Copyright and Trademark Law
The firm has successfully represented clients in trademark, servicemark and copyright matters including registration, prosecution and defense of infringement claims, as well as authorship and ownership disputes in federal and state courts throughout the country and before government agencies such as the Patent and Trademark Office, the Trademark Trial and Appeal Board, and the United States Copyright Office. The firm has extensive experience in issues involving intellectual property valuation, royalty compliance (including audits) and contract administration.
Intellectual Property Consulting
The firm counsels clients in developing programs to protect their proprietary information and intellectual property from improper use and infringement, and gives advice on licensing and clearance issues with respect to product development.
Technology and Related Litigation
The firm represents and counsels clients who are start up companies, entrepreneurs, venture capitalists and established businesses in technology and digital rights issues, including entity formation, financing, licensing and enforcement issues.
Trade Secret Litigation
The firm has deep expertise in trade secret litigation, and specializes in cases involving leaving employees accused of taking trade secret information with them, handling such cases on behalf of employers and employees.
Internet Law and Related Litigation
The firm represents and counsels internet clients in areas such as advertising and marketing, lead generation, social networking, user generated content, privacy, domain name disputes, copyright and trademark disputes, DMCA, CDA, and CANSPAM.
Trade Secret, Unfair Competition, Interference
NIC v. Wren, et. al., U.S. District Court, N.D. Cal. The firm filed a lawsuit on behalf of a corporate client, alleging that the client’s former vice president, responsible for over $30 million in annual sales, had unlawfully taken active steps to compete while still in client’s employ, and upon being discovered and terminated, continued to unfairly compete. The lawsuit alleged claims for injunctive relief, unfair competition, misappropriation of trade secrets and interference. The court granted the firm’s emergency application for the right to conduct expedited discovery and set an expedited hearing on a motion for preliminary injunction. The case settled prior to the hearing.
Gilbert Properties Partnership v. Baerwald, U.S. District Court, C.D. Cal. The firm represented the heirs of the late singer/songwriter Kevin Gilbert in a lawsuit against David Baerwald alleging that Baerwald refused to give co-writing credit or royalties to Gilbert for the hit song "Come What May," which was featured as the sole original song in the film Moulin Rouge. Shortly before trial, Baerwald and other defendants agreed to settle, acknowledging Gilbert as co-author of the song and agreeing to pay Gilbert's heirs his share of songwriter royalties.
Mendler v. Winterland, U.S. District Court, N.D. Cal. The firm successfully defended at trial Winterland Productions, the world's then largest purveyor of music industry merchandise, in a copyright infringement action brought by a photographer. In a 2-1 decision, the Ninth Circuit Court of Appeals remanded the copyright infringement claim on a closely contested issue involving the use of digital photo technology. Back in the trial court, the firm successfully defeated plaintiff's six-figure damages claim, convincing the trial court to reduce it to less than $10,000.
Domain Name Partnership Dispute
Fashion On-Line v. Lipson, San Francisco Superior Court. The firm represented the co-owner of various domain names, including fashion.com, in a lawsuit brought by the co-owners, alleging that the firm’s client had permitted a portion of the portfolio of names to lapse and otherwise acted improperly. The firm filed a counterclaim alleging various breaches by the plaintiffs. The case settled at mediation.
Digital Copyright Infringement
Newton v. Diamond, et al., Ninth Circuit Court of Appeal. The firm participates as counsel on amicus curie brief in ground-breaking case involving jazz musician James Newton’s claim of copyright infringement against the Beastie Boys and related parties. The Ninth Circuit Court of Appeals adopts many of the arguments the firm makes on behalf of clients DJ Shadow, Om Records, legendary record producer Denzil Foster (En Vogue) and others in support of Beastie Boys’ position that digital sampling of three note music composition is not an infringement of Newton’s musical score, in the process establishing that sampling is not de facto infringement in all cases.
Copyright Ownership Dispute
Watts v. Watts, U.S. District Court, N.D. Cal. The firm represented the daughters of famed Eastern philosopher Alan Watts in an action brought by a disinherited sibling involving rights to the deceased’s literary works. The firm successfully defended the clients' position, resulting in a victory before an arbitrator and an award of costs and attorneys' fees. Earlier, the firm prevailed in federal court against separate claims made by other disinherited siblings involving so-called "renewal" copyrights.
Maritime Hall v. KRS-One, U.S. District Court, N.D. Cal. The firm represented the renowned San Francisco live music venue Maritime Hall in a dispute over recordings made by it during a performance by rap artist KRS-One and later featured on one of the artist’s gold-selling record albums ("I Got Next") released by Zomba Records. The firm successfully defeated the artist’s and record label’s motion for summary judgment, in doing so establishing one of the clearest statements by a federal court on rights in authorship deriving from the creative contributions of record producers in and to copyrighted sound recordings. The case settled soon thereafter.