Julia Huston, Partner in Foley Hoag LLP’s Intellectual Property and Litigation Departments, Chair of the firm’s Trademark, Copyright and Unfair Competition practice group, and Co-Chair of the Advertising and Marketing practice group, is well known for achieving outstanding results for clients in high-stakes intellectual property cases.
Julia’s practice includes litigation, counseling and strategy in the areas of trademarks, copyrights, patents, trade secrets, Internet commerce, domain name piracy, false advertising and unfair competition. Her clients, who have included the owners of famous trademarks in a variety of industries, rely on Julia’s experience and industry knowledge to handle their major trademark matters. She has successfully advocated for brand owners as diverse as a global life sciences company to a popular Boston tourist attraction. Julia has obtained several multimillion-dollar IP judgments and settlements, including a $20.7 million verdict in a false advertising case. She regularly advocates on behalf of clients in federal court, U.S. Customs and Border Protection, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, and in international domain name dispute resolution proceedings.
In the context of corporate transactions, Julia leads due diligence teams that thoroughly investigate, and assist clients in assessing the value of, intellectual property being acquired. Julia also provides comprehensive advice concerning protection of intellectual property rights in licensing and assignment transactions. Julia’s experience extends to the commercialization of personal names and rights of publicity, as well as more traditional trademarks and copyrights.
In addition to litigation and transactional work, clients regularly rely on Julia’s counsel in developing long-term strategies for their IP portfolios. Julia regularly counsels clients in the fields of pharmaceutical products, health care, consumer products, electronics, software and hardware, insurance, financial services, energy, education, and entertainment. Julia’s extensive experience in litigation and dispute resolution enables her to build her clients’ IP portfolios strategically with an eye toward enforcement and defense for maximum advantage in the marketplace.
Julia is an editor and regular contributor to Foley Hoag’s Trademark & Copyright Law blog, for which she writes on current legal developments and offers practical insight on how companies and individuals can best protect their brands, domains and copyrights.
A frequent author and lecturer on intellectual property topics, Julia’s articles have appeared in Intellectual Property Today, the Trademark Reporter, and other prominent publications. She has publicly commented on high-profile intellectual property cases for Channel 4 WBZ-TV, Channel 7 WHDH, Fox 25 News and major metropolitan newspapers.
Julia holds leadership positions in several civic, professional and charitable organizations. She is particularly active in the Boston Bar Association and the International Trademark Association.
Bars and Court Admissions
- Massachusetts
- U.S. Court of Appeals, Federal Circuit
- U.S. Court of Appeals, First Circuit
- U.S. District Court for the District of Massachusetts
Representative Experience
The following is a brief summary of Julia's experience and accomplishments:
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Represented clients in trademark and copyright disputes relating to a wide spectrum of issues, including drugs and biologics, e-commerce, website advertising, software licensing, manufacture and distribution of consumer goods, publishing, professional services and social networking, alcoholic beverages, and entertainment services.
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Represented national companies and institutions in an array of technology-based disputes involving such products as computer software, chemical fiber fusion processes, aerodynamics in small appliances, extruded plastics, athletic shoes, and car safety devices.
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Played a leading role in numerous jury trials in patent, trademark and copyright cases. Won a $20.7 million verdict in a case involving the false advertising and commercial disparagement of musical instruments. Invalidated a patent for speech recognition software, thereby defeating a multi-million dollar claim for damages.
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Successfully represented clients at mediations in patent, trademark, and copyright cases, including cases in which film rights and patent rights in mechanical devices were at stake.
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Secured clients’ trademark rights through consistently aggressive advocacy, resulting in favorable settlements in hard-fought cases involving famous marks in a wide variety of industries, including banking, hospitality, internet search engine, and consumer products.
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Counseled clients with respect to all aspects of trademark prosecution, enforcement, defense and licensing. Addressed wide range of trademark issues before the Patent and Trademark Office and Trademark Trial and Appeal Board, including likelihood of confusion, descriptiveness, fame and mutilation.
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Counseled clients with respect to copyright protection for works as diverse as cartoon characters, musical recordings, photographs, paintings, religious texts, films and computer software. Successfully argued appeals of the U.S. Copyright Office’s refusal to register business logos and sculptural works.
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Testified as expert witness in federal and state court proceedings regarding trademark infringement, trademark assignments and licenses, and intellectual property holding companies.
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Completed mediation training and joined INTA Panel of Neutrals as a mediator in trademark cases.
professional / civic involvement
- Boston Bar Association, Treasurer and Council Member
- International Trademark Association, Chair of North American Subcommittee of Parallel Imports Committee and Member of Panel of Neutrals
- Intellectual Property Owners Association, Trademark Law (U.S.) Committee, Member and Past Vice-Chair
- Sponsor of Model State Trademark Bill in Massachusetts, which was signed into law in August 2006, on behalf of the International Trademark Association and the Boston Bar Association
- Greater Boston Legal Services, Immediate Past-President
- Equal Justice Coalition of Massachusetts, Immediate Past-Chair
- Women's Bar Association of Massachusetts, Past-President
- New England Historic Genealogical Society, Former Councilor
- YWCA Boston, Former Director
SPEECHES AND CONFERENCES
- Moderator, “Working With U.S. Customs to Address Parallel Imports," Table Topic Discussion at the International Trademark Association Annual Meeting, Washington, D.C., May 9, 2012 (upcoming)
- Moderator, "gTLDs: Status, Process and How is It Working?," International Trademark Association Roundtable, Boston, April 4, 2012
- Panelist, “Intellectual Property Year in Review," Intellectual Property Section of the Boston Bar Association, January 18, 2012
- Moderator, Association of Corporate Counsel (ACC) webinar, “The Domain Name Deluge: What In-House Counsel Need to Know About ICANNs New gTLD Program,” December 12, 2011
- Moderator, “Strategies for Conducting a Successful Trademark Audit," Table Topic Discussion at the International Trademark Association Annual Meeting, San Francisco, May 18, 2011
- Panelist, "The Trademark Trial and Appeal Board Comes to Boston," Boston Patent Law Association, April 29, 2011
- Moderator, “You Said What?!? Recognizing When Your Marketing has Crossed the Line,” Association of Corporate Counsel Annual Meeting, San Antonio, October 26, 2010
- Moderator, “Use and Abuse of Trademarks on the Internet,” Intellectual Property Owners Association Annual Meeting, Atlanta, September 13, 2010
- Panelist, "Intellectual Property Year in Review," Intellectual Property Section of the Boston Bar Association, January 13, 2010
- Panelist, "Brand Theft: Where Has My Goodwill Gone," American Bar Association Section of Litigation Annual Conference, Atlanta, April 30, 2009
- Panelist, "Life is Unfair but Competition Shouldn't Be: Red Flags, Fouls, and Other Dangers in a Competitive World," American Bar Association Committee on Corporate Counsel, Orlando, February 13, 2009
- Panelist, "Making the Federal Case: Winning Strategies for Trying a Civil Case to a Jury," Boston Bar Association, September 24, 2008
- Panelist, “The Trademark Trial and Appeal Board Comes to Boston," Boston Patent Law Association, October 26, 2007
- Moderator, “False Advertising in the United States: Recent Developments," Table Topic Discussion at the International Trademark Association annual meeting, Chicago, April 29, 2007
- Presenter, "Women in the Courtroom: Addressing the Challenges Facing Women as Litigators," Suffolk University Law School, March 15, 2007
- Presenter, “Trademark Year in Review 2006: Proposed TTAB Rules Changes and Legislative Developments,” Boston Patent Law Association, October 26, 2006
- Chair, Annual Intellectual Property Conference, Massachusetts Continuing Legal Education, June 7, 2006
- Presenter, “Trial Presentation Strategies in False Advertising Cases,” American Intellectual Property Law Association spring meeting, Chicago, May 4, 2006
- Moderator, “U.S. Trademark Litigation: Developments and Trends,” Table Topic Discussion at the International Trademark Association Annual Meeting, San Diego, May 18, 2005
- Presenter, “Recent Developments in Trademark Law,” Intellectual Property Year in Review, Boston Bar Association, January 20, 2005
publications
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Trademark Toolkit: Enforcement and Reputation, World Trademark Review (February/March 2012) (co-contributor with Anthony Rufo)
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Case Study: Starbucks v. Wolfe's, IP Law360 (January 13, 2012)
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Court Orders Identity of BitTorrent Users to Be Revealed in Copyright Case, IP Frontline, IP & Technology Magazine (November 9, 2011)
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The Rundown On Reebok's False Ad Settlement, Privacy & Consumer Protection Law360 (October 12, 2011)
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Liability for Commercial Speech: A Guide to False Advertising, Commercial Disparagement, and Related Claims, Association of Corporate Counsel (Fall 2010)
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Fraud Standards Redefined in 'Bose' Trademark Case, Massachusetts Lawyers Weekly (September 14, 2009) (with Kimberly J. Seluga)
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Litigating False Advertising Claims, American Bar Association (Spring 2009) (with Jonathan M. Gelchinsky & Kathleen Kedrowski)
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What Can I Say? Leeway and Legal Limits in Commercial Speech: A Primer on Defamation, Commercial Disparagement and False Advertising, American Bar Association (Spring 2009) (with Joel R. Leeman)
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Amended Model State Trademark Bill Incorporates Dilution Standards, International Trademark Association Bulletin (October 15, 2007)
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Year of the Trademark: Significant Trademark Legislation Enacted in 2006, Boston Bar Journal (January/February 2007)
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Change to Trademark Laws Will Benefit Bay State Cos., Mass High Tech (September 1, 2006)
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Patent Reform Provisions Hold Weighty Changes For Tech Cos., Mass High Tech (October 10, 2005)