1. Legal Strategy and IP
Management
David Orozco, J.D.
Associate Prof. of Legal Studies
FSU College of Business
dorozco@fsu.edu
@ProfessorOrozco
2. Strategy
“the essence of strategy is in the activities—
choosing to perform activities differently
or to perform different activities than rivals.”
Porter (1996)
This also applies to legal activities.
6. Case 2. The Repository
Model
Orozco (2010)
Compliance
7. Case 3. The Legal
Knowledge Model
Orozco (2010)
Prevention;
Value;
Transformation
8. IP Avoidance
Z-teca had to rebrand as Qdoba due to a prior trademark owner’s cease-
and-desist letter after the restaurant launch
Poaching key executives/ scientists to replicate similar innovations
Large retailer freezing out small U.S. tool maker and outsourcing
manufacturing to China
Retailer selling shirts that copy independent designer
9. IP Compliance
Streaming media companies and venues working with copyright royalty
societies like ASCAP and BMI
Training company executives on how to protect company trade secrets
and investing in IT capabilities to prevent data breaches
Conducting due diligence/ compliance review in supply chain and
mergers
10. IP Prevention
Facebook licensing patents from Microsoft to fend off Yahoo! lawsuit threat
prior to ipo.
Large tech. companies licensing patents from RPX to avoid patent troll
lawsuits.
Tech. companies designing around their own core technologies to preserve
freedom to operate
Starwood Hotels adopting state-of-the-art trade secret management
program to fend of Hilton’s attempt to replicate the W Hotel brand
11. IP Value
Creating a business unit with responsibility to monetize dormant IP
assets (“Rembrandts in the attic”)
Apple’s tax strategy with intangible assets
Getty Images outsourcing royalty claims to third party law firm/
collection agency that requests smaller royalty fees to induce a quick
settlement
12. IP Transformation
Samsung’s strategic non-compliance with Apple’s IP
Amazon’s licensing structure with fan fiction authors and
copyright owners
Apple’s integration of design rights to achieve shape
trademarks and out-licensing marks to 3rd
party accessory
manufacturers
Tesla open sourcing its battery patents
Pharmaceutical companies extending lifetime of chemical
compound patents by patent layering
13. Takeaways
Legal strategy can be a source of competitive advantage
IP is a critical asset category for any company in any industry
Attorneys and managers working in teams offer the greatest range of
strategic options
Legal strategy cuts across functional areas including: legal, marketing,
R&D, human resources, IT, supply chain and compliance
15. Sources:
Bird, Robert C. and David Orozco (2014), Finding the Right Corporate
Legal Strategy, MIT Sloan Management Review.
Orozco, David (2010), Legal Knowledge as an Intellectual Property
Management Resource, 47 American Business Law Journal.
Parr, L. Russell and Patrick H. Sullivan (1996), Technology Licensing:
Corporate Strategies for Maximizing Value.
Porter, E. Michael (1996) What is Strategy? Harvard Business Review.
