Practice Areas & Industries: Shartsis Friese LLP

 





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Practice/Industry Group Overview

IP-related lawsuits can strike at the very core of one’s business. Trademark disputes can threaten brand identity while patent infringement actions can endanger a business’ ability to offer its products or services at all. We understand the high stakes nature of IP disputes, and have successfully represented both plaintiffs and defendants in trade secret, unfair competition, trademark, copyright, patent, and other intellectual property litigation.

We take a “business solution” approach to intellectual property disputes, focusing not only on achieving a favorable litigation result, but also on furthering our clients’ overall business interests and protecting and enhancing their competitive positions in the marketplace. We are able to offer our clients sound business advice and counseling to help them evaluate and implement creative and constructive solutions, both before and after the commencement of litigation. Our litigation attorneys work closely with those in our business department, who counsel clients regarding a wide range of intellectual property matters, including the selection, registration, licensing and enforcement of trademarks, patents, copyrights, and other intellectual property.

Patent Litigation

We handle patent litigation, both on the plaintiff and defense side, in a number of industries, including in the computer, software, Internet technology and product manufacturing sectors. We have litigated cases in the major venues for patent litigation across the country, including the Northern District of California, the Eastern District of Texas, the District of Delaware and Eastern District of Virginia. In addition, our patent litigators have represented clients in International Trade Commission proceedings, the undoubtedly most daunting venue for litigation of patent disputes, especially for defendants.

Trademark Litigation

We represent clients in litigation concerning trademark and service mark infringement and dilution in federal courts across the country. We also have expertise in Opposition and Cancellation Proceedings, as well as appellate proceedings before the Trademark Trial and Appeal Board (TTAB) related to trademark registrations. We are well-versed in litigating domain name disputes, including Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceedings. Our practice also includes quasi-adversarial matters before the TTAB related to obtaining registration for marks initially denied registration by the Trademark Office.

Copyright Litigation

We represent a variety of authors, artists and software developers in copyright litigation and work with companies and individuals in obtaining and enforcing copyright protection for their original works of authorship, including their multimedia properties and Internet web sites. We are particularly well-versed in addressing claims brought in relation to the Digital Millennium Copyright Act and other statutes and regulations related to the alleged infringement of copyrights online.

Trade Secret and Unfair Competition Litigation

We have extensive experience in representing both plaintiff and defendant companies in trade secret misappropriation and unfair competition cases against former officers, business associates, and competitors. In addition, we regularly counsel clients about their rights in the event of employee defections and about how best to protect their trade secrets and other proprietary information. We also represent separating employees in establishing their own businesses without violating their duties to their prior employers.

Representative Matters

Patent Litigation

We successfully represented the defendant in a multi-million dollar patent infringement litigation between two software companies. The plaintiffs originally asserted infringement of three patents. Two of the patents were found not infringed on summary judgment. The infringement and validity of the third patent were successfully tried to a jury in Delaware district court, with the jury returning a verdict of both non-infringement of the patent and invalidity of several of the asserted claims.

We acted as local counsel in high stakes patent litigation involving consumer electronics and smartphones in the Northern District of California.

Trademark Litigation

We represented a Napa Valley wine producer in a trademark and trade dress infringement case against a photographer and a Sonoma wine producer attempting to introduce wine products using the image and likeness of Marilyn Monroe in violation of the client’s trade dress rights in such images. We successfully obtained preliminary injunctive relief on behalf of the client in a case-of-first-impression decision by the federal district court holding that images of celebrities may constitute valid and protectable trademarks and trade dress.

We successfully defended manufacturers of high-end denim jeans against claims of trademark infringement asserted by a well-known denim jeans manufacturer.

We represented the plaintiff in an action in the Northern District of California between two competing manufacturers of signage products involving utility patents, design patents, and trade dress. We achieved a preliminary injunction based on trade dress infringement that lead to a favorable settlement of the entire matter.

Copyright Litigation

We represented a distributor in copyright case in United States District Court in the Southern District of New York.

We represented an international auction house that forced a blogger and various web sites to remove infringing photographs owned by the auction house.

We have advised multiple companies that own news and content aggregator apps with respect to copyright issues and claims asserted by content providers.

Trade Secret and Unfair Competition Litigation

We represented a large healthcare company in litigation in state court and private arbitration against a former executive. We used multiple restraining orders and injunctions to stop the executive from breaching his fiduciary duties and using company trade secrets and assets to establish a competing company.

We defended a public healthcare company in two arbitrations against a competitor alleging various claims related to misappropriation of confidential information and unfair competition.


 

Clients:
Kendall-Jackson Winery, Ltd., Ceres, LLC, Sunlight Foods, Inc., San Francisco Network (Karen Neuburger clothing and accessories), Scott Adams ("Dilbert"), Marissa Moss ("Amelia" childrens' books), Zombie, LLC (computer games), NetForce, Inc. (software development), Advanced Micro Devices (technology and trademark licensing), Simpson Manufacturing (technology licensing), Virtual Education Corp. (Internet software)