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Managing and aggressively protecting intellectual property and technology assets is at the center of business today. At Masuda Funai, we work with domestic and international companies of all sizes on the development, protection, sale, transfer and licensing of IP, inventions and information technology, proprietary information and business method processes — across the country and around the world.

Our attorneys identify and protect trade secrets, proprietary processes and practices, patents, trademarks, copyrights and Internet domain assets. We conduct audits of intangible assets, as well as draft and enforce IP rights, trade secrets and privacy policies and procedures. We provide training for management and employees on trade secret protection including confidentiality, non-disclosure, works-for-hire and non-competition issues. In addition, we prosecute trademark applications and execute patent, trademark, trade name, corporate name and registration searches, as well as represent clients before the U.S. Patent and Trademark Office (USPTO) and the Trademark Trial and Appeal Board (TTAB).

Regarding electronic commerce, we identify and advise on emerging legal issues such as privacy, allocation of territorial rights for cyberspace sales and risk management of tax and legal action in remote jurisdictions. We prepare website terms of use, privacy and security policies and other clickwrap agreements, as well as advise on e-mail practices, metatags, framing, linking, cybersquatting and contracting for web development and hosting services.

We are well-versed in the technologies that support business and drive commerce. Our attorneys negotiate development, integration, implementation and maintenance agreements for ERP, CRM, database, website and other types of information systems for clients that develop and market such technologies or services including hardware, software and consulting. We negotiate and form strategic partnerships and technology joint ventures with particular skill in heavy industry and manufacturing. We also advise on all aspects of investments in technology start-ups, joint ventures, research collaborations and strategic alliances, particularly where the partners are of different nationalities and cultures. In addition, we counsel clients in connection with universities and private research foundations regarding licensing policies, procedures and ownership.

Our litigators vigorously defend each client’s IP and technology rights, from the initial cease and desist phase through and including injunction proceedings, trial, mediation and/or favorable settlement. We resolve disputes involving unfair competition, patent/trademark/copyright infringement, trade dress, trade secret misappropriation, counterfeiting, trademark dilution, domain name and comparative advertising claims. We also prosecute cases against departing employees who improperly use sensitive, hard-earned customer IP and proprietary data, and counterfeiting by unauthorized product sellers.

Range of Services Experience


Advised foreign trade agency with respect to the development and implementation of an interactive trade promotion and partner selection website.

Advised foreign-based industrial equipment company with foreign national employees regarding compliance with U.S. Department of Defense contractor regulations on access to classified information.

Counseled a Silicon Valley VoIP hardware company on all business matters, including its distribution, licensing and mergers and acquisition projects.
Negotiated worldwide software licensing and distribution arrangements, including for a transaction required by U.S. antitrust authorities in connection with clearance of a pending merger of leading semiconductor equipment companies.
Presented intellectual property and confidentiality protection training program to senior management of factory automation company. Provided employee policies regarding ownership and use of corporate technology.

Represented a leading Asian software distributor in its negotiations to be the preferred and master distributor in a major territory for an internationally recognized business intelligence software company.

Represented a leading IC chip assembler in the negotiation of its investment in, and research collaboration agreements with, a Sunbelt start-up formed to patent, develop and market the spherical semiconductor.
Represented a pharmaceutical company with respect to its investment in, exclusive distribution rights from and research collaboration agreement with a Route 128 biotechnology company developing new platform for sustained release of protein drugs.
Represented a printing chemical company in prosecuting patent infringement claims against a competitor.

Represented a start-up company with a proprietary plasma pyrolysis waste treatment technology, including with respect to patent protection, strategic investments, technology licenses and demonstration projects at host medical facilities.

Represented a variety of information technology consulting and staffing firms in development of their professional services agreements for customers and engagement agreements for independent contractors.

Represented an international factory automation company in the filing of a domain name dispute arbitration proceeding before the World Intellectual Property Organization.
Represented licensor office furniture company in negotiation of grant of exclusive North American patent, know-how and trademark license for ergonomic chair.

Represented well-known foreign consumer products company in negotiation of grants of exclusive North American trademark licenses to separate power tool and outdoor equipment companies. Negotiated related website and domain name cooperation arrangements.

Advised industrial equipment manufacturer of sophisticated machine tools with dual commercial and military applications regarding compliance with U.S. export control regulations for purposes of sales into certain Asian countries.

Advised a multinational technology and materials company in its steps to achieve compliance with the California Consumer Privacy Act (CCPA).

Facilitated a software technology firm’s response to a data breach incident, including the preparation of data breach notification letters for compliance with the laws of multiple U.S. jurisdictions.

Advised an international electronic entertainment company on U.S. laws and regulations applicable to its bringing a number of its entertainment properties to the North American market, with an emphasis on online gaming and E-Sports competition sectors.

Obtained complete dismissal of Trademark and Copyright Claims filed in United States District Court against a domestic consumer electronics company by competitor located in Southeast Asia. Client retained all rights to pertinent trademark registrations in the United States, and as a part of a global resolution of worldwide disputes related to the pertinent trademark and copyright, client also maintained trademark registrations in European Union jurisdictions which allowed client to significantly expand distribution footprint into European marketplace (June 2020). 



Naureen Amjad
Principal, Chicago
P 312.245.7538
Michael S. Golenson
Principal, Chicago
P 312.245.7529
Steven L. Katz
Principal, Chicago
P 312.245.7500
Kenton P. Knop
Senior Associate, Los Angeles
P 310.630.5900
George H. Kobayashi
President, Chicago
P 312.245.7500
Reinhold F. Krammer
Principal, Chicago
P 312.245.7500
Joseph S. Parisi
Of Counsel, Schaumburg
P 847.734.8811
Nancy E. Sasamoto
Principal, Chicago
P 312.245.7500
Jiwon Juliana Yhee
Principal, Chicago
P 312.245.7500
News & Events
Legal Updates/Client Advisories
U.S. State Data Privacy Law Updates for 2024
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Guidance for Inventorship and Patentability of AI-Assisted Inventions
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Protecting Intellectual Property in the AI Age
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U.S. Supreme Court Limits the Lanham Act's Extraterritorial Reach
On June 29, 2023, the U.S. Supreme Court overturned the decision of the U.S. Court of Appeals for the Tenth Circuit in Abitron Austria…
Does Your Company Use End User License Agreements to Protect its Software?
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Supreme Court's Trademark Decision Puts "Bad Spaniels" Toys in the Doghouse
A squeaky dog toy labelled “Bad Spaniels” and designed to look like a bottle of Jack Daniel’s whiskey is not entitled to First Amendment…
Patent Freedom-to-Operate - What is it and When is it Needed?
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Are You Losing Revenue by Not Fully Taking Advantage of Your IP Portfolio?
Businesses accumulate intellectual property (IP) assets over time – some purposefully acquired, while others are created by the natural…
Preparing for the California Privacy Rights Act
New changes are coming to California’s data privacy laws in 2023, and companies doing business in California need to start preparing now to…
Top 3 Intellectual Property & Technology Issues to Consider for 2022
Consumer and Workforce Privacy Rights are Expanding! The California Consumer Privacy Act of 2018 (CCPA), which gained much spotlight a few…
Intellectual Property: The New Silent Target of Cybertheft
With the recent upsurge in data breaches dominating the news, a cyber incident or data breach seems to have become an unavoidable risk –…
New York City Biometrics Privacy Law Allows Private Right of Action Against Companies for Improperly Using or Retaining Customers' Biometric Data
On July 9, 2021, New York City’s new biometric privacy law went into effect, providing customers greater protection over their biometric…
Recovering Attorneys' Fees in Trademark Cases Made Easier in Tenth Circuit
Executive Summary The U.S. Court of Appeals for the Tenth Circuit became the last circuit to join other circuits in extending the U.S…
"51% of U.S. Based Businesses Targeted by Cyber Attacks - A Checklist to Protect Your Company from Risk"
Executive Summary Cybersecurity risks are not a brand-new phenomenon. However, the number of reported cybersecurity incidents has…
Risks and Compliance Under the Illinois Biometric Information Privacy Act: No Actual Harm Required for Private Cause of Action
Executive Summary Recent rulings from the Illinois Supreme Court and the Seventh and Ninth Circuit Courts of Appeals that actual harm…
An Overview of U.S. Data Breach Notification Laws
Executive Summary In recent years, news of large-scale breaches of customer data held by retailers such as Target and The Home Depot…
Supreme Court Settles Long-Standing Circuit Split on Trademark Damages: Willful Infringement Is Not a Prerequisite for Awarding a Trademark Infringer's Profits
Earlier this year, in Romag Fasteners, Inc. v. Fossil, Inc., et al., the United States Supreme Court (the “Supreme Court”) unanimously…
Second Circuit Reverses Tiffany & Co.'s $21 Million Judgment Against Costco Wholesale Corporation
On August 17, 2020, in Tiffany & Co. v. Costco Wholesale Corp., Case No. 17-2798, the United States Court of Appeals for the Second Circuit…
EU Court of Justice Invalidates US-EU Privacy Shield and Spares SCCs in Landmark Schrems II Data Privacy Decision
Executive Summary The Court of Justice of the European Union invalidated the US-EU Privacy Shield mechanism for compliance with the…
USPTO and Copyright Office Exercise Emergency Powers Granted by CARES Act to Provide Further Relief During COVID-19 Crisis
The unprecedented $2.2 trillion Coronavirus Aid, Relief, and Economic Security Act (“CARES Act”), which was enacted on March 27, 2020…
COVID-19 Emergency Relief Measures Relating to Intellectual Property Rights
As individuals and businesses grapple with the wide-spread impact of the coronavirus pandemic, the U.S. Patent and Trademark Office and the…
The Digital Millennium Copyright Act: Protections for Copyright Owners and Online Service Providers
The advent of the internet and advancement in digital technology has resulted in rampant copyright infringement of copyrighted works, such…
A Brief Overview of The California Consumer Privacy Act
The California Consumer Privacy Act, or “CCPA” for short, is a comprehensive data privacy law which was enacted in June 2018 and will go…
U.S. Supreme Court Issues Decisions Resolving Two Major Copyright Law Issues
Earlier this year, the U.S. Supreme Court issued two unanimous decisions resolving two deceptively simple, but nevertheless significant…
U.S. Supreme Court Finally Speaks Regarding Trademark Licenses in Bankruptcy
On May 20, 2019, the U.S. Supreme Court issued its long-awaited decision in Mission Products Holdings, Inc. v. Tempnology, LLC nka Old Cold…
Illinois Supreme Court Issues Ruling in Landmark Biometric Information Privacy Case
Executive Summary The Illinois Supreme Court's recent ruling that actual harm is not required to establish a cause of action for a…
Mandatory U.S. Government Survey For U.S. Persons Who Have Had Transactions With Foreign Persons Involving Certain Services or Intellectual Property
This week the U.S. Department of Commerce’s Bureau of Economic Analysis (BEA) released its mandatory BE-120 Benchmark Survey of…
U.S. Supreme Court Narrows Patent Rights by Expanding Patent Exhaustion
In another decision against patent owners, the U.S. Supreme Court has decided to expand the scope of the patent exhaustion doctrine. The…
Supreme Court Cracks Down on Forum Shopping in Patent Lawsuits
In a highly-anticipated decision, the U.S. Supreme Court unanimously decided to crack down on forum shopping in patent infringement…
Giving Up What You Are Entitled To
There were two recent cases from the 7th Circuit Court of Appeals, one on May 16 and one on May 17. The parties, judges, and areas of law…
Trademark Infringement Suit That Should Not Have Been
Often trademark infringement suits result from the unanticipated intersection of two apparently unrelated products or services. Sometimes…
Complimentary Seminar - Protecting Your Company's IP: Risk-Management Strategies and Best Practices
Please join us for a seminar hosted by Masuda Funai in Novi, Michigan. The seminar will address: Key licensing provisions and issues…
Complimentary Webinar: Brand Protection in the US 101 (Webinar in Japanese)
Brand protection is critical for businesses because you could lose all the investment that went into the creation and promotion of the…
Complimentary Webinar: Be A-OK for CCPA: Preparing for the California Consumer Privacy Act
The California Consumer Privacy Act (“CCPA”) will go into effect on January 1, 2020 and will change the way businesses both inside and…
Legal Symposium: Issues Facing U.S. Subsidiaries of Japanese Multinationals
Masuda Funai 2016 Legal Symposium Issues Facing U.S. Subsidiaries of Japanese Multinationals 8:00 - 8:30 a.m. Registration, Networking and…
Fazila Vaid & Michael Golensen's Articles Lead BizBuddy's Rankings.
Masuda Funai is pleased to announce that Fazila Vaid and Michael Golenson’s articles have been ranked in the list of most accessed articles…
Masuda Funai Hosted the 2022 Intellectual Property Seminar
Masuda, Funai, Eifert & Mitchell, Ltd. hosted the 2022 Intellectual Property seminar on October 20, 2022 in Novi, MI. An English session…
Masuda Funai Hosts Northern Ireland Delegation
Masuda, Funai, Eifert & Mitchell Ltd. hosted the Northern Ireland Delegation on April 16, 2018 as part of its ABC Mission visit to Chicago…
Masuda Funai Featured in The Japan Times
The Japan Times published a comprehensive report this month on Japanese business activity in the Great Lakes Region of the United States…
Masuda Funai Elects Two New Principals
Masuda, Funai, Eifert & Mitchell , Ltd. is pleased to announce that Michael S. Golenson and David J. Stein have been promoted to Principal…