Agenda Item AGENDA STAFF REPORT ASR Control 23-000638
MEETING DATE:	08/08/23
legal entity taking action:	Board of Supervisors
board of supervisors district(s):	All Districts
SUBMITTING Agency/Department:	County Counsel (Approved)
Department contact person(s):	Leon J. Page (714) 834-3300
	Nicole M. Walsh (714) 834-3300

Subject: Update Legal Rates for Outside Intellectual Property Counsel

ceo CONCUR

County Counsel Review

Clerk of the Board

Concur

Approved Agreement to Form

Discussion

2/3 Vote

Budgeted: Yes

Current Year Cost: See Financial Impact Section

Annual Cost: See Financial Impact Section

Staffing Impact:

No

# of Positions:

Sole Source: N/A

Current Fiscal Year Revenue: N/A

Funding Source: GF: 100%	County Audit in last 3 years: No
Levine Act Review Completed: Yes

Prior Board Action: 3/24/2015, #50

RECOMMENDED ACTION(S):

1.	Approve Amendment No. 2 to the Legal Services Agreement with One LLP to update Attachment B, Compensation, Invoicing and Payment, effective upon full execution, to continue to provide special advisory and litigation services in the area of intellectual property law.
2.	Authorize County Counsel or designee to execute the amendment.

SUMMARY:

Amendment of Legal Services Agreement is required to retain the expertise of the County’s intellectual property law firm providing specialized legal services in support of trademark applications and related legal matters for the County of Orange.

BACKGROUND INFORMATION:

One LLP represents the County of Orange (“County”) in matters concerning intellectual property, including trademark applications, as needed, on behalf of the County and its departments. On March 24, 2015, the Board authorized County Counsel to execute the Legal Services Agreement with One LLP. Since that time, One LLP has been actively involved in the County’s intellectual property matters including trademark infringement claims, filing trademark applications, and drafting licenses for intellectual property.

One LLP’s efforts have successfully resulted in the issuances of Certificates of Registration for trademarks including “The OC” and “H2OC” (identifying the County’s cooperative stormwater program); a logo for Dana Point Harbor; and stylized marks for “OC Parks,” “OC Zoo,” and “OC Lifeguards.” Recently, One LLP also filed two new trademark applications which are still pending before the United States Patent Trademark Office. Additionally, One LLP assisted OC Waste and Recycling navigate allegations against it for copyright infringement. One LLP has been instrumental in meeting deadlines for registration and renewals and assuring the County’s intellectual property needs are promptly and successfully handled.

One LLP requested that the Board approve an increase in their respective hourly billing rates, which have not been updated since their agreement’s inception in 2015. See Attachment A. The requested rate increases are $55 an hour for partners and associates, representing a modest 11 percent increase over the prior rates set more than eight years ago. The requested rates would also increase their paralegal rates by $15 an hour.

Significant market factors in the legal marketplace have impacted private law firms that seek to provide their clients with the highest quality legal services. Such factors include (among others) rapidly increasing rents and increasingly competitive salary demands to recruit and retain high quality attorney and administrative staff talent. These (and other) factors have caused One LLP to request an adjustment to the hourly rates charged to the County.

FINANCIAL IMPACT:

Total cost of the contracted legal services provided by the recommended firm, One LLP, will be paid from County Executive Office Budget 035. Costs are estimated to be $100,000 annually. Some of these costs may be reimbursed by intellectual property project related revenues and/or County departments based on real estate and merchandising services provided to them. Legal services will be provided on an as-needed basis.

STAFFING IMPACT:

N/A

ATTACHMENT(S):

Attachment A - Amendment to One LLP’s Legal Services Agreement