Jenner & Block

 

Representative cases over the course of his career include:

Copyright/Idea Submission

  • Kaffaga v. Steinbeck et. al. (C.D. Cal., 9th Cir. and U.S. Supreme Court): As trial counsel with NY partner Susan Kohlmann, won a federal jury verdict of $13.15 million in compensatory and punitive damages after a week-long trial over the rights to writer John Steinbeck’s works.  The jury’s liability determinations (affirmed by the Ninth Circuit), confirm that the copyrights are controlled by the Estate of Elaine Steinbeck, the author’s late third wife, and clear the way for developing motion pictures based on East of Eden and The Grapes of Wrath.  The Supreme Court denied review in 2020.
  • Tanksley v. Daniels (E.D. Pa. and 3rd Cir.):  Secured a precedential victory when the US Court of Appeals for the Third Circuit affirmed a Pennsylvania federal court’s dismissal of a copyright infringement lawsuit against Fox and other parties arising from Fox’s hit television show Empire.  The published decision clarifies the law in the Third Circuit for dismissing copyright infringement cases at the pleading stage.  
  • Brighter Sky Productions v. Marriott International  (N.D. Ill.):  Defending a number of individual and corporate defendants in a copyright infringement lawsuit arising from the performance of the NBCUniversal stage musical October Sky in 2015 at the Marriott Lincolnshire Theatre near Chicago.
  • WNET v. Aereo (S.D.N.Y., 2nd Cir. and U.S. Supreme Court): Represented a consortium of broadcast television companies (including Fox Television Stations, PBS, Univision, and WNET) in a copyright infringement case against Aereo, Inc., a company that captured over-the-air television programming and retransmitted it over the Internet without the authority of the copyright owners.  The Supreme Court's ruling in favor of our clients established an important precedent for broadcasters and copyright owners.
  • Fox Broadcasting v. DISH Network (C.D. Cal. and 9th Cir.):  Represented several Fox entities in a copyright infringement and breach of contract action against DISH Network, relating to its “PrimeTime Anytime” and “AutoHop” services, which made unauthorized copies of the entire primetime broadcast schedule for all four major networks every night and then provided the programs to subscribers “on demand” in a commercial-free format.  Fox is also sued over the “DISH Anywhere” service, which streamed Fox’s program over the Internet without authorization.
  • Defended NBCUniversal and numerous foreign distributors in Sheldon Abend Revocable Trust v. NBC Universal (S.D.N.Y., C.D. Cal. and 9th Cir.), in obtaining dismissals of two lawsuits involving claims of copyright infringement and breach of license agreements over the distribution of the motion picture Disturbia, based on alleged similarities between the film and a short story owned by the plaintiff on which the film Rear Window was based.
  • Represented as co-counsel a nationwide class of songwriters and music publishers in MGM Studios, Inc. v. Grokster, Ltd. (C.D. Cal., 9th Cir. and U.S. Supreme Court), a lawsuit by copyright owners in the music and motion picture industries asserting claims for contributory and vicarious copyright infringement against peer-to-peer file sharing services Grokster, Kazaa and Streamcast.  In ruling for the plaintiffs, a unanimous Supreme Court adopted the “inducement” theory of copyright liability, holding that “one who distributes a device with the object of promoting its use to infringe copyright” is liable for the resulting infringement.
  • Milton H. Greene Archives v. BPI Communications (C.D. Cal. and 9th Cir.): Defended publisher of a biography of Marilyn Monroe against copyright infringement claims arising from the use of publicity photos distributed in the 1950s to promote the films Bus Stop and The Prince and the Showgirl. Defendants obtained summary judgment on the grounds that all of the photographs in question were published without copyright notices in advertisements and promotional materials and thus fell into the public domain, and subsequently obtained an award of more than $750,000 in attorneys’ fees.  Both decisions were affirmed on appeal by the Ninth Circuit.
  • Brower v. E! Entertainment Television (Los Angeles Sup. Ct. and Cal. Ct. App.): Defended a cable network and various producers in an idea submission lawsuit arising from the television program Fashion Emergency.  A two-week jury trial resulted in a directed verdict for the defendants, which was affirmed on appeal.

Trademark/Right of Publicity/False Advertising/Trade Secrets

  • Warner Bros. Entm’t v. Random Tuesday, Inc. (C.D. Cal.): Representing motion picture and television studio in a lawsuit for trademark infringement, copyright infringement, and trademark dilution against a business operating “virtual running clubs” that make unauthorized uses of Warner Bros’ Harry Potter and Gilmore Girls trademarks and copyrighted images in their business names, websites, marketing materials and merchandise sales.  
  • Move, Inc. v. Zillow, Inc.:  Represented News Corp subsidiary Move, Inc., as well as the National Association of Realtors and multiple subsidiary companies in a lawsuit against online real estate portal Zillow and two of its senior executives.  The plaintiffs, who own and operate the realtor.com website, brought claims for trade secret misappropriation, breach of contract, and breach of fiduciary duty, among others, in Washington state court.  The allegations focused on Zillow’s $3.5 billion acquisition of Trulia, including the misappropriation of trade secrets related to a new product strategy and the destruction of evidence.  The case ended with a $130M settlement on the first day of trial in 2016.
  • Defended Universal Studios and two of its senior executives in a lawsuit brought by author Homer Hickam in Hickam v. Universal Pictures (Los Angeles Sup. Ct. and Cal. Ct. App.), in which he asserted right of publicity, contract and fraud claims based on Universal’s adaptation of material from Hickam’s memoir Rocket Boys and its own 1999 motion picture October Sky in a live stage musical also called October Sky.  After Universal obtained dismissal of most of Hickam’s claims on a California anti-SLAPP motion and prevented an injunction against the stage musical, the case resolved on appeal.
  • Represented leading sports media licensing firms in Marshall v. ESPN  (M.D. Tenn. and 6th Cir.), a putative class action brought by former NCAA college athletes alleging antitrust and right of publicity violations.  The defendants successfully obtained a dismissal of all claims, which was affirmed by the Court of Appeals.
  • Defended Warner Bros. in  Fortres Grand Corp. v. Warner Bros.  Entm’t  (N.D. Ind. and 7th Cir.) in obtaining dismissal, affirmed on appeal, of a trademark infringement action based on the use of the phrase “clean slate” to describe a fictional software program depicted in the motion picture The Dark Knight Rises and in related social media promotions.
  • Represented Metro-Goldwyn-Mayer Studios and Orion Pictures in Robocopp, LLC v. Orion Pictures (N.D. Cal.), in prosecuting counterclaims for trademark infringement and dilution and false advertising against a company that marketed a personal security device under the brand name ROBOCOPP.  The matter resolved with the entry of a permanent injunction against Robocopp, LLC.
  • Represented Warner Bros., New Line, MGM and The Saul Zaentz Co. in  Warner Bros. Entertainment v. Global Asylum (C.D. Cal. and 9th Cir.) in prosecuting trademark and false advertising claims and obtaining a permanent injunction against a company that produced and sought to distribute a low-budget "mockbuster" movie originally titled Age of the Hobbits at the same time as the theatrical release of the major studio film The Hobbit.
  • Defended KO Beverages in Hansen Beverage Co. v. KO Beverages LLC (C.D. Cal.), a trademark infringement and false advertising lawsuit based on allegations that the logo and packaging for defendant’s “Knockout” energy drinks infringed the trademarks and trade dress of “Monster” energy drinks.
  • Defended hospital group in Prime Healthcare Anaheim v. AHMC Anaheim Regional Medical Center  (Orange County Sup. Ct.), a suit for trade name infringement between rival hospital owners.  A week-long bench trial resulted in a defense verdict for our client AHMC.
  • Represented the composer and recording artist Prince in a variety of trademark, copyright and right of publicity disputes with merchandise companies and distributors of bootleg recordings.

Media and First Amendment Law

  • Defended Warner Bros., NBCUniversal, and various individual producers and talent in Peltier v. Mathis  (Los Angeles Sup. Ct. and Cal. Ct. App.), a lawsuit brought by a disgruntled participant in the Judge Mathis television program.  The plaintiff asserted claims for defamation, invasion of privacy, fraud, breach of contract, and infliction of emotional distress arising on his unsuccessful attempt to have a small claims dispute arbitrated on the program.  All claims were dismissed at the pleading stage based on the litigation privilege, the opinion doctrine, arbitrator immunity, and the releases and consents the plaintiff executed at the time he appeared on the show.
  • Defended advertising agency Saatchi & Saatchi in a trade libel lawsuit filed by a company that provided product placement and brand integration services to Saatchi client Toyota Motor Sales for many years.  In Brand Arc LLC v. Saatchi & Saatchi North America (Los Angeles Sup. Ct.), Saatchi twice moved to dismiss the claims based on the opinion doctrine, the of-and-concerning doctrine, and the common interest privilege, with the court granting the motion each time and narrowing the number of statements that could support the trade libel and intentional interference claims.  Ultimately, with only one alleged statement left as the basis for its claims, the plaintiff dismissed the suit.
  • Defended NBCUniversal in  Diaz v. NBC Universal  (S.D.N.Y. and 2nd Cir.), a putative libel class action brought by a group of former drug enforcement officers who claimed they were defamed by the motion picture American Gangster. The district court's dismissal of the entire action was affirmed on appeal by the Second Circuit.

Mr. Thomas has an active pro bono practice. Representative cases include:

  • Represented, in conjunction with the ACLU of Southern California, a class of tenants and landlords in Victor Valley Family Resource Center v. City of Hesperia (C.D. Cal.), a Section 1983 class action raising due process and equal protection challenges to two city ordinances aimed at excluding individuals on criminal probation from the local rental housing market.  After plaintiffs obtained a preliminary injunction and completed discovery, the City agreed to repeal the challenged ordinances, rescind all fines and penalties, and pay an attorneys’ fees settlement.
  • Represented a Southern California artist in Jimenez v. County of San Bernardino (C.D. Cal.), a First Amendment challenge to government censorship of the artist’s work in connection with a public “Hispanic Heritage Month” exhibition in a government forum.  Faced with a complaint and a TRO application, the County agreed to restore the artist’s paintings and extend the exhibition.
  • Represented, in conjunction with the Western Center on Law and Poverty and Bay Area Legal Aid, a family of tenants who were evicted from a foreclosed property, in Nativi v. Deutschebank National Trust Co. (Santa Clara County Sup Ct. and Cal. Ct. App.).  The Court of Appeal’s 2015 decision established important national precedents protecting the rights of tenants in foreclosed properties, including that a bona fide lease survives foreclosure and that lease rights may be enforced by tenants through affirmative litigation.