Trademark & Copyright

Trademark Litigation Representative Cases

• St. Luke’s Cataract and Laser Institute, P.A. v. James C. Sanderson MD, LLC, et al., (M.D. Fla. 2007): Following a three week jury trial in June 2007, we obtained a favorable jury verdict on behalf of our client St. Luke’s Cataract and Laser Institute, P.A. on claims of trademark infringement, domain name cyberpiracy, violation of the Digital Millennium Copyright Act, and unfair competition against a competing cosmetic surgery practice.
• Leigh v. Warner Bros. (11th Cir.): We defended Warner Bros. against claims of copyright and trademark infringement related to the motion picture “Midnight in the Garden of Good and Evil,” in which the plaintiff sought to enjoin the home video release of the movie. We defeated the motion for preliminary injunction and then secured summary judgment for our client prior to discovery. The Eleventh Circuit affirmed all four trademark counts and all of the critical copyright counts, and the movie was timely released. With regard to the trademark claims, the case stands for the novel proposition that an artist cannot have a trademark in his or her artistic style. 212 F.3d 1210 (11th Cir. 2000).
• SunAmerica Corp. v. Sun Life Assurance Company of Canada (11th Cir.): We served as co-counsel for the defendant in a case involving competing use of the mark SUN LIFE in the United States by two major insurance and financial services companies. The court not only denied the plaintiff’s claims but granted our client on permanent injunction on its counterclaims that required the plaintiff to cease all use of the SUN LIFE mark. The case is novel in that it holds that “inevitable consumer confusion” can trump acquiescence and laches.
• ITC Financial Services, LLC v. R-G Premier Bank, 05-cv-2130 (JAF) (D. Puerto Rico): In January 2006, ITC Financial Services, LLC, and related entities retained us to protect their MIO mark against unauthorized use by R-G Premier Bank of Puerto Rico. The court granted our motion for preliminary injunction and ordered a full trial on the merits within two months. On the eve of trial, the parties reached a settlement in which R-G admitted that it infringed ITC's trademark and accepted a permanent injunction.
• Newport Pacific Corp. v. Moe’s Southwest Grill, LLC, et al., 05-995-KI (D. Or.): In September 2006, we obtained summary judgment in favor of our client Moe’s Southwest Grill against a restaurant chain in Oregon that operates under the name MO’s. Relying on its 50-plus years in existence, coupled with a federal trademark registration dating back more than 20 years, the Oregon chain had sought damages for trademark infringement and dilution, as well as a nationwide injunction against our client’s use of any mark that includes the term “Moe’s.” The court issued its order granting our client summary judgment in September 2006.
• Go Medical Industries Pty Ltd. v. Inmed Corp., (Fed. Circuit): In February 2004, we won a $64 million dollar jury verdict for Australia-based Go Medical Industries for unpaid royalties, damages and unjust enrichment concerning trademark infringement related to medical catheters and stents.
• In October 2004, we won a final judgment in an internet based trademark counterfeiting case in which our client received an award of statutory damages and its attorneys fees. On behalf of our client Silhouette Optical Ltd., a manufacturer of luxury eyewear, we have successfully mounted a comprehensive campaign to protect its trademarks and copyrighted materials against infringement. This most recent victory, in Silhouette International Schmied AG v. Chakbazian, No. 04 CV 03613 (RJH), provides for a permanent injunction, and an award in excess of $300,000.

Copyright Litigation Representative Cases

• In December of 2008 we obtained a grant of summary judgment on behalf of client Twentieth Century Fox Film Corporation in a copyright infringement matter regarding Warner Bros.’ upcoming movie Watchmen. The matter was favorably settled just prior to an injunction hearing set for January 20, 2009; the details of the settlement are confidential Twentieth Century Fox Film Corp. v. Warner Bros. Entm’t, Inc. et al., Case No. 08-cv-00889 GAF.
• On behalf of Silhouette Optical Ltd., a manufacturer of luxury eyewear, we have successfully mounted a comprehensive campaign to protect its trademarks and copyrighted materials against infringement. This most recent victory, in Silhouette International Schmied AG v. Chakbazian, No. 04 CV 03613 (RJH), provides for a permanent injunction, and an award in excess of $300,000.
• AFLAC v. Mack Mattingly for Senate, Inc. (N.D. Ga.): We represented Aflac in a lawsuit against a candidate for U.S. Senate who, without authorization from Aflac, used Aflac’s famous duck in a television advertisement. The firm secured a consent permanent injunction from the campaign and its candidate following the filing of a motion for temporary restraining order.
• Brunton International, Inc. v. The TJX Companies, Inc. dba TJ Maxx and Gold Coast Company (S.D.N.Y.): On behalf of the accused infringers, we obtained grants of summary judgment and dismissal of all causes of action asserted by the plaintiff concerning alleged copyright infringement in the US and abroad, and alleged violation of New York deceptive trade practices act.
• Leigh v. Warner Bros. (11th Cir.): We defended Warner Bros. against claims of copyright and trademark infringement related to the motion picture Midnight in the Garden of Good and Evil in which the plaintiff sought to enjoin the home video release of the movie. We defeated the motion for preliminary injunction and then secured summary judgment for our client prior to discovery. The Eleventh Circuit affirmed all four trademark counts and all of the critical copyright counts, and the movie was timely released. With regard to the trademark claims, the case stands for the novel proposition that an artist cannot have a trademark in his or her artistic style. 212 F.3d 1210 (11th Cir. 2000).
• Digital Communications Assocs. v. SoftKlone Dist. Corp. (N.D. Ga.): We represented the defendant in this copyright infringement action relating to software screen displays. Although the court found infringement in part, the firm persuaded the court to treat the underlying program and screen displays as separate works for purposes of infringement analysis, a first in copyright law.
• Eldridge v. Springs Industries, Inc. (S.D.N.Y.): We obtained favorable jury verdicts and judgment for the defendant in a jury trial in which claims of copyright, design patent, and trademark infringement against our client were successfully defended.
• Hanna-Barbera Productions, Inc. v. Dino Tire and Service Center (W.D.N.Y.): We represented the plaintiff in this copyright and trademark infringement action involving the unauthorized use of the names and images of characters from the animated television series The Flintstones. The firm secured a consent permanent injunction and payment of attorneys’ fees.
• Following a three-week jury trial, obtained a favorable jury verdict on behalf of our client St. Luke’s Cataract and Laser Institute P.A. on claims of trademark infringement, domain name cyber piracy, violation of the Digital Millennium Copyright Act, and unfair competition against a competing cosmetic surgery practice. St. Luke’s Cataract and Laser Institute P.A. v. James C. Sanderson, M.D. LLC, et al., (M.D. Fla.).
• Defended Warner Bros. against claims of copyright and trademark infringement related to the motion picture Midnight in the Garden of Good and Evil in which the plaintiff sought to enjoin the home video release of the movie. We defeated the motion for preliminary injunction and then secured summary judgment for our client before discovery. The Eleventh Circuit affirmed all four trademark counts and all of the critical copyright counts, and the movie was timely released. The case stands for the novel proposition that an artist cannot have a trademark in his or her artistic style. Leigh v. Warner Bros., 212 F.3d 1210 (11th Cir.).
• Served as co-counsel for the defendant in a case involving the competing use of the mark SUN LIFE in the U.S. by two major insurance and financial services companies. The court not only denied the plaintiff’s claims but granted our client a permanent injunction on its counterclaims that required the plaintiff to cease all use of the SUN LIFE mark. The case is novel because it holds that “inevitable consumer confusion” can trump acquiescence and laches. SunAmerica Corp. v. Sun Life Assurance Company of Canada (11th Cir.).
• ITC Financial Services LLC and related entities retained us to protect their MIO mark against unauthorized use by R-G Premier Bank of Puerto Rico. The court granted our motion for preliminary injunction and ordered a full trial on the merits within two months. On the eve of trial, the parties reached a settlement in which R-G admitted that it infringed ITC’s trademark and accepted a permanent injunction. ITC Financial Services LLC v. R-G Premier Bank, No. 05-cv-02130 (D.P.R.).
• Obtained summary judgment in favor of our client Moe’s Southwest Grill against a restaurant chain in Oregon that operates under the name MO’s. Relying on its 50-plus years in existence, coupled with a federal trademark registration dating back more than 20 years, the Oregon chain had sought damages for trademark infringement and dilution, as well as a nationwide injunction against our client’s use of any mark that includes the term “Moe’s.” The court granted our client summary judgment. Newport Pacific Corp. v. Moe’s Southwest Grill LLC, et al., No. 05-cv-00995 (D. Or.).
• Won a $64 million jury verdict for Australia-based Go Medical Industries for unpaid royalties, damages, and unjust enrichment concerning trademark infringement related to medical catheters and stents. Go Medical Industries Pty Ltd. v. Inmed Corp. (Fed. Cir.).
• Won a final judgment in an Internet-based trademark counterfeiting case in which our client received an award of statutory damages and attorneys’ fees. On behalf of our client Silhouette Optical Ltd., a manufacturer of luxury eyewear, we mounted a comprehensive campaign to protect its trademarks and copyrighted materials against infringement. The judgment provided for a permanent injunction and an award exceeding $300,000. Silhouette International Schmied AG v. Chakbazian, No. 04-cv-03613 (S.D.N.Y.).
• Obtained a grant of summary judgment on behalf of client Twentieth Century Fox Film Corporation in a copyright infringement matter regarding the Warner Bros. movie Watchmen. The matter was favorably settled just before an injunction hearing. Twentieth Century Fox Film Corp. v. Warner Bros. Entertainment Inc., et al., No. 08-cv-00889 (C.D. Cal.).
• On behalf of Silhouette Optical Ltd., a manufacturer of luxury eyewear, mounted a comprehensive campaign to protect its trademarks and copyrighted materials against infringement. The judgment provided for a permanent injunction and an award exceeding $300,000. Silhouette International Schmied AG v. Chakbazian, No. 04–cv-03613 (S.D.N.Y.).
• Represented Aflac in a lawsuit against a candidate for U.S. Senate who, without authorization from Aflac, used Aflac’s famous duck in a television advertisement. The firm secured a consent permanent injunction from the campaign and its candidate following the filing of a motion for a temporary restraining order. AFLAC v. Mack Mattingly for Senate Inc. (N.D. Ga.).
• On behalf of the accused infringers, obtained grants of summary judgment and dismissal of all causes of action asserted by the plaintiff concerning alleged copyright infringement in the U.S. and abroad, and alleged violation of New York’s deceptive trade practices act. Brunton International Inc. v. The TJX Companies Inc. dba TJ Maxx and Gold Coast Company (S.D.N.Y.).
• Defended Warner Bros. against claims of copyright and trademark infringement related to the motion picture Midnight in the Garden of Good and Evil in which the plaintiff sought to enjoin the home video release of the movie. We defeated the motion for preliminary injunction and then secured summary judgment for our client before discovery. The Eleventh Circuit affirmed all four trademark counts and all of the critical copyright counts, and the movie was timely released. The case stands for the novel proposition that an artist cannot have a trademark in his or her artistic style. Leigh v. Warner Bros., 212 F.3d 1210 (11th Cir.).
• Represented the defendant in a copyright infringement action relating to software screen displays. Although the court found infringement in part, we persuaded the court to treat the underlying program and screen displays as separate works for purposes of infringement analysis, a first in copyright law. Digital Communications Associates v. SoftKlone Distributing Corp. (N.D. Ga.).
• Obtained jury verdicts and judgment for the defendant in a jury trial in which claims of copyright, design patent, and trademark infringement against our client were defended. Eldridge v. Springs Industries Inc. (S.D.N.Y.).
• Represented the plaintiff in a copyright and trademark infringement action involving the unauthorized use of the names and images of characters from the animated television series The Flintstones. The firm secured a consent permanent injunction and payment of attorneys’ fees. Hanna-Barbera Productions Inc. v. Dino Tire and Service Center (W.D.N.Y.).