Foley Hoag LLP

Trademark Enforcement and Disputes

We represented a motorcycle manufacturer in its efforts to register a trademark that was threatened by a third party’s claimed trademark rights. We developed a legal strategy that included filing proceedings with the Trademark Trial and Appeal Board to challenge the third party’s alleged rights. As a result of our successful efforts, our client was able to register and use its desired mark.

We assisted a well-known manufacturer of CAD design software in a multinational trademark dispute with a competing software provider with respect to use of certain terms commonly used in the industry. We handled a large number of trademark opposition and cancellation proceedings filed by our client worldwide.

We represented a major shoe manufacturer in number of trademark infringement matters, including actions against competing shoe companies for infringement of our client’s famous marks. We resolved these disputes on terms favorable to our client.

Trademark Prosecution and Portfolio Development

We advised a multinational medical diagnostics manufacturer in its selection and clearance of a new house mark and corporate name. We conducted trademark searches in a large number of jurisdictions worldwide and helped the client obtain its desired trademark rights by purchasing a potentially blocking mark in a foreign country and by filing cancellation proceedings in the US.

We developed a substantial trademark protection program for a client that owned a world famous trademark in order to protect the mark from becoming generic, and thus losing its status as a trademark. The program used multiple communication channels in an effort to ensure that the client’s mark was not viewed as the common name of its product.

We advised an international consulting firm on prosecution and defense of its trademark rights worldwide and maintained its portfolio of over 100 trademark applications and registrations in jurisdictions throughout the world. We advised it on related trademark issues, policed infringements, and opposed problematic third party trademarks.

Trademark Transactions

We advised a major automobile manufacturer on protection and licensing of its famous trademarks, including advising on and negotiating licenses to authorized dealers and other affiliates.

We represented a shoe manufacturer and distributor in its acquisition of licenses to use a number of famous fashion trademarks on its shoe lines.

We handled the trademark aspects of a number of significant corporate business transactions, including the conduct of due diligence on trademark portfolios, review and negotiation of transactional documents relating to the purchase, sale and licensing of trademarks, and the recording of trademark assignments.

Copyright Enforcement and Disputes

We represented a major entertainment conglomerate in defense of copyright litigation by the author of certain works of fiction. The plaintiff claimed that a popular television show copied elements of her works. We moved to dismiss the plaintiff’s claims; a decision is pending.

We represented a major motion picture studio and its affiliated companies in defense of copyright infringement litigation brought by the owners of certain rights in a song, arising from use of an excerpt from the song in the motion picture. We were able to resolve the dispute quickly and favorably to our client.

We helped a large number of clients faced with the publication of infringing websites and content through the successful issuance of “take-down” notices under the Digital Millennium Copyright Act. In one instance, our client’s entire website had been copied and re-published on the Internet with just the names of our client and its personnel changed. We quickly issued DMCA take-down notices and succeeded in having the offending content removed in fewer than 24 hours.

Copyright Advice and Counseling

We created a comprehensive copyright policy for a university client, covering such matters as compliance with the TEACH Act, appropriate uses of copyrighted materials in teaching, and use of copyrighted materials in university libraries.

We advised a European airline on copyright issues arising from the airline’s transition to a new web booking engine. The airline wished to ensure that its new proprietary booking engine maintained the same, customer-friendly, look and feel, without infringing any copyrights held by the owner of the former booking engine.

We advised many computer software and hardware developers and manufacturers on copyright and trade secret issues relating to the development of their businesses, including appropriate use of non-disclosure agreements, ownership of copyrights and trade secrets in developed software, licenses to third party proprietary, open source software used in client products, and licensing of client products through end user license agreements.

Domain Name Sales and Acquisitions

We assisted an industry-leading company in connection with the potential acquisition of an organization that owned thousands of domain names. In order to evaluate risks and aid in the valuation of the target company and its assets, we conducted extensive due diligence, including evaluating the target company's domain name acquisition practices and risk management procedures.

We represented a sophisticated buyer in the negotiation of a long-term lease and option to purchase of a high-profile, top tier .com domain name. The agreement was structured with a mix of consideration, including cash and stock.

We represented a client in the negotiation of an agreement for the auction of a domain name. The agreement involved three parties, each of whom were entitled to some consideration from a successful sale of the domain name. The name was ultimately sold at auction for a seven-figure sum.

Internet Enforcement Issues

We assisted a leading medical device manufacturer in stopping leaks of secret clinical trial information on Internet message boards. Through use of various litigation strategies, we determined the identity of the persons leaking the information. This allowed us to resolve the matter and prevent further postings by the offenders.

We represented a famous, multinational manufacturer to obtain domain names that had been used to infringe the client’s trademark rights. Chinese manufacturers had registered domain names that were variations of our client’s famous mark. Using UDRP (Uniform Domain Name Dispute Resolution Policy) proceedings, we obtained the transfer to our client of the domain names.

We advised the operator of an Internet business whose business model relied on the aggregation of publicly available data on compliance with the laws that may affect the automated gathering of data, such as the laws relating to copyright, trespass to chattels, and the Computer Fraud and Abuse Act. Our advice helped the client develop its business while avoiding the violation of any third party rights.

Customs Enforcement Issues

We represented a famous European automobile company in matters involving counterfeit goods luxury goods and have served as the company's designated contact with US Customs for their luxury goods trademark registrations recorded with U.S. Customs. Our collaboration with Customs officials and use of various strategies has resulted in successful identification, seizure and destruction of counterfeit goods.

We advised a well-known brand owner on global trademark protection and enforcement matters, including, among other things, coordinating investigations and enforcement actions in the US and overseas. For example, investigations we coordinated in China and Taiwan identified entities engaged in large-scale trademark infringement and counterfeiting activities and allowed the brand owner to target those sources of supply to the US.

We assisted a globally-recognized brand owner with development of in-house expertise, protocols and strategies for the client's assessment and handling of U.S. Customs inquiries and notices, and continued to provide supporting advice thereafter.

Trade Secrets

We helped a leading biotechnology company prevent a key executive from defecting to a competitor in a situation that entailed a high risk of leakage of trade secrets. The executive had access to confidential information that related to business strategies for dealing with a particular competitor; shortly afterwards, the executive resigned and began working for that competitor. We showed that the executive had been involved in improper downloading of our client’s trade secret material. We formulated a legal strategy that caused the competitor company to terminate our client’s former executive immediately.

We represented an investment management company that faced a theft of trade secrets by former employees trying to start a rival firm. We recovered computer technology from the departed employees and conducted forensic analysis on it. This allowed us to obtain significant evidence of theft of trade secrets, breach of employee agreements, and other wrongs, and to reach a quick and highly advantageous resolution of the dispute on behalf of our client.

We represented a manufacturer of rubber pressure seals in an action for misappropriation of trade secrets and breach of contract against a departed employee who was using the client’s confidential information to establish competing business operations. Due to evidence suggesting that the employee had destroyed evidence relating to the case, we obtained a sanctions order against the departed employee that led to a highly favorable resolution of the dispute.

Commercial Disparagement, Defamation and False Advertising

We assisted a medical device manufacturer in stopping public postings of company trade secrets relating to the results and progress of its clinical trials. By filing a John Doe action, issuing a number of subpoenas to Internet service providers and message board providers, and conducting additional investigative work, we determined the identity of the persons leaking the information. This allowed us to resolve the dispute quickly and prevent further postings by the offenders.

Julia Huston, the head of the firm’s Trademark and Copyright practice group, obtained a $20.7 million jury verdict for a client in an action for false advertising, commercial disparagement and interference with contractual relations. The defendant company had made false statements about the quality of the plaintiff’s products that caused substantial harm to its business. In addition to entering a multi-million dollar judgment, the court issued a preliminary and permanent injunction to prevent the defendant from continuing to publish the false information.

As defamation counsel for a major national news magazine, we conducted comprehensive reviews of each edition of the magazine in order to ensure that the publisher is protected from defamation liability.