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Shannon T. Vale

svale@pirkeybarber.comDirect: (512) 482-5235

For more than 25 years, Shannon Vale has specialized in trademark and copyright law, intellectual property transactions and due diligence, and right of publicity law. Prior to joining Pirkey Barber, Shannon was a Trademark partner in the Austin office of Fulbright & Jaworski and a shareholder in Arnold, White & Durkee. Shannon also spent five years as the head of personal management firms that directed the careers of major label and major independent label recording artists based in the United States and the United Kingdom.

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Shannon’s practice includes:

  • Advising clients regarding worldwide trademark protection and enforcement strategies, the selection and clearance of trademarks, and the management of global portfolios
  • Obtaining domestic and foreign trademark registrations
  • Handling trademark opposition and cancellation proceedings
  • Counseling clients with respect to acquiring, protecting and enforcing copyright assets
  • Managing intellectual property due diligence projects
  • Negotiating licenses and other intellectual property transactions

Best Lawyers in America® named Shannon the Austin 2014 Lawyer of the Year for Copyright Law, and also recognizes him in the field of trademark law. World Trademark Review’s WTR 1000 places Shannon in the Silver Tier in its national rankings for the category of “Individuals: Prosecution & Strategy,” and in the Gold Tier for Texas (WTR 1000 2016). In addition, Shannon is recognized in the current editions of the following publications: Managing Intellectual Property’s IP STARS; Chambers USA Guide (Intellectual Property: Trade Mark & Copyright – Texas (Band Two)); International Who’s Who of Trademark Lawyers; and Texas Super Lawyers (in the category of Intellectual Property Law).

Active with the International Trademark Association (INTA) for many years, Shannon is currently a member of INTA’s Trademark Office Practice Committee (USPTO Subcommittee).  He has previously served on numerous INTA committees, including the Famous & Well-Known Marks Committee (U.S. Subcommittee), the liaison committee to the European Union trademark office, the Meetings Board and the Meetings Committee, and he was Co-Chair of the Task Force on the Future of the Annual Meeting.

Shannon is currently President-Elect of the 50,000-member Association of Rice Alumni, and he has served on the Executive Committee of the Board of the Directors of that organization since 2012. Shannon also served as the President of Austin Rice Alumni from 2011-2015. He is past president of the Austin Intellectual Property Law Association, the Rice Alliance for Technology and Entrepreneurship (Austin Chapter), and Austin Lawyers and Accountants for the Arts.

Shannon received his J.D. from Southern Methodist University’s Dedman School of Law and earned his B.A in History and German Studies from Rice University.

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First-rate counsellor Shannon Vale’s “insightful strategies take into account the
potential twists and turns of any given situation.”

WORLD TRADEMARK REVIEW’S WTR 1000, (2014)

Shannon Vale receives high praise from commentators, who report: "He is a very well-rounded intellect; he knows everything about everything. You want him on your side."

CHAMBERS USA, 2016

“[A] consummate dealmaker.”

WORLD TRADEMARK REVIEW’S WTR 1000, 2015

“On the counseling and prosecution front, the greatly admired Shannon Vale ‘has an invaluable ability to graph the big picture of clients’ needs and priorities.’ His proactive, thorough approach and proficiency with domestic and foreign procedures make him a first-choice attorney.”

WORLD TRADEMARK REVIEW’S WTR 1000, 2013

“Shannon Vale has ‘immense experience’ in the management of worldwide trademark portfolios and provides related counselling, with a noted emphasis on the entertainment industry.”

WORLD TRADEMARK REVIEW’S WTR 1000, 2012

“The highly regarded Shannon Vale is praised as ’very thorough’ and excellent all around to work with.”

CHAMBERS USA, 2012

“Shannon Vale is an expert in trademark and copyright law. Interviewees praise his ‘ability to grasp the big picture and prioritize appropriately. Shannon provides overall strategy in any given situation.’”

CHAMBERS USA, 2011

“Shannon Vale was also described as having ‘a good grasp of international trademark law and clients love working with him.’”

CHAMBERS USA, 2011

EDUCATIONAL BACKGROUND

  • 1981 J.D., Southern Methodist University Dedman School of Law
  • 1977 B.A., History and German Studies, Rice University

HONORS

  • The Best Lawyers in America®
    • Austin 2014 Lawyer of the Year for Copyright Law
    • Recognized in the Categories of Trademark and Copyright Law (2013-present)
  • WTR 1000 The World’s Leading Trademark Professionals, World Trademark Review
    • National: Silver Ranking in “Individuals: Prosecution and Strategy” (2014-2016)
    • Texas: Gold Ranking (2011-2016)
  • Managing Intellectual Property, IP Star (2013-2016)
  • Chambers USA Guide to America’s Leading Lawyers for Business (2010-16)
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  • Super Lawyer Magazine, (2012-16)
  • Trade Mark Expert Guide, Legal Media Group (2009-14, 2016)
  • The International Who’s Who of Business Lawyers, Who’s Who Legal
  • Who’s Who Legal: Trademarks
  • AV Preeminent® Peer Review Rated*

*AV®, BV®, AV Preeminent® and BV Distinguished® are registered certification marks of Reed Elsevier Properties Inc., used in accordance with the Martindale-Hubbell certification procedures, standards and policies.
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PROFESSIONAL ACTIVITIES AND MEMBERSHIP

  • Austin Intellectual Property Law Association (Austin IPLA), Past President
  • Association of Rice Alumni, President Elect (2015-2016); Board of Directors & Executive Committee (2012-present)
  • Austin Rice Alumni, President (2011-2015)
  • Austin Lawyers and Accountants for the Arts (ALAA), Past President
  • Rice Alliance for Technology and Entrepreneurship (Austin Chapter), Past President
  • City of Austin Music Commission, former member
  • City of Austin Music District Committee, former member
  • Austin Music Industry Council, former member
  • State Bar of Texas Entertainment and Sports Law Section, former member of governing council
  • International Trademark Association (INTA)
    ◦ U.S. Patent and Trademark Office Subcommittee of the Trademark Office Practices Committee (INTA’s liaison to the U.S. Trademark Office (2014-present; 2010-2011))
    ◦ U.S. Subcommittee of the Famous & Well-Known Marks Committee (2011-2013)
    ◦ OHIM Subcommittee of the Trademark Office Practices Committee (INTA’s liaison to the European Community’s trademark office) (2007-2009)
    ◦ Meetings Board (1999 – 2001)
    ◦ Meetings Committee (1994 – 2001; 2004 – 2005)
    ◦ Task Force on the Future of the Annual Meeting, Co-Chair (2001 – 2002)
  • Motion Picture Producers of Texas, former General Counsel
  • Austin Space Business Roundtable, former chair
  • Texas Computer Industry Council, former General Counsel
  • Venture Crew 2100 (scouting program focusing on high adventure activities), Crew Advisor (2007-10)
  • American Bar Association, Intellectual Property Section
  • American Intellectual Property Law Association
  • State Bar of Texas, Intellectual Property Section

SPEECHES AND PUBLICATIONS

  • “Trademark Considerations Associated with Growing a Brand in an Era of Globalization,” Institute for Law and Technology – 51st Annual Intellectual Property Law Conference, Dallas, Texas (November 2013)
  • “Recent Copyright Fair Use Decisions: From Famous Monsters to Copyright Trolls,” State Bar of Texas Annual Meeting – Intellectual Property Law Seminar, San Antonio, Texas (June 2011)
  • “Booking It in Cyberspace: The Google Book Settlement and Aftermath” (Moderator), American Intellectual Property Law Association Spring Meeting, San Francisco, California (May 2011)
  • “Copyright Law: A Primer for University Counsel,” The University of Texas System 9th Annual Legal Conference, Austin, Texas (October 2009)
  • “Searching and Clearing Marks Internationally,” International Trademark Association Annual Meeting, Chicago, Illinois (May 2007)
  • “USPTO Office Action Workshop,” International Trademark Association Annual Meeting, San Diego, California (May 2005)
  • “International Trademark Strategy,” 17th Annual State Bar of Texas Intellectual Property Section Conference, San Antonio, Texas (March 2004)
  • “The Right of Publicity and the First Amendment,” State Bar of Texas Intellectual Property Institute, Houston, Texas (June 2003)
  • “Current Trends in Right of Publicity Law,” Law Executives Institute, Aspen, Colorado (January 2003)
  • “Three Things Every Business Person Should Know About Copyright,” F&J Client Seminar, San Antonio, Texas (December 2002)
  • Co-author, “U.S. Accession to the Madrid Protocol Should Streamline International Protection for Trademarks Owned by American Businesses and Citizens,” Fulbright & Jaworski L.L.P. Legal Update, October 2002
  • “Practical Strategies for Trademark Protection in Europe,” International Trademark Association International Trademark Law Basics Forum, New York, New York (February 2000)
  • Co-author, “The Use of Site Licensing in Microcomputer Software Transactions,” (Book Chapter), The Law and Business of Computer Software, D.C. Toedt, Ed., Clark Boardman Company, Ltd., 1986, 1994
  • Co-author, “Recent Developments in Copyright Law,” Texas Intellectual Property Law Journal, Winter 1996; Fall 1993
  • Co-author, “Copyright Case Summaries,” ABA Intellectual Property Law Section Newsletter, Winter 1996; Spring 1993