Charlie Henn concentrates his practice in the area of intellectual property litigation, including cases involving trademarks, copyrights, patents and trade secrets. Mr. Henn has received numerous national and local honors recognizing his professional accomplishments, including: LawyersUSA named Mr. Henn one of six "Lawyers of the Year" nationally in 2008. Sole U.S. winner of the 2010 International Law Office (ILO) Client Choice Award for Intellectual Property, which recognizes the top provider of client service on intellectual property matters. Chambers USA: America's Leading Lawyers for Business for Intellectual Property Litigation (Georgia) and for Sports Law (Nationwide) each of the last three years. Legal 500 US in the area of Trademark Litigation. The Best Lawyers in America® for Intellectual Property Litigation and Trademark Law. "Legal Elite" for Intellectual Property law by Georgia Trend magazine. A relatively young lawyer, Mr. Henn also repeatedly has been honored for success while still "Under 40": Featured as a "Rising Star" by Law360 as one of five national intellectual property lawyers under 40 to watch. Recognized by the Daily Report as one of the "Ten Lawyers Under 40 'On the Rise'" in Atlanta. Listed by the Atlanta Business Chronicle as one of the city's "40 Under 40." Named a "Rising Star" in Georgia for Intellectual Property Litigation by SuperLawyers magazine every year since 2003. Professional & Community Activities Leadership Atlanta Class of 2011 Marshall Memorial Fellow (2009) International Trademark Association, Enforcement Committee, Member (2007-present) Georgia Bar, Entertainment & Sports Law Section, Vice Chair (2007-present) Atlanta Lawyers' Chapter of The Federalist Society, Executive Board Member, President (2001-2006) Southeastern Legal Foundation, Legal Advisory Board Conservative Policy Leadership Institute, Trustee Theatrical Outfit, Board Member ArtsNOW, Advisory Board Member Friends of Theater at Emory, President of Board Flying Carpet Theater, Board Member Dian Fossey Gorilla Fund, Board Member Industries Fashion & Luxury Goods; Entertainment, Media & Sports Experience adidas America Inc. and adidas-Salomon AG v. Payless Shoesource Inc., Represented adidas America Inc. and adidas-Salomon AG in trademark infringement litigation against Payless Shoesource involving the defendant's infringing use of the well-known and distinctive adidas Three-Stripe Mark. Following a 14-day trial and two days of deliberation, the jury found unanimously in adidas' favor on all seven claims, including trademark infringement, trade-dress infringement, unfair competition and unlawful and deceptive trade practices. The jury awarded $305 million in monetary relief, including $137 million in punitive damages. This verdict was the largest in history for a trademark infringement case. Following entry of final judgment in excess of $60 million, the parties later settled for an undisclosed amount.
adidas America Inc. v. Payless Shoesource Inc., No. CV01-1655 (D. Or. Nov. 11, 2008). Board of Supervisors of Louisiana State University et al. v. Smack Apparel Co., Represented four major universities and The Collegiate Licensing Company (CLC) in a trade dress infringement case. In an attempt to avoid the provisions of a prior settlement agreement, the defendant, a clothing provider, sold t-shirts and other merchandise bearing university colors that did not include any of the colleges' registered marks. The firm secured a ruling rejecting the theory that school colors were aesthetically functional and that the defendant's use was "fair." After prevailing on summary judgment on the issue of liability for trademark infringement and unfair competition, we conducted a two-day jury trial on monetary relief. The plaintiffs recovered damages in the form of a reasonable royalty and an accounting of defendants' profits. The defendants later appealed, and the Fifth Circuit unanimously affirmed.
Louisiana State University v. Smack Apparel Co., 438 F. Supp. 2d 653 (E.D. La. 2006), aff'd, 550 F.3d 465 (5th Cir. 2008). University of Kansas v. Larry Sinks, et al., Successfully represented University of Kansas in a trial against JoeCollege.com, a retailer selling various apparel using colors and other indicia of the University. Obtained award of attorneys' fees.
University of Kansas v. Larry Sinks, et al., 2008 U.S. Dist. LEXIS 23765 (D. Kan. 2008). Jan K. Voda, M.D. v. Cordis Corp., Served as lead counsel on behalf of Jan Voda, M.D., a cardiologist, in a patent infringement suit related to angioplasty catheters against Cordis, a division of Johnson & Johnson, in the Western District of Oklahoma. After a two-week trial, a jury found Dr. Voda's patents to be valid and Cordis willfully infringed. In August 2006, the court awarded Dr. Voda damages at a 7.5% royalty rate, double compensatory damages and attorneys' fees. Voda v. Cordis Corp., 536 F.3d 1311 (Fed. Cir. 2008). Calio v. Sofa Express Inc., Represented Sofa Express Inc. in a copyright infringement case. In response to the firm's motion to dismiss order, the court rejected the plaintiff's claim for punitive damages for copyright infringement. Thereafter, the dispute was successfully resolved.
Calio v. Sofa Express, Inc., 368 F. Supp. 2d 1290 (M.D. Fla. 2005). ACI Int'l Inc. v. adidas-Salomon AG, Represented the declaratory judgment defendant, adidas-Salomon AG, in an action denying motion to dismiss trademark counterclaims.
ACI International Inc. v. Adidas-Salomon AG, 359 F. Supp. 2d 918 (C.D. Cal. 2005). Mad Hops, Inc. v. adidas-Salomon AG, Represented adidas-Salomon AG in a trademark litigation matter. The court granted adidas's motion for summary judgment.
Mad Hops, Inc. v. adidas-Salomon AG, No. C2-00-1445 (S.D. Ohio filed Dec. 26, 2000). Virginia Polytechnic Institute and State University v. Hokie Real Estate Inc., Successfully defended Virginia Polytechnic Institute and State University (Virginia Tech) in trademark infringement litigation against Hokie Real Estate, a real estate agency that adopted a maroon and orange color scheme in their advertising and business cards. The defendant filed a number of counterclaims alleging fraud on the trademark office and trademark misuse. The court granted Virginia Tech's motion to dismiss the counterclaims on sovereign immunity grounds. Case subsequently settled on favorable terms.
Virginia Polytechnic Institute and State University v. Hokie Real Estate, Inc., No. 7:10-cv-00466 (W.D. Va. filed Oct. 18, 2010). adidas-Salomon AG v. Target Corp., Represented adidas-Salomon AG in a trademark litigation matter against Target Corp. involving athletic footwear. The court denied the defendant's motion for summary judgment, upholding the strength of adidas's Three-Stripe Mark and Superstar Trade Dress.
Adidas-Salomon AG v. Target Corp., 228 F. Supp. 2d 1192 (D. Or. 2002). Patent license arbitration for leading provider of contact center solutions, Represented leading provider of contact center solutions in an arbitration involving patent license agreements. Grandparent adoption, Represents caregivers seeking to adopt children. One of the firm's signature pro bono programs is the Grandparent Adoption Program. Dozens of lawyers have been trained to represent grandparents and other relative caregivers who step up to raise young children in their extended family when the children's parents are unable or unwilling to do so. Working in partnership with local legal aid programs, lawyers accept referrals of eligible families, and prepare and file the required documents to effect the adoption. Hundreds of children's lives have been stabilized as a result of the firm's involvement. *Experience gained by attorney prior to joining Kilpatrick Townsend Publications 01 November 2010, Monetary Recovery in Trademark Litigation
Source: IP Litigator, Articles 01 January 2009, Likelihood of Confusion Surveys
Source: Intellectual Property Desk Reference, Other Publications 01 January 2009, Protection of Product Designs
Source: Intellectual Property Desk Reference, Other Publications 01 January 2009, Trademark Licensing Basics
Source: Intellectual Property Desk Reference, Other Publications 13 October 2006, Trademark Dilution Revision Act of 2006 Becomes Law, Legal Alerts 01 January 2006, An Introduction to Surveys in Trademark Litigation
Source: Intellectual Property Desk Reference, Other Publications 01 October 2001, Reclaiming a Once-Generic Trademark: Gaylord Entertainment v. Gilmore Entertainment
Source: The Intellectual Property Strategist, Articles 01 February 2000, The Anticybersquatting Consumer Protection Act of 1999
Source: Georgia Bar Journal, Articles 01 January 2000, Protection of Product Configurations: Supreme Court to Review Samara Brothers
Source: Intellectual Property News, Articles 22 January 1999, Foreign Entities Held Accountable for Copyright Infringement In U.S.
Source: Washington Legal Foundation, Articles News 10 November 2011, Kilpatrick Townsend Media Report -- November 4 - 10, 2011, News Releases 06 September 2011, Kilpatrick Townsend Earns Record-Breaking Recognition in Annual Best Lawyers in America 2012, News Releases 15 June 2011, Kilpatrick Townsend Recognized by Prestigious 2011 Legal 500 US, News Releases 13 June 2011, Kilpatrick Townsend Again Earns Highest Recognition From CHAMBERS USA 2011, News Releases 25 April 2011, Kilpatrick Townsend Receives Top Recognition in World Trademark Review 1000, News Releases 01 April 2011, Kilpatrick Townsend's Charlie Henn Named One of the Country's Rising Stars by Law 360, News Releases 02 March 2011, Kilpatrick Townsend Once Again Achieves Top Recognition in 2011 Georgia Super Lawyers, News Releases 01 February 2011, Kilpatrick Townsend Wins Pro Bono Law Firm of the Year and Jim Coil Named A Volunteer of the Year, News Releases 07 September 2010, College Colors Day a Success!, News Releases 12 August 2010, Kilpatrick Stockton Earns Record-Breaking Recognition in Annual Best Lawyers in America 2011, News Releases 21 June 2010, Kilpatrick Stockton Earns National Ranking from Chambers USA 2010 in Intellectual Property: Trademark, Copyright & Trade Secrets, News Releases 21 June 2010, Kilpatrick Stockton Again Named Top Firm in Georgia for Intellectual Property by Chambers USA 2010, News Releases 15 June 2010, Kilpatrick Stockton Recognized by Prestigious 2010 Legal 500 US, News Releases 14 June 2010, Kilpatrick Stockton Again Earns Highest Recognition From CHAMBERS USA 2010, News Releases 22 April 2010, Kilpatrick Stockton's Charlie Henn Receives International Recognition for Providing Excellent Client Service, News Releases 04 March 2010, Kilpatrick Stockton Ranked Number One in Five 2010 Georgia Super Lawyer Categories, News Releases 04 August 2009, Kilpatrick Stockton Earns Record-Breaking Recognition in Annual Best Lawyers in America 2010, News Releases 15 June 2009, Kilpatrick Stockton Once Again Earns Highest Recognition From Chambers USA, News Releases 25 March 2009, Kilpatrick Stockton Recognized for IP Coups, News Releases 02 March 2009, Kilpatrick Stockton Attorneys Named 2009 Georgia "Rising Stars" by Georgia Super Lawyers, News Releases 28 January 2009, Kilpatrick Stockton's Charlie Henn Named 2008 Lawyer of the Year, News Releases 01 December 2008, Kilpatrick Stockton's Charlie Henn Recognized as One of Six 2008 Lawyers of the Year, In the News |