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John W. Provo 
Partner

p 612.672.8331
f612.642.8331
john.provo@maslon.com

3300 Wells Fargo Center
90 South Seventh Street
Minneapolis, MN 55402

John Provo is a partner and head of Maslon's Intellectual Property and Technology Counseling Group. He counsels information-based and interactive technology companies with respect to the acquisition, sale, and licensing of creative works, and advises on trademark selection, registration, licensing and enforcement strategies. John also has represented media and distribution companies in a broad range of transactions involving the distribution of intellectual property, software, and other creative properties outside the United States.

As a fellow of the American College of Trust and Estate Counsel since 1994, John also advises business owners, executives, and individuals with respect to estate planning, wealth preservation, and succession planning strategies.

Areas of Practice
  • Intellectual Property Counseling
  • Technology and Licensing
  • Trademark and Brand Management
  • E-commerce, Internet and Advertising Law
  • Biotechnology and Healthcare
  • Entertainment and Media
  • Estate Planning
  • Business Succession Planning
  • Charitable Giving and Foundations
  • Estate and Gift Tax Controversies
  • Probate and Trust Administration
  • Probate and Trust Litigation
Education
  • University of Minnesota Law School, Minneapolis, Minnesota, 1983
    J.D.
    Honors: magna cum laude
    Law Journal: Journal of Law and Inequality, Editor, 1982 - 1983
  • Stanford University, Palo Alto, California, 1980
    B.A.
    Honors: summa cum laude
    Honors:  with distinction
Bar Admissions
  • Minnesota, 1983
  • U.S. District Court District of Minnesota, 1983
  • U.S. Tax Court, 1990
Professional Associations and Memberships
  • American Intellectual Property Law Association - Member
  • American Bar Association - Member; Special Committee concerned with the development of intellectual property law and policy in relation to sales of traditional and knowledge-based products embodying intellectual property - Member; Forum Committee on Sales of Products Embodying Intellectual Property - Featured Speaker; Regional Communications Forum - Editor
  • Minnesota State Bar Association - Member; Broadcast, Film & Video Committee - Chair; Probate & Trust Law Education Committee - Co-Chair, 1990 – 1992; Probate & Trust Law Council - Member, 1992 – 1997; Probate & Trust & Estate Counsel Business Planning - Editor, 1996 – 2000; Probate and Trust Law Section Newsletter - Editor, 1988 - 1990
  • University of St. Thomas School of Law - Adjunct Faculty, 2004 - 2006
  • Notes and Trends - Editor
  • Minnesota Planned Giving Counsel - Member
Pro Bono Activities:
  • Catholic Charities Community Law Center, Board Member, 1998 - 1999
  • Maternity of Mary/St. Andrews School; Board Member, 1998 – 2005; Board Chair, 2002 - 2004
  • Minnesota Advocates for Human Rights, Liberian Truth and Justice Commission Statement Taker
Classes Taught
  • “Death, Taxes and Senior Executives”, 19th Annual National Association of Stock Plan Professionals Conference, San Francisco, 2011
  • “Copyright Fair Use Considerations in Multimedia Works of Art”, (panelist), Minnesota Artist Exhibit Program, The Minneapolis Institute of Arts, 2011
  • “Death, Taxes and CEOs: Planning Perils, Pratfalls and Pointers in Executive Compensation”, 37th Annual Probate & Trust Law Section Conference, Minnesota CLE, 2011
  • “Intellectual Asset Management: How to Manage and Profit from Your Intellectual Property Portfolio", Minnesota State Bar Association
  • “Charitable Gifts of Intellectual Property”, Minnesota CLE, 2006
  • “Advising Clients and Fiduciaries with Respect to Significant IP Interests”, 36th Annual Probate & Trust Law Conference, Minnesota CLE
  • “Copyrighted Fair Use of Images”, The Minneapolis Institute of Arts
  • “Legal Implications of the Digital Future”, University of Minnesota Symposium
  • “The Electronic Transformation of Text and Image”, University of Minnesota
  • “Legal Issues for Online Services”, Minnesota CLE
  • “Intellectual Property and Confidential Information”
  • “Privacy and Publicity Rights Arising Out of Film/Video Footage”, Minnesota State Bar Association
  • “Trading talent without trading secrets: How to manage the risks involved in hiring while protecting intellectual property rights”, Maslon Speaker Series, 2006
  • “Public Figures and the Lanham Act: A New ‘Brand’ of Prior Restraint?”, Minnesota State Bar Association
  • “Delivery of Audio/Visual Programming in the Digital Era”, Minnesota CLE
  • “Independent Contractor Guidelines”, Minnesota State Bar Association Broadcast, Film & Video Committee
  • “How the Estate Tax Affects Transfers of Family Business Ownership”, University of St. Thomas’ Center for Family Enterprise, 2008
  • “Transitional Strategies for Family Business Owners”, Society of Financial Service Professionals’ Annual Meeting, 2008
  • “Closely Held Assets: Unlocking Their Charitable Potential”, The Minneapolis Foundation, 2008
  • “Transitions in Family Business Enterprises”, University of St. Thomas’ Center for Family Enterprise and Law Schools, 2008
Publications
  • The Right of Privacy in Minnesota: Global Legal Update for Business, Commercial Law Affiliates
  • Minnesota Probate Deskbook, (co-author with Susan J. Link), Vol. 24, Minnesota Practice Series, West, 2004 - 2009 Editions
  • An Estate Planner’s Manual for Evaluating Appraisals and Appraisers, (co-author), American College of Trust and Estate Counsel
  • Drafting Wills and Trust Agreements in Minnesota, 6th ed., (co-author), Minnesota State Bar Association, 1998 - 2008
Honors and Awards
  • Fellow, American College of Trust and Estate Counsel; Business Planning Committee, Member, 1996-2008; Family Dynamics Subcommittee, Member, 2007 – 2008; International/Estate Planning Committee, Member, 2007 - 2008
  • Minnesota Law and Leading Attorneys, 1994 - 1998
  • Recognized on Minnesota Super Lawyers® list, 2006 - 2011 (Minnesota Super Lawyers® is a designation given to only 5 percent of Minnesota attorneys each year.)
  • AV Rating, Martindale-Hubbell (AV, BV, and CV are registered certification marks of Reed Elsevier Properties, Inc., used in accordance with the Martindale-Hubbell certification procedures, standards and policies)

Experience

Technology and Licensing
  • Representation of medical imaging management, archiving, and migration solutions provider in technology licensing, development and outsourcing agreements with health care networks, universities and technology partners.
  • Representation of medical device manufacturer in research, development and commercialization initiatives for extracorporeal perfusion hyperthermia therapies.
  • Representation of multi-source streaming technology provider of high definition video programming technology in licensing and content delivery service agreements with major league and college sports networks and hospitality industry partners.
  • Representation of start-up regenerative medical research company in license agreements to commercialize proprietary stem cell therapies.
  • Representation of advanced coatings company in development and licensing of proprietary processes for delivery of nanoformulations of therapeutic compounds for cardiovascular diseases, orthopedics, neurology and tissue engineering.
  • Representation of medical device manufacturer in collaboration agreements to develop interventional catheters and guidewire imaging devices inserted into human vasculature.
  • Representation of biopharmaceutical company in complex product research, license and service agreements involving more than seventy patents held by six oncology research organizations for worldwide development, manufacture and sale of cancer therapies.
  • Negotiation and implementation of development, license and supply agreements for remotely enabled mobile forensic technology company.
  • Representation of startup nanotechnology company in manufacturing, licensing and supply agreements for conductive inks and conductive coatings for displays, solar cells, and other electronics.
  • Representation of cardiovascular resuscitation device company in manufacturing and supply chain agreements.
  • Representation of a leading provider of precision GPS technologies for agricultural, marine and navigation systems.
  • Representation of municipal power agency in technology development, licensing and collaboration agreements to give communities greater control over energy resource and supply needs.
  • Representation of a computer software company in strategic relationships with technology partners, including platform partners, ecosystem/tools technology partners, and ISVs.
  • Representation of automated parking technology company in all aspects of its software development, licensing and maintenance service business.
  • Representation of home shopping network in enterprise license and hosting services agreements with call centers and order fulfillment centers in the United States and foreign countries.
  • Representation of leading glass coatings provider in manufacturing, licensing and supply agreements.
  • Counsel to financial and insurance services company in all aspects of its advertising, marketing and strategic branding initiatives.
  • Representation of a medical technology device company in the formation and implementation of product manufacturing and distribution alliances to sales of the client's products worldwide.
  • Representation of a Fortune 500 company in the design, acquisition and implementation of a $100 million e-business initiative, including the negotiation and coordination of all agreements with the client's technology partners, consultants and other providers.
  • Representation of embedded device manufacturers in the negotiation of technology licensing, employment, compliance and severance requirements.
  • Representation of software development and internet payment facilitation service providers in all aspects of technology licensing and distribution agreements with their domestic and foreign partners.
  • Representation of major cultural and performing arts organizations in all aspects of their copyright clearance, publishing, licensing, and distribution agreements.
  • Representation of an international restaurant franchisor in license negotiations with a major television network and production company in trademark and trade dress licensing negotiations for a chain of theme-based entertainment venues.
  • Representation of a one of the world's leading medical technology companies in a $90 million e-business hosting and electronic infrastructure implementation services agreement with IBM for its global information services and security network.
  • Representation of a leading peer-to-peer network in copyright licensing and distribution negotiations with music copyright owners and performing rights societies.
  • Eepresentation of an information services technology provider in exclusive license negotiations involving the next generation of automated search capability technology.
  • Representation of a U.S. software development company in negotiation of a technology severance license and liquidated damages recovery from a major Japanese corporation.
  • Representation of a U.S. internet and online auction services provider in all aspects of the design, configuration, and implementation of its e-commerce business, including strategic counseling and negotiation of agreements with the client's major technology partners, consultants, software vendors, and service providers.
  • Representation of one of the nation's leading providers of corporate identity apparel in acquisition of state of the art embellished artwork technology and services for its corporate identity apparel business.
  • Representation of one of the nation's leading providers of 3D illustrated maps in a copyright and trade dress infringement claims against a competing publisher and its visitors convention bureau customers.
  • Representation of leading financial services and apparel companies in brand management and trademark infringement matters, including successful termination of third parties' uses of conflicting domain names and trademarks for clothing and apparel product lines.
  • Successfully petitioned the U.S. Trademark Trial and Appeals Board on behalf of a Fortune 500 company to overturn the U.S. Trademark Office's refusal of registration for the company's trademark featured in a multimillion dollar syndicated television and broadcast media advertising campaign.
  • Successfully opposed pending registration applications by competitors of the firm's clients in the technology, manufacturing, financial services and charitable service sectors.
  • Trademark counseling and advice to a major regional financial institution in minimizing infringement exposure in all aspects of its advertising and marketing activities, including strategic branding considerations necessitated by the institution's expansion into other geographic markets
  • Representation of a U.S. based publisher of proprietary workplace assessment tools, skill indices and training programs in securing copyright protection for local dialect translations of its copyrighted works distributed in more than thirty countries worldwide.
  • Representation of media companies and producers in the creation, acquisition and distribution of domestic and international distribution rights to news, music, and cultural programs for the nation's radio, television, cable, music video, and live entertainment venues.
  • Representation of multimedia and software development companies in the protection, funding, sale, and distribution of computer and Internet based products, applications, and technology.
Estate Planning
  • Represented majority shareholders and senior management of a large regional transportation company in the design and execution of a series of intergenerational transfers designed to convey approximately one-third of the company's non-voting stock to an unaffiliated holding company for the benefit of the shareholders' children.
  • Represented the owners and senior management of a $20 million manufacturing concern in the design and implementation of a hybrid gift and sale of forty percent of the company's net equity to those children who actively manage the family business.
  • Represented the owners of approximately $30 million worth of commercial and residential real estate in the creation of a series of family-controlled entities to own and manage the family's real estate investments, resulting in potential transfer tax savings of approximately $10 million.
  • Represented the estate of the majority owner of an Iowa-based bank holding company in IRS' estate tax audit proceedings and subsequent sale of the estate's stock holdings to an employee stock ownership trust.
  • Representation of majority owner of large Midwestern agri-business before the Internal Revenue Service Appeals Division, resulting in a favorable administrative decision reducing the IRS deficiency assessment by more than $350,000.
  • Representation of minority owners of a publicly traded life sciences company in a successful appeal. Client appealed an IRS gift tax assessment resulting from the gift of a minority equity stake to a family limited partnership incident to a recapitalization of the company's equity structure. After submission of the taxpayer's briefs, the IRS withdrew its deficiency assessment of more than $500,000.
  • Representation of second and third generation shareholders of a large Midwestern manufacturing company in administrative proceedings before the Internal Revenue Service. Successfully obtained a favorable private letter ruling with respect to the income, gift and generation-skipping tax consequences of trust litigation involving the proper construction and severance into separate shares of a multi-generational trust owning more than $300 million worth of the company's stock.
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Maslon Edelman Borman & Brand, LLP  | 3300 Wells Fargo Center | 90 South Seventh Street | Minneapolis, MN 55402-4140 | p 612.672.8200