Trademark, Copyright & False Advertising Litigation

Overview

Contested matters are handled by attorneys in the Trademark & Copyright Group to ensure the seamless and comprehensive protection of our clients’ trademark and copyright portfolios. The attorneys handling enforcement matters are seasoned litigators and trial attorneys with substantial experience litigating trademark and copyright matters, as well as with the prosecution and defense of unfair competition, false advertising, trade secret, Internet and related claims. We have experience in both jury and bench trials in the federal and state courts of at least 45 states and all federal circuits.

Accolades

• Alston & Bird ranked in the top 83rd percentile on the list of Top Trademark Firms by Intellectual Property Today. The ranking compiles information on the number of trademark registrations that were handled by each firm. (May 2014)
• U.S. News – Best Lawyers recognized Alston & Bird’s intellectual property practice on their list of “Best Law Firms” for 2013. The firm ranked nationally in Tier 1 for Litigation – Intellectual Property; Litigation – Patent; Patent Law; and Trademark Law. (November 2013)
• BTI Consulting Group named Alston & Bird as an IP Litigation Standout in the United States. This designation relied on a survey of over 300 General Counsel and in-house litigation leaders. (August 2013)

Experience

• King Pharmaceuticals, Inc. v. ZymoGenetics, Inc., Civil Action No. 2:09-cv-244 (E.D. Tenn). We are defending ZymoGenetics in a false advertising and trademark infringement lawsuit filed against it by its largest competitor, a subsidiary of Pfizer. The case involves ZymoGenetics’ recombinant thrombin product and claims it is making in its advertising regarding King's bovine thrombin product. We are also prosecuting counterclaims for false advertising against King regarding claims it is making regarding its own products. We defeated three motions for preliminary injunction that King filed against our client.
• Alaven Consumer Healthcare Inc. v. DrFloras, LLC, Civil Action No. 1:09-cv-00705-TWT (N.D. Ga); Alaven Consumer Healthcare, Inc. v. DrFloras, LLC, Case No. 10-11313 in the United States Court of Appeals for the Eleventh Circuit. In February of 2010, Judge Thrasher, of the United States District Court for the Northern District of Georgia, granted partial summary judgment to our client DrFloras LLC regarding Alaven Consumer Healthcare Inc.’s claim of trademark infringement and unfair competition. Alaven then filed an appeal in the United States Court of Appeals for the 11th Circuit. In October of 2010, the United States Court of Appeals for the 11th Circuit affirmed a district court’s grant of summary judgment against Alaven Consumer Healthcare Inc. regarding its claims of trademark infringement and unfair competition. Both companies make and sell nonprescription herbal supplements directly to consumers over the Internet. Alaven markets its products under the primary trademark Colonix and the house trademark DRNATURE; DrFloras markets its products under the trademark DRFLORAS. The courts agreed that the evidence did not support the plaintiff's claim that the two marks would cause consumer confusion. The mark at issue in the case is U.S. Trademark Number 3,465,812.
• Twentieth Century Fox Film Corp. v. Warner Bros. Entm’t, Inc. et al., Case No. 08-cv-00889 GAF. 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.
• 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).
• Silhouette International Schmied AG v. Chakbazian, No. 04 CV 03613 (RJH). 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 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.