James R. Sims III is a partner in Morgan Lewis's Intellectual Property Practice, resident in the Washington, D.C., office. His practice focuses on trademark, copyright, franchising, and licensing issues for clients in the financial services, pharmaceutical and life science, high-technology, food, education, consumer products, industrial products, luxury resort lodging, and publishing industries. Mr. Sims works with clients to protect, exploit, enforce, and defend their trademarks and copyrights in the United States and abroad. He has drafted and negotiated numerous trademark and copyright licenses, franchise agreements, and distribution agreements, and he counsels clients on a wide range of franchise and license issues. Mr. Sims also often helps clients structure licensing and distribution systems to avoid triggering application of federal and state franchise regulation.
Mr. Sims regularly addresses the substantive and contractual issues that arise in the context of financing transactions where valuable intellectual property rights serve as collateral, as well as the myriad copyright, trademark, and other intellectual property issues present in mergers and acquisitions. He has handled the franchise and intellectual property aspects of numerous transactions, including the sale or acquisition of businesses with significant global trademark portfolios and those with hundreds to thousands of franchisees and licensees.
Mr. Sims has represented clients in administrative litigation before the Trademark Trial and Appeal Board (including having represented the American Bar Association's own Intellectual Property Law Section) and in litigation regarding copyright, trademark, and franchise issues in federal district court. While a partner at Morgan Lewis, he also served for several months as acting Chief Trademark Counsel for a Fortune 250 consumer products company in New York, advising the company on a wide range of trademark, copyright, and advertising matters.
Mr. Sims has written articles on intellectual property and franchising topics for The National Law Journal, The Licensing Journal, The Corporate Lawyer, Licensing Economics Review, Franchise Law Journal, American Bar Association (ABA) CLE program materials and reports, and Morgan Lewis's prior Intellectual Property Handbook and other publications. He speaks on intellectual property and franchise issues and was recently asked by the ABA to serve as co-editor of the second edition (expected in 2014) of the ABA's comprehensive intellectual property publication, The Intellectual Property Handbook: A Practical Guide for Franchise, Business and IP Counsel, for which he served as co-editor for the first edition as well.
Mr. Sims is a member of the Intellectual Property Advisory Board of the George Washington University Law School. Since 2003, he has also been a member of the board of directors of the American Hospice Foundation, a 501(c)(3) nonprofit organization based in Washington, D.C., that supports programs that serve the needs of terminally ill and grieving individuals of all ages. He is a past member of the William and Mary Parents and Family Council, past chair of the George Washington University Law School Law Firm Challenge, and a member of the James Madison University President’s Council.
Mr. Sims is admitted to practice in the District of Columbia and Pennsylvania.
