Areas of Practice
James' practice focuses on litigation and counseling for media, technology, and online businesses, including patent, trademark and copyright litigation, media law, privacy and data security, and business disputes.
Representation of client in patent disputes, including the following:
Represented an international computer hardware manufacturer in multiple patent litigation, defeating a motion for preliminary injunction, and successfully obtaining a stay of litigation pending reexamination and invalidation or amendment of most asserted claims.
Represented a Silicon Valley computer hardware manufacturer in patent matters, including evaluating and resolving patent infringement claims and counterclaims, negotiating cross-licenses with a major competitor, and addressing threatened claims of infringement by an inventor, resulting in the agreement of the inventor not to pursue litigation.
Represented a video game producer in resolving a patent infringement dispute by obtaining a broad, irrevocable license paid for by an indemnitor.
Represented a major beverage producer in settling patent infringement dispute prior to litigation, obtaining a license on favorable terms after providing patent invalidity analysis.
Copyright and Trademark Litigation
Representation of clients in copyright and trademark, particularly in cases involving online businesses and technologies, news media, cloud service providers, and software distribution. Representative cases include:
Harris v. San Jose Mercury News
Defended the San Jose Mercury News in copyright infringement action brought by photographer whose photograph was used in the Mercury News without permission. Obtained jury verdict in favor of the San Jose Mercury News on fair use grounds, after jury trial. The jury deliberated for less than forty minutes.
Religious Technology Center v. Netcom, et al.
Part of the team that represented Netcom in a seminal cases regarding copyright and the Internet, Religious Technology Center v. Netcom, 907 F. Supp. 1361 (N.D. Cal. 1995). The decision of United States District Court Judge Ronald Whyte in this case remains one of the principal cases governing potential liability of internet service providers for the distribution of content posted by users.
Perfect10, Inc. v. GUBA, LLC
Defended internet service that provides World Wide Web interface to Usenet content in copyright infringement action brought by purveyor of pornographic photographs. Brought in as substitute counsel, and obtained favorable settlement shortly after filing motion for summary judgment based on DMCA defenses.
Nguyen v. San Jose Mercury News
Defended the San Jose Mercury News in copyright infringement action against the Mercury News' Vietnamese-language publication, Viet Mercury. Obtained dismissal of related state law claims, and early favorable settlement.
Successfully pursued cybersquatting and trademark infringement claims on behalf of an international online entertainment client against the operators of infringing websites in Europe; case settled with assignment of trademarks and domain names to client after rulings in favor of client on various pre-trial motions.
Obtained consent judgment in trademark infringement and cybersquatting action against web hosting company that had developed multiple websites using client’s trademark.
Represented online file sharing services in defending copyright infringement actions arising from user-directed posting of allegedly infringing content.
Media and First Amendment Litigation
Representation of media clients in the litigation of numerous cases, including matters that have resulted in the following important First Amendment decisions:
Sipple v. Foundation for National Progress
Defended Mother Jones Magazine in a defamation action brought by a prominent political campaign consultant. Motion to strike the complaint pursuant to California’s anti-SLAPP statute was granted, the judgment was affirmed on appeal, and attorneys’ fees and costs were awarded to Mother Jones.
In re Willon
Represented television reporter and news director in a precedent-setting case regarding the application of the California Shield Law to investigations of alleged violations of court-imposed gag order. Judgment of contempt against the reporter and news director was reversed.
Montana v. San Jose Mercury News
Represented the San Jose Mercury News in a precedent-setting case establishing that a newspaper’s distribution of posters reproducing front pages prominently featuring a celebrity athlete was protected by the First Amendment and California law.
James v. San Jose Mercury News, Inc.
Represented the San Jose Mercury News in an important case regarding the scope of the protection for opinion and the application of the actual malice doctrine under California law. Summary judgment for the newspaper was affirmed on appeal.
Pursuing litigation under state and federal open records and open meetings laws on behalf of both media and individual clients. Cases that have resulted in published decisions include Sander v. State Bar of California, 58 Cal. 4th 300 (2013), Lissner v. U.S. Customs Service, 241 F. 3d 1220 (9th Cir. 2001), and San Jose Mercury News v. U.S. District Court, 187 F. 3d 1096 (9th Cir. 1999).
Other Representative Matters
Successfully defended Mother Jones Magazine in a defamation and intentional interference action, obtaining dismissal of all claims and an award of attorneys' fees and costs to the client.
Successfully defended the San Jose Mercury News and Santa Cruz Sentinel in multiple defamation actions, obtaining dismissal of the actions and awards of fees and costs to the client under the anti-SLAPP statute.
Successfully defended the Wikimedia Foundation, operator of Wikipedia, in obtaining dismissal of defamation and related claims.
Obtained dismissal of unfair competition and related claims against an online content provider and an award of attorneys' fees and costs to client. Judgment was affirmed on appeal, and the client was awarded fees and costs on appeal as well. Successfully obtained enforcement of resulting judgment for fees and costs.
Advice and Counseling
Privacy Compliance: Counseling media, retail, and technology clients on privacy issues, including: Advising and representing clients in preventing, investigating, and remedying data security breach incidents (including data security breach notification requirements), preparing and updating online terms of service and privacy policies; advising clients on privacy issues, such as compliance with government and private litigant demands for information; preparing privacy and legal compliance programs.
Copyright and Digital Millennium Copyright Act Compliance: Counseling clients on copyright and DMCA compliance, including: Preparing and advising an online content distribution client on the comprehensive restructuring of its operations to comply with the DMCA safe harbors; preparing or reviewing and revising DMCA compliance procedures and related provisions of online terms of service; reviewing and advising clients on content licensing, software licensing, advertising, and online service agreements.
Pre-publication and Pre-broadcast Clearance: Review and risk mitigation prior to publication or broadcast of news, non-fiction, and fiction, including defamation, privacy, and intellectual property rights concerns.
Intellectual Property Licensing: Patent, copyright, and trademark licensing and assignments, including the preparation, review, and negotiation of agreements with writers, artists, and independent content and software developers.
Trademark and Advertising Compliance: Counseling clients on trademark and advertising issues, including fair use, secondary liability for third party advertising, comparative advertising, and trademark licensing.
•Best Lawyer in America, Best Lawyers, 2008-2018
•Northern California Super Lawyers, San Francisco Magazine, 2007, 2010-2017
•Lawyer of the Year, Best Lawyers, 2015-2017
•Leading Media and Entertainment Lawyers, Chambers USA, 2006, 2008-2017
•Top Rated Lawyer in Intellectual Property Law, Martindale-Hubbell, 2014
•Top Rated Lawyer in Technology, American Lawyer Media and Martindale-Hubbell, 2013
•America's Leading Lawyers for Business, Chambers USA
•Recognized, First Amendment Litigation & Counseling, Legal 500, 2009
•James Madison Freedom of Information Award
•Top 10 Pro Bono Efforts of 2012
• First Amendment Access and Trade Secrets,” in Trade Secret Litigation and Protection in California, State Bar of California, updated 2014, with Guylyn Cummins and Jennifer Brockett
• No-Challenge Clauses in Patent Licenses, BNA Insights, August 2, 2013
• Video Games Law Dealt Fatal Blow, The Recorder, July 11, 2011
• The Law of Online Contracts, Media Law Resource Center Bulletin The Ins and Outs of Online Business, March 2011
• Copyright Owners Have The Burden Of Policing, The National Law Journal, August 16, 2010
• Enjoining the World: Does the Internet Make Prior Restraints Impossible, Or Are They Easier Than Ever? Media Law Resource Center Bulletin, June 2010
• FTC Behavioral Advertising Privacy Principles Extend Far Beyond Current Requirements, Media Law Resource Center Bulletin, May 2008
• The Copyright Act’s Preemption of Right of Publicity Claims, Communications Lawyer, July 2008
• Images of Fair Use: A Fair Use Jury Trial , Communications Lawyer, January 3, 2007
• MLRC 50-State Survey: Media Privacy and Related Law , Media Law Resource Center, 2005 (Contributor to California survey)
• Communications Decency Act: Libel Immunity Debate , ABA TTIPS Media, Privacy & Defamation Law Committee Newsletter, Summer 2005, with Alison Norris
• Potential Media Liability for Publishing False or Misleading Advertisements , ABA TTIPS Media, Privacy & Defamation Law Committee Newsletter, Summer 2004, with Chi-Chi Onyeagbako
• Single Publication Rule Governs Online Publications , ABA TTIPS Media, Privacy & Defamation Law Committee Newsletter, Summer 2003, with Danielle Van Wert
• Internet Privacy: A Tale of Two Cookies, ABA TTIPS Media, Privacy & Defamation Law Committee Newsletter , Winter 2002, with Lan Hang
• Potential Liability on the Internet, Santa Clara County Bar Association , 1995, with Edward P. Davis, Jr. and Judy Alexander
• Conflict in the Public Interest: Defamation and the Role of Content in the Wake of Dun & Bradstreet v. Greenmoss Builders, 31 S. Clara L. Rev. 997 (1991)
Eye on Privacy Blog Posts
• No Protection for Network Marketing Provider That Had Knowledge and Authority to Control Deceptive Conduct of Affiliates, October 14, 2016
Intellectual Property Law Blog Posts
• Two Recent Decisions Reframe the DMCA Discussion, October 7, 2008
Social Media Law Blog Posts
• California Enacts New Data Privacy Laws, October 18, 2013
Video Game Law Blog Posts
• Georgia’s Limited Tax Credits for Interactive Entertainment Producers, April 21, 2014
• First Amendment Fire Power: United States Supreme Court Applies Strict Scrutiny, Rejects Ban on Violent Video Games, June 27, 2011
•Trade Secret Litigation and Protection in California
Intellectual Property Section of the State Bar of California
•Future of Privacy Forum, De-Identification Practice and Policy: Case Studies in Data De-Identification and Privacy, Ernst & Young, San Francisco, California, April 2016.
•State Bar of California, Public Law Section: 2014 California Public Records and Open Meetings Conference, San Francisco, June 4, 2014
•Federal Reserve’s Information Technology Law Work Group Training: Copyright and Fair Use, San Francisco, October 8, 2013
•Digital Law Forum - Storm Clouds: Preventing and Managing Security Breaches, Kellogg Auditorium at Silicon Valley Bank, January 30, 2013
•Media Law Resource Center, Legal Frontiers in Digital Media 2012 - A conference on emerging legal issues surrounding digital publishing and content distribution, Stanford University, May 21-22, 2012 (social responsibility on the Internet)
•Consulate General of Canada: Roundtable on Proposed Copyright Reform Legislation, San Francisco, February 17, 2012
•Media Law Resource Center, London Conference on International Developments in Libel, Privacy, Newsgathering and New Media IP Law 2011, London, England, September 19-20, 2011 (copyright, privacy, and defamation issues relating to mobile applications)
•Digital Law Forum - Online Business Boot-Up, Kellogg Auditorium at Silicon Valley Bank, July 13, 2011
•American Bar Association, Forum on Communications Law, 15th Annual Conference: Are Prior Restraints Alive-From Gen. Noriega (20 years later) to Holden Caulfield and Wikileaks, Key Largo, Florida, January 28 - 30, 2010
•Media Law Resource Center, London Conference on International Developments in Libel, Privacy, Newsgathering, and New Media Law 2009, London, England, October 1-2, 2009 (copyright issues relating to news aggregation)
•Media Law Resource Center, Legal Frontiers in Digital Media 2009 - A conference on emerging legal issues surrounding digital publishing and content distribution, Stanford University, May 14-15, 2009
•Digital Law Forum - A Closer Look at Viacom v. YouTube: Epic Struggle for Free Expression, East Palo Alto, November 6, 2008
•First Amendment Coalition Annual Assembly: Workshop-Getting the Most Out of Court and County Files, University of California Berkeley, October 17-18, 2008
•Practising Law Institute, Ninth Annual Institute of Privacy & Security Law, San Francisco, June 2-3, 2008 (Privacy issues in dealing with civil discovery requests and subpoenas)
•Media Law Resource Center, Legal Frontiers in Digital Media 2008 - A conference on the emerging legal issues surrounding digital publishing and content distribution, Stanford University, May 15, 2008
•First Amendment Coalition Annual Assembly: Privacy and Public Records, University of Southern California, Annenberg School for Communication, October 26, 2007
•American Bar Association, Intellectual Property Litigation Committee: Trying A Copyright Fair Use Case, ABA Annual Conference, San Francisco, August 10, 2007
•National Association of Hispanic Journalists, 2007 Annual Conference: Don’t Wait for the Lawsuit-Blogs, Copyright, and Ethics in the Digital Age, San Jose, June 15, 2007
•First Amendment Coalition Annual Assembly: Access to Meetings, University of California Berkeley, September 29-30, 2006
•California Superior Court, Santa Clara County: Presentation to Judge of the Santa Clara Superior Court on Public Access to Court Records, San Jose, September, 2006
•First Amendment Coalition Annual Assembly: Fundamentals of California Access Law, California State University, Fullerton, October 14-15, 2005
•San Francisco Recorder, New Media Law Roundtable, San Francisco, 2002 (Legal challenges for online publishers and service providers, including copyright, DMCA, defamation, and privacy issues)
•Employees v. Contractors - It's No Game!
Cheats for navigating employment and IP issues in the videogame business
June 17, 2015
•Member, Board of Directors and Executive Committee of the California First Amendment Coalition
•Former chair and vice-chair, current member of Media, Privacy, and Defamation Law Committee of the Tort Trial and Insurance Practice Section of the American Bar Association
•Member, ABA Forum on Communications Law and the Media Law Resource Center