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Intellectual Property

Intellectual property may well be one of your most valuable assets, and M&R’s Intellectual Property Practice Group stands ready to protect it in a myriad of ways.

We advise on the validity of trademarks and copyrights. The firm handles associated opinion-work concerning e-commerce, business and finance systems and computer software, hardware and networking, among many other things. Likewise, M&R represents companies – those in the advertising and digital media, consumer products, entertainment, financial services, health care, hospitality, insurance, retail and apparel sectors – relative to brand identity and rights protection matters. In addition, we litigate IP infringement matters in federal courts as well as the Trademark Trial and Appeal Board (TTAB), and skillfully prosecute trademarks before the U.S. Patent and Trademark Office.

Without question, when it comes to all things IP related, M&R and our IP specialists are second to none.

Areas Of Expertise

Amended Mark: Successfully petitioned on behalf of a prominent heavy metal guitarist to correct the record and have the registration of his mark for coffee beans reissued after his original application was found to include a misspelling of the mark.

Copyright & Trademark Prosecution: Handled all stages of trademark and copyright prosecution in the U.S. Patent and Trademark Office and U.S. Copyright Office, including opposition and cancellation practice before the Trademark Trial and Appeal Board.

Copyright Litigation: Representing a New York-based fashion house in litigation filed against it alleging an infringement of plaintiff’s copyright; namely, plaintiff’s purported ownership in two-dimensional graphic artworks for use on textiles and garments. This litigation is ongoing and will likely proceed to trial.

Copyright Litigation: Prosecuted a copyright infringement action on behalf of a popular game manufacturer against a counterfeiting ring comprised of local and China-based corporate and individual defendants that sold knock-off products here and abroad. Secured a stipulated judgment against all defendants that required payment of the maximum statutory damages allowable under the law for willful copyright infringement. Also obtained a permanent injunction against the future sale of counterfeit products.

Copyright Troll Litigation: Successfully represented a publicly held company in the business of digital rights enforcement on behalf of music publisher and video distribution clients in a widely publicized and nationwide putative class action originally alleging causes of action for (1) violations of the Telephone Consumer Protection Act (47 USC § 227); (2) violations of the Fair Debt Collection Practices Act (15 U.S.C. § 1692, et seq.); (3) violations of the Rosenthal Fair Debt Collection Practices Act (Cal. Civ. Code § 1788 et seq.); and (4) abuse of process arising from an alleged misuse of the Digital Millennium Copyright Act subpoena procedure. We ably demonstrated that the class representative’s claims against our client were tenuous, at best, which initially led class counsel to drop the class representatives and voluntarily dismiss the federal and state Fair Debt claims. Thereafter, we brought a complex special motion to strike the remaining abuse of process claim under California’s anti-SLAPP statute, which motion was granted in its entirety. Consequently, plaintiff was ordered to pay our client’s attorney’s fees incurred in bringing the anti-SLAPP motion.

Counterfeiting: Secured nationwide temporary restraining order and permanent injunction against counterfeiters on behalf of a major recording artist. Thereafter, participated in seizure of counterfeit goods.

Distribution Agreement: Drafted and negotiated 13-episode home video distribution agreement for startup digital animation content provider.

Domain Name DisputeSuccessfully challenged the improper registration of an Internet domain name by a competitor of our client, a world-renowned science and education museum. Also, by way of a Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding, forced the transfer of the domain name.

Financing: Represented a privately held, New York-based medical device company from its inception through several rounds of financing. The company boasts proprietary technology that provides a secure cloud-based solution for reliable reviewing, reporting, archiving, managing and distribution of ultrasound and other forms of medical imaging.

Illegal Bootlegging: Represented a major hard rock band that was negotiating a repackage release of recordings in Europe, but encountered problems when the distributor identified unauthorized bootleg concert DVDs available on Amazon’s German website. Facilitated the removal of the infringing products from the website, allowing the client to move forward with the planned release, all the while enjoying reduced fallout from unauthorized third-party product sales.

Licensing Agreements: Negotiated and drafted a cross-license and field-of-use agreement between two major specialty chemical corporations for patent portfolios relating to anti-reflective and top-coat immersion compositions.

Misappropriation of Trade Secrets: Represented a young entrepreneur after his “life’s work” was stolen by a large corporation, which claimed the work as its own. After a four-year legal battle against some of the largest national law firms, obtained a multi-million dollar verdict on behalf of our client, an award that remains one of the largest in the U.S. for the misappropriation of computer trade secrets.

Patent Prosecution – International: Successfully defended an electronics manufacturer before the World Intellectual Property Organization (WIPO) in the prosecution of its patent portfolio of software algorithms and processes for the identification of products displayed in media programs.

Rebranding: Managed all intellectual property-related aspects of corporate-wide rebranding effort for large entertainment company client.

Technology Transaction – Business Acquisition: Negotiated on behalf of a major private investment firm and drafted the intellectual property and services clauses in contracts associated with its $2 billion equity and asset purchase of a telecommunications company’s business and manufacturing facilities.

Technology Transaction – Merger Agreement: Negotiated and drafted the intellectual property clauses included in a merger agreement governing a global technology provider’s $35 million acquisition of the retail commerce arm of a leading next generation mobile solutions provider.

Trade Secret Litigation: Represented a social gaming company in litigation against a large competitor that involved allegations of misappropriation of trade secrets and employee raiding.

Trademark Infringement: Obtained favorable settlements and consent decrees on behalf of NFL Properties, LLP and a local NFL franchise in connection with multiple trademark infringement and false designation of origin cases filed against defendants in connection with their unlicensed use of trademarks and sale of NFL merchandise.

Trademark Infringement: Obtained a seven-figure resolution on behalf of a manufacturer of medical scrubs in a significant trademark infringement case filed against a competing company that produced a competing collection of scrubs marketed to medical personnel. Throughout the litigation, the defendant failed to abide by the orders of the court, including the requirement to respond to written discovery. Consequently, the magistrate judge issued a massive $250,000 sanction award against the defendant and its attorney, and thereafter issued terminating sanctions in favor of our client. Thereafter, our motion for default judgment was granted. The defendant then initiated a series of appeals and bankruptcy court proceedings, all of which were unsuccessful, leading to its agreement to compensate our client by way of a structured settlement.

Trademark Infringement/Sanctions Award: Obtained a massive $250,000 sanctions order for the failure of a defendant and its attorney in a trademark infringement case to participate in discovery. A Judge in the United States District Court issued his staggering ruling after the defendant neglected to respond to our client’s discovery requests and then refused to abide by the Court’s order to provide responses to interrogatories and produce documents, which was requested by way of our comprehensive motion to compel.

Trademark Litigation: Defended a national credit union against a claim of trademark infringement by credit card company Visa. In the action, Visa claimed that its "PLUS" mark for its network linking automatic teller machines was infringed by the credit union's "MoneyPlus" mark for the credit union's debit cards, where those debit cards could be used in the same ATMs that are part of Visa's "PLUS" ATM network. Successfully defended the credit union in the federal trial court. The Ninth Circuit Court of Appeals affirmed the decision of the trial court.

Trademark Litigation: Brought an action to enjoin infringement of a famous trademark belonging to the client, a manufacturer of automotive lighting products, where the defendant was altering and selling under its own brand name the product of the client. The Ninth Circuit Court of Appeals affirmed the injunction granted by the federal trial court in favor of the client. 

Trademark, Copyright: Managed all trademark and copyright issues for renowned digital film studio.


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