The Beastie Boys Partnership v. Monster Energy Company
Represented Monster on appeal to the 2nd Circuit from a jury verdict of copyright and trademark infringement arising from the use by Monster of portions of five songs owned by the band in a video recap of a snowboarding event sponsored by Monster in the Canadian Rockies. (2d Cir. 2016)
Jinno International USA, LLC v. T-Bags, LLC, et al.
Defended Amazon.com, Inc. against copyright infringement suit alleging infringement of fabric design used on apparel. Favorably resolved. (S.D.N.Y. 2016)
Rosen v. Amazon.com, Inc.
Defended Amazon.com, Inc. in a suit by a 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 raised 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, and the case resolved thereafter. (C.D. Cal. 2014)
David Strick v. Los Angeles Times Communications, LLC, et al.
Represented the Los Angeles Times and the Tribune Company in a copyright infringement lawsuit brought by a freelance photographer who claimed that the defendants were liable for more than 500 violations of his copyrights for the use of photographs that the Times defendants claimed were covered by a license agreement. Succeeded in a motion to compel arbitration in 2011. In 2012, succeeded in obtaining a judgment from the arbitrator in favor of the Times and the Tribune dismissing the lawsuit, and granting the defendants' request for attorneys' fees and costs in excess of $260,000. Order confirming arbitration award entered in 2014. (C.D. Cal./Arbitration 2014)
Auerbach et al. v. Manhattan Production Music and Pinnacle Entertainment
Represented defendants in a music copyright infringement action brought by the owners of all rights in the musical composition "Howling Wolf," written and performed by The Black Keys, alleging infringement by use of a song entitled "The Howler" in a television commercial for Pinnacle-owned casinos. Case settled. (S.D.N.Y. 2013)
Auerbach et al. v. Pizza Hut, The Interpublic Group of Companies, The Martin Agency, and Thirtieth Century Music
Defended suit brought by owners of all copyright interests in "Gold on the Ceiling," written and performed by The Black Keys, alleging copyright infringement of their music by reason of use of allegedly substantially similar music in audio background of television commercial for Pizza Hut Cheezy Bites. Case settled. (C.D. Cal. 2012)
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)
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)
UMG Recordings, Inc., et al. v. Veoh Networks, Inc., et al.*
Represented one of the primary investors in Veoh against claims for direct and vicarious copyright infringement related to the company’s investment in a Web-based company that hosts video and music. Motion to dismiss granted.
Poquito Mas v. Taco Bell
Represented Taco Bell in trademark infringement action brought by Poquito Mas alleging that Taco Bell’s use of the slogan "LIVE MÁS" infringes the POQUITO MAS trademark. (C.D. Cal. 2014)
Grupo Bimbo SAB de CV et al. v. Snak King Corp. et al.
Defense of Snak King against allegations of trademark, trade dress, and patent infringement asserted by Bimbo for trademark, packaging design, product configuration, and manufacturing process. (C.D. Cal. 2013)
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 to 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 proceeded to the trial period, where it currently is awaiting a decision on the merits. (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)
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)
Dish Network, LLC v. Fun Dish Inc., et al.*
Defended a reseller of satellite services and operator of toll-free numbers, against a lawsuit brought by Dish Network, involving claims for trademark infringement, antitrust, and declaratory relief for cancellation and invalidity of trademarks. (N.D. Ohio Ongoing but no longer involved in case)
Represented Fortune 100 company in pursuing large-scale trademark infringement actions against thousands of defendants in coordinated mass actions related to defendants’ counterfeiting practices. (Multiple jurisdictions)
Internet and Domain Disputes
Crowdfund International LLC v. PleaseFund.Us Ltd.
Successfully represented domain name Registrant PleaseFund.Us Ltd in U.S. nexus dispute before National Arbitration Forum over whether Registrant had a sufficient nexus with United States to hold a U.S. 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 U.S. domain name. This appears to be the first decision in a NAF proceeding focused solely on the U.S. Nexus Requirements. (NAF 2013)
Moore v. ICANN, et al.*
Represented eNom, Inc. in lawsuit by plaintiff alleging claims against ICANN, eNom and domain name registry for antitrust, RICO, suppression, breach of contract, and negligence related to the sale of domain names. Action dismissed. (C.D. Cal. 2008)
Privacy Class Actions and Proceedings
Hall v. Forbes Media LLC
Defending a magazine publisher in putative class action alleging violations of Michigan's Video Rental Privacy Act based on alleged disclosure of subscribers’ personal information. (E.D. Mich. Ongoing)
Ruppel v. Consumers Union of United States, Inc.
Defending a publisher in putative class action alleging violations of Michigan's Video Rental Privacy Act based on alleged disclosure of subscribers’ personal information. (S.D.N.Y. Ongoing)
Nationwide TCPA putative class action for energy supplier
Representing an energy supplier in putative nationwide class action alleging company placed calls to phones on National DNC and cell phones in violation of the TCPA. (N.D. Ill. Ongoing)
Shorvoghlian v. Los Angeles Times Communications LLC
Represented media company in putative nationwide class action alleging the company placed calls in violation of the TCPA. Obtained voluntary dismissal. (C.D. Cal. 2015)
Nationwide TCPA putative class action for medical services company
Represented medical services company in putative nationwide class action alleging company placed calls to cell phones in violation of the TCPA. Settled favorably. (C.D. Cal. 2015)
Daniel Richardson v. VIP Research, Inc. and Journal Broadcast Group, Inc.
Defended 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. Case was favorably resolved and dismissed. (D. Neb. 2015)
Dancer v. Los Angeles Times Communications LLC
Represented Los Angeles Times Communications LLC in putative class action alleging the company left prerecorded messages on cell phones in violation of the TCPA. Settled favorably. (Los Angeles Cnty. (Cal.) Super. Ct. 2014)
David Boorstein v. Men’s Journal, LLC
Hoang et al v. Reunion.com Inc.*
Represented leading online search and social networking site in purported class action lawsuit alleging violations of California state statute regulating ability to send email advertisements, raising issues related to CAN-SPAM preemption. Case settled. (N.D. Cal. 2011)
False Advertising and Other Consumer Class Actions
CrossFit, Inc. v. National Strength and Conditioning Association
Co-counsel defending the NSCA in a false advertising and trade libel case. CrossFit alleges that Devor Study (published in NSCA’s scientific research journal) made a false statement about injury data from participants in the study of CrossFit’s exercise program. (S.D. Cal. Ongoing)
Kaskoris v. General Nutrition Centers, Inc.
Defending GNC in putative class action challenging sale prices advertised for products on website as deceptive and misleading. (S.D. Cal. Ongoing)
Gennock v. General Nutrition Centers, Inc.
Defending GNC in putative class action challenging sale prices advertised for products on website as deceptive and misleading. (W.D. Pa. Ongoing)
Morales v. Providence Health and Services, Inc., et al.
Representing Providence Health System Southern California against putative class action alleging defendants erroneously billed the plaintiff by filing a hospital lien against the settlement proceeds plaintiff received in a tort action for certain medical services provided, rather than billing Medicare. Action successfully dismissed by the court without prejudice pursuant to motion to dismiss on grounds plaintiff failed to exhaust administrative remedies. Currently on appeal in 9th Circuit. (C.D. Cal./Ninth Circuit Ongoing)
Crosby v. Laemmle Theatres, LLC
Representing theatre company in putative California class action alleging claims under the ADA and Unruh Civil Rights Act related to provision of assistive listening devices and captioning in theatres. Resolved favorably. (C.D. Cal. 2014)
Crosby v. Pacific Theatres Exhibition Corp.
Representing theatre company in putative California class action alleging claims under the ADA and Unruh Civil Rights Act related to provision of assistive listening devices in theatres. Resolved favorably. (C.D. Cal. 2015)
Munchkin Inc. v. Playtex Products LLC
Represented Playtex in false advertising jury trial involving advertising superiority claims as to the odor control capabilities of the parties' respective diaper pails. (C.D. Cal., 9th Cir. 2011-2013)
Sony Electronics, Inc. - Morris (Ill.); Berna (Calif.); Scafuri (N.J.); Hall (Alabama); Zeigler (Conn.); Daugherty (Tenn.); Armeen (Tenn.); Szychowski (Penn.); Ciccia (N.Y.)*
Acted as national class counsel for Sony Electronics, Inc., in series of class actions brought across the country alleging claims for strict products liability, consumer fraud, false advertising, and unfair competition related to DVD players. Three of the actions were successfully dismissed, one was resolved on an individual basis following defeat of class certification and the remaining actions were favorably resolved pursuant to a class settlement.
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)
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. 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.; W.D. Wash.; King Cnty. Super. Ct.)
Mallory v. S&S Publishers, et al.
Defending publisher and author of book against claims of defamation. (E.D. Penn. Ongoing)
Eisenberg v. Lions Gate Entertainment
Defended Lionsgate against right-of-publicity and unfair-competition claims arising from the use of actor Jesse Eisenberg's name and likeness on the cover of a DVD release of the film "Camp Hell." The matter was resolved during the appeal of an order denying Lionsgate's anti-SLAPP motion. (Cal. Super. Ct., Cal. Ct. App., 2013)
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)
Counseling and Transactions
Negotiated and prepared license agreements for trademark, patent, and copyright rights, including license agreements for leading car company’s brand for use in online and mobile app advertising campaigns, and
co-promotion and a license agreement for a live touring show.
Privacy website audit
Internet gambling issues
Advise on Internet gambling issues, and impact on sweepstakes, contests, casual gaming, fantasy sports, advertising, and media activities.
Advertising and media review
Reviewed and counseled on advertising, marketing, and promotions for campaigns involving traditional media, internet, social media, mobile platforms, user-generated content, and brand integration.
Counseling on IP procurement and management
Advise on strategy for and viability of procurement of trademarks and copyrights and management of portfolios for same.
* Denotes experience completed at a prior firm