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Recognized for her intellectual property (IP) work, Karen A. Butcher advises clients on maximizing the value of their IP and protecting their intellectual assets. She focuses on brands, creative works, technology, and related IP. Karen handles transactions and helps clients to structure the ownership and licensing of IP within their corporate group and to resolve complex disputes when they arise. A practice leader in the firm’s intellectual property practice, Karen brings an international perspective to strategic business matters in various fields, including technology, retail and ecommerce, life sciences, food and beverage, and sports and media.
In her IP transactional practice, Karen works with clients 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 clients integrate acquired assets into their existing portfolios.
With an eye on the international implications of IP, Karen advises business clients on international brand strategy, and provides intellectual property counseling for clients embarking on cross-border transactions and licensing agreements. 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 international brands, including innovative brand rights. Karen helps clients facing complex disputes, with a focus on disputes involving breach of contract, parallel imports and infringement.
With an undergraduate degree in business concentrating in marketing, Karen advises clients on advertising, consumer protection, privacy, ecommerce, and social media. She advises clients on false advertising claims under the Lanham Act, compliance with US Federal Trade Commission (FTC) and state consumer protection regulations, and international compliance strategy. Karen drafts and negotiates innovative agreements for brand development and marketing, including licensing, sponsorship, product placement, brand integration, celebrity spokesperson, creative service, and cross-promotional agreements.
Karen’s experience includes structuring and implementing intellectual property ownership, licensing and management in various fields and the following selected transactions reported in the media:
Thomson Reuters, in connection with its agreement to sell a 55% majority stake in its Financial & Risk (F&R) business to private equity funds managed by Blackstone, regarding an international trademark license agreement permitting F&R to brand its information feeds and products/services with the Reuters trademark for the duration of a 30-year agreement for Reuters to supply news and editorial content to the new partnership.
Diageo plc, the world’s leading premium drinks company, on the IP aspects of multiple transactions over almost 20 years, including:
2017 agreement to acquire Casamigos Tequila for consideration of up to $1 billion, from founders Rande Gerber, George Clooney, and Mike Meldman.
2015 cross-border transaction to sell to Treasury Wine Estates (a major wine company based in Australia) Diageo’s major wine interests relating to the US based Chateau and Estate Wines and the UK based Percy Fox businesses for a consideration of $552 million.
2015 brand swap transaction, under which Diageo transferred its company that operates the Bushmills Irish whiskey business to Cuervo, and Diageo acquired Cuervo’s 50% ownership of a joint venture for the Don Julio and Tres Magueyes tequila business and took back distribution of Smirnoff vodka in Mexico.
2014 strategic tequila acquisitions: acquisition of super-premium tequila brand Peligroso; and formation of a joint venture with Sean “Diddy” Combs and acquisition by the JV of luxury tequila brand DeLeón;
2008 international 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 international 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 countries to dispose of $750 million in non-core brands acquired.
eBay Inc., a leading international ecommerce company, in connection with the $925 million sale of its ecommerce operations business, eBay Enterprise, to Permira and Sterling Partners.
UBM plc, in connection with its $841 million PR Newswire sale
Campbell Soup, in connection with its Garden Fresh acquisition
Grupo Gigante S.A. de C.V., a leading retailer based in Mexico, in connection with its acquisition 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., an international apparel company that owns the 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 innovation pipeline.
Awards and Affiliations
Recommended, Intellectual property: Trademarks: non-contentious (including prosecution, portfolio management and licensing), The Legal 500 US (2018–2020)
Member, Practice Group of the Year, Intellectual Property, Law360 (2019)
Member, Litigation Department of the Year–Intellectual Property, The American Lawyer (2019)
Leading Trademark Practitioner, Prosecution & Strategy, DC Metro Area, WTR 1000, World Trademark Review (2011–2020)
Recognized, IP Trademark Star – District of Columbia, Managing Intellectual Property (2018–2020)
IP Star, Top 250 Women in IP, Managing Intellectual Property (2013–2016)
Recognized, Trademarks, Who’s Who Legal (2015–2018)
Leading Practitioner, Trademarks, Expert Guide’s Women in Business Law (2016)
Member, Board of Directors, International Trademark Association (2009–2012)