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Admitted to Practice

  • California, 1995
  • U.S. Court of Appeals 9th Circuit
  • U.S. Court of Appeals 2nd Circuit
  • U.S. Court of Appeals Federal Circuit
  • U.S. District Court Eastern District of California
  • U.S. District Court Central District of California
  • U.S. Court of Appeals Southern District of California
  • U.S. Court of Appeals Northern District of California
  • U.S. District Court District of Colorado

James D. Nguyen

NguyenJames
Partner
T213.633.8643
F213.633.6899
Jimmy Nguyen is a "360 degree" lawyer who handles complex litigation, transactions, and counseling work involving intellectual property, entertainment, digital media, sports, advertising, privacy, and technology. He is a prominent thought leader for issues involving the Internet, social media, mobile devices, and other digital media technologies.

In 2008, Lawdragon named Jimmy (at only age 36) to its list of "500 Leading Lawyers in America;" it summed him up well as a "dynamo talent [who] is a one-stop shop for companies in entertainment, technology, advertising, sports and other industries seeking IP, litigation and transactional advice."

Jimmy represents clients in diverse industries spanning entertainment and media, sports, Internet gaming, video games, technology, fashion, consumer products, toys, retail, automotive, and financial services. His clients include Amazon.com, AllianceBernstein, Beachbody, Big Heart Pet Brands (formerly Del Monte Foods Company), Fandango, Hot Topic, J. Crew Group, Journal Communications, Kia Motors America, LEGO Group, Major League Baseball Properties, Microsoft, the Miss Universe Organization, Monster Energy Company, Newegg, Nordstrom, nTrust Corp., Sony Pictures Entertainment, and TripAdvisor.

As a litigator, Jimmy has first-chaired jury and bench trials; handled arbitrations, TTAB and UDRP proceedings; and argued appeals. One Lawdragon reviewer described him as an "outstanding litigator, who writes and argues orally exceptionally well." His substantive litigation experience spans copyright, trademark, domain name, patent, trade secret, advertising, privacy, and unfair competition law. Jimmy has also handled significant commercial litigation and successfully defended consumer class actions.

As a valued business advisor, Jimmy helps clients develop, protect, distribute and monetize their IP, entertainment, media, and technology assets. He routinely counsels clients and handles a broad range of transactions involving such subject matter.

Jimmy also works closely with clients on advertising, marketing, and promotion campaigns. He provides guidance on media buys; advertising copy and product claims; sweepstakes and contests; regulatory compliance; endorsement, sponsorship, product placement, and brand integration deals; email, mobile, and social media marketing; privacy issues; and online behavioral advertising.

As clients increasingly operate on digital platforms, Jimmy developed a "360 degree" experience with privacy and data security issues – from both the litigation and counseling viewpoints. In addition to having successfully defended privacy class actions, he has worked with clients to proactively manage risk and achieve compliance by conducting privacy and data collection audits; preparing Privacy Polices; advising on mobile apps and mobile privacy; assisting clients with children’s privacy and COPPA compliance; and advising on online behavioral advertising, CAN-SPAM, mobile marketing, the Telephone Consumer Protection Act.

More uniquely, Jimmy has experience with online gambling and other digital gaming. He has advised about IP, Internet, advertising, and regulatory issues affecting this growing global industry—including implications for sweepstakes and contests, promotional activity in traditional media, the Wire Act, and the Unlawful Internet Gambling Enforcement Act (UIGEA).

Jimmy was born in Saigon, Vietnam, the son of a magistrat judge under South Vietnam’s French civil law system. His family fled the night before Saigon fell in April 1975, and rebuilt life in the United States. A precocious achiever with a life history of excelling early, Jimmy graduated college from UCLA at age 19 and law school at 22. Competing for Mt. San Antonio College, he was a seven-time national gold medalist in collegiate speech competition and two-time winner of the top overall speaker award at the Phi Rho Pi national tournament. Jimmy attended law school at the University of Southern California on a full scholarship and was the youngest member of his class. There, he was champion and chair of the Hale Moot Court Honors Program, and champion of the 1995 Jerome Prince National Evidence Moot Court Competition.

Today, Jimmy is a prolific speaker, writer, and media commentator on IP, new media, and diversity topics. A bar leader and diversity advocate, Jimmy has chaired the State Bar of California’s IP Law Section and co-chaired the California Minority Counsel Program.

Outside of law, Jimmy keeps engaged with diverse activities. Active in the LGBT community, he previously served on the Board of Equality California and is a creative producer of "it gets better" touring musical theater show to help stop bullying of LGBT youth. Jimmy founded the DiverseStory Project, an online campaign to make the world more inclusive by encouraging people to tell their stories of diversity. He hosts the "Speak Up with Jimmy" web series, and is also a regular contributor on diversity and equality issues for "The Huffington Post" and other online media outlets. For many years, Jimmy was a volunteer coach for the Mt. San Antonio College speech and debate team – which he helped lead to numerous national titles. With colleagues from the speech world, he co-founded the American Readers Theater association and has served as director of its national tournament since 2001. And in some of his most fun experiences, Jimmy has served as a preliminary judge at two Miss Universe pageants - in 2011 (Sao Paulo, Brazil) and 2012 (Las Vegas, Nevada). In 2012, Jimmy was named one of the "Most Influential LGBT Asian Icons" by "The Huffington Post."

Representative Experience

Intellectual Property Litigation

Barry Rosen v. Amazon.com, Inc.

Defending Amazon.com, Inc. in suit brought by photographer alleging direct and vicarious copyright infringement due to third-party sellers’ uploading of allegedly infringing images (of autographed celebrity prints) to the Amazon online marketplace. The case raises issues about the Digital Millennium Copyright Act safe harbors and fair use, including whether an online service provider (after receiving a DMCA takedown notice) is required to disable image files stored on an internal server for technical reasons, in addition to disabling access to the disputed images on its public web pages. Defeated plaintiff’s motion for partial summary judgment on liability issues. Case now awaits trial. (C.D. Cal. Ongoing)

Pamella Lawrence v. Sony Pictures Entertainment Inc., et al.

For Sony Pictures Entertainment and 30 other defendants, obtained dismissal in a federal copyright case, as well as four state court cases, related to the British (2007) and American (2010) versions of the comedy film "Death at a Funeral." Plaintiff alleged that defendants infringed her book and the video of an assault she suffered at a funeral to produce the films (or alternatively, Plaintiff alleges breach of an implied agreement and other state law claims). Won summary judgment on the copyright claims in federal court, and a $200,000 attorney’s fee award; on appeal, both rulings were affirmed by the 9th Circuit.

Won dismissal at the pleading stage of four additional state court cases filed by the plaintiff, and obtained a ruling that deemed the plaintiff a vexatious litigant. Plaintiff’s further attempts to seek review in the California appellate courts and U.S. Supreme Court have been rejected. (C.D. Cal., 9th Cir., LA Cnty. (Cal.) Super. Crt., Calif. App. 2011-2014)

Gogo Sports, Inc. v. Major League Baseball Properties, Inc. and San Francisco Baseball Associates, L.P.

California co-counsel for MLB Properties and the San Francisco Giants baseball club in trademark litigation against sports clothing manufacturer over infringement of SAN FRANCISCO script mark. The defense team successfully moved to transfer venue from the Central District of California to the Northern District of California. After lengthy negotiations, the case and broader issues between the parties were resolved with a stipulated consent judgment and permanent injunction that restrained the manufacturer’s activities in order protect all other MLB club marks with geographic designations. (N.D. Cal. 2014) 

Intrust Financial Corp. v. nTrust Corp.

Representing emerging company which provides an electronic peer-to-peer money transfer service applicant and seeks registration of its NTRUST mark, in opposition proceeding brought by owner of INTRUST and INTRUST BANK family of marks (registered primarily for banking services). This is one of the rare TTAB opposition proceedings that has proceeded to the trial period, where it currently is pending. (TTAB Ongoing)

New York Racing Association v. Angels Baseball LP

Defending Angels Baseball LP against opposition proceeding brought by New York Racing Association against the baseball club’s U.S. application to register the mark THE BIG A in various classes of goods/services. The matter remains pending. (TTAB Ongoing)

Quiksilver, Inc. v. Kymsta Corp.*

Represented Kymsta, manufacturer of Roxywear clothing, in 8-year trademark case against Quiksilver’s Roxy mark. Acted as lead trial counsel in two federal jury trials and two 9th Circuit appeals, which ended with client being able to continue using its mark as it always had. (C.D. Cal. and Ninth Circuit – completed in 2010; prior published decision at Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749 (9th Cir. 2006))

1st Technology, LLC v. Bodog Entertainment Group, S.A.*

Defended supplier to Bodog worldwide online gaming organization in multiple cases stemming from $50 million default judgment for patent infringement related to digital media technology. Numerous cases included attacks to the judgment, appeal to the Federal Circuit, and reexamination of the patent in suit. Cases in Washington battled over the Bodog trademark and seizure of 3000+ Internet domain names belonging to client – raising novel issues about whether a trademark can be involuntarily seized from its owner. After significant litigation activity, cases were favorably resolved via confidential settlement and with client domain names restored. (D. Nev.; Federal Circuit; USPTO; W.D. Wash.; King Cnty. Super. Ct.; C.D. Cal. 2007-2009; reported decision at 2009 U.S. Dist. LEXIS 15659 (W.D. Wash.; Feb. 6, 2009)

1st Technology, LLC v. Cake Gaming NV

Represented online gaming company in response to patent infringement lawsuit related to digital media technology. Case was resolved favorably for client without appearance. (N.D. Ill. 2012)

Gildersleeve Holdings AG, LLC v. Here Media Inc.

Defended Here Media in patent infringement action related to technology used by social networking website. Case was favorably resolved in confidential settlement. (C.D. Cal. 2011)

Marvel Enterprises, Inc. v. NCSoft Corporation, et al.*

Helped represent Marvel Enterprises and Marvel Characters in cutting-edge copyright suit over 'City of Heroes' massively multiplayer online role playing game. The case raised issues about whether the game developer and game publisher could be secondarily liable for copyright infringement by players in creating avatars that look like well-known Marvel superhero characters, and whether DMCA safe harbors could be invoked. While summary judgment motions were pending and case was being prepared for trial, case was resolved via confidential settlement. (C.D. Cal. 2005)

Domain Name Proceedings

Crowdfund International LLC v. PleaseFund.Us Ltd.

Successfully represented domain name Registrant PleaseFund.Us Ltd in .US nexus dispute before National Arbitration Forum over whether Registrant had a sufficient nexus with United States to hold a .US domain name. Prevailed in defeating the complaint and obtained a decision finding the Registrant had a sufficient nexus with United States and was entitled to retain its.US domain name. This appears to be the first decision in a NAF proceeding focused solely on the .US Nexus Requirements. (NAF 2013)

Columbia Pictures Industries, Inc. v. INternational Pictures

Represented Columbia Pictures Industries in successful UDRP proceeding to reclaim www.fantasyisland.com domain name, which infringed client’s trademark rights to the famed “Fantasy Island” television series, from a cybersquatter. Prevailed in proceeding and domain name was transferred to client. (WIPO 2012)

Privacy Litigation and Other Consumer Class Actions

David Boorstein v. Men’s Journal, LLC

Defended magazine publisher in one of the first wave of privacy class actions under California's "Shine the Light" law—which relates to the practice of businesses sharing personal information about their customers so third parties can directly market to them. The plaintiff claimed that the Men’s Journal website Privacy Policy did not satisfy certain notice requirements in the statute. Won dismissal with prejudice at the pleading stage based upon plaintiff's failure to allege any cognizable injury, and obtained precedential decisions that have been cited in other "Shine the Light" cases. After Plaintiff appealed, appellate briefing was completed, and the court announced it would rule without oral argument, case was resolved and the appeal was dismissed. (C.D. Cal.; 9th Cir. 2011-2014)

Max Smith v. Microsoft Corp.

Part of case team that defended Microsoft in one of the first wave of privacy class actions under California’s “Shine the Light” law—which relates to the practice of businesses sharing personal information about their customers so third parties can directly market to them. The plaintiff claimed that various Microsoft websites fail to satisfy notice requirements in the Shine the Light statute. In response to a motion to dismiss for improper venue, the plaintiff voluntarily dismissed the action.  (C.D. Cal. 2012)

Robert Capp v. Nordstrom, Inc.

Defending putative class action under California’s Song Beverly Credit Card Act related to collection of email addresses for purposes of issuing an e-receipt to Nordstrom customers. (E.D. Cal. Ongoing)

Daniel Richardson v. VIP Research, Inc. and Journal Broadcast Group, Inc.

Defending Journal Broadcast Group, Inc. in a putative class action alleging that its radio stations violated the Telephone Consumer Protection Act when a research company placed music survey telephone calls to mobile telephone numbers. (D. Neb. Ongoing)

William Bauer v. Atlantis Events, Inc.

Defeated putative consumer class action under California Consumer Legal Remedies Act, California Business & Professions Code section 17200, and common law theories, where plaintiffs sought to invalidate as unenforceable the cancellation fee policy in a tour operator’s contract with customers. Won dismissal with prejudice at the pleading stage, and a fee award under the customer contract at issue. Plaintiffs have appealed to the 9th Circuit, and the appeal is pending. (C.D. Cal.; 9th Cir. Ongoing)

Jessica Clark v. Stein Mart, Inc., et al.*

Part of team that defended retailer Stein Mart in putative class action under Fair and Accurate Credit Transactions Act (FACTA) related to truncating of consumer credit card numbers on retail receipts in order to help protect consumer privacy and prevent identity theft. Case was settled while the plaintiff's motion for class certification was pending. (C.D. Cal.)

Other Internet & Technology Litigation

Stephanie Johnson v. TripAdvisor, LLC, et al.

Representing TripAdvisor and Expedia in a case brought by a former employee of the online travel site VirtualTourist.com (now owned by TripAdvisor), complaining that the online VirtualTourist profile she used while previously working for the company was altered and then deactivated. The plaintiff filed suit in LA Superior Court alleging breach of VirtualTourist.com’s online user agreement, false light, invasion of privacy, and other claims. Successfully moved to compel arbitration to determine whether Plaintiff’s new claims are barred by the release provisions of her prior settlement agreement. The case then proceeded to arbitration before JAMS. Before the scheduled arbitration hearing, the parties reached an agreement on principle terms to resolve the matter. (L.A. Superior Court; JAMS Arbitration, Ongoing)

Online Interest-Based Advertising Accountability Program v. Kia Motors America, Inc.

Represented Kia Motors America, the first major advertiser subject to an inquiry proceeding by the Better Business Bureaus’ Online Interest-Based Advertising Accountability Program (created in 2011 to enforce the Self-Regulatory Guidelines for Online Behavioral Advertising.) The Accountability Program challenged whether Kia Motors America failed to comply with the Self-Regulatory Guidelines with respect to a behaviorally-targeted online advertising campaign that did not serve the "AdChoices" icon to provide consumers enhanced notice that the ad was served based on interests inferred from their Internet browsing history. Representation led to an Oct. 1, 2012, decision that was favorable to Kia and stated that the Accountability Program "is pleased with Kia’s prompt action in addressing the compliance issues in inquiry. We commend Kia for taking steps to clarify its support of the OBA Principles to its agency and ad network partners." (Advertising Self-Regulatory Counsel/Council of Better Business Bureaus – Online Interest-Based Accountability Program, 2012)

Journal Sentinel, Inc. v. Classified Ventures, LLC*

Represented newspaper in arbitration and related court action alleging that provider of Cars.com online advertising portal breached the parties’ Internet affiliate agreement. Case was resolved via confidential settlement. (N.D. Ill.; American Arbitration Association 2009)

R.F. Mollno, Inc. dba The Permit Company v. Lehrack, et al.*

On behalf transportation permit service provider, prosecuted action for violation of Computer Fraud and Abuse Act and trade secret theft against former employee who left client to start competitive company and improperly accessed client’s information technology systems. Successfully obtained a stipulated judgment with permanent injunction against defendants. (C.D. Cal. 2008)

Counseling and Transactions

Privacy and related digital work

Provide wide range of privacy and data security counseling and transactional services for companies such as Bauer Publishing Group, Big Heart Pet Brands (formerly Del Monte Foods), Condé Nast International. Hot Topic, Hyundai Capital America, Kia Motors America, Microsoft, Pacific Theaters, Reading International/Consolidated Entertainment, Sony Computer Entertainment America, Sundance Cinemas, Uber Technologies, and Wenner Media.

Work has included conducting comprehensive website audit of privacy and web data collection practices; preparing and updating clients’ Privacy Polices, web site Terms of Use, and mobile app privacy policies and end user license agreements. Have also advised on compliance with the Children’s Online Privacy Protection Act and its implementing rule/regulations; privacy and data security provisions for vendor contracts; data-sharing; online behavioral advertising issues; CAN-SPAM compliance; mobile marketing and the Telephone Consumer Protection Act.

Advertising, marketing and promotions work

Provide wide range of advertising, marketing, and promotions work for companies such as Bauer Publishing Group, Hot Topic, Hyundai Capital America, J. Crew Group, Kia Motors America, Mattel, Microsoft, Monster Energy Company, and Sony Pictures Entertainment.

Experience has spanned campaigns involving traditional media, Internet, social media, mobile platforms, user-generated content, and brand integration. Work has included review and advice on advertising claim substantiation and comparative advertising; online, mobile and social media advertising – including behaviorally targeted ads; CAN-SPAM and mobile marketing issues; sweepstakes, contests and promotions; loyalty program rules and termination; music licensing and clearance for promotional usage. Have negotiated celebrity endorsement agreements; brand integration, sponsorship and co-promotion deals; digital advertising deals; marketing vendor and agency contracts.

Digital media counsel for Journal Communications

Acts as digital media transactional counsel for Journal Communications and its publishing and broadcast media entities. Has handled wide range of deals involving and advised on distribution of content via over-the-top television applications, e-readers and online media, Internet video exploitation, licensing of content for publication’s mobile apps, creation of online hosted archives of news content and photographs, Internet advertising platforms, cloud computing, and online behavioral advertising.

Transactions and counseling for Miss Universe Organization

Act as outside counsel on a range of matters for the client’s various pageant systems. Negotiated renewal of broadcast license and distribution agreements for Miss Universe and Miss USA telecasts. Counseled on issues related to inclusion of transgender contestants after the 2012 controversy surrounding disqualification of Miss Canada Universe contestant Jenna Talackova, and helped re-write rules to permit transgender contestants. Advise on issues related to pageant system contracts, digital media exploitation, and music-related deals.

Digital media counsel for Los Angeles Times

Provide advice and handle transactions related to digital promotion and advertising, matters and online loyalty program. (Ongoing)

Entertainment counsel for LEGO Group

Acted as entertainment counsel for the LEGO Group, working on deals for film, television, home video, Internet, and video game projects based upon LEGO properties.

IP counsel for AllianceBernstein, L.P.

Counsels on IP and new media matters for AllianceBernstein, L.P., the New York-based financial services company and affiliated entities.

IP and entertainment counsel for Bodog

Manages global trademark portfolio for the Bodog online gaming brand and organization. Previously handled legal work related to Bodog television programs, record label, creation of mixed martial arts sports league, and other creative ventures.

Internet gambling issues

Advises clients about Internet gambling issues, and impact on sweepstakes, contests, casual gaming, fantasy sports, advertising, and media activities.

Digital production work for Fandango

Oversaw legal work and negotiated deals for production of new commercial campaign and production of original web series.

Event production work for Major League Baseball*

Assisted with production legal work for the 2010 and 2007 Major League Baseball All-Star Games.

Entertainment counsel for Special Olympics World Summer Games*

Led U.S. entertainment production legal work for the 2007 Special Olympics World Summer Games in Shanghai, China.
* Denotes experience completed at a prior firm

Additional Qualifications

  • Partner, Wildman Harrold, Allen & Dixon LLP, Beverly Hills, 2008-2011
  • Partner, Co-chair (and Co-founder), Entertainment & Media Industry Team, Vice Chair, Intellectual Property Litigation Practice, 2004-2008; Associate and then Senior Counsel, 1995-1997, 1998-2004 – Foley & Lardner LLP, Los Angeles

Professional & Community Activities

  • Co-chair, 2010; Executive Committee member, 2005 to present – California Minority Counsel Program
  • Immediate Past Chair, 2010-2011; Chair, 2009-2010; Executive Committee member, 2004-2010 – State Bar of California IP Law Section
  • Law Firm Advisory Board, Association of Media & Entertainment Counsel, 2009, 2012-2014
  • International Association of Gaming Advisors
  • Fellow, Litigation Counsel of America, 2010-2014
  • The Association of Business Trial Lawyers
  • Vice Chair, Subcommittee on Litigation Management, Section of Business Law, Committee on Corporate Counsel, American Bar Association, 2009-2010
  • Co-chair, IP, Internet and New Media Section, Beverly Hills Bar Association, 2003-2004
  • Interactive Media Peer Group, Academy of Television Arts & Sciences
  • Forum on Entertainment & Sports, American Bar Association
  • Copyright Societies of the USA and Los Angeles
  • International Trademark Association
  • American Intellectual Property Association
  • Los Angeles County Bar Association
  • Sports Lawyers Association
  • Board of Directors, Equality California, 2007-2011
  • Co-founder, American Readers Theater association (ARTa) (Legacy Award recipient, 2005 and National Tournament Director 2001-present)
  • Pro bono counsel, Ma-Yi Theater Group
  • Coalition of Asian Pacifics in Entertainment (CAPE)

Professional Recognition

  • Named to the “Lawdragon 500 Leading Lawyers in America” list by Lawdragon, 2008
  • Honored as IP Lawyer of the Year, by the Century City Bar Association, 2011
  • Named to the “Lawdragon 3000 Leading Lawyers in America” list by Lawdragon, 2010
  • Named one of the "Top 20 Lawyers under 40 in California" by the Daily Journal, 2010
  • Recognized as one of the “Best LGBT Lawyers Under 40” by the National LGBT Bar Association, 2010
  • Named to list of “Most Influential LGBT Asian Icons” published by Huffington Post, 2012
  • Named to the “Forty under 40” list of top LGBT persons by Advocate magazine, 2010
  • “Alumnus of the Year,” Mt. San Antonio College, 2010
  • Named to the "New Worlds, New Stars" list by Lawdragon, 2006
  • Founders Award, Association of Media & Entertainment Counsel, 2009
  • Named one of the "Best Lawyers Under 40" by the National Asian Pacific American Bar Association, 2005
  • Selected to "Southern California Super Lawyers" in Intellectual Property by Thomson Reuters, 2005-2014
  • Selected to "Southern California Rising Stars" in Intellectual Property Litigation by Thomson Reuters, 2004
Jummy Nguyen discusses the value of the California Minority Counsel Program
Highlights on Download a digital.dwt event