Recognized for her intellectual property (IP) work, Karen A. Butcher counsels businesses on maximizing the value of their IP and protecting their intellectual assets. She focuses on brands, creative works, technology, and related IP. Karen helps clients structure the ownership and licensing of IP within their corporate group and guides them when disputes arise. A practice leader in the firm’s intellectual property practice, Karen brings an international perspective to business issues faced by clients and regularly speaks and writes about IP.
In her IP transactional practice, Karen works with companies contemplating mergers, acquisitions, joint ventures, distribution agreements, licensing agreements, strategic alliances, and corporate reorganizations. When clients acquire or divest intellectual assets, she develops and implements cost-effective strategies for maximizing asset value and minimizing deficiencies. She also proactively helps companies integrate acquired assets into their existing portfolios.
With an eye on the global implications of IP, Karen advises businesses on international brand strategy, and provides intellectual property counseling for clients embarking on cross-border transactions and licensing arrangements. She advises multinationals on structuring the ownership and licensing of IP within their corporate group by harmonizing tax and IP considerations. She also helps clients develop approaches for multijurisdictional clearance, protection, and enforcement of their global brands, including nontraditional brand rights. Karen assists clients facing complex disputes, with an emphasis on those involving parallel imports and infringement.
With an undergraduate degree in commerce concentrating in marketing, Karen advises companies on legal issues related to advertising, consumer protection, and privacy, including e-commerce and social media. Clients turn to her for counsel on false advertising claims under the Lanham Act and compliance with US Federal Trade Commission (FTC) and state consumer protection regulations. Karen also drafts and negotiates innovative arrangements for brand development and marketing, including sponsorship, product placement, brand integration, celebrity spokesperson, merchandising, creative service, and cross-promotional agreements.
Karen’s experience includes structuring and implementing intellectual property ownership, licensing and management in the consumer products, luxury/fashion, retail/e-tail, technology, life sciences, information services, financial services and real estate fields and the following selected transactions reported in the media:
Diageo plc, the world’s leading premium drinks company, on the IP aspects of multiple transactions over almost 20 years, including:
2014 strategic tequila acquisitions: acquisition of super-premium tequila brand Peligroso; and formation of a new joint venture with Sean “Diddy” Combs and acquisition by the JV of prestige tequila brand DeLeón;
2008 global distribution agreement for Zacapa rum with Industrias Licoreras de Guatemala, including an option to buy a 50% equity stake in the brand at the end of three years, and the 2011 follow-through acquisition of a 50% controlling stake in the owner of the Zacapa brand;
2008 Dutch joint venture with the Nolet family for the perpetual, exclusive global rights to sell, market and distribute Ketel One vodka; and
$8.1 billion successful bid, with Pernod Ricard, for the acquisition of the Seagram beverage business from Vivendi Universal in 2001, and multiple transactions in various jurisdictions to dispose of $750 million in non-core brands acquired.
Grupo Gigante S.A. de C.V., a leading retailer based in Mexico, in connection with its purchase of the remaining 50% of shares of Office Depot de Mexico from Office Depot Inc., regarding a licensing agreement covering more than 20 countries throughout Central and South America for the use of the Office Depot brand and related trademarks.
Gazal Corporation Limited, a leading apparel supplier based in Australia, in connection with its joint venture with PVH Corp., a global apparel company that owns the worldwide trademarks for the Calvin Klein brand, regarding an agreement under which the joint venture licenses from Calvin Klein Inc.—a wholly owned subsidiary of PVH—the rights to operate, manage, and distribute Calvin Klein brand products in Australia, New Zealand, and other nations in the South Pacific for a 20-year term.
Kraft Foods in its 2010 sale of its Balance Bar Co. to private equity firm Brynwood Partners.
LEO Pharma in its reacquisition of Warner Chilcott’s exclusive product licensing rights in the United States, as well as rights to all products in LEO Pharma’s development pipeline.
University of Virginia, 1988, B.S.
University of Virginia School of Law, 1993, J.D.
District of Columbia
Awards and Affiliations
Member, Board of Directors, International Trademark Association (2009–2012)
Ranked, Best of the Best 2015 USA: top trademark practitioners in the United States (2015)
Recognized in "IP Stars – Top 250 Women in IP" by Managing IP published by Euromoney's Legal Media Group (Inaugural 2013 edition)
Listed, Expert Guide's World's Leading Women in Business Law (2010–2013)
Listed, "Leading Trademark Practitioner," World Trademark Review (WTR) 1000, The World’s Leading Trademark Professionals (2011–2015)
Listed, Expert Guide’s Trade Mark (2014)
Listed, Expert Guide’s Best of the Best USA (2015)
Listed, Managing IP IP Stars (2013–2015)
Listed, Washington DC Super Lawyers (2015)
Listed, Euromoney's Guide to the World's Leading Trade Mark Law Practitioners (2012)
Member, International Association of Privacy Professionals