Experience List
DWT
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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, new media, sports, advertising, privacy, and technology. He is a prominent thought leader for issues involving the Internet, social media, mobile devices, and other evolving 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 AllianceBernstein, BBC Worldwide Americas, Beachbody, the Bodog online gaming and entertainment organization, Del Monte Foods Company, Hansen Beverage Company, Hot Topic, Journal Communications, Kia Motors America, LEGO Group, Major League Baseball Properties, and Newegg.

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.

As a valued business advisor, Jimmy helps clients develop, protect, distribute and monetize their IP, entertainment, media, technology, and content 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.

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 regular op-ed contributor for "Advocate" magazine’s website. 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. In 2011, Jimmy served as a preliminary judge at the Miss Universe pageant in Brazil. Currently, he is co-producing a musical theater project based upon the "It Gets Better" campaign to stop bullying, and improve the lives, of LGBT youth.

Representative Experience

Litigation

David Boorstein v. Men’s Journal, LLC

Defending 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 does 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. Case is currently on appeal to the 9th Circuit. (C.D. Cal.; now pending in 9th Cir.)

Rosen v. Amazon.com, Inc.

Defending Amazon.com, Inc. in suit brought by photographer alleging direct and vicarious copyright infringement. (C.D. Cal. Ongoing)

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)

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)

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, where the action remains pending. (N.D. Cal. 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 web site. Case was favorably resolved in confidential settlement. (C.D. Cal. 2011)

Manley Toys, Ltd. v. Radco Ltd HK

Defended Hong Kong toy manufacturer in an action brought by competitor Manley Toys. Manley claimed that Radco infringed the copyright to an instruction manual for water slide toys. Radco maintained that it did not create, sell or ship the product containing the disputed instruction manual. Case was favorably resolved in confidential settlement. (C.D. Cal. 2011)

Manley Toys, Ltd. v. Radco Ltd HK*

Defended Hong Kong toy manufacturer in action brought by competitor asserting trademark and trade dress infringement over name ("The Plunge" compared to "Pipeline Plunge") and design of water slide toy products. Court granted motion to dismiss in part with leave to amend trade dress claim (for failure to allege protectable trade dress) and for insufficient allegations against individual defendant. While time to amend was pending, case was favorably resolved in confidential settlement. (C.D. Cal. 2010)

Entrepreneur Media Inc. v. American City Business Journals, Inc.

Represented American City Business Journal in trademark infringement case brought by "Enterpreneur" magazine against client’s ABJ Enterpreneur mark for a magazine publication in Austin, Texas. The case was favorably resolved in confidential settlement. (C.D. Cal. 2011)

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)

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)

Bestall Management v. Todd English Enterprises, LLC

Defended celebrity chef Todd English and his company against litigation by former business advisor over amounts due under restaurant contracts. Prevailed in setting aside default obtained before representation began. Case was later favorably resolved via confidential settlement. (Los Angeles Cnty. (Cal.) Super. Ct. 2011)

Zula USA, LLC v. Carolina Biological Supply Company*

Represented rights-holder to popular "The Zula Patrol" animated children’s series in litigation against its licensee for educational kits based upon the animated property (to be supplied in schools for science classes). Competing cases were filed in North Carolina and in California. The dispute involved competing claims for breach of the parties’ license agreement and violation of the parties’ respective trademark, copyright and trade secret rights. Cases were favorably resolved via confidential settlements. (C.D. Cal. and M.D.N.C. 2010)

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)

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)

DMCA cases for Usenet service provider*

Represented Usenet service in DMCA-related litigation, including defending a copyright action over photographs accessible through the service, and prosecuting a declaratory judgment action to invalidate an agreement predating enactment of the DMCA.

Domain name proceedings and litigation for various companies*

Handled domain name disputes, UDRP actions, and anti-cybersquatting litigation for numerous clients – including Internet service providers, financial services companies, , motion picture studio, and online entertainment business.

U.S. Figure Skating Association v. Ron Pfenning and Jon Jackson*

Successfully represented two figure skating officials in sports arbitration, appeal and related American Arbitration Association case under Ted Stevens Amateur Sports Act. After the pairs figure skating judging scandal at the 2002 Winter Olympics, the officials created and advocated for the World Skating Federation to replace the International Skating Union as the IOC-recognized international federation to govern figure skating. After sports arbitration hearing, prevailed in defeating grievance claims that the officials’ actions violated USFSA rules; result was affirmed on appeal to USFSA Executive Committee. (2005)

Counseling and Transactions

New media counsel for Journal Communications

Acts as new 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 e-readers and online media, Internet video exploitation, licensing of content for publication’s mobile apps, Internet advertising platforms, cloud computing, and online behavioral advertising.

Advertising and media counsel for Kia Motors America

Handle full range of advertising, marketing, and promotions work for Kia Motors America for campaigns involving traditional media, Internet, social media, mobile platforms, user-generated content, and brand integration. Provide advice on related privacy, online behavioral advertising, CAN-SPAM and mobile marketing issues.

Promotions counsel for Hansen Beverage Company

Advises on offline and online sweepstakes and contests to Hansen Beverage Company and its Monster Energy brand.

Digital media counsel for Newspaper Publisher

Provides leading newspaper publisher on digital promotion matters and online loyalty program.

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.

Privacy counsel for consumer food product company

Conducted comprehensive website audit of privacy and web data collection practices for consumer food product company; updated web site Terms of Use and Privacy Policy; advised on privacy and data security provisions for vendor contracts.

Internet counsel for Hot Topic

Counseled on Internet and privacy issues for nationwide retailer; worked on privacy policy, web site Terms of Use, and loyalty program rules.

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.

IP counsel for Video Game Company

Advised major video game company on copyright, Digital Millennium Copyright Act, and Communications Decency Act issues for online game and virtual world; advised on agreement with identity protection vendor for users.

Internet gambling issues

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

Mobile App issues

Advised on mobile and tablet app development deals for publishing properties, brand owners and advertisers. Counseled on related mobile privacy issues and developed mobile app privacy policies.

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.

Counseling and transactions for emerging online companies*

Provided counsel and handled transactions for various online emerging companies – including legal work for development of virtual world related to certain toy products, and representation of online portal for parenting and family content.

User-generated content services*

Helped clients in video, music, game, and publishing worlds launch user-generated content services and virtual worlds.

New media content distribution transactions*

On behalf of content owners, handled deals for and advised on distribution of video content and creation of branded channels on Internet platforms such as Hulu, Joost, and AOL Video.

Endorsement and merchandise brand licensing*

Negotiated celebrity endorsement and merchandise brand licensing deals for game technology, automotive, golf equipment, homeopathic product, and pharmaceutical companies.
* 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 and 2012
  • International Association of Gaming Advisors
  • Fellow, Litigation Counsel of America, 2010-present
  • 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 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