Copyright, Trademark & False Advertising

From managing some of the world’s best-known brand portfolios to arguing the most impactful copyright cases, we bring a decisive edge to “soft” IP.

Copyright has emerged as the arena for some of the most significant disputes in the technology sector. Our team has crafted some of the most innovative – and successful – copyright arguments, protecting innovations for clients like Oracle and DISH Network.

Global brands like AT&T, eBay, Visa and Microsoft look to our team for counseling on trademark enforcement and false advertising issues. Sports leaders from NFL Properties to the United States Golf Association rely on us to protect their brands. And we help emerging companies develop strong IP portfolios and future growth strategies.

Our reputation for winning in the courtroom often helps resolve disputes short of trial. By partnering with our clients’ in-house teams to mobilize quickly and frame the issues, we’re often able to resolve disputes with minimal cost and distraction.

  • Kirtsaeng v. John Wiley & Sons, Inc.One of the highest-profile copyright cases in recent history threated a $60B industry. At issue was whether the “first-sale doctrine” applied to works lawfully made and sold overseas, and then imported into the U.S. Just two terms earlier, the Supreme Court had considered the same issue and split 4-4. We took a calculated risk by arguing a novel and insightful reading of the Copyright Act, designed to appeal to a unique 6-3 alignment of the Justices. The risk paid off. The Court’s decision cemented the first-sale doctrine as the law of the land, thereby safeguarding the global free market.

    C5 Medical Werks v. CeramTec GmbHWhen manufacturer CeramTec tried to block CoorsTek Medical from using a key component in its hip replacement products, we rose to CoorsTek’s defense. Claiming trade dress rights in the color pink, a byproduct of the chromium oxide used in CoorsTek’s manufacturing process, CeramTec seized CoorsTek’s hip replacement products in France and served a worldwide cease and desist order. Following an 11-day bench trial in district court, we won the right for CoorsTek to make and sell its pink ceramic hip implants. Moreover, this precedential ruling held that a functional attribute described in a patent that creates a color cannot serve as trade dress.

    Microsoft:  We counseled Microsoft on the copyright aspects of multiple products, including Sway, One Note, Edge Browser and the Bing News app. We advised on ad-blocking, Bing search image integration, advertising placement and other key features of the new products.

    Fox Broadcasting Company et al v. Dish Network LLC et al.:  Although binge-watchers and channel surfers love Dish Network’s commercial-skipping AutoHop technology, the major TV networks did not share their enthusiasm. When the major TV networks filed separate copyright suits in California federal court, we took decisive action to protect the popular service. We sued the networks in New York federal court, seeking a declaratory judgment that the commercial-skipping feature does not infringe on the networks’ content. Our string of federal court victories, including defeating three motions for preliminary injunction and successfully defending those wins in the Ninth Circuit, led to settlements with ABC, CBS and NBC. In the litigation with Fox, we won our motion for summary judgment.

    Jill Stuart v. Sanei InternationalClothing designer Jill Stuart alleged that Japanese retailer Sanei made and sold unauthorized Jill Stuart products, copied various designs and breached its contract. We successfully defended Sanei in the Southern District of New York, defeating a motion for preliminary injunction, succeeding on a motion to dismiss, and winning a motion for summary judgment on damages. The motion to dismiss raised difficult questions of contract versus trademark/copyright law which prompted the court to seek supplemental filings on the issue. We then secured a significant win by successfully defending the court’s determinations on appeal. In two days, perhaps record time for the Second Circuit, the decision adopted all of our reasoning on both claims.

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Law360 Names Orrick Top Five 2016 Litigation Powerhouse

Orrick ranks #5 nationwide on Law360’s inaugural Litigation Powerhouse list. The 2016 list ranks firms for their litigation wins and the new litigation matters they've been hired to work on in the past year, as well as the size of their practice.
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Especially strong in trademark litigation.
The Legal 500, 2015
Orrick has achieved 'considerable success in handling high-profile copyright disputes in the technology sector.'
The Legal 500, 2015

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