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Not many lawyers have sipped tea with a U.S. Supreme Court justice. But Dorsey & Whitney partner Pamela Deese has been there and done that. In the early 1980s, Sandra Day O’Connor was a loyal customer of Deese’s stepfather, an Oriental rug dealer in New York. Her stepfather had told O’Connor all about his law student stepdaughter in Washington, D.C. O’Connor “ended up calling and talking to me and said, ‘Why don’t you come up to the Court,’” recalls Deese, who was in her third year at American University’s Washington College of Law at the time. Deese accepted. O’Connor supplied the tea and cookies and talked about a few of the twists her life had taken. She also dished out some career advice. “She said, ‘Don’t map out your life so precisely that you miss opportunities,’” Deese recalls. Deese, now 46, took that advice to heart. Today she works in Dorsey & Whitney’s Washington, D.C., office helping develop trademark licensing strategies and programs for such clients as the owners of 2003 Kentucky Derby champion FunnyCide and the restaurant group Trader Vic’s. That wasn’t her plan after law school, when she joined a D.C. boutique then known as Ablondi & Foster (now part of Miller & Chevalier), which focused on international trade. As an undergraduate at American University and during law school, Deese had worked for the U.S. Trade Representative’s Office. She stuck to trade-related matters even after jumping to the Washington, D.C., office of Robins, Kaplan, Miller & Ciresi in 1986. Opportunity came knocking a year or so later, when a Minneapolis cake decorating company called DecoPac asked her to help it convince the U.S. Customs Service to release impounded Cabbage Patch Kids cake decorations from China. Deese learned that it was a trademark licensing problem; Customs officials refused to release the decorations without proof that DecoPac had a valid Cabbage Patch license. The importing company that had been the middleman — and licensee — in the deal had lost its license in bankruptcy. Deese quickly read up on character licensing and merchandising law, and helped DecoPac obtain a license from the Atlanta-based company that owned the Cabbage Patch trademark. The decorations were released, and Deese ultimately wound up helping DecoPac obtain licensing rights from everyone from The Walt Disney Co. to Warner Brothers to Marvel Comics. “At that point I thought this was kind of neat,” says Deese, “I got 50 licenses for this cake decorating company.” Back then, adds Deese, very few companies were obsessively thinking about brand extension and trademark licensing, and there were few lawyers doing that kind of work. Spotting an opening, Deese began building a licensing practice — and spending less time on trade matters. By the time she joined Dorsey & Whitney in 1999, she had a big portfolio of clients (including Honeywell Inc. and Polaris Industries Inc., a Minneapolis-based manufacturer of all-terrain vehicles and snowmobiles). Deese thinks of what she does as all-purpose marketing support. She works with a company’s in-house lawyers as well as its marketing department to ensure that its brand promotion efforts, including advertising, celebrity endorsements, and sweepstakes, are legally sound. That means vetting advertising claims, as she recently did for client The Nautilus Group Inc., and making sure celebrities actually use the product they’re endorsing. On the trademark licensing front, Deese does everything from helping clients find a licensing agent to overseeing due diligence. She also helps negotiate royalty rates, and other contract terms, such as international and exclusivity rights. “In a lot of ways, it’s really a corporate lawyer role,” says Deese. One 2002 deal she negotiated for Polaris, for instance, involved reaching a licensing agreement with two separate companies who were doing a joint venture to manufacture and market battery-operated all-terrain vehicles for kids. Deese works with enough different kinds of brands to keep the job fresh. Last year she helped FunnyCide’s owners license exclusive poster and lithograph rights to artist LeRoy Neiman. “What was interesting was determining what rights a horse has to its image,” says Deese, who found that star animals have rights similar to (human) celebrities. Other recent clients include publisher Meredith Corp., which owns Better Homes and Gardens magazine, and H�stens Inc., a Swedish manufacturer of high-end horsehair mattresses that is planning to open four retail stores in the United States. Frequently, Deese says, companies have hired her to help figure out how to best leverage their brand. In those instances, she’ll help them analyze potentially lucrative licensing opportunities. That’s the type of work she did for Trader Vic’s. With so many companies now trying to get in on branding and licensing, Deese says her practice is busier than ever. She even has clients coming to her out of the blue. Recently, she received an unsolicited e-mail from a New York-based film production company that is about to release a movie aimed at teenage girls. They wanted Deese’s advice on setting up licensing deals for spin-off fashion accessories and clothes. “We wanted a licensing maven,” the head of the company explained to Deese in his e-mail, “and you were the one who was identified.”

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