Trademark & Copyright Litigation

Representative Matters

Trademark

• For a leading health club, obtained 14 federal court judgments enjoining the use of their trademarks and stopped more than 40 other infringers from using the marks without having to resort to litigation.
• On behalf of a leading lawn and garden products company, prevailed at 45 U.S. TTAB proceedings, over ten international opposition proceedings, and prevented another 30 infringers from using the company's trademark or variants thereof without having to bring suit.
• For a major payroll service, stopped more than 20 U.S. and international infringers from using its trademark without filing a complaint and obtained the transfer of nine domain names and got seven infringing Web sites shut down, also without litigation or ICANN proceedings.
• Representing a class of retired NFL players in a right of publicity case against their union, won a jury verdictof $28.1 million, including $21 million in punitives, for use of their identities without compensation
• Litigated, or counseled regarding, the rights of publicity and/or trademark rights of Tiger Woods, Sylvester Stallone, Jim Brown, Barbara Streisand, Jimi Hendrix, Frank Sinatra, Elvis Presley, Doris Day and Groucho Marx, among others.
• For a leading plant food, soil and organics company, obtained a favorable settlement that included a court order recognizing our client's distinctive trade dress; stopping the infringement; and requiring issuance of a press release validating our client's position.
• Successfully defended a client against allegations that it incorporated the plaintiff's logo and trade dress in a video game in violation of various intellectual property rights. The court granted our motion for summary judgment in its entirety.
• Successfully represented Duckhorn Vineyards as plaintiff in trade dress and trademark infringement suit against Wood Duck Pond Cellars, and successfully defended Glen Ellen Winery in a trade dress infringement action brought by Emerald Bay Winery.
• For 24 Hour Fitness, we obtained more than 20 injunctions and settlements to protect its brand.
• Successfully defended Beach Boy Brian Wilson against a lawsuit filed by former band member Mike Love over the alleged unauthorized distribution of a CD containing songs,  co-authored by Wilson and Love. Love claimed the recordings infringed on the Beach Boys' trademark and Love's right of publicity. We obtained summary judgment and over $600,000 in attorney's fees.
• Obtained a favorable settlement for The Scotts Miracle-Gro Co. against TerraCycle, a company that creates household products and school supplies out of waste. The settlement included a court order acknowledging the Miracle-Gro ownership of its famous trade dress and stopping the infringement, as well as a rare court-ordered press release validating Scotts' legal position.

Also for The Scott's Miracle-Gro Co. we:

• Stopped at least 30 infringers from using OMS Investments' trademarks or variants thereof, prior to litigation.
• Obtained more than 57 settlement agreements in which third parties in the lawn and garden industry agreed not to challenge rights in important brands such as MIRACLE-GRO, the MIRACLE-GRO trade dress, the B GONE family of marks.
• Handled more than 50 TTAB proceedings and numerous foreign oppositions, including filing 17 successful proceedings against marks containing "GRO" and 16 successful proceedings against marks containing "BE GONE"

Copyright

• Defended The Rolling Stones, MariahCarey, Ice Cube, KISS, Ozzy Osbourne, Kid Rock, Destiny's Child, Gregg Allman and Kenny Loggins, among numerous others, against lawsuits alleging infringement of copyrighted musical compositions.
• Counseled regarding or successfully litigated infringement cases involving, copyrights for the characters BettyBoop, Barney, Rocky, Zorro, Dennis the Menace, and others.
• Counseled regarding or successfully litigated infringement cases involving, copyrights for the literary works of authors John Steinbeck, Raymond Chandler, Louis L'Amour, Helen Fielding and Philip K. Dick.
• Counseled regarding or successfully litigated infringement cases involving, copyrights for The music of BrianWilson, Jackson Browne, ElvisPresley and others.
• For a chain of garden centers, obtained asummary judgment ruling invalidating the copyright for a design it was accused of infringing.
• On behalf of a music publisher, successfully tried a federal court action against another music publisher over ownership of a music catalog. The case included claims  of copyright infringement and a request for declaratory relief.
• Represented Bikram Choudhury, the founder of Bikram Yoga, in a widely publicized case in which we established the copyrightability of yoga sequences.
• Represented defendant Julien's Auction House in the damages phase of a case alleging the unauthorized use of photographs of Marilyn Monroe. The case arose from an auction of Monroe memorabilia on consignment from the Estate of Marilyn Monroe. After summary adjudication was granted to the estate on the issue of liability, we were brought in as special trial counsel. After a full trial on the issue of damages, the jury returned a verdict of approximately $34,000. The plaintiff was seeking $2.9million.

• In a rare case of a copyright actually being cancelled, we obtained a summary judgment ruling for upscale gardening retailer Smith & Hawken invalidating the copyright in a design our client was accused of infringing. The court also awarded attorneys' fees to the former subsidiary of Scotts Miracle-Gro Co.

Trade Secret

• On behalf of an aerospace client, won a seven-week jury trial against a subcontractor who used trade secrets in securing a government contract. Also argued the appeal. The court affirmed in a published opinion.
• For a venture capital company, obtained dismissal with prejudice of a suit alleging misappropriation of trade secrets allegedly contained in an unsolicited business plan.
• On behalf of an international consumer productscompany. achieved a favorable global settlement of a case against a competitor involving claims and cross-claims of international trade secret misappropriation, unfair competition and tortious interference.
• For an administrator of self-directed IRA accounts, obtained a judgment that included permanent injunctive relief against former employees who had started a competing business
• Successfully represented an enterprise search software company in a suit against the developer of text analytics software trade secret misappropriation, copyright infringement and breach of contract.
• Represented Internet advertising defendants against claims of trade secret misappropriation relating to media buying and pricing.
• Successfully defended a client against a $10 million trade secrets claim, winning $1.5 million for the client on its cross-complaint.

Music & Entertainment

• Obtained summary judgment and Ninth Circuit affirmance for defendants The Beastie Boys in a copyright infringement action involving a "sampled" sound recording.
• Obtained dismissal, affirmed by the Ninth Circuit, based on standing for defendant Sony Pictures Entertainment in a copyright infringement action. 
• Obtained dismissal, affirmed by the Second Circuit, of a copyright infringement action against Mariah Carey and Sony Music concerning Ms. Carey's song "Hero." 
• Represented plaintiff Elvis Presley Enterprises Inc. in a trademark infringement and right of publicity action involving Presley's name and likeness. 
• Won a defense verdict for the heirs of deceased playwright Jonathon Larson, author of Rent, in a highly publicized action brought by a dramaturg claiming of co-authoring the Broadway musical. The Second Circuit affirmed in a precedent-setting decision addressing joint authorship under theCopyright Act. 
• Obtained a preliminary injunction for Ticketmaster, based on copyright infringement, violation of Digital Millennium Copyright Act and breach of contract, to stop defendant from creating and distributing computer programs to its clients allowing them to "cutin line" on www.ticketmaster.com. 
• Represented Beach Boy Brian Wilson in a lawsuit brought by fellow group member Mike Love for copyright infringement and breach of fiduciary duty over Wilson's alleged unauthorized inclusion on a compilation CD of a song co-authored by Wilson and Love.  Obtained judgment for Wilson and substantial attorney's fees.
• Represented the musical group KISS in the first-known civil action brought under the federal anti-bootlegging statute in connection with the unauthorized sale of concert DVDs. 
• For Sony Pictures Entertainment Inc., prosecuted a copyright infringement and unfair competition action involving the character "Zorro" and the movie Mask of Zorro.
• Defended music publishers against copyright infringement claims involving 'NSYNC's hit song "Girlfriend" and remix "Girlfriend" featuring Nelly.
• Defended the Rolling Stones against a copyright infringement claim involving the song "Saint of Me" from the group's Bridges to Babylon album.
• Represented recording artist and songwriter RobertKelly, his record label and his music publisher in a copyright infringement lawsuit over the composition "I Believe I Can Fly."
• Obtained a summary judgment  ruling that the son and granddaughter of John Steinbeck validly exercised their "termination" rights under the Copyright Act to retrieve book publishing rights in Of Mice and Men, The Grapes of Wrath and other Steinbeck works despite an agreement the book publisher reached with Steinbeck's widow purporting to eliminate those rights.
• Defended concert promoter Concerts West, the producer and originator of Celine Dion's long-running Las Vegas show in a breach of contract/idea submission lawsuit by a claimant alleging to be the project's originator or "finder."
• Represented Concord Records in a breach of contract/idea submission claim asserted by a party alleging to have originated the idea for Ray Charles' Grammy Award-winning album, Genius Loves Company.
• For record producer and television personality RandyJackson, obtained summary judgment, affirmed on appeal, dismissing a breach of fiduciary duty claim brought by a music publisher alleging that copyrights to songs co-written with recording artist Mariah Carey had been "diverted" from the music publisher to Carey's publishing designee.
• Defended Randy Jackson in a idea-submission case over the MTV show, America's Best Dance Crew.
• Defended Arista Records LLC  against breach of contract and fiduciary duty claims brought by former members of The Bay City Rollers seeking millions of dollars in allegedly unpaid royalties. 
• Obtained dismissal, affirmed on appeal, of an action brought against Warner Bros. Records Inc. by the estate of a former manager of the late Jimi Hendrix claiming royalties in connection with sale and distribution of Hendrix records.