Intellectual Property

Trademark  


  • Defending a credit reporting agency in a trademark infringement and false advertising litigation in the District of Minnesota. The court granted summary judgment dismissing plaintiff's 37 false advertising claims, and a jury trial on the trademark claims followed. The jury found that our client did not infringe and that plaintiff's federal trademark registration was procured through fraud on the Trademark Office and therefore invalid.  Separately, the court ruled that plaintiff had failed to prove its keyword advertising trademark claims. The Eighth Circuit affirmed. 


  • Representing a leading ecommerce site in a variety of trademark and copyright matters, including keyword advertising disputes and trademark and copyright litigation. 


  • Representing a cable television company in opposition and cancellation proceedings before the US Trademark Trial and Appeal Board.


  • Defending a pharma company in a trademark infringement action concerning the brand name of its broad-spectrum antibiotic in the Central District of California. After a jury trial, the court granted summary judgment of non-infringement. 


  • Defending a television network in a trademark infringement action concerning the title of one of its programs in the Western District of Washington. The court granted summary judgment of non-infringement, and the Ninth Circuit affirmed. 


  • Representing a television network in a trademark infringement action concerning the brand of an educational website in the District of Maryland. After the court excluded plaintiff’s survey evidence, the case promptly settled on terms favorable to the client. 


  • Defending a medical publisher in an action seeking to enjoin the imminent launch of a new monthly publication. After expedited discovery and a two-day evidentiary hearing, the court denied plaintiff’s motion for a preliminary injunction. 


  • Representing a pharma company in various trademark enforcement actions to protect the brand of a famous drug.


  • Developing model retail license and promotional rights agreements for a major television entertainment company. 


  • Representing an industry association in a complex trademark license agreement.


Patent  


  • Defending a pharma company in a patent infringement action in the Southern District of Florida. After a three-day bench trial, the court ruled that the patent was unenforceable due to multiple acts of inequitable conduct, that the patent was invalid as indefinite, and that the plaintiff's claims were otherwise barred by judicial estoppel, prosecution disclaimer, and laches. The Federal Circuit affirmed.


  • Representing a pharma company in a declaratory judgment action concerning a patent on monoclonal antibodies in the “rocket docket” of the Eastern District of Virginia.  After intensive fact and expert discovery, with trial scheduled mere weeks later, the court granted summary judgment of non-infringement based on a claim construction that the patentee had disclaimed coverage of humanized antibodies during prosecution.  The Federal Circuit affirmed.  

  

  • Representing a pharma company  in a Hatch-Waxman action  in the Federal Circuit concerning an anticonvulsant drug. The court affirmed the district court's decision that the patent's claims were not  invalid for obviousness-type double-patenting, obviousness and anticipation. 


  • Defending a telecom company in a patent infringement action concerning a method of blocking international call dialing in the Eastern District of Pennsylvania. After discovery, a court in a parallel action declared the patent invalid, and the case was dismissed. 


  • Representing several high-tech companies in multiple amicus briefs filed in the Federal Circuit and US Supreme Court in Apple v. Samsung concerning the “causal nexus” requirement for determining irreparable harm in cases involving complex devices covered by numerous patents.


  • Representing an industry association in an amicus brief filed in Acorda v. Mylan addressing personal jurisdiction in Hatch Waxman patent cases.


Copyright  


  • Representing a major sports league in a copyright dispute involving the designs portrayed on team uniforms.


  • Representing a performing rights organization in federal court cases to determine reasonable royalty fees for the public performance of copyrighted musical works by internet and commercial music services. 


  • Representing a digital media publisher in a copyright infringement action in the District of Connecticut. 


  • Representing a visual artist in licensing the rights to his statue for the production and sale of retail merchandise.


Trade Secret 


  • Defending a pharma company in a trade secret misappropriation action in the District of Columbia. Plaintiff alleged that the client used a stolen strain of bacteria to manufacture a generic version of plaintiff’s blockbuster antibiotic. On the eve of trial, the case settled in a manner favorable to the client. 


  • Representing a newswire service in a trade secret misappropriation action in New York state court. The defendant anonymously posted the client’s confidential information on an internet gripe site. We obtained  pre-complaint discovery to learn the defendant’s true identity and successfully moved for a temporary restraining order and a preliminary injunction requiring the removal of the confidential information. 


  • Representing an industrial engineering consulting firm in a trade secret  licensing program for its proprietary training classes.


False Advertising


  • Representing a jewelry retailer in a false advertising action  brought by its chief competitor. The competitor claimed that the client's advertisements for its top-of-the-line diamond were false and misleading.  After a two-day evidentiary hearing, the court denied the competitor's motion for a preliminary injunction, and the case settled.


  • Representing a telecom company in  several false advertising actions concerning claims of network reliability and coverage. After briefing before the district court and the NAD, the cases settled. 


  • Defending a medical device manufacturer in an NAD proceeding concerning advertising for its vaginal rejuvenation device.  

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Commercial Litigation

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  • Defending a pharma company in a breach of contract action in New York state court relating to a research and development agreement. The court dismissed the complaint on the ground that, under the plain language of the agreement, plaintiff was not entitled to a royalty on the client’s cancer drug.  In a 3-2 split decision, the First Department reversed. 


  • Representing a Russian television network in a breach of license and trademark infringement action against its US content distributor. The distributor refused to air the client’s content, substituting content from other Russian networks while maintaining the client’s brand for the channel. After preliminary injunction briefing, the case settled in a manner favorable to the client.


  • Representing an entertainment technology company in a bench trial  in New York state court concerning a contract for the design and construction of an aquatic show in Las Vegas. 


  • Representing an electronic payment company in an action before the Central District of California Bankruptcy Court. The court granted our motion to dismiss on the ground that a prior settlement agreement barred the claims. The Ninth Circuit affirmed. 


  • Defending a religious organization in an action in New York state court that sought to invalidate the church’s new Charter. The court dismissed the action on the ground that the establishment clause of the First Amendment bars courts from interfering in the organizational matters of a hierarchical church. The decision was affirmed on appeal, and the US Supreme Court denied cert.


  • Defending a religious organization in two California state court actions alleging negligent supervision and hiring of a priest. 


  • Representing a religious organization in New York state court in an action to evict a group of rogue parishioners who had seized control of the parish’s buildings. The court granted our motion for a temporary restraining order, which enabled the client to retake possession of the parish.

Privacy and Data Security

  • Advising clients on data breach notification laws and incident response programs.


  • Advising clients on HIPPA, COPPA, Privacy Shield, and other US privacy matters.


  • Advising clients on global data transfers, the EU Data Privacy Directive, Standard Contractual Clauses and Binding Corporate Rules.


  • Preparing numerous privacy notices and website terms of use. 

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eCommerce and Internet

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  • Representing a world-leading ecommerce site on keyword advertising disputes and devising an incident response program.


  • Representing a UK company before ICANN in obtaining the new gTLD .art. 


  • Representing numerous clients in Uniform Domain Name Dispute Resolution Policy (UDRP) matters.


  • Representing a leading email marketer in a spam blocking dispute.


  • Representing trademark owners whose marks were used in phishing schemes.


  • Representing a newswire service in a data scraping dispute.