Intellectual Property: Copyright & Trademark

Clients turn to us to resolve their thorniest copyright and trademark litigation matters. We quickly identify and focus on the key issues for trademark-infringement, dilution, and Lanham Act false-advertising actions; as well as the novel secondary liability and DMCA issues that arise as new technologies change the way consumers access protected material.

Cases of Note

Cisco Systems, Inc. v. Arista Networks, Inc.: We are defending Arista Networks in this groundbreaking case which raises the important question of whether functional computer commands merit copyright protection. Cisco accused Arista, run by a former Cisco vice president, of copyright infringement from the use of more than 500 commands used to configure networking gear. The company also accuses Arista of infringing 14 patents.

Robin Antonick v. Electronic Arts Inc.: Robin Antonick, programmer of the John Madden Football video game for the Apple II that was released in 1988, alleged that EA owed him royalties on sales of all Madden Football video games over the last twenty-two years. Antonick claimed that all Madden games since 1990 are derivative works of the game he programmed, and he was therefore owed royalties under a 1986 contract with EA. On behalf of EA, we contended that none of Antonick’s source code, which was written for a more primitive platform and was outdated by the time it was released, was ever used in any subsequent Madden game. Although the jury found in favor of Antonik, U.S. District Judge Charles Breyer later entered judgment for EA, reversing the award and strongly discouraging similar suits based on additional versions of the game.

Oracle America, Inc. v. Google Inc.: We represented Google in what Oracle claimed to be a multi-billion dollar patent and copyright war concerning the use of the Java programming language in Google’s Android platform. When Oracle bought Sun Microsystems in January 2010, it acquired Sun’s rights to Java. In August of that year, Oracle sued Google, claiming its Android mobile technology infringed Oracle patents and copyrights. We defended Google against all the patent and copyright claims, and also argued that the damage estimates were wildly inflated. Following repeated rounds of motions and briefing, the judge dismissed the bulk of Oracle’s copyright claims, and at trial the jury rendered a unanimous verdict rejecting all claims of patent infringement. Although the jury decided that Google infringed an Oracle copyright on nine out of millions of lines of source code, the case was a sweeping victory for Google, with zero damages. After an appeal by Oracle, the case returned to district court for a trial on fair use. After a two-week trial, the federal jury unanimously found that Google’s use of Oracle’s Java programming language in the Android operating system was a fair use, thereby rejecting Oracle’s claims of infringement.

Oracle America Inc. v. CedarCrestone, Inc.: We helped our client CedarCrestone, Inc. reach a successful settlement in this copyright infringement suit. Oracle had sued former business partner CedarCrestone Inc. in California federal court, accusing it of misappropriating Oracle's intellectual property during their partnership and then using its partner status to attract customers.

Software Co. v. Software Co.: We defended a red-hot Silicon Valley software company that provides information analysis to the intelligence, defense, and law enforcement communities from trade secret and copyright charges. Our client's competitor brought the charges in the Eastern District of Virginia. We successfully settled the case after five and a half torrid months of rocket docket litigation.

Dillinger LLC v. Electronic Arts Inc.: We won summary judgment for Electronic Arts Inc in this right-of-publicity and trademark case. The heirs of John Dillinger alleged that EA improperly used the Dillinger name in a series of video games. Plaintiff sought damages and an injunction to prevent EA from selling the games. The court's orders not only affirmed EA's fundamental First Amendment right to design and publish its games, but also made clear that Indiana's right of publicity statute could not be applied retroactively to individuals who died before it was enacted. Law360 described the rulings as a "total victory" for EA.

Toy Company v. Product Designer: We represented the designer of a very popular line of dolls in a federal trial to determine which toy company owns the doll's copyright. We settled the case on favorable terms before the commencement of trial.

Venture Capital Firm v. Music Publishing Group: We represented online file-sharing company investors against allegations of copyright infringement, and asserted counterclaims of antitrust violations. After we used crime fraud arguments to pierce the plaintiff's attorney-client privilege, the case settled on favorable terms.

Internet Company v. Google: An Internet company based in Lafayette, Louisiana filed suit in its local federal court against Google for trademark infringement and unfair competition. The plaintiff alleged Google's various uses of the term "gadget" infringed the federal trademarks "website gadget" and "gadget." We represented Google, and counterclaimed to cancel both marks as not protectable under either federal or Louisiana law because they are generic or at best descriptive and have not attained secondary meaning. The court agreed with us and granted summary judgment, canceling the marks and dismissing the lawsuit.

Key Contacts

R. James Slaughter

R. James Slaughter

(415) 773-6623
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Ashok Ramani

Ashok Ramani

(415) 676-2210
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Michael S. Kwun

Michael S. Kwun

(415) 676-2204
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