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Intellectual Property

Breach of contract regarding statutory royalties for national cable service provider

Representing client in prosecution of breach of contract claim to recover, statutory copyright royalty fees paid in relation to carriage of broadcast television station. Obtained summary judgment and now proceeding in bankruptcy court. (Ongoing)

Domain name services

Represents and advises a range of clients on domain name issues including representation in UDRP proceedings. (Ongoing)

Estate Planning for multiple ceators of intellectual property

Estate planning for creator of intellectual property, including authors, playwrights, composers, artists, photographers and similar creative talent. (Ongoing)

Intellectual property claims for McGraw-Hill (Educational Publishing Division)

Represents McGraw-Hill in a variety of intellectual property claims arising out of its publications of educational material for children. (Ongoing)

Intellectual property counsel for

Advice to financial website regarding domain names, copyright, trademark, and related issues. (Ongoing)

Intellectual property counseling

Provides fair-use opinions, rights analyses, and other intellectual property advice to television and film studios, content service providers, and websites, including Legendary, Netflix, Amazon Studios, Fox, Turner, Facebook, MGM, Yahoo, and Grindr. (Ongoing)

Investment-related IP Due Diligence for Revalesio, Corp.

Coordinating IP due diligence responses to Investor's IP due diligence team for three private investment rounds and coordinate strategic IP due diligence investigations. (Ongoing)

IP counseling for Laird Norton Company LLC

Provides IP counseling and management of the trademark portfolio for a wealth management company. (Ongoing)

IP Due Diligence for Sloan Capital Companies, LLC

Conducting two rounds of IP due diligence for investment into medical device startup. (Ongoing)

Outside counsel for Artnet Worldwide Corp. online auctions

Provides intellectual property and website advice to this online auction house on all legal matters. (Ongoing)

Routt v. Amazon

Representing Amazon in copyright infringement action concerning material posted on third-party associate websites. Obtained dismissal with prejudice of all claims. 2013 WL 695922 (W.D. Wash. 2013). Plaintiff’s appeal to the 9th Circuit Court of Appeals is pending. (2014)

Technology development agreements and services for national software developer

Assistance with a national software developer in procuring technologies and services for anti-piracy program and advised on associated intellectual property rights issues. (Ongoing)

The North Face Apparel Corp. and PRL USA, Inc. v. Fujian Sharing Import and Export

Representing plaintiffs in first ever standing Order to shut down rogue websites and seize counterfeiters’ profits from the sale of counterfeit goods. Also obtained an order establishing that a top level-domain registry (such as Public Interest Registry) could be found in contempt of a court order if it has notice of a counterfeiting website and does not take action to disable that website. Since the initial Order in 2010, which awarded plaintiffs $78 million in damages, plaintiffs have continued to bring contempt style motions to curtail counterfeiting on the internet and have shut down over 21,000 websites. The success of the action has greatly decreased the number of new websites created by defendants. Additionally, plaintiffs have recovered from defendants in excess of $2.5 million. (S.D.N.Y. Ongoing)

Toysmith v. Poof-Slinky

Representing 4M and Toysmith in copyright infringement and tortious interference suit against competitor distributor and retailer concerning children’s science kits. Obtained favorable settlement and resolution. (W.D. Wash.)

Zhongyi v. Microsoft

Represented Microsoft in copyright infringement action involving Chinese fonts. Obtained transfer to W.D. of Washington and then dismissal with prejudice of all claims. 2013 WL 6979555 (W.D. Wash. 2013). Successfully defended plaintiff’s appeal, and the 9th Circuit Court of Appeals affirmed the dismissal in all respects. (July 2016)

Advertising Intellectual Property Rights

Represented creators of advertising intellectual property software in a contract dispute over ownership of various intellectual property rights. The matter was amicably resolved following an all-day mediation pursuant to a confidential settlement agreement. (2015)

Kistler Aerospace Corp.

Represented client in intellectual property matters, including patent prosecution for various rocket-related technologies, including reusable launch vehicles, satellite deployment technologies, interchangeable orbital vehicles, and materials testing on orbital vehicles. (2014)

CarFreshner v. Getty Images

Defended Getty Images in a trade dress infringement action alleging photographic images in the company's database depicting plaintiff's tree-shaped car freshener products constituted infringement of its product configuration trademark. After Court granted Getty Images’ motion to dismiss, in part, successfully resolved the matter without any finding of liability. (N.D.N.Y. 2012)

Erick Van Egeraat v. NBBJ LLC et al.

Defended NBBJ, a Seattle-based architectural firm, in a copyright action brought by a Dutch architect alleging that NBBJ’s architectural design for a multi-use residential and commercial skyscraper complex in Moscow, infringed the Dutch architect’s earlier design for that project. Plaintiff claimed copyright infringement under both United States and Russian copyright law and unfair competition under the Lanham Act. NBBJ was retained by the Russian developer, The Capital Group, and furnished with some preliminary plans, apparently prepared by the Dutch architectural firm. NBBJ made very substantial changes to the plans and the building was thereafter built in Russia. Plaintiff's predecessor–in–interest (who thereafter filed for bankruptcy in a Dutch receivership proceeding) brought an arbitration proceeding in Stockholm, Sweden against the Russian developer of the building and prevailed on a claim under Russian law for copyright infringement. The U.S. case then settled. (S.D.N.Y. 2012)

Levi Strauss & Co. v. Ding Shidun*

Obtained an injunction and asset restraint order against rogue websites selling counterfeit LEVI brand apparel. (2012)

Morse & Castorina v. Spike Television, et al.

Represented Spike TV and obtained dismissal of copyright infringement action arising out of the popular reality television show "Pros vs. Joes." (E.D.N.Y. 2011). Previously obtained dismissal of similar infringement claims brought against "Pros v. Joes" in Pino v. Spike. (D.N.J. 2009)

Wrangler Apparel Corp. v. Conway Stores*

Shut down an international counterfeiting ring that had been operating for at least five years and selling hundreds of thousands of counterfeit jeans.  Obtained a permanent injunction, seized tens of thousands of counterfeit jeans and obtained a multimillion-dollar settlement. (2011)

AAA arbitration involving MMS software*

Obtained early settlement on favorable terms after successful mediation in case involving licensing dispute relating to MMS infrastructure software. (A.A.A. 2010)

Anderson v. Pearson plc et al.

Defended the U.K., Canadian, and U.S. publishers of Penguin Books, and their corporate parent, against a copyright infringement claim arising from use of photo on the cover of a book that had not been published or sold in the U.S. The case settled satisfactorily after extensive jurisdictional discovery and filing and arguing a motion to dismiss for lack of personal jurisdiction. (D. Alaska 2010)

Counseling for South Asian Parent, C.I.C.*

Advised the South Asian Parent, C.I.C. (an online parenting magazine) regarding trademark protection and incorporation. (2010)

Ed Darack v. Random House

Copyright infringement action; dispute over use of photograph on cover of book. (S.D.N.Y. 2010)

Mars Incorporated v. The Hershey Company

Represented The Hershey Company in a copyright, false advertising, and trade dress infringement action by Mars against Hershey in connection with television commercial for and packaging of Hershey's BLISS chocolate. Case settled. (E.D. Va. 2010)

Negotiation of intellectual property development agreement for West Coast strawberry growers consortium*

Represented Driscoll Strawberries, Inc. in technology development undertaking with Carnegie Mellon University. (2010)

Scott v. Hachette Publishing

Represented Little, Brown and author Stephenie Meyer. Obtained pre-discovery dismissal of copyright claims arising out of author's last book in her famed "Twilight" series. Attorney fees awarded to defendants. (C.D. Cal. 2010)

Vampire Vineyards v. Martha Stewart, et al.

Defended Martha Stewart, Martha Stewart Living Omnimedia, Inc., and several national retailers in a trademark infringement action brought by a company selling wine under the trademark Vampire Vineyards challenging the use of 'Vampire Vineyards' as the name of a fictitious winery on Halloween novelty coasters and wine bottle labels. Action successfully settled. (C.D. Cal. 2010)

Attachmate Corporation v. Sentry Insurance

Defense of claims for copyright infringement and breach of license agreement arising out of alleged copying of software. Obtained dismissal of breach of license claim as preempted by Copyright Act; case successfully settled shortly thereafter. 90 U.S.P.Q.2d 1648 (W.D. Wash. 2009)

Counseling for ImagineEasy, Solutions LLC*

Advised ImagineEasy Solutions, LLC (the makers of online bibliography tool, EasyBib) regarding intellectual property issues. (2009)

Sale of musical theater portfolio and partnership interests for The Rodgers and Hammerstein Organization and entities owned by the Hammerstein family

Negotiated the sale of the extensive Rodgers and Hammerstein musical theater portfolio and the Rodgers and Hammerstein Organization to the Imagem Music Group. (2009) Read more

Health care device sales and distribution

We represented a medical device manufacturer in the licensing and distribution of products to distributors and purchasers. (2008) v. Henry Holt and Company

Successfully defended publisher and co-author of novel against claims of fraudulent inducement, conversion and tortious interference by plaintiff who alleged that novel plagiarized plaintiff's manuscript. Case was dismissed. 2010 WL 1932322 (S.D.N.Y. 2008)

Animale Group Inc. v. Sunny’s Perfume, Inc.*

Obtained permanent injunction and restrained over $2 million in assets from defendants’ sale of counterfeit fragrances. (2007)

Nautica & Timberland v. TC Fashions*

Obtained a permanent injunction and seized over 35,000 goods bearing counterfeits of Nautica and Timberland trademarks. (2007)

The North Face Apparel Corp. and PRL USA v. TC Fashions*

Obtained a permanent injunction and seized tens of thousands of goods against a counterfeiter who, according to documents, was generating $8 million revenue per year from manufacturing, importing and selling counterfeit, inter alia, The North Face and Polo Ralph Lauren apparel. Plaintiffs received over $2 million from defendants’ sales profits. (2007)

Wong v. Simon & Schuster

Defeated injunction against book publisher Simon & Schuster in copyright infringement action. (E.D. Va. 2007)

Research ownership agreement for nonprofit educational organization

Negotiated ownership of intellectual property with university conducting research funded by the client, a nonprofit organization. (2005)

The North Face Apparel Corp. v. Michael Chu*

Awarded $7 million dollar judgment and broke up a multi-year multimillion-dollar counterfeiting ring that manufactured, imported and sold counterfeit The North Face jackets. (2005)

The North Face Apparel Corp. v. Saleh*

Seized over 7,000 counterfeit goods from a U.S. warehouse.  Recovered $500,000 in profits and identified ultimate source of counterfeit goods. (2005)

Cartier International v. Liu*

Multi-district litigation for multiple watch brands, seizing over one million watches and over $1 million in cash, breaking four global organizations. Obtained a $4.5 million contempt judgment and additional judgment of $594 million against a ring of New York Chinatown counterfeiters and money launderers—this is the highest U.S. judgment in history for this kind of matter. (2003)

Starter Corp. v. Converse*

Represented Converse in a jury trial where Starter’s use of an S and star design mark on footwear was found to infringe Converse’s five-pointed star trademark. The jury also found for Converse on issues of breach of contract and equitable estoppel based on a prior agreement between the parties. (1997) Affirmed on appeal. (1999)

Liz Claiborne v. Mademoiselle*

Won two-year fight against factory shipping product made during time of authority but shipped without authority. (1998)

Reebok v. Marnatech*

Obtained precedent-setting decision allowing for the ex parte restraint of assets under the Lanham Act. This decision also allowed extra-territorial jurisdiction over the defendants who were selling counterfeit sneakers into Mexico. (1995)

Fila USA Inc, Fila Sport SpA and Guess Inc v. Mira Sportswear*

Obtained the seizure order that forever shut 1165 Broadway, known as an epicenter for counterfeit wholesalers. According to media reports at the time and testimony before a Senate judiciary committee in 1995, the Federal Bureau of Investigation had compiled strong evidence that the terrorists who bombed the World Trade Center in 1993 had financed their activities with the sales from 1165 Broadway. Prior to the raid and ensuing action in 1995, trademark owners and the police alike were doubtful that anything would stop the notorious counterfeiting operations in this building. (1994)

Polymer Technology Corp. v. Mimran*

Represented subsidiary of Bausch & Lomb in a decision to vacate and remand the lower court’s denial of a preliminary injunction against defendants who purchased packaged contact solution kits from doctors’ offices and broke them down into individual units, selling them using counterfeit packaging. (1992)

Acquisition of health care technology company for Microsoft*

Represented Microsoft in the acquisition of Sentillion Inc., a company specializing in identity and access management software for the health care industry.

Acquisition of networking and support software company for Microsoft*

Represented Microsoft in the acquisition of Gteko Ltd., an Israeli company focused on developing ease-of-use networking and support software for the digital home.

Counseling on IP procurement and management

Advise on strategy for and viability of procurement of trademarks and copyrights and management of portfolios for same.

Development of MSN Finance Channel and Microsoft Money for Microsoft*

Represented Microsoft in the development and monetization of the MSN Finance Channel and the Microsoft Money application, providing consumers and businesses with a web portal and a related collection of internet services and applications for computers and mobile devices.

Development of unified intelligence system for Microsoft*

Represented Microsoft in the development and monetization of a unified health enterprise platform designed to retrieve and display patient information from many sources, including scanned documents, electrocardiograms, X-rays, MRI scans and other medical imaging procedures, lab results, dictated reports of surgery, as well as patient demographics and contact information. Adopted by leading hospitals and health systems.

Health care licensing for Microsoft*

Represented Microsoft in licensing its identity and access management clinical health care software solutions to major hospitals and health care systems.

Hospital technology transaction for major hospital

Advised major hospital facility in negotiations for purchase of $4 million patient management, billing and accounting hardware and software system; advice and assistance with negotiation of major human resources software contract.

IoT reseller agreement

Harmonized terms between outbound reseller agreement and inbound subscription agreement to enable telecommunications client’s customer to bundle and resell client’s wireless services with the customer’s custom internet of things platform, and client to resell customer’s IoT services. 

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.

Leiber, et al. v. Grokster, Ltd.

Represented a class of songwriters and music publishers in Grokster copyright infringement action against peer-to-peer file-sharing services. Plaintiffs obtained unanimous decision from the U.S. Supreme Court ruling that defendants could be held liable for inducing copyright infringement. (C.D. Cal., 9th Cir., U.S.)

License transactions for early-stage health care technology company

Represented early-stage technology health care company in license transactions focused on primary care solutions.

Licensing for branded merchandise manufacturer*

Represented major manufacturer of branded merchandise in licensing transactions with major Hollywood studios.

Licensing matters for a software-as-a-service emerging-growth company*

Represent a SaaS company providing mobile technology solutions for mobile workforces.

Licensing matters for Microsoft*

Represented Microsoft in licensing its HealthVault platform to Canadian and German telecommunications companies.

Licensing matters for technology solutions provider*

Represented a provider of technology solutions to the insurance industry in its licensing of various enterprise on-premises products and services.

Licensing transactions for emerging-growth company in insurance industry*

Represented an emerging-growth company in its licensing of a document management platform.

Licensing transactions for Microsoft*

Represented Microsoft in worldwide OEM licensing transactions for personal computers, consumer electronics, automobile navigation systems, and embedded devices.

Prototyping agreements

Negotiated various prototyping agreements with engineering firms and parts manufacturers to ensure that client—a manufacturer of autonomous drive units, robotic arms, and other warehouse automation systems—obtained and protected all resulting intellectual property rights.

Publishing agreements for music label*

Represented a music label in connection with various publishing and recording agreements.

Software licensure for telemedicine network

Represented developer of state-of-the-art telemedicine network in preparation of software licensing, hardware sales agreements and in negotiation and documentation of third-party software licensing and distribution agreements.

Strategic collaboration agreements

Assisted cloud computing company in identifying and thinking through exclusivity, data and revenue sharing, intellectual property ownership, cross-licensing, and other joint development issues presented by proposed collaborations with connected car and connected lighting companies.

Video game licensing for NBA player*

Represented an NBA Hall of Fame basketball player in the development and licensing of a basketball video game for gaming consoles.

Wearables subscription agreement

Developed lightweight device sale and SaaS platform license agreement for Belgian startup looking to market security solution to US-based clients in the technology sector.
* Denotes experience completed at a prior firm
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