Frank M. Caprio

American Bar Foundation, Fellow Listed in Mid-South Super Lawyers, Intellectual Property, 2016-2021 Listed in Alabama Super Lawyers, Intellectual Property, 2008, 2011-2015 Listed in The Best Lawyers in America® Copyright Law, 2011-2024 Litigation – Intellectual Property, 2011-2024 Litigation – Patent, 2011-2024 Patent Law, 2011-2024 Trade Secrets Law, 2018-2024 Trademark Law, 2011-2024 Intellectual Property Law, 2005-2010 Information Technology Law, 2007 "Lawyer of the Year," Huntsville, Litigation – Patent, 2022, 2024 "Lawyer of the Year," Huntsville, Litigation – Intellectual Property, 2020, 2024 "Lawyer of the Year," Huntsville, Copyright Law, 2013 Leadership Alabama, Class XIV Advisement of government contracting technology companies - Frank regularly advises government contracting technology companies with respect to issues involving rights in technical data, patent rights, computer software issues, and other matters arising under the FAR and the DFAR. Arbitration concerning payment of royalties - Served as an arbitrator on a three-arbitrator panel in a three-year arbitration concerning the payment of worldwide software license royalties. IP advice to a worldwide provider of real-time, site-specific weather information, Doppler weather radars, satellite radio weather information and geographic depiction. Our services include domestic and international patent prosecution and portfolio management. We also provide trademark prosecution and portfolio management, general intellectual property strategy, licensing, and technology transactions. Confidentiality Agreement for Computer Software Development - Drafted employee confidentiality, non-disclosure and copyright assignment agreement for computer software development. Confidentiality and Non-Competition Agreement - Draft confidentiality and non-competition agreement for client's alternative energy small engine invention. Copyright Infringement Dispute on the Construction of Corporate Buildings - Copyright infringement dispute concerning the construction of corporate buildings based on an architect's design initially drafted for another related building and client of the architect. Copyright Infringement Dispute regarding Photographs - Copyright infringement dispute concerning the publication of a photographer's photographs beyond the scope of the license agreement between the parties. Negotiated and achieved settlement on behalf of the client. Copyright infringement litigation - Copyright infringement litigation involving computer software for computational fluid dynamics. CUSO for large credit union - Advised credit union regarding regulatory issues for establishment of non-credit union finance company/credit union service organization, and regarding ASP, SAS and other vendor contracts for implementation of financial services retail locations. Domain Name Disputes - Successfully defended a UDRP action brought by the University of Arkansas against the owner of the URL, www.razorbacks.com, resulting in the continued ownership and use of the URL. Domestic and international trademark work, licensing activity, and other IP contractual matters for the Alabama Space Science Exhibit Commission/U.S. Space and Rocket Center - Our firm assists in all domestic and international trademark work, licensing activity, and other IP contractual matters for the Alabama Space Science Exhibit Commission/U.S. Space and Rocket Center, that operates the famous Space Camp, Aviation Challenge, and other educational programs. We have handled opposition proceedings, conducted regular policing activities, and have helped to create a strategy for selecting the marks and countries for protection. The firm assists in licensing activity and IP contractual matters, as well as book deals and licensing. Domestic and Worldwide Trademark Protection and Licensing Programs - Responsible for trademark portfolio work for a number of public and private corporations and other entities, including domestic and foreign filings, Opposition Proceedings, licensing efforts and negotiations. Federal Court reports and testimonies - Caprio has provided professional reports and testimony in Federal Court on issues of trade dress protection, trademark protection, design patent protection, royalty disputes, and utility patent protection. NWS Doppler Weather Radar Upgrades - Drafted and negotiated a contract worth over $60 million through which our client would upgrade each of the 170 Doppler weather radars for the National Weather Service. Oral argument at the Alabama Supreme Court - Oral argument at the Alabama Supreme Court in a case concerning the state legislature’s determination of whether a quorum was present for the legitimacy of decades’ worth of votes on legislation. Oral argument at the Court of Federal Claims - Oral argument at the Court of Federal Claims in a case brought by the contractor who was not selected for the follow-on government contract. Photograph and painting copyright infringement - Copyright infringement concerning a photograph and painting of a famous college sports figure. Professional witness report on joint authorship of software - Provided a professional witness report on the joint authorship of certain computer software. Provided reports and testimony on meaning of patent terms - Caprio has provided professional reports and testimony in Federal Court as to the meaning of certain patent terms in a patent claim construction hearing (a Markman hearing). Release of software source code from escrow - Successfully obtained the release of software source code from escrow on Summary Judgment in a case where the other party denied the occurrence of certain release conditions. Report and testimony concerning misappropriation of trade secrets - Provided an report and testimony concerning misappropriation of trade secrets and the reasonableness of an award to the defendants of attorney’s fees in excess of $1 million. Satellite Radio - Negotiated and drafted contracts between our client and a Satellite Radio provider for the distribution of real-time, site specific, weather information and the display of weather information to aviation, marine, and land-based (vehicles) moving platforms. Software licensing agreement - Negotiated and drafted a software license agreement for the conversion of a financial institution from one data processing provider and system to another. Trade Secret Misappropriation and Copyright Infringement - Representation of plaintiff software developer asserting claims of copyright infringement and trade secret misappropriation in United States District Court, related to software sold by former employee. Case was successfully resolved prior to trial. Trademark and Trade Name for Sports/Energy Drink - Assisted clients in dispute over rights to the trademark and trade name of a new sports and energy drink. Trademark License Agreement for Leggings - Drafted and negotiated trademark license agreement for socks/leggings and other related apparel.