Wells, Nicholas D.


  Salt Lake City, Utah, USA
 +801-328-3600
 +801-212-2098
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Shareholder

Nicholas Wells is a member of the firm's Intellectual Property and International sections. His practice focuses on legal issues related to trademark, media/entertainment, licensing, copyright, advertising, Internet and data privacy.

In addition to his legal experience, Mr. Wells has a management background in launching business ventures and in the software technology industry. His overall experience positions him well to help clients protect and leverage their intangible assets.

Mr. Wells is a prolific writer, having authored 16 books, including several best-selling computer science textbooks. He is a frequent speaker on intellectual property and technology topics.

Experience

Trademarks

  • Manages over 1400 active trademarks at the U.S. Patent and Trademark Office (USPTO) as well as negotiating trademark license agreements, consent agreements and co-existence agreements.
  • Counseled clients in the U.S. and 50 countries regarding brand management, brand portfolio strategies and trademark dispute resolution.
  • Managed foreign trademark counsel for U.S. clients seeking trademark protection in Europe, Latin America, Canada, Asia, and Australia; Assisted foreign clients in securing U.S. trademark protection, working directly with law firms and companies in more than 50 countries.
  • Prepared hundreds of trademark clearance opinions and responded to Office Actions addressing likelihood of confusion, descriptiveness, geographic descriptiveness, foreign equivalents, and other matters.
  • Authored a 35-page guide for foreign applicants seeking U.S. trademark protection, including specific sections on the Madrid Protocol.
  • Prepared T.T.A.B. filings for ex parte appeals, oppositions, and cancellations.

Media/Entertainment Law

  • Drafted or reviewed book and magazine publishing agreements with publishers such as Doubleday, Macmillan and John Wiley as well as advertising and marketing agreements, film composer agreements, book-to-film deals, SAG use extensions and residuals.
  • Analyzed right of publicity and related first amendment issues in U.S. and European broadcast media.
  • Prepared legal memoranda regarding novel ASCAP/BMI licensing matters. For a GRAMMY® Award-winning artist, negotiated appearance agreements, television agreements, venue agreements, recording agreements and mechanical and sync licenses.
  • License and Service Agreements
  • Negotiated hundreds of vendor agreements, master services agreements, software development agreements, software license agreements, sponsorship agreements, reseller agreements and other commercial agreements with in-house and outside counsel.
  • Negotiated oppostie Dell, IBM, Microsoft, Oracle, Xerox, AT&T, Adobe, and Google, among others. In one deal, negotiated a technology purchase agreement valued at $22 million annually that integrated purchasing access for all of the client's international subsidiaries.

Copyright

  • Counseled a large non-profit institutional client regarding international digital copyright matters.
  • Advisor in a "work made for hire" federal lawsuit.
  • Significant experience with open source software licensing and Creative Commons infringement. 
  • Counseled fiction and non-fiction authors in contracts with major publishing houses.
  • Acted as senior outside copyright counsel for a web hosting company with 15,000 clients (in the top 1% of hosting companies).
  • Negotiated complext, multi-party copyright license agreements with the National Archives of Ireland, France, Italy, Australia, Panama, Germany, and Finland.

Advertising Law

  • Advised clients on disclosure policies under FTC sponsorship and endorsement regulations.
  • Advised and prepared legal documentation for Facebook promotions, Twitter-based events and Twitter-promoted real-space events.
  • Drafted sweepstakes rules and other promotional and sponsorship agreements.
  • Reviewed environmental advertising claims to ensure legal compliance.

Data Privacy

  • Counseled a large institutional client on compliance and risk management under state and national personal data protection laws, with a particular focus on international issues arising from collection of personal data.
  • Managed foreign data protection counsel in Estonia, Cyprus, Russia, France, Spain, Italy, Korea, Slovakia and the United Kingdom in preparing memoranda analyzing data privacy issues and/or in preparing applications to register a client with foreign data protection inspectorates.
  • Created data security handbooks as required by foreign statues.
  • Advised on U.S. safe harbor provisions and use of model contract provisions.
  • Coordinated efforts for a client, the client's foreign staff, foreign legal counsel, and foreign government officials to effect a registration with a foreign data protection inspectorate within a 30-day period in order to meet a statutory deadline.

Education

University of London, LL.M, with merit, in International Intellectual Property Law

The George Washington University Law School, J.D.

  • Editor-in-Chief, American Bar Association Public Contract Law Journal

Brigham Young University, Marriott School of Management, M.B.A.

University of Utah, B.A., Linguistics

  • Minor in Italian
  • National Merit Scholar

Bar Admissions

  • New York, 2010
  • Utah, 2004

Other Admissions

Solicitors Regulation Authority of England and Wales (non-practising solicitor)

Registered Canadian Trad-Mark Agent

Affiliations

International Trademark Association

President, Utah Lawyers for the Arts

Practice Areas

  • Intellectual Property
  • Trademarks, Service Marks and Trade Dress
  • Licensing
  • Copyright
  • Intellectual Property Strategic Counsel
  • Employee/Contractor Intellectual Property Agreements