Janet Satterthwaite is an experienced and versatile trademark attorney, uniquely capable in all aspects of global trademark prosecution and strategic counseling as well as litigation at the first-chair level. Clients appreciate her seamless, practical, one-stop guidance on counseling, prosecution and portfolio management, licensing, enforcement/litigation, and cyberspace problems. She takes the client from domestic and global selection, clearance and adoption of brands, to brand protection/registration strategy and execution, brand enforcement and licensing strategy, domain name and Internet strategy, and litigation as necessary.
Trademark: Ms. Satterthwaite has been a leading member of Venable's Trademarks, Copyrights and Domain Names practice group since 1996, which makes her the longest-serving member of the Venable Trademark Group. She has prosecuted trademarks in the U.S. and worldwide for over 20 years. Her group ranks highly in two benchmark annual reports: ninth in U.S. trademark applications filed (Trademark Insider, pub. 2010); and 12th in U.S. trademark registrations issued (Intellectual Property Today, pub. 2010). The group is ranked Tier 1 nationally and in Washington, DC (U.S. News - Best Lawyers "Best Law Firms," 2011-2012). Ms. Satterthwaite is assisted by a skilled team of associates, paralegals and junior partners. In 2011, Ms. Satterthwaite served as an expert witness in a U.K. patent litigation on a specific issue of U.S. Trademark Prosecution Law and Practice.
Internet and Domain Names: Ms. Satterthwaite is recognized as a leading international professional on "best practices" in responding to the rapidly changing problems of brand protection on the Internet, and for this work, was elected to the International Who's Who of Internet, e-Commerce & Data Protection Lawyers for 2011. Ms. Satterthwaite is head of Venable's Domain Name and Cyberpiracy Team, which guides clients through challenges to brands in cyberspace, including Internet domain name disputes and worldwide domain name registration and policing strategies, keyword advertising disputes, online misuse of trademarks, online counterfeiting, false blogs, phishing and data security, and social media. Ms. Satterthwaite has been practicing and influencing domain name and Internet law since 1995.
This most significant change to the Internet in a decade launched in January 2012, when applications for unlimited new top-level domains are being accepted. Ms Satterthwaite is guiding a major firm client through the application process for a new top-level domain. Since 2009, Ms. Satterthwaite has been participating in interactions and meetings with, and has submitted comments to, ICANN, the Internet Corporation for Assigned Names and Numbers, on behalf of trademark owners' organizations and individual clients to ensure that new generic top-level domains include adequate trademark rights-protection mechanisms.
She also advises clients on evolving internationalized domain names, and, in 2010, helped a client register one of the first all-Cyrillic domains. In 2011, she coordinated blocking a wide range of client brands, from insurance to Hollywood celebrities, from the launch of the .xxx adult entertainment domain space.
Litigation: Ms. Satterthwaite is a seasoned trademark litigator and has been lead litigation counsel at Venable on many trademark, domain name, copyright and false advertising lawsuits in federal courts, often in New York, Virginia and Maryland, as well as California, Connecticut, New Jersey, Ohio, Louisiana, Colorado, New Mexico, Iowa, Florida, South Carolina, Texas and North Carolina. Many of these cases resulted in preliminary and permanent injunctions in favor of her clients. She also handles dozens of administrative litigation matters before the Trademark Trial and Appeal Board and provides trademark law and survey expert support to numerous trademark litigation matters handled by other Venable colleagues, including landmark cases such as Wal-mart v. Samara (U.S. Supreme Court ) and Gibson Guitars v. Paul Reed Smith (6th Circuit).
Counterfeiting: Ms. Satterthwaite led the Venable team which filed amicus briefs on behalf of perfume manufacturer Coty, Inc., in the Second Circuit Court of Appeals in 2008 and the United States Supreme Court in 2010 in Tiffany v. eBay, which addressed the scope of liability of online market places to prevent the sale of counterfeits. She is working with a client in the consumer goods sector on strategies to work with Customs towards better identification of counterfeit merchandise. Ms. Satterthwaite is a member of the U.S. Chamber of Commerce's Coalition Against Counterfeiting and Piracy (CACP).
Advertising: Ms. Satterthwaite is a member of Venable's Advertising and Marketing team, which was selected in 2010 as a recipient of the Chambers USA Award of Excellence and recognized by Legal 500. She is particularly experienced in Internet keyword advertising, false blogs and other Internet advertising issues.
Representative Clients
Representative Recent Litigation Cases As Lead Counsel
2012: Argued and obtained temporary restraining order and expedited discovery from third parties on behalf of prominent hedge fund who was being impersonated on the Internet by a Ponzi scheme, resulting in immediate shut down of the key website (U.S. District Court for the District of Connecticut)
2011: Concluded successful copyright infringement suit and award of damages, on behalf of a publisher (U.S. District Court for the Middle District of North Carolina)
2010-2011: Obtained cancellation of opponent's Swiss trademark registration and successfully defended client's U.K. registration as part of complex ongoing multinational trademark rights dispute in the financial services industries (Swiss federal court, Basel, and U.K. Intellectual Property office--supervising Swiss and U.K. counsel)
2010: Argued and obtained preliminary injunction, permanent injunction and damages for misuse of client trademarks in search engine keywords and false advertising (U.S. District Court for the Middle District of Louisiana)
2010: Led Amicus Curiae team for Coty, Inc. in Tiffany v. eBay in support of Tiffany's suit against online counterfeits (U.S. Supreme Court)
2010: Successfully fended off challenge to major retailer's credit and loyalty card logo by major credit card issuer (U.S. Trademark Trial and Appeal Board)
2009: Successful lawsuit to recover domain name on behalf of famous resort town in Switzerland (Eastern District of Virginia)
2009: Obtained permanent injunction against unfair competition by British employment website on behalf of multinational insurance company (Eastern District of Virginia )
2008: Amicus Curiae brief in Second Circuit Court of Appeals on behalf of Coty, Inc. in Tiffany v. eBay
2008: Obtained permanent injunction against trademark infringement and recovered domain name (Southern District of New York and Eastern District of Virginia)
2008: Obtained permanent injunction against misuse of client's trademark and recovered domain name (Central District of California)
2008: Obtained key domain name for financial services client from Korean infringer (Eastern District of Virginia)
2007: Obtained permanent injunction and damages in trademark infringement suit by retirement community against real estate development (District of Maryland)
2006: Obtained permanent injunction against developer who was planning to infringe name of famous historic hotel in Rocky Mountains (District of Colorado)
Representative Successful Domain Name Disputes
Alestra, S. de R.L. de C.V. v. Richard Martin, Case No. D2006-1587 (representing respondent)
Damon's Restaurants, Inc. v. JBR Enterprises, Inc.,Case No. D2007-1603 (representing respondent)
Enzymatic Therapy, Inc. v. VNF Nutrition, Case No. D2001-1310
Factory Mutual Insurance Company v. VW Names, Case No. D2008-1014
Factory Mutual Insurance Company v. Rhianna Leatherwood, Case No. 2009-0144
Hairmarker LLC/Colormetrics v. Element Design Studio, Nominet DRS No. 5200 (January 2008)
Imperial Chemical Industries PLC v. Maxi services, Case No. D2006-0156
International Data Group, Inc. v. K. McGovern, Case No. D2005-0960
K Capital Corporation v. Yang, HaeHyun????, Case No. D2007-1115
Laureate Education Inc. v. Ahmed Altadbeek RE: (YW), Case No. D2010-1085
Nokia Corporation v. Horoshiy, Inc., LaPorte Holdings, Case No. D2004-0851
Norm Reeves, Inc. v. Texas International Property Associates, Case No. D2009-1462
Nutz & Boltz, Inc. v. Whois Protection, Case No. D2007-1130
Pepco Holdings Inc. v. Domain Administrator, Case No. D2009-1336
Romance Writers of America v. RWA of Canada, Case No D2009-0448
Sierra Healthstyles LLC v. Jason Becher, Case No D2008-1563
Solvay S.A. v. Karl Sandberg, NAF, Case FA0706001011876
Solvay Advanced Polymers, LLC, Solvay S.A. v. Plastic Distributors, Case No. D2008-0516
STX LLC v. Yu nae ho, Jinsu Kim, Case No. D2006-0567
Wal-Mart Stores, Inc. v. Andre Power, Nominet DRS Number 01301
Wal-Mart Stores, Inc. v. Modern Limited - Cayman Web Development, Domain Administrator, Case No. D2005-0322
Yale University v. Interweb Group LLC, Case No. D2008-1568
Yale University v. movcom and Yale Explore Case No D2011-1367
Activities
In 2004, Ms. Satterthwaite was elected to the Cyberspace Team of Marques, the association of European trademark owners. In 2009, she was elected Vice-Chair of the Cyberspace team. In 2010, she was elected to the Marques IP Outer Borders Team, which studies the hottest developments in brands and challenges to brands, and she leads the sub-team on trademarks in social media. She is also the U.S. Newsletter Correspondent for Marques. Ms. Satterthwaite has written and spoken about trademark and cyberspace issues to international audiences. In February 2012, she will lead a workshop in Brussels for Marques on trademarks and social media
Ms. Satterthwaite provides pro bono trademark and copyright representation to a number of nonprofit organizations.
Ms. Satterthwaite is a fundraiser for the National Cathedral School and former secretary of the local Oxford-Cambridge Alumni Rowing Club. She has also coached youth soccer.
Industries
Consumer Products and Services
Dietary Supplements, Cosmetics and Functional Foods
Financial Services
Nonprofit Organizations and Associations
News
February 7, 2012, Janet Satterthwaite to speak in Brussels, Belgium, on social media best practices
August 10, 2011, Five Venable attorneys listed among the top women lawyers in the Northeast
August 4, 2011, Two Venable attorneys named to the International Who's Who of Internet, e-Commerce & Data Protection Lawyers 2011
July 25, 2011, Janet Satterthwaite appointed to Editorial Board of Internet Law and Strategy, an ALM Journal
July 6, 2011, Janet Satterthwaite quoted in multiple publications
June 28, 2011, Janet Satterthwaite featured in eWeek
October 21, 2010, Venable team files amicus brief in Supreme Court in eBay counterfeiting case
May 18, 2010, Venable's Trademark Practice Ranked Tops in Washington, DC and Among Top 10 Nationally by Trademark Insider; Firm Also Places Among National Leaders for Trademark Registrations by Intellectual Property Today
May 10, 2010, Venable ranked among top 20 trademark practices by IP Today
July 20, 2009, Second Circuit hears oral argument in landmark Tiffany v. eBay case
May 7, 2009, Venable ranked among top 20 trademark practices by Intellectual Property Today and Trademark Insider
May 7, 2008, Venable ranked among the top 20 U.S. trademark practices by Trademark Insider and Intellectual Property Today
January 2, 2001, Venable Promotes Eleven to Partner
Honors
Venable Liaison - British American Business Association International Trademark Association
AV® Peer-Review Rated by Martindale-Hubbell
Named to International Who's Who of Internet, e-Commerce & Data Protection Lawyers for 2011
Listed among the top women lawyers in the Northeast in the July/August 2011 edition of Arrive magazine, the magazine for Northeast business travelers on Amtrak
Publications
Ms. Satterthwaite is the U.S. correspondent for the newsletter of Marques. Contributions include an article in the Summer 2004 newsletter about U.S. practitioners' perspective on the U.S. accession to the Madrid Protocol International Trademark Treaty and an article in the Winter 2005 issue about the Supreme Court's ruling in a recent trademark case, KP Permanent Makeup, and the status of various lawsuits against Google for selling trademarks as sponsored adwords. She is the author of "How to Protect Your Brand On-Line" published in the Summer 2006 edition of CPA's widely-read IP Review, and has authored or been quoted in numerous other articles over the many years she has been practicing in the field of trademarks and domain names.
January 2012, IP Buzz - January 2012
Meaghan Hemmings Kent, Elissa Brockbank Reese, Janet F. Satterthwaite, Jeffrey D. Knowles, Peter Curtin, Lars H. Genieser, Ph.D., James E. Nelson, Keith G. Haddaway, Ph.D., Marcella Ballard, Justin E. Pierce, Roger A. Colaizzi
IP Buzz
January 12, 2012, Advertising News & Analysis - January 12, 2012
Jeffrey D. Knowles, Roger A. Colaizzi, Gary D. Hailey, Janet F. Satterthwaite,Jonathan L. Pompan
Advertising Alert
October 13, 2011, Domain Name Issues Update
Janet F. Satterthwaite
August 11, 2011, Advertising News & Analysis - August 11, 2011
Gary D. Hailey, Jeffrey D. Knowles, Thomas E. Gilbertsen, Janet F. Satterthwaite
Advertising Alert
August 4, 2011, Advertising News & Analysis - August 4, 2011
Gary D. Hailey, Jeffrey D. Knowles, Roger A. Colaizzi, Todd R. Farnsworth, Claudia A. Lewis-Eng, Elissa Brockbank Reese, Janet F. Satterthwaite
Advertising Alert
August 5, 2011, ICANN Approves Adding New Generic Top-Level Domains
Todd R. Farnsworth, Janet F. Satterthwaite
August 2011, US and European Trademark Practice Compared
Janet F. Satterthwaite
August 2, 2011, Protecting your Brand in the .xxx Domain
Janet F. Satterthwaite, Todd R. Farnsworth
July 15, 2011, Advertising News & Analysis - July 15, 2011
Jeffrey D. Knowles, Janet F. Satterthwaite
Advertising Alert
July 12, 2011, WWW.What?: What the Impending New Domain Names Mean for Nonprofits
Janet F. Satterthwaite, Todd R. Farnsworth, Jeffrey S. Tenenbaum
Related Topic Area(s): Copyrights and Trademarks, Electronic Communications, Social Media
July 11, 2011, Historic Change to Domain Name System has Broad Implications for Brands
Jeffrey D. Knowles, Janet F. Satterthwaite
Response Magazine
June 28, 2011, 13 tips for the US
Janet F. Satterthwaite
House Marques
June 2011, Important Change to the Domain Name System: What Nonprofits Need to Know
Janet F. Satterthwaite, Todd R. Farnsworth, Jeffrey S. Tenenbaum
Related Topic Area(s): Copyrights and Trademarks, Electronic Communications, Social Media
June 2011, Breaking News: Historic Change to Domain Name System--What You Should Know
Janet F. Satterthwaite, Todd R. Farnsworth
IP Buzz
June 2011, IP News & Comment - June 2011
Marcella Ballard, David D. Conway, William D. Coston, Christopher S. Crook,Henry J. Daley, Ph.D., Todd R. Farnsworth, Meaghan Hemmings Kent, Christopher Ma, Janet F. Satterthwaite
IP Buzz
February 2011, U.S. Supreme Court Declines to Review eBay Case
Janet F. Satterthwaite
MARQUES
December 16, 2010, So You Want To Be On The Internet ®
Maurice Baskin, George E. Constantine, Todd R. Farnsworth, Mikhia E. Hawkins,Lisa M. Hix, George W. Johnston, Matthew T. Journy, Joshua J. Kaufman, Gilead I. Light, Luisa M. Lopez, Caryn G. Pass, Janet F. Satterthwaite, Melissa Landau Steinman, Jeffrey S. Tenenbaum, Armand J. (A.J.) Zottola
Related Topic Area(s): Social Media
December 8, 2010, Supremes Say: 'You're On Your Own' - Analyzing Supreme Court's Decision Not to Review
Tiffany v. eBay
Janet F. Satterthwaite
Corporate Counsel
July 2010, IP News & Comment - July 2010
William D. Coston, Todd R. Farnsworth, Ryan M. Flandro, Jeffri A. Kaminski,Michael A. Sartori, Ph.D., Janet F. Satterthwaite
IP Buzz
June 2010, Hot Topics in Domain Names
Janet F. Satterthwaite
June 2010, Internationalized Domain Names to Open Up the Internet to Users of Cyrillic, Arabic, Chinese, Korean and many other non-Roman alphabets
Janet F. Satterthwaite
Client Alerts
December 23, 2009, Dot-EU to Accept IDNS from 10th December
Janet F. Satterthwaite, Todd R. Farnsworth
December 10, 2009, ICANN Announces Internationalized Domain Names
Todd R. Farnsworth, Janet F. Satterthwaite
December 2008, IP News and Comment - December 2008
Ryan M. Flandro, Michael A. Gollin, Keith G. Haddaway, Ph.D., Frederick M. Joyce,Martin L. Saad, Janet F. Satterthwaite, Meaghan Hemmings Kent
IP Buzz
August 2007, Regional Domain Name .asia
Janet F. Satterthwaite
Summer 2006, How to Protect your Brand On-Line
Janet F. Satterthwaite
IP Review
Autumn 2005, Cyberalert: How to deal with pirates changing WHOIS information
Janet F. Satterthwaite
MARQUES
Autumn 2005, When ICANN is not enough, try a US cyberpiracy lawsuit
Janet F. Satterthwaite
MARQUES
Winter 2002, The End of "Over There" -- Australia Supreme Court Exerts Jurisdiction Over U.S. Media Company in Internet Defamation Case, Just as U.S. Court of Appeals Rules the Opposite Way
Janet F. Satterthwaite
December 1, 1999, Summary of 1999 Cybersquatter/Cyberpiracy Law and of the ICANN Dispute Resolution Policy
Janet F. Satterthwaite
November 21, 1999, So You Want To Be On The Internet ®
Walter R. Calvert, Joshua J. Kaufman, Brian J. O'Connor, Andrew D. Price, Michael A. Sartori, Ph.D., Janet F. Satterthwaite, Melissa Landau Steinman, Damon W.D. Wright
Related Topic Area(s): Copyrights and Trademarks
June 2011, Historic Change to Domain Name System - What Your Brand Needs to Know
Janet F. Satterthwaite, Todd R. Farnsworth
Advertising Alert
Events/Speaking Engagements
Ms. Satterthwaite presented a workshop on Domain Name Best Practices at the annual meeting of Marques, the Association of European Trademark owners, in Prague in September 2005 and led a workshop on keyboard advertising law in the U.S. and Europe at the 2009 Marques meetings.
Past Events
July 12, 2011, Legal Quick Hit: "WWW.What?: What the Impending New Domain Names Mean for Nonprofits" for the Association of Corporate Counsel's Nonprofit Organizations Committee
Janet F. Satterthwaite, Todd R. Farnsworth, Jeffrey S. Tenenbaum
Related Topic Area(s): Copyrights and Trademarks, Electronic Communications