Biography

Over the past 20 years, Carl C. Butzer has developed nationally recognized expertise in the fields of intellectual property litigation and counseling, electronic discovery, and electronic information management. He is Chair of the Dallas Office Intellectual Property Group, Chair of the Litigation Support Committee, and Co-Chair of the firm's E-Discovery Group.

Mr. Butzer's intellectual property practice focuses on trade secrets, trademark, trade dress, unfair competition, copyright, and licensing matters. Mr. Butzer has represented clients' IP interests in litigation in Texas state and federal courts, including in the Eastern District of Texas; as well as in federal courts in Illinois, Virginia, Michigan, Tennessee, Rhode Island, Washington, and the District of Columbia.

More about Carl C. Butzer: Experience | Involvement | Speeches / Publications | News

Representative Matters

• Representative Intellectual Property Cases


• Represented Google Inc., AOL LLC, YouTube LLC, Turner Broadcasting, MySpace, and Ask.com in two putative trademark class action lawsuits asserting that Google's Adwords program violates federal trademark law in the U.S. District Court for the Eastern District of Texas, Marshall Division. The Court denied the Plaintiffs' motions to certify the classes. FPX, LLC v. Google Inc., 276 F.R.D. 543 (E.D. Tex. 2011).


• Assisted a UK-based manufacturer of 3G mobile phones in its successful trade secrets lawsuit against one of the largest technology companies in the world, in the U.S. District Court for the Eastern District of Texas.


• Assisted a Japanese manufacturer in the defense of trade secrets claims against one of the largest computer companies in the world, in the U.S. District Court for the Eastern District of Texas.


• Assisted in the successful representation of Oprah in a copyright infringement lawsuit brought in Chicago federal court.


• Assisted in the successful representation of an artist in a music copyright infringement lawsuit brought against a celebrity entertainer and his record label.


• Represented a national broadcasting company in registering its copyrights in video footage and assisted the media client with the enforcement of its intellectual property rights in Rhode Island federal court.


• Successfully represented several national publications in their defense of a copyright infringement lawsuit concerning the use of a photograph in news stories.


• Represented a domain name owner in connection with global domain name and trademark claims of international organizations.


• Successfully represented the nation's leading producer of business signs for independent business owners in a copyright infringement lawsuit.


• Assisted a retail company in defense of trademark infringement lawsuits filed in federal court in New York and Philadelphia.


• Assisted in the successful representation of a leading national manufacturer of consumer products in false advertising and tortious interference federal court lawsuits brought in Michigan and Texas.


• Representative Intellectual Property Matters


• Prosecuted hundreds of trademark applications in the U.S. Patent and Trademark Office for companies in all types of industries, including medical technology, telecommunications, food service, computing products and services, information technology, health, broadcasting, claims and benefits administration, household products, beverages, financial services, oil and gas, and advertising.


• Assisted many companies in securing and protecting their trademark rights in foreign countries, including in the European Community, the UK, Ireland, France, China, Japan, Malaysia, Singapore, Hong Kong, Taiwan, Australia, Canada, Mexico, and various African and South American countries.


• Trademark and copyright counsel for an international company with over 900 retail stores in the U.S.


• Trademark and copyright counsel for the Producer and Co-Director of an international documentary motion picture.


• Regularly assists the world's largest video game retailer in the enforcement of its intellectual property rights.


• Authored hundreds of agreements involving the licensing, assignment, and/or sale of intellectual property assets.


• Representative Electronic Discovery and Electronic Information Management Matters


• Special Outside E-Discovery (ESI) Counsel for a Fortune Global 500, Europe-based, international provider of telecommunication and data communication systems, and related information technology services.


• Authored the Document Retention Policy of a corporate lender, finance company, and advisory service provider with more than $5 billion in assets.


• Assisted in the development of a Document Retention Policy for one of the largest construction companies in the world, employing thousands of employees.


• Regularly develops and oversees the implementation of case-appropriate and client-specific strategies for the identification, preservation, review, and analysis of electronically-stored information in state and federal court litigation.

More about Carl C. Butzer: Biography | Involvement | Speeches / Publications | News

Organization Membership

Mr. Butzer is a member of the American Intellectual Property Law Association (AIPLA); International Trademark Association (INTA); and Intellectual Property Section of the American Bar Association.

Community Involvement

Mr. Butzer serves as intellectual property counsel to the National Society of Hispanic MBAs (NSHMBA), a non-profit organization which fosters Hispanic leadership through graduate management education and professional development. He also counsels the Dallas Women's Museum in IP matters. In 2007, Mr. Butzer received the Director's Award for his service to the Fort Worth Women's Business Center.

More about Carl C. Butzer: Biography | Experience | Speeches / Publications | News

Speeches / Publications

Mr. Butzer frequently speaks and writes in the areas of intellectual property, Electronic Discovery, and information management. He has given speeches to the Association of Corporate Counsel (ACC), the Dallas Bar Association, The International Litigation Support Leaders, and numerous companies about Electronic Discovery, document retention policies, litigation hold practices, and the use of cutting-edge technology in reducing the costs of litigation (including e-mail archiving, e-processing, and document review tools).

Featured and/or Quoted In

• "Businesses on Cyberwatch: Protecting a company's name on the Internet is an ongoing battle," July 2008, Dallas Business Journal (written by Lisa Tanner)


• "IP Law 360: Q&A with Jackson Walker's Carl C. Butzer," October 2007


• "Satellite Firms in Keyword Clash: Dueling Lawsuits Over Web-Search Terms," December, 2006, Multichannel News (written by Linda Moss)

• "The Best of Bilski," March 2010, IP Litigation Insider (co-authored)


• "Cybersquatting, Typosquatting, and Domaining: Ten Years Under the Anti-Cybersquatting Consumer Protection Act," October 2009, presented during the panel discussion, "Domain Names: What's Next?", at the New York State Bar Association Intellectual Property Law Section Fall Meeting in Bolton Landing, New York on October 17, 2009


• "Quick-Start Guide for Contacting Social Networking Sites About Copyright Issues," September, 2009, IP Litigation Insider (co-authored)


• "Fair Use Defense to Copyright Infringement," at Texas Wesleyan University School of Law, March, 2009, in Fort Worth


• "I've Got A Trade Secret: Incorporating the Target Company's Soft IP Assets in Your Due Diligence Analysis," at the 6th Annual Pharma/Biotech IP Due Diligence Conference, January, 2009 in New York, sponsored by the American Conference Institute (ACI)


• "Matchmaker? - Sunrise Period Opens for Registration of .TEL Domain Names"


• Host of the "Roundtable on Internet Enforcement: WWW or Who What Where about Internet Enforcement," October, 2008 (in Dallas), sponsored by the International Trademark Association (INTA)


• "Legal Implications Of User Generated Content: YouTube, MySpace, & Facebook," May 2008, Intellectual Property & Technology Law Journal (co-authored), and presented by R. Latham at the 45th Annual Intellectual Property Law Conference at The Center for American and International Law in Plano, Texas


• "Texas Supreme Court Saves Insured From Coverage Waiver of Copyright Infringement Claim," January 2008 (co-authored)


• "The Eastern District of Texas Comes to New York," March 22, 2007 (New York State Bar Association, Intellectual Property Law Section Litigation Committee), Paper (co-authored)


• "For Humble, There's No Place Like Home's: Federal Court Holds That The Purchase of a Competitor's Protected Trademark as a Search Engine Keyword Can Constitute Trademark Infringement," White paper, Co-Authored with Nicole L. Metcalf (December, 2006)


• "Copyrights & Visual Art," November 2003 & December 2005 (University of Dallas)

• "Discovery of Electronic Data: Client-Focused Strategies for Preservation, Collection & Production," November, 2010 (in San Francisco), as part of a conference on "Managing Global Litigation Risks," hosted by Globalaw and Hanson Bridgett LLP


• "Best Practices for Litigation Management and E-Discovery: Managing the Tension Between Open Discovery in U.S. Courts & the European Union's Data Protection Directive," April, 2009 (in Chicago), at Globalaw in North America E-Discovery Conference


• "ESI Top 10 in the Eastern District of Texas," March, 2009, IP Litigation Insider (co-authored)


• "A Proactive Approach to E-Discovery," March, 2009 (in Fort Worth), Tarrant County Bar Association's (TCBA) Corporate Counsel Section


• "Document Retention and Destruction," December, 2008 (in Dallas), sponsored by Lorman Seminar


• "Information Preservation in E-Discovery," May 15, 2008 in Washington, D.C., The International Litigation Support Leaders Conference


• "E-Mail Archiving in E-Discovery," May 15, 2008 in Washington, D.C., The International Litigation Support Leaders Conference


• "In-House Solutions to the E-Discovery Conundrum," May 18, 2007 (Association of Corporate Counsel, Austin, Texas)


• "Federal Court Shifts ESI Cost Burden From Subpoenaed Non-Party," White paper, Co-Authored with Nicole L. Ruble (July, 2007)


• "The E-Discovery Amendments To The Federal Rules Of Civil Procedure," January 9, 2007 (Dallas Bar Association, Business Litigation Section)


• "Amendments To The Federal Rules Of Civil Procedure Relating To Electronic Discovery," January 2006 (San Antonio)


• "Last Minute Triage Preparation for the E-Discovery Amendments to the FRCP," November 2006 (Dallas), Co-Authored with Adam I. Cohen


• "What Do I Do Now? A Cost-Effective Approach to the E-Discovery Process," November 2006 (Dallas)


• "What Will Opposing Counsel Ask You For? The Preservation of Electronically Stored Information: Litigation Hold Letters, E-Discovery Requests and Rule 30(b)(6) Depositions," October 16, 2006 (Austin)


• "Amendments To The Federal Rules Of Civil Procedure Relating To Electronic Discovery," September 2006 (Houston)


• Mr. Butzer has been the primary contributor and co-author of the last three editions of "Tapping Officials' Secrets: The Door To Open Government In Texas," published by The Reporters Committee for Freedom of the Press

Links to Publications

• IP Litigation Insider - December 2010
• IP Litigation Insider - March 2010
• IP Litigation Insider - September 2009
• IP Litigation Insider - March 2009
• IP Litigation Insider - December 2008

More about Carl C. Butzer: Biography | Experience | Involvement | News

Latest News

• Carl Butzer to Speak on E-Discovery Solutions
• Carl Butzer Discusses Protecting Intellectual Property on Platforms News Program
• Jackson Walker Congratulates Its 2010 BTI Client Service All Stars
• Carl Butzer Speaks on Domain Names
• JW Recognized for Dallas Woodall Rodgers Park Ground-Making
• Carl Butzer Speaks on Best Practices for Litigation Management and E-Discovery
• Carl Butzer Speaks on Fair Use Defense to Copyright Infringement
• Carl Butzer Speaks on a Proactive Approach to E-Discovery

More about Carl C. Butzer: Biography | Experience | Involvement | Speeches / Publications |