

Richard Neff has twice given speaking tours through Latin America under the aegis of the US State Department’s Distinguished Speakers Program, on the topic of “Intellectual Property Protection and National Development,” most recently in Peru and Chile.

In all areas of our IP counseling, we represent clients in transactional-based IP matters, copyright, trademark and domain name counseling. We focus on the protection, commercialization and enforcement of valuable intellectual property assets. As mentioned, we protect copyrights, trademarks, and rights of publicity, and safeguard other rights from appropriation, infringement or misuse.

We also protect domain names, and have recovered some of the most famous domain names from cyber-squatters. In addition, we work closely with various Customs agencies around the world to interdict counterfeit products at the point of entry.

On the transactional side, we help commercialize the creativity of the media and technology industries. Many of our practice achievements are located at the dynamic convergence of technology, media, entertainment and branding, as our representative matters illustrate.

STARTUP, EARLY STAGE AND EMERGING GROWTH COMPANIES

Our startup practice area has become robust, and we represent more and more startup and emerging growth companies across a variety of industries, including technology-related industries (such as apps, software, mobile, Internet, eCommerce, social networking and app development) and consumer packaged goods.

Doug Bouton, who manages the startup practice area, has first-hand experience running and raising capital for his own startup company and, as such, offers a unique perspective as an attorney who views issues from both the legal and business points of view. In addition, knowing the importance of cash flow to startup and early-stage companies, we offer many financially attractive startup packages that assist our clients every step of the way – from formation through financing through exit and liquidity events.

With respect to formation, we counsel startup companies on, among other things (1) jurisdiction of formation (where to form your entity such as Delaware, California or Nevada), (2) choice of entity (what type of entity to form such as an LLC (limited liability company), S-Corp (S-corporation) or C-Corp (C-corporation)), and (3) most appropriate management and capitalization structure (e.g., drafting operating agreements, shareholder agreements, buy-sell agreements, equity incentive plans, and stock option award agreements). We also routinely draft and review common agreements and documents that almost every startup company needs like services agreements, independent contractor agreements, non-disclosure agreements, confidentiality agreements, employment agreements, offer letters, and, if applicable, licensing agreements, terms of use, terms of sale, and privacy policies.

With respect to financing, we advise startup, early stage and emerging growth companies on all stages of raising capital, from initial seed financing or “friends and family” rounds to Series A rounds to venture capital or private equity rounds to, ultimately, mergers, acquisitions, sales, initial public offerings and other exit or liquidity events. In particular, we counsel startup companies on the best legal structure for their capital raise (e.g., common equity, preferred equity, notes or debt, convertible notes or convertible debt, warrant or other security) and assist startup companies with the drafting or review of the necessary offering documents such as offering or private placement memorandums, investor decks or presentations, subscription or purchase agreements, convertible note or note purchase agreements and warrants. In addition, we help startup and emerging growth companies cost-effectively navigate and comply with federal and state securities laws, a crucial and necessary component to any capital raise.

TRADEMARK PRACTICE

Our Firm’s trademark practice is managed by Amanda Nye who has extensive experience in the area of trademark law. Neff Law Firm provides a full range of trademark advice and counseling services. This includes comprehensive trademark searching, review and analysis, as well as the preparation and filing of trademark applications. We advise on and prosecute trademark applications through to registration.

We provide advice and strategy on national and international trademark filing programs. We are well-versed in the statutory requirements related to US trademark assignment of rights, trademark registration and maintenance, as well as the requirements for registering and maintaining trademarks abroad. One of our strongest suits is our expertise in talking with clients to understand their business, providing the client with global strategies on how best to protect and grow the client’s trademarks nationally and/or worldwide and implementing those strategies.

In addition to the registration of trademarks in both the US and abroad, we also advise on use of trademarks. Our advice work includes advice on the proper use of the client’s trademarks to maintain and protect them, how to police the trademarks and protect against third party unauthorized uses and infringements. Our advice work also includes helping our clients navigate the rights of others so as to avoid claims of infringement and the need to rebrand.

We work within social media to protect our clients’ trademarks from infringing or unauthorized use on Facebook, YouTube and other social media. We are experienced in take-down procedures and can handle such matters quickly and effectively. We also have experience in UDRP proceedings where our clients need help protecting against unauthorized domain name use and registration.

We have a robust trademark transactional practice where we help our clients negotiate global trademark co-existence agreements, as well as global settlement agreements and licenses. We are experienced in conducting trademark due diligence in connection with corporate acquisitions and divestitures, advising of the significance of such due diligence regarding intellectual property such as trademarks and what actions need to be taken to close a corporate deal insofar as trademarks are concerned.

We are fortunate to have a diverse book of clients. Their fields of endeavor include footwear manufacture, online learning companies, video tutorial companies in the entertainment field, pet food manufacture and personal care products. Amanda’s trademark expertise extends to pharmaceuticals, toys, cosmetics, food and beverages, digital advertising and film production companies.

COPYRIGHT

Neff Law Firm has handled numerous disputes relating to infringement or piracy of software or other works protected by copyright. Richard Neff was a founder of the Business Software Alliance, establishing many of its Asian and Latin American antipiracy programs. For 15 years he spearheaded the antipiracy cause in Latin America, managing litigation all over Latin America and achieving reform of most national copyright laws (which now protect software under copyright law, and many give the copyright owner a distribution right and a rental right), while managing the antipiracy litigation programs for the major software publishers, including Microsoft, Adobe, Autodesk, Symantec and sometimes Apple, Novell and others.

In recent years he has counseled studios, publishers and authors about fair use, and copyright and publicity rights do’s and don’ts when making films and videos, etc. We are frequently consulted specialists on all aspects of User-Generated Content, which arises with frequency in the media and ecommerce worlds.

ECOMMERCE

Our Firm’s lawyers handle novel E-Commerce issues and transactions for a variety of technology and Internet companies. For example, our lawyers acted as outside general counsel to one of the world’s leading Internet shopping/price comparison websites, pricegrabber.com, which was sold to Experian. We have played a similar role at lynda.com, the world’s leading video training website, and create many of the agreements and documents necessary for ecommerce companies to operate, such as Terms of Service or Terms of Use and Privacy Policies.

Now that the content and Internet sectors are merging, we are at the forefront of legal aspects of content distribution on the web, as well as the many legal issues that arise in the ecommerce arena.

APPS AND GAMES

We have represented various game creators and game publishers in the context of M&A as well as development and licensing agreements. Moreover, we are increasingly involved in the creation, promotion and licensing of apps, as the world has evolved toward both Apple, Android and Microsoft platforms for their commercialization. In this context, we also handle all startup aspects required of new apps or game publishers.