Trademark, Advertising and Unfair Competition Practice

 

  • Hetronic International v. Hetronic Germany et al .
    A Jenner & Block trial team secured a $114 million jury verdict in the Western District of Oklahoma on March 2, 2020, after a three-week trial in a case involving the product names and trade dress of industrial radio remote controls. The damages award included $90 million in disgorgement of profit/ unjust enrichment damages for trademark and trade dress infringement – one of the largest disgorgement awards under the Lanham Act. The court later granted a worldwide injunction against the defendants, prohibiting them from selling infringing products, requiring the surrender of all infringing products and related advertising material, and requiring them to return Hetronic’s confidential information.
  • Diageo North America, Inc. v. Deutsch Family Wine & Spirits
    Representing Diageo North America, Inc., the world’s largest spirits company, in a lawsuit accusing defendants of infringing the trade dress of Diageo’s popular Bulleit bourbon whiskey bottle.
  • Ak Ee M Daniels et al . v. FanDuel Inc. Et Al .
    Secured a victory in the Indiana Supreme Court for client FanDuel in a closely watched putative class action accusing daily fantasy sports operators of profiting off the unauthorized use of the names and likenesses of former NCAA athletes. The high-profile case addressed questions about the scope of the “newsworthy” exception to Indiana’s right of publicity law and presented huge stakes not only for fantasy sports businesses, but also for the burgeoning sports betting industry.
  • ArIsta Records v. Vita Tk Ach et al .
    Obtained ex parte domain name seizure order, TRO, and preliminary injunction against counterfeit online music service. In an ancillary proceeding, the firm secured a significant ruling from the court holding that the preliminary injunction order applied to a third party Internet intermediary that provided DNS and web optimization services to the enjoined counterfeit service.
  • Fortr Es Grand Corp. v. Warner Bros. Entertainment
    Secured a victory for Warner Bros. Entertainment when the court granted a motion to dismiss a trademark infringement complaint related to the blockbuster movie The Dark Knight Rises.
  • Mechanical Plastics Corp. v. W.W. Gr Ainger , Inc.
    Successfully defended W.W. Grainger against trademark trade dress, false advertising, and copyright infringement claims filed by Mechanical Plastics Corp, which had accused Grainger of infringing its rights by incorporating certain trademarks, text, and copyrighted images in Grainger’s well-known hardware catalog.
  • The S. Hek E Mian Group v. The Related Companies, L .P
    Represented Related and Hudson Yards in a suit over use of the phrase “The Next Great Neighborhood,” defeating a motion for preliminary injunction on the grounds of fair use and failure to show likelihood of confusion resulting in voluntary dismissal of the lawsuit.
  • Viacom International Inc. v. Baca Et Al .
    Prevailed on behalf of Viacom in an infringement suit against the creator of a live-action show that improperly featured characters, costumes, plot lines, and catchphrases from the show Teenage Mutant Ninja Turtles.
  • MGFB Properties v. Viacom Inc.
  • Representing Viacom and 495 Productions in action alleging trademark infringement and unfair competition in connection with Viacom’s “Floribama Shore” TV show.
  • Academy of Motion Pictures Arts and Sciences
    Handling all IP and trademark enforcement work on behalf of Academy of Motion Pictures Arts and Sciences for OSCARS.
  • Uber Inc. v. Uber Technologies, Inc.
    Representing Uber Technologies, Inc. in defense of claim for trademark infringement and reverse confusion by a New York graphic designer.
  • Consor Zio Del Prosciutto Di Parma
    Advising Consorzio del Prosciutto di Parma in all US trademark matters, including the protection and enforcement of the Prosciutto di Parma and Parma Ham marks.
  • Towns Quar E Media Inc. v. Groupon Inc.
    Defended Groupon against claim that Groupon infringed the alleged mark “seize the deal” in advertising and promotions. After appearing in the case, we helped Groupon to defeat a baseless motion for sanctions, secured the dismissal of a related trade dress claim, presented survey and damages expert reports, and ultimately secured a favorable settlement.
  • Hansen Beverage Co. v. Ko Beverages LLC
    Defended KO Beverages in 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.
  • Warner Bros. Entm’t v. Random Tuesday, Inc.
    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.
  • ROBOCOPP, LLC v. Orion Pictures
    Represented Metro-Goldwyn-Mayer Studios and Orion Pictures 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.
  • Prime Healthcare Anaheim v. AHMC Anaheim Regional Medical Center
    Defended hospital group in a suit for trade name infringement between rival hospital owners. A week-long bench trial resulted in a defense verdict for our client AHMC.
  • Warner Bros. Entertainment v. The Global Asylum
    Successfully prevented a low-budget movie originally called Age of the Hobbits from being distributed under that name, arguing that the title unlawfully tried to cash in on Warner Bros.’ blockbuster The Hobbit: An Unexpected Journey. The court issued a preliminary injunction, which was affirmed by the Ninth Circuit.
  • AOL Advertising.Com v. Advertise.Com
    Represented AOL in a case involving claims for trademark infringement and unfair competition regarding use of AOL’s ADVERTISING.COM and AD.COM marks for an online display advertising network. The case involved cutting-edge issues regarding the scope of trademark protection for domain names.