Tread Carefully In Discovery: Preclusion Sanctions in the ITC
With experience in federal court and before the United States Patent and Trademark Office, the Trademark Trial and Appeal Board, and the United States International Trade Commission, Briggs is involved in every aspect of high stakes litigation running the gamut of intellectual property rights. He also secures and protects companies' IP portfolios across a variety of business sectors.
Briggs has also been active in Orrick's pro bono practice, representing clients in copyright and contract issues relating to the production of a documentary film, various trademark disputes representing non-profit entities, and trademark counseling and prosecution before the United States Patent and Trademark Office.
During law school, he was Senior Editor for the Journal of Intellectual Property and Entertainment Law.
C5 Medical Werks/CoorsTek Medical v. CeramTec GmbH: When manufacturer CeramTec tried to block CoorsTek Medical from using the color pink for its ceramic 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 sued C5 in France and Germany and threatened to file actions in other jurisdictions including the United States. Rather than wait until CeramTec filed its lawsuit in the U.S., Briggs was part of a team that counseled C5 to take the initiative to file a complaint seeking a declaratory judgment of non-infringement. Following a 13-day bench trial in district court, the team won CoorsTek the right to make, offer and sell its pink ceramic hip components in the United States. Moreover, this precedential ruling confirmed that a color that is the natural result of a functional attribute described in an expired patent cannot serve as trade dress.
BIC Corporation v. Arrow Lighter, Inc.: On behalf of the BIC Corporation, we have filed lawsuits before the ITC and Eastern District of New York to stop the importation and/or sale of Chinese-made knock-off pocket lighters. In addition to copying BIC’s iconic design, the imitation lighters also do not conform to BIC’s stringent safety and quality standards.
Virag SRL v. Sony Computer Entertainment America LLC et al.: We secured a unanimous Ninth Circuit victory, which affirmed the Northern District of California court’s ruling that Sony’s popular “Gran Turismo” racing video games are expressive works under the First Amendment and therefore not subject to VIRAG’s trademark infringement claim. The Ninth Circuit rejected VIRAG’s claim that the games were commercial speech and applied the Rogers v. Grimaldi test, finding that the use of VIRAG’s trademark furthered the artistic goal of realism and did not mislead consumers.