Intellectual Property & Trade Secrets

WFS attorneys have extensive experience handling intellectual property matters, including protecting copyrights, trademarks, and patents, enforcing confidentiality agreements, and prosecuting and defending trade secret misappropriation cases. We also represent established and emerging clients in connection with complex and strategic technology transactions. Our attorneys routinely assist clients in the development, acquisition, licensing and commercialization of technology, intellectual property and data and advise clients on issues relating to ownership and use of intellectual property that arise in connection with the operation of their businesses. Further, our attorneys have written and lectured extensively in the trade secrets area. For example, Mike French has served as a co-author and member of the editorial board for the American Bar Association’s Trade Secret Handbook for Franchise and Distribution Companies.

In the trademark area, we routinely assist clients in the very beginning stages of their branding efforts by helping select and “clear” strong, protectable trademarks that fit their business and marketing needs. We then obtain state and federal registrations for those trademarks and oversee all maintenance requirements such as renewals and responses to inquiries from the registering authorities. We have substantial experience in such proceedings and have obtained the reversal of several adverse determinations by the USPTO, including before its Trademark Trial and Appeal Board (“TTAB”). Furthermore, to the extent that our clients require international trademark protection, we are experienced in registration proceedings under the auspices of the World Intellectual Property Organization (“WIPO”) and have relationships with intellectual property counsel in many countries who assist in the event that WIPO protection is insufficient or unavailable.

We also prosecute and defends patent, trademark and copyright litigation.  When we have been called upon to protect our clients’ intellectual property against potential business competitors or infringers, we provide robust yet sensible enforcement advice and execute upon that advice. Depending on the situation, these enforcement efforts may range anywhere from informal cease and desist correspondence aimed at reaching an amicable resolution of the dispute, to the initiation of domain name conflict proceedings, to the filing of infringement or cancellation proceedings. Conversely, if our clients find themselves accused of infringement or other similar conduct, we have deep experience in defending such matters both in and out of court, including successful trial defense. We serve as dedicated copyright counsel to a major media company and defend our client against multiple copyright infringement lawsuits each year.  In these and similar cases, our goal is to reach a prompt resolution of the matter, though we are sensitive to both our clients’ business needs and the “repeat filer” or “troll” phenomenon in copyright litigation and take an aggressive approach when called for.

Last, we also offer a full array of related intellectual property consulting services. For example, we provide counseling with respect to both current and prospective pieces of intellectual property and advise on how our clients’ intellectual property development efforts should be integrated into their broader marketing strategies. We routinely prepare a variety of intellectual property and technology related agreements, such as licensing agreements, concurrent use agreements, and assignments. Moreover, we have experience managing cyber-smearing campaigns and effecting the removal of damaging content from the Internet, including popular search engines. Our clients’ brands are very valuable, and with this in mind we strive to provide not only traditional advice and representation, but also strategic, business-oriented advice geared toward increasing the value of goodwill associated with clients’ intellectual property portfolios.

THE FOLLOWING EXAMPLES ARE INDICATIVE OF THE TYPES OF INTELLECTUAL PROPERTY AND TRADE SECRETS MATTERS WE’VE HANDLED:

Copyright

• Successfully represented Marvin Gaye’s heirs through jury trial in copyright infringement action against Robin Thicke and Pharrell Williams relating to musical composition for Thicke and Williams’ hit song Blurred Lines.
• Represented a leading retail pharmacy in a case brought under the federal Defend Trade Secrets Act, 18 U.S.C. § 1836, in the Northern District of Illinois, against a former employee who downloaded nearly 30,000 emails containing confidential information related to real estate strategy and store performance.  Obtained expedited discovery and, through that process, uncovered evidence that employee disclosed confidential information to his new employer, which was in the process of purchasing pharmacy-leased properties.
• Represented trademark holder in inter partes appeal before Trademark Trial and Appeal Board, winning reversal of USPTO’s refusal to register trademark on ground of likelihood of confusion with similar marks.
• Managed entire trademark portfolio for international financial and management services corporation, international humanitarian non-profit organization, medical products start-up company, and liquor distributor, handling all aspects of trademark registration, maintenance, compliance, and administrative proceedings in United States Patent and Trademark Office (“USPTO”) along with international jurisdictions.
• Represented major media company in all copyright litigation filed in company’s home jurisdiction, defending claims arising under the federal Copyright Act, the Digital Millennium Copyright Act, and related state and international authorities governing the protection of copyrights.  Investigated and litigated statutory defenses as well as equitable defenses such as fair use.  In each case, achieved favorable resolution in court or via informal settlement.
• Represented software developer in successful copyright infringement trial regarding cutting-edge questions about infringement of computer command sets, prevailing at the jury trial.  Also prevailed in a separate bench trial on equitable defenses, including fair use and equitable estoppel.
• Represented enterprise software company in copyright jury trial on hypothetical license and lost profits damages, including successful appeal before Ninth Circuit and favorable decisions on evidentiary issues, settling on favorable terms ahead of scheduled retrial.
• Prosecuted copyright infringement actions on behalf of members of one of the world’s largest performing rights licensing societies.
• Obtained summary judgment in defense of Fortune 100 beverage company in copyright infringement action claiming plaintiff to be the author of song used in worldwide marketing campaign.
• Represented creators and authors of teleplay in cease and desist efforts against executive producer, television studio and television network for appropriating creators’ teleplay and treatment for a pilot episode and television series.

Trademark, Trade Secret, False Advertising and Unfair Competition

• Defended and favorably settled action brought by Julia Roberts and George Clooney against client for misappropriation of name and likeness in advertising materials.
• Represented trademark holder in inter partes appeal before Trademark Trial and Appeal Board, winning reversal of USPTO’s refusal to register trademark on ground of likelihood of confusion with similar marks.
• Managed entire trademark portfolio for international financial and management services corporation, international humanitarian non-profit organization, medical products start-up company, and liquor distributor, handling all aspects of trademark registration, maintenance, compliance, and administrative proceedings in United States Patent and Trademark Office (“USPTO”) along with international jurisdictions.
• Represented a clothing designer in various trademark infringement and unfair competition actions pending in federal court in Georgia and Florida.  Obtained civil seizure orders and executed seizures along with U.S. Marshals in two trademark counterfeiting cases.  Obtained a judgment after a bench trial against an international duty-free company in the United States District Court for the Southern District of Florida for trademark counterfeiting.
• Defended legal publishing company in federal court jury trial involving allegations of violations of Lanham Act.  Argued appeal which resulted in seminal Eleventh Circuit decision on recovery of attorneys’ fees in Lanham Act litigation.
• Represented a plaintiff/former employer in a Lanham Act false advertising and restrictive covenant case in federal district court in West Virginia. Sued only one former employee but, after substantially completing the preliminary injunction hearing, negotiated a global settlement including non-parties (the former employee’s new employer and another former employee who had joined the same company), which required the offending parties to pay attorneys’ fees and abide by the terms of the restrictive covenant.
• Served as national legal counsel in trademark enforcement program for a major German automobile manufacturer and distributor.
• Represented trademark holder in inter partes appeal before Trademark Trial and Appeal Board during registration proceedings, winning reversal of USPTO’s refusal to register trademark on ground of likelihood of confusion with similar marks.
• Represented liquor distributor in proceedings before USPTO for registration of company’s signature “llama” silhouette trademark, winning reversal of USPTO’s position that potential confusion with similar marks was likely to occur.
• Represented international humanitarian non-profit organization in cease and desist efforts against infringer in connection with infringer’s efforts to set up a charitable non-profit using client’s brand and goodwill.  After infringer refused to comply with initial cease and desist letter, drafted federal complaint for trademark infringement, dilution and tarnishment while conducting research into infringer’s asserted non-profit to uncover possible fraud.  Leveraged these findings and threat of litigation proceedings against infringer, quickly persuading infringer to desist and re-brand.
• Represented national aviation, janitorial, and security services company in re-branding efforts following spin-off from major airline company.  Assisted in selection, clearance, and registration of new trademarks in the United States, European Union, and Asia (through WIPO).
• Defended technology company in trademark infringement action in the United States District Court for the Northern District of California.  Defeated motion for preliminary injunction and obtained ruling that plaintiff had abandoned its trademark by virtue of naked licensing.
• Represented industry-leading financial services company in multiple litigation matters premised on competitors’ misappropriation of clients’ propriety customers list through illegal searches of driver’s license databases.  Obtained injunction preventing competitors from continued solicitation of customers discovered through improper means and summary judgment on competitors’ trade-secret based counterclaims.
• Represented non-disclosed client in negotiating terms for and preparation of trademark co-existence agreement for clearance of service mark intended to identify services under new national initiative.
• Represented beverage company in defending alleged patent infringement, trade secret and breach of contract claims arising out of co-development agreement involving new technology and background intellectual property.

Patent

• Represented international manufacturing company in dispute with prior law firm, asserting claims for legal malpractice relating to law firm’s negligent handling of client’s patent portfolio. Negotiated seven-figure pre-litigation settlement on behalf of client.
• Represented concrete formulator in a four-week patent infringement trial in federal court, obtaining jury verdict in favor of the patent holder and finding of willful infringement of two patents by the defendant.
• Defended animal pharmaceutical company in patent litigation in which patent holder sought to have client held in contempt of court due to alleged violation of injunction against infringement.  Obtained denial of motion for contempt following bench trial on allegations of contumacious conduct.
• Defended large distribution company in a Section 337 Investigation in the United States International Trade Commission (“ITC”).  In one of the largest patent infringement investigations to date, the Court found the subject patent invalid based on a broadening reissue amendment and a deficient reissue certificate.  The ITC held there was no violation of Section 337 and a general exclusion order did not issue.
• Represented manufacturer and patent holder of electric turkey fryers in patent litigation action against publicly traded national retailer; reached favorable settlement prior to preliminary injunction hearing, after expedited fact discovery and production of expert reports.
• Retained by pharmaceutical company after finding of contempt for alleged violation of injunction against patent infringement to replace lead counsel and try damages and sanctions phase of case.  Obtained favorable settlement and license for client following extensive damages discovery.
• Represented major pharmaceutical company in patent infringement and trade secrets misappropriation case relating to drug delivery systems.  Obtained favorable settlement for client following depositions of top executives for opposing party.
• Defended a global, publicly held company in a patent infringement lawsuit in the Central District of California concerning a messaging system network that converts incoming e-mails to outbound faxes.
• Represented beverage company in defending alleged patent infringement, trade secret and breach of contract claims arising out of co-development agreement involving new technology and background intellectual property.