Sean Fifield’s practice focuses on intellectual property protection and licensing, and general business contracts and financing, and merger and acquisition transactions. Mr. Fifield is a member of the firm’s Business Technology, Intellectual Property, Merger and Acquisitions and Financial Services practice groups.
Intellectual Property
Mr. Fifield regularly handles matters involving the protection and licensing of copyrights, trademarks, trade secret and related intellectual property rights. He is experienced in the negotiation and drafting of patent licenses, trademark licenses, trade dress licenses, software licenses, Internet service, hosting and linking agreements, and other agreements governing a wide range of intellectual property rights. Mr. Fifield also has experience in reviewing Web sites for intellectual property, privacy and a variety of other Internet legal issues.
Mr. Fifield regularly advises and assists clients with their selection, screening, registration and protection of trademarks in a wide variety of industries, including specialty minerals, consumer food products, specialty chemicals, banking, insurance and other financial services, hospitality products, restaurant services, specialty apparel, video games and entertainment. He regularly reviews and analyzes trademark search reports to screen new trademarks for infringement and prepares trademark applications on behalf of clients, both in the United States and in foreign jurisdictions though the Madrid Protocol international treaty process (or by supervising and coordinating local trademark counsel). He supervises the associates and paralegals administering the trademark docket for the firm’s clients.
Mr. Fifield also assists clients in the publishing, entertainment, financial services, software and other industries in the protection and licensing of their copyrights. He assists with the preparation of copyright applications and drafts license agreements covering subject matter as diverse as dramatic works to internet websites.
In connection with assisting clients in the protection of their intellectual property, Mr. Fifield regularly prepares and responds to cease and desist letters involving infringement or allegations of infringement of trademarks, copyrights and patent rights. When warranted, Mr. Fifield assists Locke Lord Bissell & Liddell litigators in litigation arising from such disputes. Mr. Fifield has also assisted clients facing a potential software copyright infringement claims asserted by the Business Software Alliance in obtaining favorable settlement terms in connection with bringing their software usage into compliance with licensing requirements.
Finally, a substantial portion of Mr. Fifield’s intellectual property practice involves the negotiation of information technology licenses and agreements, including application service provider arrangements and outsourcing transactions. Mr. Fifield has prepared forms of licenses for the products of a number of software vendors. Mr. Fifield also regularly negotiates custom software licenses with software vendors on behalf of a wide variety of clients.
Merger and Acquisitions; General Corporate
Mr. Fifield’s practice also involves merger and acquisition transactions and financing transactions, particularly transactions focused on the transfer of intellectual property assets or involving technical businesses. Mr. Fifield also regularly handles matters relating to corporate governance, antitrust regulation, consumer finance regulation, and the negotiation of a wide range of agreements, including consulting arrangements, sales contracts and distributorship agreements.
Education
- J.D., University of Michigan Law School, 1996
Michigan Journal of International Law - B.S.E., cum laude, University of Michigan, 1993
Bar Admissions
Admitted To Practice
- U.S. District Court for the Northern District of Illinois, 1997
Professional History
Partner in the law firm of Locke Lord Bissell & Liddell LLP
Professional Affiliations
Member, Chicago Bar Association
Member, Illinois State Bar Association
Member, American Bar Association