Alex S. Fonoroff

Alex S. Fonoroff

Alex Fonoroff concentrates his practice in the areas of copyrights, trademarks, and unfair competition. He has represented clients from a variety of industries in intellectual property litigation and before the Trademark Trial and Appeal Board. Mr. Fonoroff also focuses on trademark and copyright counseling, licensing, and trademark portfolio management.

Selected Experience

· Counsel of record for Google in copyright litigation brought by book publishers, and purported class of authors concerning Google's Book Search program. The Author's Guild, et al v. Google Inc. and McGraw-Hill, et al. v. Google Inc.

· Obtained summary judgment on behalf of defendant, publisher of national real estate magazines, holding the plaintiff's mark generic. New Homefinders, Inc. v. Network Communications, Inc.

· Obtained jury award of damages and accounting of profits on behalf of several universities based on unlicensed use of school colors and common law trademarks. Board of Supervisors of the Louisiana State University and Agricultural and Mechanical College et al. v. Smack Apparel Co. et al.

· Defended and obtained favorable settlement on behalf of a plush bear manufacturer and designer against competitor's allegations of trade dress and copyright infringement. Boyds Collection, Inc. v. Bearington Collection, Inc.

· Represented hydraulic mulch distributor in NAD challenge brought by competitor related to large number of client's advertising claims.

· Successfully obtained federal multi-district ex parte seizure order on behalf of national motorcycle manufacturer in connection with anticipated counterfeiting activities at 100th anniversary road tour events for counterfeit merchandise in trademark infringement action. Harley Davidson Motor Co. v. Does.

· Defended music publishing company against multi-million dollar claim involving alleged violations of authors' moral rights. BMG Music v. Napoles, Montalban and Erami Music (declaratory judgment action).

· Prosecuted false advertising claims on behalf of a paper products company in an expedited arbitration.

· Represented an electronic travel information provider against competitors and a vendor in connection copyright claims related to software code.

· Obtained a summary judgment and affirmance on appeal for an automotive manufacturer accused of trade secret misappropriations.

· Advised a large consumer products company regarding right of publicity issues for an advertising campaign.

· Oversaw international trademark assignments involving hundreds of registered marks in over 45 countries for consumer products company.

· Prepared Supreme Court amicus brief on behalf of several newspaper publishers in support of copyright defendants. Greenberg v. National Geographic Society, et. al.

Publications, Articles and Speeches

· AIPLA Spring meeting, panelist, Search & Sensibility: Who & What are Protected on the Internet, May 14, 2008.

· Emory Law School, Guest Lecturer, Copyright Originality, Authorship, Ownership, Premption, Moral Rights, and Infringement, March 25 & 27 and April 1 & 3, 2008.

· Emory Law School, Guest Lecturer, October 30, 2007.

· Art Libraries Society of North America, A Decade of Copyright Developments, April 28, 2007.

· Georgia State University, Online Advertising and Trademark Disputes, February 1, 2007.

· CLE, TTAB Practice and Procedure, August 2006.

· Pro Bono Partnership, Trademark and Copyright Law for Non-Profits, July 7, 2006.

· CLE, Intellectual Property Issues for Transactional Attorneys (Trademark, Copyright, and Trade Secrets), December 2005.

· Intellectual Property Law Institute, Recent Copyright Developments, November 2005.

· CLE, TTAB Disputes, September 2005.

· Atlanta Electronic Commerce Forum, Copyright Protection and Electronic Commerce, April 2004.

· Georgia IP Section, Copyright and Patent Roundtable: Protecting Software, March 2004.

· CLE, Advanced Topics in Technology Law (Copyright and Trademark), December 2003.

· CLE, Intellectual Property Law Basics, December 2002.

· Georgia Writer's Association Annual Spring Festival, Copyright Law for Writers, May 2002.

· The Last Word? Supreme Court Resolves Split, But Only Partially, Trademark World, February 2005 (co-author).

· A Look Back at New Kids on the Block: Ninth Circuit Expands the Nominative Fair Use Doctrine, Intellectual Property Strategist, Vol. 10, No. 1, October 2003.

· Moral Rights, Legal Wrongs: Risks, Conflict and Constitutional Considerations in Introducing Moral Rights Protection to U.S. Law, Copyright World, September 2003 (co-author).

· Copyright Protection for GIS Information: A New Revenue Source, Georgia County Government, February 2002 (co-author).

Background

· Enforcement Committee (Legal Certainty of Disclaimers Subcommittee) of the International Trademark Association (INTA).

· Copyright Law and Practice Committee of the Intellectual Property Owners Association (IPO).

· Copyright Society of the U.S.A.

· Past Chair of the Copyright Committee of the Intellectual Property Law Section of the Georgia State Bar.