Celebrating 125 Years
 
Recent Intellectual Property Litigation Matters
Sanitec Industries, Inc. v. Micro-Waste Corp. (S.D. Tex.), aff'd (Fed. Cir. 2008). In a trial on the merits, Jackson Walker successfully defended Micro-Waste Corporation against willful infringement claims involving a patent related to medical waste disinfection utilizing microwave technology. Plaintiff appealed, and the Federal Circuit affirmed judgment in favor of JW's client.

FPX, LLC v. Google Inc., 276 F.R.D. 543 (E.D. Tex. 2011). 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.

Patent Harbor, LLC v. Audiovox Corporation, et al. (E.D. Tex. [Tyler]). Jackson Walker served as lead counsel for Denon Electronics (USA) LLC. During the scheduling portion of the case, JW successfully lobbied the Court to obtain an early claim construction hearing and to defer discovery until after a ruling on claim construction. JW subsequently obtained a claim construction ruling from Magistrate Judge Love that was dispositive as to JW's client. After Judge Davis affirmed Judge Love's ruling, the plaintiff accepted a Stipulated Judgment of Non-infringement as to its claims against JW's client.

Sendo v. Microsoft Corporation (E.D. Tex. [Texarkana]). As lead counsel, Jackson Walker represented Sendo, a British mobile phone manufacturer, against Microsoft Corporation in a case involving next generation Smartphone technology. Sendo claimed damages of hundreds of millions of dollars, alleging that Microsoft misappropriated its "Smartphone" technology trade secrets and breached contracts relating to the development and marketing of a Smartphone handset device. Microsoft responded to the lawsuit, filed in federal court in Texarkana, by moving to dismiss the case, moving to transfer venue, and asserting counterclaims for breach of contract, fraud and copyright infringement. Jackson Walker successfully defeated Microsoft's attempt to transfer the case to Seattle, and defeated Microsoft's motion to dismiss. Jackson Walker attorneys conducted intensive deposition discovery in Seattle, defended depositions of our client in London, and deposed third parties in Canada and Europe while simultaneously reviewing and processing millions of pages of electronic and hard copy documentation produced during discovery. The case settled on favorable terms.

The Procter & Gamble Company, et al. v. Amway Corp., et al. Jackson Walker defended Amway Corporation in this lawsuit involving a rumor about Procter & Gamble, including claims under the Lanham Act. After a two week jury trial, the court granted judgment as a matter of law and summary judgment for Amway. Dismissal of Amway was affirmed after two appeals to the Fifth Circuit Court of Appeals. 242 F.3d 539; 376 F.3d 496.

O'Grady v. Twentieth Century Fox Film Corp., et al. (E.D. Tex. [Texarkana]). Retired Air Force pilot Scott O'Grady sued Jackson Walker's client, Twentieth Century Fox, alleging (among other things) that the film company misappropriated O'Grady's name and likeness in the movie, Behind Enemy Lines, which admittedly was inspired by the pilot's true life experiences. As for plaintiff's claims on Twentieth Century Fox's production of the movie, the court granted summary judgment on grounds that protection of name or likeness under Texas law does not include a person's life story. The entire case settled shortly after jury selection.

Representative Patent Cases
Iovate Health Sciences Inc. v. BSN and Medical Research Institute, 586 F.3d 1376 (Fed. Cir. 2009). JW served as appellate counsel for defendant and appellee Medical Research Institute in an infringement lawsuit involving dietary supplements. The Federal Circuit upheld the summary judgment on invalidity grounds granted in favor of JW's client by the United States District Court for the Eastern District of Texas. The district court found that patent claims directed to the administration of dietary supplements to enhance recovery from fatigue were anticipated by a prior printed publication.

Orion IP, LLC v. Hyundai Motor America, 605 F.3d 967 (Fed Cir. 2010). Counsel for Hyundai in patent infringement lawsuit alleging that Hyundai's website infringed business methods patents involving a computer assisted parts sales method and an electronic proposal preparation system. At trial, JW obtained a jury verdict of non-infringement as to the electronic proposal preparation system patent. On appeal, the Federal Circuit ruled that the parts sales method patent was invalid.

Sanitec Industries, Inc. v. Micro-Waste Corp. (S.D. Tex.), aff'd (Fed. Cir. 2008). In a trial on the merits, Jackson Walker successfully defended Micro-Waste Corporation against willful infringement claims involving a patent related to medical waste disinfection utilizing microwave technology. Plaintiff appealed, and the Federal Circuit affirmed judgment in favor of JW's client.

North American Container, Inc. v. Plastipak Packaging Inc., et al. (N.D. Tex.). Jackson Walker represented defendant Reckitt Benckiser Inc. in this patent infringement case involving polyethylene terephthalate bottles. Following a Markman hearing, the trial court granted summary judgment for Reckitt Benckiser. That decision was substantially upheld by the Federal Circuit at 415 F.3d 1335.

Patent Harbor, LLC v. Audiovox Corporation, et al. (E.D. Tex. [Tyler]). Jackson Walker served as lead counsel for Denon Electronics (USA) LLC. During the scheduling portion of the case, JW successfully lobbied the Court to obtain an early claim construction hearing and to defer discovery until after a ruling on claim construction. JW subsequently obtained a claim construction ruling from Magistrate Judge Love that was dispositive as to JW's client. After Judge Davis affirmed Judge Love's ruling, the plaintiff accepted a Stipulated Judgment of Non-infringement as to its claims against JW's client.

Mobility Electronics, Inc. v. Formosa Electronics, et al. (E.D. Tex. [Texarkana]). After initiating suit before the ITC, Mobility Electronics, JW's client, then brought an infringement and trade secrets misappropriation case against a Taiwanese manufacturer of power supplies for electronic devices. Following a Markman hearing, the court issued a claim construction order construing the vast majority of claims in Mobility's favor. Mobility settled its claims against all five defendants on favorable terms.

In the Matter of Certain Noise Cancelling Headphones (U.S. Int'l Trade Comm'n). Bose initiated this investigation against six companies, including Jackson Walker's clients, Phitek Systems, Ltd., Creative Labs, Logitech, and GN US. Bose claimed infringement of two patents for acoustic design of headphones for noise cancellation. The dispute was settled favorably shortly before trial.

Fowler Woods, LLC. v. Accuradio, Inc., et al. (E.D. Tex. [Marshall]). Jackson Walker served as lead counsel for a publicly traded media company defendant in a patent infringement lawsuit concerning the display of advertising on websites. Obtained informal dismissal of the claims against our client prior to the deadline for responding to the Complaint.

Global Sessions LP v. Travelocity.com LP, et al. (E.D. Tex. [Tyler]-pending). Lead counsel for a defendant in a patent infringement lawsuit involving hub patents and session patents. The Hub Patents generally relate to a single system with multiple functional "layers," which interact to enable the presentation of web pages, content and/or services to users. The Session Patents generally relate to a particular method of maintaining session state on webpages.

Uniloc USA, Inc., et al. v. BCL Technologies, et al. (E.D. Tex. [Tyler]). Jackson Walker Represented a publicly traded software company in a patent infringement lawsuit concerning health care software. The plaintiff dismissed its claims against our client following an informal demonstration of our client's product.

Comarco Wireless Technologies v. Mobility Electronics, (D. Ariz.). Jackson Walker represented Mobility Electronics in this patent infringement lawsuit. After an evidentiary hearing, the court gave credence to Mobility's invalidity defense and denied Comarco's request for injunctive relief, the lawsuit immediately settled. Denial of injunction allowed Mobility's flagship product to remain on the market.

Internet Media Corp. v. Hearst Newspaper, LLC (D. Del.-pending). Lead counsel for two large publishing companies in patent infringement lawsuit involving a patent directed to a system for providing easy access to the World Wide Web utilizing a published list of preselected internet locations together with their unique multi-digit jump codes.

Furniture Brands International Inc. et al. v. Webvention Holdings LLC, et al. (D. Del.). JW represents Furniture Brands, 20-20 Technologies and Icovia in this declaratory judgment lawsuit that JW filed in Delaware in response to an infringement letter alleging that a website infringed Webvention's patent. The case settled on favorable terms.

DR Systems, Inc. v. Merge Technologies, Inc., et al. (S.D. Cal.). Counsel for two defendants in patent suit involving alleged infringement of patents concerning automated medical imaging and archival systems. Case settled on very favorable terms shortly after defendants served their invalidity contentions.

LVL Patent Group LLC v. Sony Electronics, Inc., et al. (D. Del.-pending). Lead counsel for Denon Electronics in patent infringement lawsuit involving a patent directed to a data transaction assembly server.

Gametek, LLC, v. Facebook, Inc., et al. (S.D. Cal.-pending). Counsel for Buffalo Studios LLC in patent infringement lawsuit relating to a system and methods for obtaining advantages and transactions relating to such advantages in a computer gaming environment.

DR Systems, Inc., v. Avreso, Inc. (S.D. Cal.-pending). Counsel for PenRad Technologies in patent infringement lawsuit relating to patents on automated medical imaging and archival systems.

Digital Choice of Texas, LLC v. Best Buy Co., Inc., et al. (E.D. Tex. [Marshall]). JW represented RadioShack, Best Buy, Costco, Sears, Target, Sam's Club, and Wal-Mart this patent infringement case, where the plaintiff alleges that parental control features on DVD players infringe its patent. The case settled on favorable terms.

Advanced Encoding Solutions, LLC v. Broadcom Corporation, et al. (E.D. Tex. [Tyler]). Counsel for Ericsson Television Inc. in patent infringement lawsuit involving a patent directed to a moving picture expert group encoder processor for processing split picture video of standard and high definition television. The case settled on favorable terms.

E-Data Corporation v. The New York Times Company, et al. (E.D. Tex. [Sherman]). JW represented The New York Times in a patent action involving systems for reproducing information in material objects at a point-of-sale location. JW obtained an order transferring the case to a more favorable forum.

Mobility Electronics, Inc. v. American Power Conversion Corp. (E.D. Tex. [Texarkana]). JW represented Mobility Electronics, alleging that the defendant's products infringe seven of its patents. JW also represented Mobility in a related action between the parties pending in the United States District Court of Massachusetts, American Power Conversion Corp. v. Mobility Electronics, Inc. (D. Mass.). The cases settled on favorable terms.

Bose Corporation v. GN Netcom, Inc. and Phitek Systems Ltd. (D. Mass.). Jackson Walker defended clients in a lawsuit dealing with three Bose patents for noise cancelling headphones. The dispute was settled.

InternetAd Sys., LLC v. ESPN, Inc., Travelocity.Com, Inc. and The New York Times Company (N.D. Tex.). Jackson Walker represented defendants ESPN and The New York Times. This patent infringement lawsuit, which ultimately settled favorably, involved patents on pop-up ads appearing on websites.

Mobility Electronics, Inc. v. SBS Technologies, Inc. (D. Ariz.). JW sued on behalf of Mobility Electronics for claims involving split bridge technology on portable computer interfaces. The case settled favorably for JW's client.

CNF Technologies, Inc. v. Mobility Electronics, Inc. (D. Ariz.). JW defended Mobility Electronics in this patent infringement lawsuit pertaining to docking stations for portable computers. JW obtained a favorable settlement for Mobility.

MacroSolve, Inc. v. Various Defendants (E.D. Tex. [Tyler])). Jackson Walker served as lead counsel for a group of four defendants in a patent infringement lawsuit concerning alleged infringement by mobile applications for defendants' websites. Obtained an early favorable settlement for all our clients.

Studer Professional Audio GMBH v. Calrec Audio Ltd., et al. (E.D. VA; D. NJ-pending). Jackson Walker serves as lead counsel for defendants in a patent lawsuit alleging infringement by Defendants' audio mixing consoles. Defendants obtained transfer to District of New Jersey.

Execware, LLC v. Amazon.com, Inc., et al. (D. Del.). Lead counsel for a defendant in a patent infringement lawsuit alleging that a company website infringed plaintiff's patent. Our client settled on favorable terms.

Walker Digital, LLC v. Ayre Acoustics, Inc., et al. (D. Del.). Lead counsel for Denon Electronics in patent infringement lawsuit involving a patent directed to a system and method for supplying supplemental information for video programs. The case settled on favorable terms.

Hubwoo SA v. Supply Chain Connect, LLC (S.D. Tex.). Counsel for Hubwoo SA, Hubwoo USA Inc., and Hubwoo USA, L.P. in patent infringement lawsuit relating to patents on a business to business clearinghouse and electronic transaction system. The matter settled.

Joint Marketing International, Inc. and Kun S. Chang v. Walgreen Co., et al. (E.D. Tex. [Tyler]). JW was lead counsel for QVC, Inc. in this patent infringement lawsuit concerning a device that cleans eyeglasses. The matter settled on favorable terms.

Kawasaki Heavy Industries Ltd v. Bombardier Recreational Products, Inc., et al. (E.D. Tex. [Texarkana]). JW represented Bombardier in an alleged patent infringement of three personal watercraft technology patents. JW's client obtained a favorable settlement.

Cheetah Omni LLC v. Verizon Communications Inc., et al. (E.D. Tex. [Tyler]). JW represented Grande Communications Networks, Inc. in a lawsuit alleging infringement of patents directed to star switching fabric and a switching element for use in an optical processing device. Settled on favorable terms.

Antor Media Corp. v. Metacafe, Inc., et al. (E.D. Tex. [Marshall]-pending). JW represents Discovery Communications, Inc. in this patent infringement action concerning a method and apparatus for transmitting information recorded on digital disks from a central server to subscribers via a high data digital telecommunications network. The case has been stayed pending reexamination.

The PACid Group, LLC v. Best Buy Co., Inc., et al. (E.D. Tex. [Tyler]). Counsel for Denon Electronics in a patent infringement lawsuit involving a patent directed to an encryption key generator system and method. Case settled on favorable terms.

Unified Messaging Solutions LLC v. Google Inc., et al. (E.D. Tex. [Tyler]). Lead counsel for a defendant in a patent infringement lawsuit alleging that a company website infringed four patents. The case settled on favorable terms.

Innovative Automation, LLC v. Audio and Video Labs, Inc. (E.D. Tex. [Tyler]-pending). Counsel for Singulus in lawsuit involving alleged infringement of a patent directed to a computer-implemented method of data duplication.

Achates Reference Publishing Inc. v. Symantec Corp., et al. (E.D. Tex. [Tyler]-pending). Counsel for GlobalScape in patent infringement lawsuit involving patents directed to the generation and use of encrypted launch codes.

Datatreasury Corp. v. Austin Bancorp, Inc., et al. (E.D. Tex. [Tyler]-pending). JW represents four defendant banks in a patent infringement case related to the electronic imaging and transmission of financial transaction documents.

Soverain Software LLC v. J.C. Penney Corp., et al. (E.D. Tex. [Tyler]). Counsel for QVC in a patent infringement lawsuit involving patents directed to methods of completing sales over the internet. JW's clients settled on favorable terms.

Transunion Intelligence LLC, et al. v. Search America Inc., et al. (D. Minn.-pending). Jackson Walker represents Transunion in a patent infringement lawsuit concerning a method and system for determining whether certain potential patients qualify for charity and governmental programs.

Balthaser Online, Inc. v. Network Solutions, LLC, et al. (E.D. Tex. [Marshall] and N.D. Cal.); Balthaser Online, Inc. v. Kimberly-Clark Corporation, et al. (E.D. Tex. [Marshall]). Counsel for six defendants in two lawsuits alleging that various web sites infringe the plaintiff's patent. Obtained a transfer to the Northern District of California in Network Solutions and negotiated an early, favorable global settlement for all our clients prior to the claim construction hearings in both cases.

Orion v. Xerox Corporation, et al. (E.D. Tex. [Tyler]). JW represented Nordstrom, Inc., Kohl's Department Stores, Inc. and Walgreen Co. in this patent infringement suit about a computer assisted parts sales method and an electronic proposal preparation system. JW obtained a favorable settlement on behalf of its clients.

Orion v. Costco Wholesale Corporation, et al. (E.D. Tex. [Tyler]). JW represented Costco in this patent infringement action about two business method patents by Costco's websites. JW obtained a favorable settlement for its client.

Voxpath RS, LLC v. LG Electronics U.S.A., Inc., et al. (E.D. Tex. [Marshall]). Jackson Walker represented Denon Electronics (USA), LLC and D&M Holdings, Inc. in a patent infringement lawsuit concerning optical data reproduction devices. Settled on favorable terms.

Voxpath RS, LLC v. Denon Electronics (USA), LLC, et al. (E.D. Tex. [Marshall]). Jackson Walker represented Denon Electronics (USA), LLC and D&M Holdings, Inc. in a patent infringement lawsuit involving the alleged infringement of a patent directed to optical recording and playback systems. Settled on favorable terms.

Datatreasury Corp. v. Wells Fargo & Co., et al. (E.D. Tex. [Marshall]). JW represented HSBC Bank USA in a patent infringement case related to the electronic imaging and transmission of financial transaction documents. JW obtained a favorable settlement for its clients.

NextCard, LLC v. American Express Company, Discovery Financial Services LLC, HSBC North America Holdings Inc., HSBC USA, Inc., and The PNC Financial Services Group, Inc. (E.D. Tex. [Marshall]). JW served as counsel for Defendants HSBC North America Holdings and HSBC USA Inc. in a patent infringement case related to online chat help and online credit card applications. JW's clients settled on favorable terms.

Mobility Electronics, Inc. v. Formosa Electronics, et al. (E.D. Tex. [Texarkana]). After initiating suit before the ITC, Mobility Electronics, JW's client, then brought an infringement and trade secrets misappropriation case against a Taiwanese manufacturer of power supplies for electronic devices. Following a Markman hearing, the court issued a claim construction order construing the vast majority of claims in Mobility's favor. Mobility settled its claims against all five defendants on favorable terms.

Datatern, Inc. v. Bank of America Corporation, et al. (E.D. Tex. [Texarkana]). JW represented QVC concerning a patent directed to a system for enabling access to a relational database. JW obtained a favorable settlement for its client.

Representative Trade Secrets Cases
Sendo v. Microsoft Corporation (E.D. Tex. [Texarkana]). As lead counsel, Jackson Walker represented Sendo, a British mobile phone manufacturer, against Microsoft Corporation in a case involving next generation Smartphone technology. Sendo claimed damages of hundreds of millions of dollars, alleging that Microsoft misappropriated its "Smartphone" technology trade secrets and breached contracts relating to the development and marketing of a Smartphone handset device. Microsoft responded to the lawsuit, filed in federal court in Texarkana, by moving to dismiss the case, moving to transfer venue, and asserting counterclaims for breach of contract, fraud and copyright infringement. Jackson Walker successfully defeated Microsoft's attempt to transfer the case to Seattle, and defeated Microsoft's motion to dismiss. Jackson Walker attorneys conducted intensive deposition discovery in Seattle, defended depositions of our client in London, and deposed third parties in Canada and Europe while simultaneously reviewing and processing millions of pages of electronic and hard copy documentation produced during discovery. The case settled on favorable terms.

Avaya v. Chris Williams (N.D. Tex.). Jackson Walker obtained a temporary restraining order and preliminary and permanent injunctive relief to prevent disclosure of the client's trade secrets.

Data Management Inc. v. Control Module, Inc. (N.D. Tex.). On behalf of Data Management, Jackson Walker brought this action for declaratory relief concerning trade secrets in computerized time and attendance solutions. The case settled.

Hewlett-Packard Co. v. Byd:Sign, Inc., et al. (E.D. Tex. [Tyler]). Jackson Walker represented several Japanese and U.S. defendants in this lawsuit wherein Hewlett-Packard was the subject of several counterclaims. The case settled.

Lucent Technologies Services Inc. and Tyco Electronics Power Systems, Inc. v. Kris Dehnel and Power-One, Inc. (277th District Court, Williamson County, Tex.). Jackson Walker obtained a temporary restraining order against Lucent's senior engineer who downloaded the contents of his office hard drive onto a portable device and then accepted employment with a key Lucent competitor. Among other things, the TRO required defendants to produce electronic media storage devices and prohibited the engineer from working for his new employer in specified technical fields. Following defendants' failed motion to dissolve the TRO, and after the court imposed sanctions against defendants for discovery abuse, an agreed temporary injunction was entered. Thereafter, a settlement was reached including entry of an agreed injunction that permanently enjoined the former employee from disclosing proprietary information gained by the former employee during his term of employment with Lucent and restricted his ability to engage in future recruiting efforts.

The Telephone Connection of Los Angeles, Inc. v. Lucent Technologies Inc., Excel Switching Corp., Intercall Communications and Consulting, Inc., and Nathan Franzmeier (401st Judicial District Court, Collin County, Tex.). Jackson Walker represented defendants in this lawsuit wherein plaintiff sued for breach of a software development contract, conversion of plaintiff's alleged intellectual property, and misappropriation of plaintiff's alleged trade secrets, all in connection with a business transaction initiated prior to the acquisition of certain software development companies by Lucent, one of the defendants. The lawsuit settled on the eve of trial when the court granted Jackson Walker's motion to exclude testimony of plaintiff's damages expert.

Packers Plus Energy Services, Inc., et al. v. Peak Completion Tech., Inc., et al. (238th District Court, Midland County, Tex.). JW represented Plaintiff Packers Plus Energy Services in this trade secret/patent infringement case related to advanced pipeline technologies. Immediately following JW's oral arguments on its client's motion to dismiss or sever a counterclaim for declaratory judgment of non-infringement and invalidity (including novel attempt to force a Markman hearing in state trial court), the entire lawsuit was resolved in settlement favorable to JW's client.

MMI Products, Inc. d/b/a Meadow Burke Products v. General Technologies, Inc., et al. (153rd Judicial District, Tarrant County, Tex.). Jackson Walker defends General Technologies, Inc. and six individual defendants in this trade secret lawsuit in which General Technologies filed a counterclaim for breach of contract and malicious prosecution.

LSI Logic Corporation v. Silicon Space Technology Corporation (Court of Appeals for the Third District of Texas at Austin). Jackson Walker was retained to represent appellant in this appeal of a judgment for actual damages in excess of $21 million for theft of trade secrets. After the appeal was fully briefed the dispute was resolved.

Alliantgroup, LP v. Pluckhan, et al. (281st Judicial District, Harris County, Tex.). Jackson Walker represented two individual defendants who worked for a Texas-based accounting services firm in other states. The Texas accounting firm sued in a Texas state court, claiming the individuals misappropriated trade secrets of the Texas-based firm, as well as proprietary business information. Jackson Walker challenged the court's personal jurisdiction over the two defendants and obtained a dismissal on that ground.

Planview, Inc. v. Computer Associates International, Inc., et al. (345th District Court, Travis County, Tex.). Jackson Walker defended several parties against plaintiff's claims of trade secret misappropriations and unfair competition relating to plaintiff's former employees. After two years of litigation, the dispute was resolved.

Minnesota Mining and Manufacturing Co. v. Avery Dennison Corp., et al. (District Court, Ramsey County, Minnesota). Jackson Walker represented 3M in this trade secret misappropriation and breach of contract case involving specialized adhesives and proprietary technologies for the wound care, surgical, ostomy, electromedical and diagnostic markets, including hydrocolloids, hydrogels and high moisture vapor transmission tapes. The 3M precision coating technology was used to manufacture adhesives for printing plates, electronic components, adhesives and coating for optical films, components for lithium polymer batteries, protective and decorative films for windows and receptive coatings for ink jet and laser printing, among other products. The lawsuit settled following mediation.

Stephens Pneumatics, Inc. v. Walker Stainless Equipment Co., Inc., et al. (N.D. Tex.). Jackson Walker represented defendants in this lawsuit wherein plaintiffs alleged unfair competition (based on federal and Texas common law), trade secret misappropriation, reverse palming off, conspiracy and fraud. The product at issue was a pneumatic tank trailer, designed to transport dry and liquid goods in bulk. JW took a common sense approach by showing that no trade secret misappropriation took place because no trade secret existed. JW hammered out its "no trade secret" defense in an extensive motion for summary judgment on behalf of its clients. The case settled.

Frisco International Imex Inc. v. Han Duk America Co., et al. (N.D. Tex.). Jackson Walker represented defendant in this trade secrets misappropriation case involving plaintiff's former employees. The product at issue was synthetic hair pieces for women. The case settled.

Bricor Analytical, Inc. v. Pioneer Industries, Inc., et al. (W.D. Tex.). JW represented the plaintiff in this misappropriation of trade secrets action related to the manufacture of shower head valves and technology. The matter settled on favorable terms.

Brother of the Leaf LLC v. KGM Industries Co. (W.D. Tex.). Jackson Walker represented the plaintiff in this trade dress infringement lawsuit concerning plaintiff's PALIO cigar cutter. The parties settled the dispute.

Brother of the Leaf L.L.C. v. Kingstar Supplies, Inc. (W.D. Tex.). Jackson Walker represented plaintiff in this trade dress infringement lawsuit concerning plaintiff's PALIO cigar cutter. The parties settled the dispute.

Elk Corporation of America and Elk Corporation of Texas v. Aervoe-Pacific Co. (County Court at Law No. 3, Dallas County, Tex.). Jackson Walker successfully represented defendant, Aervoe-Pacific, in this trade secret misappropriation lawsuit arising from use of certain customized paint colors for roofing tile. The case was dismissed following the denial of plaintiffs' request for injunctive relief.

Oil@Work Group, Inc. v. Geetec Communications, Ltd. (N.D. Tex.). Plaintiff sued Jackson Walker's client, alleging misappropriation of trade secrets and trademark infringement. The parties settled the dispute.

Representative Copyright Cases
CBS Operations Inc. v. Reel Funds Int'l, Inc. d/b/a Reel Media Int'l (N.D. Tex.). CBS, represented by Jackson Walker, filed this copyright infringement lawsuit alleging that defendant created, marketed, distributed, sold and/or licensed unauthorized copies of episodes of CBS's famous television series, The Andy Griffith Show. The court granted CBS's motion for summary judgment, permanently enjoined defendant from advertising, reproducing, manufacturing, distributing, promoting, performing, offering to sell, selling, and/or licensing any episodes of The Andy Griffith Show, and from infringing, or contributing to, or participating in the infringement by others of, CBS's copyrights in episodes of The Andy Griffith Show; and ordered defendant to recall all copies of the 16 Middle Episodes of The Andy Griffith Show which defendant sold or distributed from each of its customers, and to instruct all such customers not to distribute or broadcast those episodes.

TVL Broadcasting, Inc. v. Charles Tremayne, Granada America, Discovery Communications, Inc., and Discovery Times Channel, LLC (D. R.I.). Jackson Walker represented plaintiff, TVL Broadcasting, in this copyright infringement case brought in Rhode Island federal court. TVL sued to enforce its copyrights in a videotape, portions of which were used in a Discovery Times Channel program. The case settled.

Paul Natkin and Stephen Green v. Oprah Winfrey, et al. (N.D. Ill.). Professional photographers who took photographs of The Oprah Winfrey Show sued Oprah Winfrey and her production company alleged copyright infringement and expropriation of various other property rights after the photographs appeared in a book co-written by Ms. Winfrey, entitled "Make the Connection." The case was settled following cross-examination of the first plaintiff in federal district court in Chicago. JW represented Oprah Winfrey and the other defendants.

James Martinez v. Samuel Timothy McGraw, et al. (S.D. Tex.). Jackson Walker represented the defendants, singer Tim McGraw, his record label, producers and writers of the song "Everywhere," in this action alleging copyright infringement. The lawsuit was filed in Corpus Christi federal court. Following extensive briefing on JW's motion to transfer, the Court ordered the plaintiff's lawsuit transferred to the federal court in Nashville.

Texas Hot Looks, Inc. v. ABC, Inc., et al. (N.D. Tex.). In this copyright lawsuit, Jackson Walker obtained settlements on behalf of clients: American Journal, CNN, E! Entertainment, CBS, ABC, Kingworld, and Newsweek.

Wanda King, et al. v. Collectables Records, et al. (N.D. Tex.). Jackson Walker successfully defended the record label defendant. After a jury trial, judgment was entered for JW's clients.

Gourmet Curriculum Press, Inc. v. Socorro Independent School District (W.D. Tex.). Jackson Walker filed a copyright infringement on behalf of a publisher against a school district. The school district downloaded electronic copies of educational materials from the publisher's website without authorization and proceeded to incorporate those materials into the school district's lesson plans. This case settled.

Signtronix, Inc. v. General Sign, Inc., et al. (N.D. Tex.). In this copyright infringement and unfair competition lawsuit concerning protectable materials relating to the creation and sales of signs, Jackson Walker represents Signtronix, a leading producer of business signs for the independent business owner. The matter settled.

Salon Visage, Inc. v. Salon Visage, Inc., et al. (E.D. Tenn.). This dispute between hair salons concerns the use of "Salon Visage." Salon Visage (TX) hired a company to develop its online advertisement and improve its website. Due to a mistake, the company used materials from Salon Visage (TN). When this was discovered, Salon Visage (TN) sued Jackson Walker's client alleging copyright and trademark infringement. After unsuccessful initial settlement discussions, JW filed a motion to dismiss due to lack of jurisdiction over Salon Visage (TX) on the grounds that hair salons have a limited geographic area of influence. A favorable confidential settlement followed.

Leonard Brown, et al. v. Roy Ames, et al. (S.D. Tex.). Jackson Walker was lead counsel for defendants Jerry and Nina Greene, individually, and Collectables Records. This copyright infringement lawsuit was tried to a jury. The verdict and judgment were generally favorable to JW's clients.

Fast Lane Promotions, Inc. v. John Eagle Sport City (N.D. Tex.). Representing the plaintiff in this copyright infringement action, JW successfully obtained a settlement from an unauthorized user of Fast Lane's copyrighted marketing materials.

Fast Lane Promotions, Inc. v. Judson Motors Ltd., d/b/a Universal Toyota (W.D. Tex.). Representing the plaintiff in this copyright infringement action, JW successfully obtained a settlement from an unauthorized user of Fast Lane's copyrighted marketing materials.

James Dale Monson v. Thomas "Luke" Bryan et al. (W.D. Tex.). Jackson Walker served as local counsel for Defendants Thomas "Luke" Bryan, Dallas Davidson, Capitol Records, LLC and Bug Music, Inc. in this copyright infringement action concerning the musical composition "Rain Is A Good Thing." The case was dismissed with prejudice by stipulation.

Testwerks, Inc. v. Profiles Int'l, Inc. (W.D. Tex.). Jackson Walker represented plaintiff, the owner of an honesty/employability survey test, against a party who created an infringing test. The suit was settled favorably.

Gary Hartman, D/B/A Gary Hartman Photography v. Bago Luma Collections, Inc. (W.D. Tex.). This lawsuit, involving implied licenses of copyrights, went to trial and, following the close of evidence, plaintiff agreed to settle on terms favorable to defendant, Jackson Walker's client.

Townes Van Zandt II, et al. v. Harold Eggers, Jr. (W.D. Tex.). Jackson Walker defended the former business partner and road manager of Texas songwriter Townes Van Zandt against claims brought by the deceased artist's ex-wife and children concerning the release of a series of live performances. The lawsuit settled.

James Avery Craftsman, Inc. v. Ronna Lugosch, et al. (W.D. Tex.) After receiving a letter regarding copyright infringement of its jewelry design, James Avery filed an action for declaratory relief against Jackson Walker's client trying to obtain home court advantage against the smaller jewelry company. JW was successful in proving the court lacked personal jurisdiction. The case was dismissed.

Science Applications Int'l Corp. v. Petris Technology, Inc. (E.D. Va.). Plaintiff, represented by Jackson Walker, alleged infringement of its e-commerce website computer software program relating to an Internet transaction platform and information management service for buyers and sellers to evaluate, buy, sell or lease oil and gas exploration and production properties. The lawsuit settled after discovery.

The Computing Technology Industry Ass'n, Inc. v. Garry L. Neale, et al. (W.D. Tex.). Plaintiff develops testing and certification exams for the computer industry. Defendant hired individuals to take plaintiff's exams and disclose exam information to defendant who then developed materials to "cheat" the exams. Jackson Walker filed the lawsuit and obtained a permanent injunction against defendant, with client's successful recovery of damages and attorneys' fees.

Scott White and Donnie Heyden v. KTEN Television Limited Partnership (E.D. Tex.). Jackson Walker represented defendant television station in this copyright infringement lawsuit involving the alleged use of plaintiffs' music in a television commercial. The case settled.

Lyn B. Stephenson v. The Houston Post Company (S.D. Tex.). After the court granted partial summary judgment in favor of Jackson Walker's client, The Houston Post Company, the parties settled the lawsuit.

O'Connor v. American Lawyer Media, L.P. (S.D. Tex.). In this copyright infringement and breach of contract action, Jackson Walker defended American Lawyer Media. The case settled before trial.

Maranatha Music, an unincorporated division of The Corinthian Group, Inc. v. Capital Cities/ABC, Inc. & Word, Inc. (W.D. Tex.). Copyright infringement and related causes of action arising out of a music distribution relationship. The lawsuit settled.

Representative Trademark/Lanham Act Cases
FPX, LLC v. Google Inc. , 276 F.R.D. 543 (E.D. Tex. 2011). 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.

The Procter & Gamble Company, et al. v. Amway Corp., et al. Jackson Walker defended Amway Corporation in this lawsuit involving a rumor about Procter & Gamble, including claims under the Lanham Act. After a two week jury trial, the court granted judgment as a matter of law and summary judgment for Amway. Dismissal of Amway was affirmed after two appeals to the Fifth Circuit Court of Appeals. 242 F.3d 539; 376 F.3d 496.

O'Grady v. Twentieth Century Fox Film Corp., et al. (E.D. Tex. [Texarkana]). Retired Air Force pilot Scott O'Grady sued Jackson Walker's client, Twentieth Century Fox, alleging (among other things) that the film company misappropriated O'Grady's name and likeness in the movie, Behind Enemy Lines, which admittedly was inspired by the pilot's true life experiences. As for plaintiff's claims on Twentieth Century Fox's production of the movie, the court granted summary judgment on grounds that protection of name or likeness under Texas law does not include a person's life story. The entire case settled shortly after jury selection.

Classic Ink, Inc. v. American Needle (N.D. Tex.). Jackson Walker represented American Needle, a U.S. sports apparel company, against trademark infringement claims relating to defunct sports team logos. After trial by jury, American Needle obtained a zero damages verdict.

Scholastic, Inc. v. Gabbart Enterprises, LLC (W.D. Tex.). Jackson Walker represented Scholastic, Inc. in this trademark infringement action, obtaining a favorable settlement for its client, including cessation of use the accused mark.

Summit Entertainment, LP v. Summit Productions, Inc. (C.D. Cal.). Jackson Walker represented defendant in this movie line of commerce trademark lawsuit that was resolved through a confidential settlement.

Flowbee International, Inc. v. Google Inc. (S.D. Tex.). Co-counsel for Google Inc. against the plaintiff's claim, that Google infringed the plaintiff's trademark. On Google's motion, the Court transferred the case to the Northern District of California.

De Boulle Diamond & Jewelry, Inc. v. DeBeers Diamond Jewellers Limited, et al. (N.D. Tex. -pending). Jackson Walker represents DeBeers in this trademark infringement action related to marks used in connection with the sale of diamonds, timepieces and jewelry.

KBR, Inc. et al v. KBR Equity Partners, LLC (S.D. Tex). Co-counsel for defendant in a trademark infringement lawsuit. After filing a motion to dismiss or, in the alternative, transfer to a more convenient forum the plaintiff filed a motion to compel additional discovery. JW's client defeated the discovery motion and the plaintiff dismissed its claims.

Holt Texas Ltd., et al. v. The Holt Companies, Inc., et al. (W.D. Tex.). Jackson Walker represented members of the Holt family business, which includes one of the largest Caterpillar dealers in the world and whose tradition goes back to the mid-1880s, when the founder produced his first horse-drawn "Link-Belt Combined Harvester." JW's clients asserted their trademark rights and JW obtained a settlement in which defendant was required to change its name and was enjoined from using the mark and any confusingly similar names.

Jet Solutions, L.L.C. and Bombardier Aerospace Corp. v. Jet Solutions, Inc. (N.D. Tex.). This case, in which Jackson Walker successfully represented plaintiffs, involved claims of federal trademark infringement, unfair competition, and dilution. JW obtained a judgment and permanent injunction and an award of damages for its clients.

Diego's Burritos, Inc. of San Angelo, Texas v. Gomez (N.D. Tex.). Representing the plaintiff in this trademark infringement action, JW successfully caused a competing restaurant to change its trade name and trade dress.

Nokia Corp. and Nokia Mobile Phones, Inc. v. Hypercel Corp. (N.D. Tex.). Nokia was successfully represented by Jackson Walker in this trademark and trade dress infringement lawsuit against a manufacturer of after-market cellular telephone accessories. The court entered an order permanently enjoining defendant.

Matthews v. Wozencraft (N.D. Tex.). Jackson Walker served as lead defense counsel in this lawsuit involving a claim of libel and invasion of privacy by misappropriation against JW's clients: Kim Wozencraft, an author, and her publisher, Random House. The trial court granted summary judgment for defendants and the case was affirmed on appeal in a case of first impression. The Fifth Circuit opinion is reported at 15 F.3d 432.

Natural Polymer Int'l Corp. v. S&M NuTec LLC (N.D. Tex.). Jackson Walker successfully represented the plaintiff in this action for declaratory relief involving defendant's claim to exclusive use of the color green with respect to dog treats. JW obtained summary judgment for plaintiff, securing a finding that the color green had not acquired distinctiveness as to defendant's products.

GeoGlobal Partners, LLC v. Peaktop International Holdings LTD, et al. (E.D. Tex. [Marshall]). Jackson Walker represented defendant Peaktop in this trademark infringement and federal unfair competition lawsuit over the plaintiff's alleged "OUR WORLD family of marks."

Sonia Smith v. St. Clair Entertainment Group, Inc and ARC Music Inc. (E.D. Tex.). Jackson Walker represented defendant St. Clair in this lawsuit alleging misappropriation of likeness and invasion of privacy stemming from the distribution of a CD containing plaintiff's picture. Favorable settlement and dismissal occurred after mediation.

Southwest Bank v. Southwest Securities Bank (N.D. Tex.). Plaintiff, represented by Jackson Walker, sued to enforce plaintiffs' service mark rights. Following months of discovery, preparation of expert reports and full briefing in response to defendant's motion for summary judgment, defendant agreed to change its name.

Advanced Personal Computing, Inc., d/b/a Liquid Networx v. Liquid Networks, Inc. (W.D. Tex.). Jackson Walker represented plaintiff in this trademark infringement lawsuit related to defendant's use of mark LIQUID NETWORKS. The case was successfully settled.

All Seasons Feeders v. Hunter Browning, Inc. (W.D. Tex.). Jackson Walker represented plaintiff in this trademark infringement and cyberpiracy case involving the defendant's domain name, allseasonsfeeder.com. Plaintiff owns a federal registration for the trademark ALL SEASONS FEEDERS, for wildlife feeders, namely deer feeders, as well as common law rights to that trademark. The litigation was resolved.

Pabst Brewing Company v. D.B. Miller, Inc. (W.D. Tex.). Pabst Brewing Company, Jackson Walker's client, brought this trademark infringement lawsuit against a beverage distributor to protect Pabst's trademark rights in LONE STAR beer. Defendant used LONE STAR SPRINGS for water, which Pabst claimed diluted the distinctive quality of and infringed the trademark rights in the LONE STAR mark. JW prevailed and the case settled.

Good News Communications, L.L.C., d/b/a Austin Monthly Magazine v. Austin Magazine L.L.C., et al. (201st Judicial District Court, Travis County, Tex.). Jackson Walker successfully defended Austin Magazine and its publisher against Austin Monthly. Plaintiff alleged that defendant's use of "Austin Magazine" infringed plaintiff's rights in the term "Austin Monthly." In addition to trademark infringement allegations, claims were made for statutory dilution, unfair competition and tortious interference. Plaintiff dismissed the lawsuit after JW filed a motion for summary judgment.

Alanric Food Distributors, Inc. v. The Centofanti Corporation, Luciano Centofanti and Gennaro Centofanti (W.D. Tex.). Jackson Walker represented defendants against a trademark infringement and unfair competition lawsuit concerning the use of CENTO & FANTI as a restaurant name. The case settled favorably before substantial legal fees accrued.

GTESS Corporation v. GTSS, Inc. (N.D. Tex.). Plaintiff, Jackson Walker's client, asserted common law trademark rights against a company using a confusingly similar trade name and domain name. In the settlement, defendant was required to change its name and was enjoined from using the mark and any confusingly similar marks.

Vitality Foodservice, Inc. v. Dispenser Services of Texas, Inc. and Dispenser Services of Houston, Inc. (N.D. Tex.). Jackson Walker represented plaintiff in this lawsuit which asserted claims against a former licensee using the plaintiff's trademarks, VITALITY and VITALITY EXPRESS. This was one of three lawsuits. In the other two lawsuits, one in Fort Worth federal court, and the other in Tarrant County District Court, Dispenser Services and related entities alleged damages in excess of $7 Million. With JW's assistance, Vitality forced its former licensee to cease using the trademark and the parties reached an overall settlement wherein Vitality paid less than the cost to prepare and try the three cases.

Jungle Laboratories v. Universal Aquarium Sys. (W.D. Tex.). Jackson Walker represented plaintiff in this lawsuit against a competitor using product names that infringed plaintiff's federal trademark registrations. JW successfully obtained judgment requiring defendant to change its product name, and defendant was permanently enjoining from using the mark and confusingly similar names.

Bernard T. Swift, Jr. d/b/a Texas MedClinic v. Robert Schultz, D.C., et al. (W.D. Tex.). Jackson Walker, representing plaintiff holding a federal service mark registration for TEXAS MEDCLINIC, sued a chiropractor who infringed that mark under an assumed name. JW obtained a judgment for its client requiring defendant to change his medical practice name and permanently enjoining him from using the mark and confusingly similar names.

Willbros USA, Inc. v. R. Smith (National Arbitration Forum). In this domain name dispute filed under the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN), Jackson Walker's client, Willbros, sought transfer of a registered domain name that allegedly created a likelihood of confusion with the Willbros trademarks. The National Arbitration Forum issued a decision in Willbros' favor.

Manchise, Inc. v. Matthew Mitchum (224th Judicial District Court, Bexar County, Tex.). Plaintiff, Jackson Walker's client, asserted claims against a former licensee wrongfully using plaintiff's trademark. With Jackson Walker's assistance, plaintiff was successful in forcing the former licensee to cease using the trademark.

Giant Merchandising v. John Does 1-100, individuals, Jane Does 1-100, individuals, and XYZ Company, business form, unknown, inclusive (W.D. Tex.). Jackson Walker successfully represented Red Hot Chili Peppers, their label and a merchandising company, in securing a nationwide seizure order to obtain unauthorized counterfeit and bootleg merchandise bearing the client's name and other protected marks.

Playboy Enterprises Int'l, Inc. v. Gregory Wroblewski (W.D. Tex.). Jackson Walker obtained an injunction, seizure order and damages in federal court on behalf of client Playboy Enterprises against various individuals who were posting Playboy's copyrighted images on their commercial websites. JW coordinated these actions with those of Netherlands counsel to also seize CDs that contained those copyrighted images that were being sold abroad by affiliates of the U.S. defendants.

City Public Service of San Antonio v. Constellation Power Source, Inc. (W.D. Tex.). Jackson Walker represented a utility company asserting common law and state trademark rights to the mark "CPS" against a competitor utility company based in Baltimore, Maryland. Defendant agreed to cease using the mark.

 
 
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