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Trademark, Copyright & Media

A Focus on Trial Work

While seeking resolutions outside the courtroom is a critical aspect of maximizing value in resolving disputes, compromise can only be reached by being better prepared for trial. Orrick is among the few firms with a nationwide team of widely recognized trial lawyers who specialize in Trademark, Copyright, and Media litigation. 

In recent years, our team has tried numerous cases to verdict, a testament to the tenacity of our clients and the trust they place in our practitioners when it comes to high-stakes, contentious litigation. With market-leading first-chair trial lawyers in Boston, New York, and California, we appear regularly before juries, judges, and courts that see some of the most complex and high-profile trademark and copyright cases around the country. Our litigators are lauded as fearless, strategic, and creative.

Because our trademark litigators truly specialize in this sphere, they have unusually deep experience in cutting-edge areas such as trade dress, willfulness, causation, damages, and survey work. The trademark practice extends beyond consumer confusion and dilution to include false advertising matters on both a class and individual basis.

In addition to our district court practice, the Orrick team has more non-patent experience in the International Trade Commission (ITC) than any other firm, having handled four Investigations – as both complainant and respondent – in the last three years. In one Investigation, the Orrick team was instrumental in developing the legal standard for secondary meaning at the Federal Circuit, which is now used as key precedent. In another, the Orrick team were pioneers in the ITC’s interim ID pilot program, and successfully obtained clearance for a client’s redesign through expedited modification proceedings before the ALJ and the full Commission.

On the Cutting Edge of Content Protection

As the rules and methods of content creation and distribution have been written and rewritten over the past 20 years, Orrick’s attorneys have been on the front lines of many of the most important disputes of the day. Orrick’s copyright litigation practice is unique in its focus on emerging issues important to the tech sector. Very few firms have Orrick’s quality and depth of experience in representing tech companies in copyright litigation and media law. When IPLaw360 identified the Top 10 copyright cases of the last decade, our team led the charge for our clients in three of those cases—more than any other firm. From representing The New York Times and The Boston Globe in first-impression copyright litigation over the legality of in-line linking of news stories and aggregation, to representing Cablevision in helping to establish the rules of copying and streaming television content, Orrick’s attorneys have spearheaded efforts at redefining the law in the face of new technology. Some of the high-profile cases handled by our team include Oracle v. Google, Cartoon Network v. Cablevision, Mattel v. MGA, ABC v. Aereo, Fox v. Dish, Kirtsaeng v. John Wiley, and ABC v. Locast. The team skillfully litigates everything from bet-the-company cases to more traditional disputes involving unauthorized copying, licensing, and fair use, always with the client’s business objectives firmly in mind.

Maximizing and Protecting Asset Value

On the trademark prosecution and counseling side of the practice, the team manages thousands of trademarks for hundreds of clients across many industries, from the smallest startups to the largest companies—including the world’s largest. Our lawyers know how to manage complex portfolios hemmed in by others, overcome office actions and oppositions, guide clients through product launches and enterprise-wide rebrands, advise on policing and enforcement strategies, and develop creative coexistence and licensing agreements, on top of expertly handling the foundational work of clearance and prosecution of thousands of marks in the United States and abroad. Our prosecution team is not made up of mere technicians: we have litigation and transactional backgrounds that make us adept at working seamlessly with client marketing teams and giving timely, business-oriented advice during the brand development process and beyond. We have extensive experience before the Trademark Trial & Appeal Board, and in Uniform Domain-Name Dispute-Resolution Policy (UDRP) and similar domain name proceedings, both on the plaintiff and defense sides. 

Our trademark team also has the expertise to handle trademark licensing, co-branding, and other agreements from the simplest coexistence agreement to multimillion-dollar stadium sponsorship deals. Our licensing practice helps our clients not only protect their brand assets, but also put those assets to work in income-generating deals. Our transactional lawyers are also experts in the licensing and protection of content, from photography to music to text to software to typeface fonts to monumental one-of-a-kind works of public art, acting for both content owners and licensees.

A Focus on All Aspects of the Media Landscape

While Orrick’s team has extensive experience in trademark and copyright litigation, our expertise extends into all areas of the media landscape. From false advertising litigation—both competitor cases and consumer class actions—to libel and defamation lawsuits, to intellectual property claims arising out of the advent of new media, like NFTs and the blockchain, our team has a wealth of experience in managing crises and disputes related to brand and content distribution. 

Our media attorneys are adept at navigating the ever-changing technology platforms. Thanks to its experience handling matters that frequently concern new or emerging technologies, the Orrick team is also uniquely positioned to advise technology companies early in their life cycle. An early assessment by our holistic team can avoid later disputes or minimize risk before growth brings investor or competitor scrutiny.

  • Trademark Litigation

    Williams-Sonoma, Inc.

    We defended Williams-Sonoma against claims of trademark and trade dress infringement, unfair competition, dilution, and false advertising regarding Nespresso’s coffee capsules and certain of its single-serve coffee machines in the Southern District of New York. The matter raised unique issues concerning functionality and secondary meaning. It settled favorably prior to trial. 

    BIC Corp.

    We represented BIC as complainant in the International Trade Commission seeking to stop the importation of knockoff pocket lighters that infringe BIC’s trademarked design and do not conform to its stringent safety and quality standards. We won a general exclusion order prohibiting the importation of the accused products. We pursued a general exclusion order to help BIC solve a common whack-a-mole problem: just as BIC beat back one infringing import, another would pop up in its place. This problem posed a particular danger with pocket lighters, because low-quality, noncompliant lighters can injure consumers and damage property. The general exclusion order enables BIC to coordinate with Customs and Border Protection to bar all infringing imports, regardless of source.

    Leading National Retailer

    We represent a leading national retailer in an ITC Investigation initiated by Crocs, Inc. involving claims of trademark and trade dress infringement related to certain design elements of Crocs’ clog-style footwear. Crocs seeks a general exclusion order and cease-and-desist orders against numerous shoe manufacturers and retailers. The Orrick team has unparalleled expertise in ITC trademark claims and trade dress claims directed to footwear, as evidenced by its successful defense of New Balance in similar claims in the ITC filed by Converse.

    Mahindra & Mahindra

    We represent Mahindra & Mahindra Ltd. and Mahindra Automotive North America in a trademark and trade dress ITC investigation brought by the owners of the Jeep brand involving the design of Mahindra’s ROXOR off-road vehicle. After an initial adverse decision by the Commission, we worked tirelessly to file a petition just one week later to modify the Commission’s remedial orders to exempt Mahindra’s redesigned ROXOR vehicle. In response to our petition, the ITC instituted an expedited modification proceeding where the ALJ ruled in Mahindra’s favor. The Commission and the Federal Circuit affirmed the decision.

    We acted as lead trial counsel and was responsible for all aspects of the investigation. The Mahindra investigation is one of the few to include both a 100-day proceeding, a full hearing, and a modification proceeding, giving Orrick a unique perspective on the complete life cycle of an ITC section 337 investigation.

    New Balance

    Members of the Orrick team have represented New Balance in trademark, design patent, false advertising, and licensing disputes related to its footwear and apparel products for more than twenty years. A few notable matters are described below:

    Converse

    We won a complete victory on behalf New Balance in a six-year long ITC Investigation initiated by Converse involving claims of trade dress infringement related to certain design elements of Converse’s Chuck Taylor All-Star brand footwear. As lead counsel for New Balance, the team first won a Final Determination of no violation in 2016 and then briefed and argued a Federal Circuit appeal in 2018. In October 2019, the team won an Initial Determination of no violation on remand and the Commission issued a Final Determination affirming that decision in September 2020. The case clarified the law on trade dress in the Federal Circuit and at the ITC and, for New Balance, is particularly important because the entire PF Flyers product line was at stake. Over the years, Law360 selected this case as the most important trademark ruling of 2016 and an appeal to watch in 2018. 

    Nautica

    We represented New Balance in a trademark infringement matter against Nautica for copying the iconic “N” that has appeared on its sneakers for decades. The New Balance “N” appears on virtually all of its footwear and apparel. After Nautica adopted a similar “N” for its footwear and apparel, New Balance launched a suit claiming Nautica intentionally ripped off its famous mark and that its use of “N” caused confusion among consumers. New Balance again looked to us to defend its brand. We filed the complaint and the matter promptly settled on confidential terms. The team presently represents the company in another matter concerning the “N” mark adverse to Michael Kors.

    Made in the USA

    We represent New Balance in a multistate class action alleged false advertising related to the company’s use of qualified “Made in the USA” claims. The matter is in the earlier stages. The team previously represented the company against similar class claims in California. That matter settled favorably.

    Vision Streetwear

    We represent New Balance in a trademark litigation brought by Vision Streetwear concerning its VISION trademark and the use of the phrase VISION RACER in connection with a New Balance and Jaden Smith collaboration product. The matter is in the earliest stages.

    Coorstek

    We represented CoorsTek as lead trial counsel and lead appellate counsel in a trade dress infringement case centered on the company’s right to use the color pink for ceramic hip implant components. The first victory came in late 2016 following an 11-day bench trial in the United States District Court for the District of Colorado. The court issued an order granting complete victory to Orrick’s client. Among other things, the Court held that the defendant did not have trade dress rights in the color pink due to its functional nature and, even if it did, Orrick’s client did not infringe those rights. The court also went a step further, ordering that the defendant “is enjoined from seizing [plaintiff’s] products or otherwise interfering with plaintiff’s efforts to market pink orthopedic products based on any claim of trademark or trade dress protection for the color pink.” The court’s decision, therefore, removes any encumbrance for orthopedic device companies to access a world-class second source for state-of-the-art implantable ceramic components which are used in hip-replacement systems in the United States.

    BBAM

    We represent BBAM, the third-largest manager of leased commercial jets in the world, in a trademark infringement litigation against four defendants who adopted trademarks used by BBAM since 1990 and retained in a 2010 management buyout of BBAM from prior owner Babcock & Brown LP. The litigation was brought by BBAM to protect its right to exclusive use of its trademark and trade names in its core field against a former employee of BBAM’s predecessor seeking to trade off the goodwill associated with the Babcock & Brown name. BBAM recently defeated Defendants’ motion to dismiss.

    Nreal Technology Limited

    We represent Nreal, an award-winning start-up that develops ready-to-wear mixed-reality glasses, in a trademark litigation filed by Epic Games challenging the Nreal trademark in North Carolina. The team also filed a declaratory judgment action in the Northern District of California on behalf of Nreal relating to this same dispute and successfully had the North Carolina action dismissed. In the dispute, Epic Games alleges that the Nreal mark is confusingly similar to its alleged UNREAL trademark. Nreal denies the allegations.

    Salvestrin Wine Co., LLC

    We represent Salvestrin in connection with a declaratory judgment action filed by competitor Appellation Trading Company, LLC (“ATC”), who is seeking a declaration from the Northern District of California that it does not infringe Salvestrin’s CULT trademark on grounds that the mark is merely descriptive and/or generic for a certain kind of wine. Salvestrin has counterclaimed for infringement of the CULT mark and trade dress by ATC in connection with ATC’s own CULT-branded wines.

    Adore Me, Inc.

    We achieved a favorable settlement for Adore Me, Inc. (“Adore Me”) in connection with a trademark infringement action in the Central District of California filed against competitor Lavender Lingerie, LLC dba Savage x Fenty (“Savage”). The action sought to stop Savage’s unauthorized use marks confusingly similar to Adore Me’s ‘ADORE ME’ trademark in connection with the sale of clothing products, such as lingerie and related online retail services.

    Anker Innovations

    We represent Anker Innovations and related entities in a trademark litigation brought by Nuheara IP Pty Ltd and Nuheara Limited in the Western District of Washington. Anker Innovations is a global leader in charging technology and smart devices for entertainment, travel, and smart homes. Nuheara’s claims allege that Anker’s use of HearID infringes Nuheara’s alleged EAR ID mark and constitutes unfair competition and false designation of origin. Anker denies Nuheara’s allegations and filed counterclaims seeking to cancel Nuheara’s EAR ID mark as being merely descriptive, and declaratory judgment that EAR ID is merely descriptive and that Anker does not infringe the EAR ID mark.

    Leading National Retailer

    We were lead trial and appellate counsel for a leading national retailer in one of the most significant trademark appeals in recent years. The client was accused of trademark infringement in the grilling and grilling accessories space. The case went to trial in 2018, resulting in a $95.5 million dollar judgment against the client. On appeal the Fourth Circuit agreed with the Orrick team and found that the district court failed to properly instruct the jury on willfulness. Law360 selected the matter as one of the top 10 trademark litigations of 2016,2019 and again in 2021.

    Williams-Sonoma

    We are lead counsel for plaintiff Williams-Sonoma in a design patent and false advertising case adverse to online retailer Wayfair. The claims concern Wayfair’s unauthorized copying of the client’s patented furniture designs and false and misleading statements regarding the origins of its designs. The matter is in the earliest stages.

    Copyright Litigation

    Unicolors

    We are lead counsel representing Unicolors in a SCOTUS victory of great importance to creators and innovators. SCOTUS backed our arguments by restoring a copyright infringement case brought by Unicolors against fashion giant H&M. Unicolors, a fabric designer, sued H&M for infringing the designs on its jackets, but the Ninth Circuit found that Unicolors’ copyright registration was potentially invalid because of mistakes in the copyright registration form, overturning a jury verdict of willful infringement and damages. The Supreme Court disagreed, reversing the Ninth Circuit in a 6-3 decision written by Justice Stephen Breyer.

    Cox Communications

    We represent Cox Communications in the appeal of a recording industry jury verdict of over $1 billion against Cox for the infringement of over 10,000 songs by subscribers using Cox’s network. The case is being closely watched by copyright and media observers who predict that the verdict, if allowed to stand, could “break the internet.”

    Oracle

    We represented Oracle in the long-running Oracle v. Google copyright case concerning the Java language. Over the last six years, we twice won critical appellate victories for Oracle. Those wins secured copyright protection for Oracle’s Java software and rejected Google’s argument that it made “fair use” of Oracle’s work by copying it into Google’s Android operating system without permission. Ultimately, the U.S. Supreme Court did not disturb our prior victory that Oracle’s code merits copyright protection, but it found Google’s use of Oracle’s technology to have been fair.

    LinkedIn

    We represent LinkedIn in a dispute concerning unauthorized access to LinkedIn’s website and member data by hiQ. hiQ’s business is to provide people analytics based on LinkedIn data to clients. LinkedIn discovered that hiQ was using automated means or “scraping” LinkedIn’s website in 2017. Under predecessor counsel, hiQ obtained a preliminary injunction that it was not violating the Computer Fraud & Abuse Act by scraping LinkedIn’s website. The Ninth Circuit affirmed, but the Ninth Circuit opinion was recently vacated by the Supreme Court and remanded for further proceedings.

    Orrick took over as lead trial counsel for LinkedIn in early 2021 for proceedings in the district court, which had been stayed pending decisions by the Ninth Circuit and the Supreme Court. LinkedIn, represented by Orrick, filed counterclaims and successfully defended them against hiQ’s motion to dismiss. LinkedIn recently filed a motion to vacate hiQ’s preliminary injunction.

    Instacart

    Our team, together with a team from Keker, Van Nest & Peters, represented Instacart in a copyright infringement, DMCA, and CFAA case against competitor Cornershop. Instacart’s market-leading grocery delivery business model is based on high-quality, compelling and accurate images of the products its grocery store and supermarket partners offer. Cornershop is alleged to have scraped or otherwise copied, without authorization, copyrighted images from Instacart’s servers and website and repurposed them for Cornershop’s own, directly competing business. The matter settled favorably.

    Aereo

    We served as Aereo’s lead trial counsel in the successful defense in the district court and lead appellate counsel in the successful appeal at the Second Circuit. The case was ultimately decided by the Supreme Court on an issue of first impression.

    New York Times

    We served as lead trial counsel for the New York Times and The Boston Globe in Gatehouse v. The New York Times, a case of first impression that involved both copyright and trademark claims, which settled favorably just prior to trial.

    Trademark Prosecution / Counseling

    Salesforce

    We oversee Salesforce’s extensive global trademark portfolio, including the prosecution and maintenance of all of the company’s marks. In addition, we provide strategic counseling regarding the company’s global branding strategy, oversee large global filing programs, and assist with global due diligence and assignment recordal projects for the company’s acquisitions.

    Urban Zen by Donna Karan

    We handle the worldwide portfolio for URBAN ZEN, Donna Karan’s brand that she adopted after selling her DONNA KARAN brand to another company many years ago. URBAN ZEN is a high-end clothing, footwear, housewares, and bedding line and she also uses it in relation to her charitable work in Haiti. We file trademark actions all over the world in connection with this brand.

    Viking River Cruises

    We have managed Viking River Cruises’ worldwide trademark portfolio, including clearing, filing, and maintaining all marks, managing oppositions and cancellations throughout the world, copyright filing and counselling, and litigating disputes worldwide for over 20 years.

    Beyond Meat

    We manage U.S. and global trademark prosecution and enforcement for BEYOND MEAT and related meatless vegetarian-based products, and provide counselling around copyright, social media, domains, and licensing agreements.

    Asana

    We manage U.S. and global trademark enforcement and prosecution for the ASANA trademark, and provide counselling around copyright, social media, and domains.

    Stoller Vineyards

    We manage local trademark prosecution and enforcement, and provides trademark counselling services for CANNED OREGON, HISTORY NORTHWEST, and other marks.

    Polar Beverages

    We manage U.S. and global trademark prosecution and enforcement for Polar Beverages and related products, and provide counselling around copyright, social media, domains, and licensing agreements.

    Boston Trust Walden Company

    We advised this financial services client in connection with a complete corporate identity change involving renaming the company, introduction of a new logo and tagline, the launch of a redesigned website, etc. Our work included trademark risk assessment, trademark prosecution, and overall branding strategy.

    We also represent the client in ongoing brand protection and trademark portfolio management matters.

    A confidential financial services client

    We represent this highly confidential financial services client in ongoing brand protection and trademark portfolio management matters, proceedings at the TTAB, and a series of successful UDRP proceedings, including guiding client through a series of strategic acquisitions and an enterprise-wide rebranding.

Contacts

Copyright

Annette Hurst
R. David Hosp
Mark Puzella
Sheryl Garko

Trademark

Mark Puzella
Sheryl Garko
Dave Hosp

Prosecution

Beth Goldman
Bob O’Connell
Betsy Lee

Advertising and Media

R. David Hosp
Annette Hurst

Annette Hurst Framing the Case
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Trial Strategy: Annette Hurst on Framing the Case