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Shelly L. McGee
Partner, Washington, D.C.
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shelly.mcgee@hoganlovells.com

Shelly McGee's practice focuses on intellectual property (IP) protection and enforcement and intellectual property-related transactions.

Shelly assists clients in connection with their development, acquisition, commercialization, and divestiture of technology, content, and brands, which includes counseling clients on IP acquisition, licensing strategies, and drafting and negotiating all forms of agreements relating to IP development, acquisition, and commercialization in domestic, cross-border and international settings. This includes LOIs, sponsored research agreements, joint development agreements, trademark licenses, patent licenses, co-existence agreements, software development agreements, end-user license agreements, distribution and supply agreements, non-competes, website terms of use, and cooperation agreements.

Shelly plays a key role in corporate transactions involving companies that are acquiring or divesting IP assets, including organizing IP due diligence reviews and evaluating diligence findings; assisting in corporate structuring and IP holding strategies; advising buyers and sellers on risk mitigation strategies; and drafting and negotiating IP licenses and assignments, transitional service and supply agreements, and IP-related terms of transaction agreements. Shelly also advise buyers on strategies for managing IP-related matters post-closing.

Another area of Shelly's practice involves counseling clients on IP protection and enforcement matters, including providing advice regarding adoption and clearance of trademarks; handling trademark clearance; managing trademark prosecution; advising clients on fair use; working with clients to develop and implement intellectual property policies; evaluating potential trademark and copyright infringement matters; determining when and how best to enforce intellectual property rights through cease-and-desist efforts, trademark oppositions and cancellations, UDRP proceedings, and DMCA take-down requests; and drafting and negotiating settlement agreements in connection with intellectual property disputes.

REPRESENTATIVE EXPERIENCE
Representative IP Transaction Experience
  • Representation of The Kodak Pension Plan of the UK (KPP) in connection with IP-related matters involved in KPP's acquisition of Eastman Kodak Company's (EKC's) digital imaging and personal imaging businesses in settlement of approximately $2.8 billion of claims by the KPP against EKC, including conducting due diligence, negotiating and drafting IP terms in acquisition, licensing and supply agreements, and structuring and drafting intra-company licensing agreements.
  • Representation of Ford Motor Company in its sale of Volvo Cars to Zhejiang Geely Holding Group Company Limited for US$1.8bn and its sale of Jaguar and Land Rover to Tata Motors for US$2.3 bn, including negotiation of agreements providing for technology development, manufacture and supply of engines and automotive parts, cross-licensing of the parties’ respective technology and trademarks and the use and duplication of tooling.
  • Representation of international media company in transactions involving the acquisition of community newspapers in the U.S., as well as transactions involving the licensing of well-known television brands in South and Central America, Europe, and Asia.
  • Representation of a waste-to-energy company in connection with conducting due diligence on patent properties and structuring, negotiating and drafting agreements providing for technology testing and development, exclusive commercialization licenses, patenting rights and supply obligations.
  • Representation of a Nasdaq listed designer of golf-inspired lifestyle sportswear relating to its worldwide licensing program for the manufacture of local-branded merchandise, operation of local retail outlets, and distribution and sale of branded merchandise.
  • Representation of a citrus grower and processor in connection with the negotiation and drafting of research agreements with multiple public universities and private companies for the development of technology to treat and prevent citrus greening disease in citrus trees, and drafting and negotiating exclusive license agreements granting worldwide commercialization rights.

Representative IP Counseling and Enforcement Experience
  • Representation of Red Bull in connection with developing trademark and copyright protection and enforcement strategies, analyzing potential infringements, drafting C&D letters, managing litigation, and negotiating settlement arrangements.
  • Representation of international media company in developing and implementing trademark protection and enforcement strategies, including handling trademark prosecution, cease and desist matters, UDRP proceedings, opposition and cancellation proceedings, and negotiation of settlement arrangements.
  • Representation of popular fitness business in connection with development of trademark and copyright protection and enforcement strategies, managing trademark and copyright prosecution and maintenance, undertaking successful enforcement efforts through cease & desist letters and opposition proceedings, and providing advice regarding and negotiating trademark acquisitions.
  • Representation of the owners of the last Triple Crown Winner, AFFIRMED, in connection with trademark protection and enforcement efforts and merchandising agreements.
  • Representation of apparel manufacturer in connection with clearance of new brands and successful defense and settlement of claims of copyright infringement asserted by third parties regarding designs depicted on apparel items.


Hogan Lovells Publications
December 2013 "Intellectual Property Newsletter - December 2013." IP Alert, Hogan Lovells

15 October 2012 "Intellectual Property Newsletter - October 2012." IP Alert, Hogan Lovells

15 July 2011 "Intellectual Property Newsletter - July 2011." IP Alert, Hogan Lovells

07 July 2011 "Delaware Court of Chancery finds that a Reverse Triangular Merger may result in an assignment in violation of a contractual non-assignment provision." IP Alert, Hogan Lovells

21 June 2011 "Washington state creates new law making the unauthorized use of software and hardware by product manufacturers an act of unfair competition and requiring product sellers to police their supply chain to avoid imposition of remedies." IP Alert, Hogan Lovells

15 April 2011 "Intellectual Property Newsletter - April 2011." IP Alert, Hogan Lovells

13 April 2011 "Think again before you sign a patent litigation settlement agreement: Patent litigation settlements may now be evidence of a reasonable royalty and related negotiations may now be discoverable." IP Alert, Hogan Lovells

15 October 2010 "Intellectual Property Newsletter - October 2010." IP Alert, Hogan Lovells

01 June 2006 "A New Weapon in the Fight Against Counterfeiting: Using the United States International Trade Commission as a Forum to Combat Counterfeiting and Other Intellectual Property Violations." IP Update, Hogan & Hartson LLP