Julia Huston
Julia Huston, Partner in Foley Hoag LLP’s Intellectual Property Department and Chair of the firm’s Trademark, Copyright and Unfair Competition practice group, is well known for her high-profile victories in trademark, copyright and false advertising cases.
Julia’s practice includes litigation, counseling and strategy in the areas of trademarks, copyrights, trade secrets, Internet commerce, domain name piracy, false advertising, unfair competition, and patents. Julia has handled major trademark matters for the owners of famous trademarks in a variety of industries. She has successfully advocated for brand owners as diverse as a major university 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 and state courts, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, and in national and 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, Julia regularly counsels clients on developing long-term strategies for their IP portfolios. She has particular experience in the consumer products, electronics, software and Internet, entertainment and education segments. 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.
Prior to joining Foley Hoag, Julia was Chair of the Trademark Practice group at a major intellectual property boutique in Boston.
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 e-commerce, website advertising, software licensing, manufacture and distribution of consumer goods, publishing, professional services, 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, 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.
professional / civic involvement
- Greater Boston Legal Services, President
- Equal Justice Coalition of Massachusetts, Immediate Past-Chair
- Women's Bar Association of Massachusetts, Past-President
- Boston Bar Association, Amicus Committee Chair and former Councilor and Executive Committee Member
- Intellectual Property Owners Association, Trademark Law (U.S.) Committee, Vice-Chair
- International Trademark Association, Parallel Imports Committee, Member, and Model State Trademark Bill Subcommittee, Immediate Past-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
- New England Historic Genealogical Society, Former Councilor
- YWCA Boston, Former Director
SPEECHES AND CONFERENCES
- Moderator, “You Said What?!? Recognizing When Your Marketing has Crossed the Line,” Association of Corporate Counsel Annual Meeting, San Antonio, upcoming – October 26, 2010
- Moderator, “Use and Abuse of Trademarks on the Internet,” Intellectual Property Owners Association Annual Meeting, upcoming – 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, Third Annual “State of the Courts” address featuring The Honorable Margaret H. Marshall, The Honorable Cynthia J. Cohen, The Honorable James F. McHugh, and The Honorable Barbara J. Rouse, Boston Bar Association, April 18, 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
- Julia Huston & Kimberly J. Seluga, Fraud Standards Redefined in 'Bose' Trademark Case, Massachusetts Lawyers Weekly (September 14, 2009)
- Jonathan M. Gelchinsky, Julia Huston & Kathleen Kedrowski, Litigating False Advertising Claims, American Bar Association (Spring 2009)
- Julia Huston & Joel R. Leeman, 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)
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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)
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Managing and Financing Patent Litigation, ATLA Business Torts Section Newsletter (Association of Trial Lawyers of America, Summer 2005)