Carl C. Butzer
Carl C. Butzer, Chair of the Dallas Office Intellectual Property Group and the firm’s E-Discovery Practice, is a trademark, copyright, and e-discovery lawyer who, over the past 30-plus years, has developed nationally recognized skill in trademark and copyright litigation and a logical approach to electronic discovery. Carl represents
- Entertainment, media, and technology clients seeking to implement strategies to protect, defend, and monetize their trademarks and copyrights, and navigate emerging Internet and social media issues;
- Companies and individuals in social media, online piracy, domain name, technology, false advertising, trade secrets, copyright, and trademark litigation;
- Independent architects and architectural firms—large and small—with copyright and contract litigation, contract negotiations, design disputes, and cost-effective dispute resolutions;
- Photographers and artists in a variety of legal matters, including litigation and all creative content-related agreements, disputes, licensing, and IP rights;
In addition to helping his clients protect their trademark rights and copyrights around the world, Carl has represented clients’ IP interests in New York, California, Illinois, Virginia, Michigan, Texas, Tennessee, Rhode Island, Washington, and the District of Columbia. He has had the privilege of representing several entertainment, media, technology, and financial institution clients, including OWN: The Oprah Winfrey Network, Oprah Winfrey, Dr. Oz, Dr. Phil, Google, and Wells Fargo.
One of the most important virtues of a good lawyer is the ability — with care, efficiency and effectiveness — to help clients separate the wheat from the chaff. Carl is dedicated to his clients, which means tirelessly working with them to identify practical and strategic solutions to get them to where they want to be.
- In New York, secured a summary judgment for Oprah Winfrey against the plaintiff’s trademark infringement claims in Kelly-Brown v. Oprah Winfrey, Harpo, Inc., et al., 95 F. Supp. 3d 350 (S.D.N.Y. 2015), aff’d, 659 Fed. Appx. 55, 120 U.S.P.Q. 2d 1010 (2d Cir. 2016), cert. denied, 137 S. Ct. 1098, 197 L. Ed. 2d 183 (2017) (the plaintiff’s mark (OWN YOUR POWER) lacked independent trademark protection under the Lanham Act because the phrase as used by the owner of a motivational services business was merely descriptive of the owner’s services. See 2 McCarthy on Trademarks and Unfair Competition § 11:24 (5th ed.) (Illustrative list of marks held descriptive)).
- In Chicago, successfully represented Oprah Winfrey in a copyright trial over photographs in the book “Making the Connection”.
- In Texas and California, helped Dr. Phil enforce the copyrights in his television show. Peteski Prods., Inc. v. Rothman, 264 F. Supp. 3d 731 (E.D. Tex. 2017) (granting summary judgment, finding that the fair use doctrine did not protect a former employee from Dr. Phil’s copyright infringement claim).
- In New York, successfully represented Dr. Oz and his production company in a false advertising lawsuit.
- In California, after full briefing of class certification and summary judgment issues, helped Dr. Oz and Harpo Productions secure the dismissal of a putative false advertising class action lawsuit. Veda Woodard et al. v. Mehmet Oz, Harpo Productions, et al., 5:16-cv-00189-JGB-SP (Doc. 418) (March 27, 2020).
- In Texas, successfully represented Google Inc., AOL LLC, YouTube L.L.C., 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, L.L.C. v. Google Inc., 276 F.R.D. 543 (E.D. Tex. 2011); and he has represented Google in Gmail privacy litigation.
- In Michigan, successfully represented Wells Fargo in trademark infringement litigation.
- In Texas, successfully represented a company in a copyright infringement suit involving architectural plans.
B.A., The University of Chicago
J.D., University of Michigan Law School
LL.M., University of Cambridge, England
- United States Court of Appeals for the Fifth Circuit
- United States District Courts for the Northern, Southern, Eastern and Western Districts of Texas
- United States District Court for the Eastern District of Michigan
Representative Intellectual Property Matters
- Assisted in the successful representation of Oprah in a copyright infringement lawsuit brought in Chicago federal court.
- 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.
- Successfully represented 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 two copyright infringement lawsuits.
- 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 Electronic Discovery and Electronic Information Management Matters
- 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
- 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.
- BTI Client Service All Star
- Co-Author, “What Are the Chances of Recovering a Trademark Infringer’s Profits? Recent Opinions by the Supreme Court and Fifth Circuit Provide Some Answers”, JW.com, April 28, 2020
- Author, “U.S. Supreme Court Allows States to be ‘Digital Blackbeards’ – For Now,” ABA Intellectual Property Litigation Section Practice Points, April 21, 2020
- Author, “Supreme Court Fells North Carolina Statute on First Amendment Grounds, Recognizes Cyberspace and Social Media As the Most Important Places For the Exchange of Views,” JW.com, June 20, 2017
- Co-Author, “Upon Further Review: Supreme Court Ruling Means ‘Redskins’ Trademark Registrations Are Still In Play”, JW.com, June 19, 2017
- Co-Author, “Managing Your Online Content and Website,” JW.com, November 12, 2014
- Co-Author, “An Update on the Legal Implications of User-Generated Content: Facebook, YouTube, Twitter, and Instagram,” JW.com, November 11, 2014
- Co-Author, “The Best of Bilski,” JW.com, March 18, 2010
- Author, “Cybersquatting, Typosquatting, and Domaining: Ten years Under the Anti-Cybersquatting Consumer Protection Act,” October 17, 2009
- Co-Author, “Quick-Start Guide for Contacting Social Networking Sites About Copyright Issues,” September 18, 2009
- Co-Author, “ESI Top 10 in the Eastern District of Texas,” May 19, 2009
- Co-Author, “Legal Implications of User-Generated Content: YouTube, MySpace, Facebook,” May 18, 2008
- Author, “Texas Supreme Court Saves Insured from Coverage Waiver of Copyright Infringement Claim,” January 18, 2008
- Co-Author, ” Federal Court Shifts ESI Cost Burden From Subpoenaed Non-Party,” JW News E-Alert, July 20, 2007
- Author, “The Eastern District of Texas Comes to New York CLE Materials,” NYSBA – Intellectual Property Law Section Litigation Committee, March 22, 2007
- Author, “Tapping Officials’ Secrets: The Door To Open Government In Texas,” December 19, 2006
- “Discovery of Electronic Data: Client-Focused Strategies for Preservation, Collection & Production,” conference Managing Global Litigation Risks by Globalaw and Hanson Bridgett LLP, November, 2010
- “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?”, New York State Bar Association Intellectual Property Law Section Fall Meeting, October 2009
- “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,” Globalaw in North America E-Discovery Conference, April 2009
- “Fair Use Defense to Copyright Infringement,” Texas Wesleyan University School of Law, March 2009
- “A Proactive Approach to E-Discovery,” Tarrant County Bar Association’s (TCBA) Corporate Counsel Section, March 2009
- “I’ve Got A Trade Secret: Incorporating the Target Company’s Soft IP Assets in Your Due Diligence Analysis,” 6th Annual Pharma/Biotech IP Due Diligence Conference, January 2009
- “Roundtable on Internet Enforcement: WWW or Who What Where about Internet Enforcement,” host, sponsored by the International Trademark Association (INTA), October 2008
- “E-Mail Archiving in E-Discovery,” The International Litigation Support Leaders Conference, May 2008
- “Information Preservation in E-Discovery,” The International Litigation Support Leaders Conference, May 2008
- “Document Retention and Destruction,” sponsored by Lorman Seminar, December 2008
- “Legal Implications of User Generated Content: YouTube, MySpace, Facebook,” 45th Intellectual Property Law Conference sponsored by the Center for American & International Law, 2007
- “In-House Solutions to the E-Discovery Conundrum,” Association of Corporate Counsel – Austin, May 2007
- “The E-Discovery Amendments To The Federal Rules Of Civil Procedure,” Dallas Bar Association – Business Litigation Section, January 2007
- “Amendments To The Federal Rules Of Civil Procedure Relating To Electronic Discovery,” San Antonio, January 2006
- “What Do I Do Now? A Cost-Effective Approach to the E-Discovery Process,” Dallas, November 2006
- “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,” Austin, October 2006
- “Amendments To The Federal Rules Of Civil Procedure Relating To Electronic Discovery,” Houston, September 2006
- “Copyrights & Visual Art,” University of Dallas, November 2003 & December 2005
- Texas Bar College, Legal Honor Society
- International Trademark Association (INTA)
- Dallas Bar Association – Intellectual Property Section
- Trademark law
- Copyright law
- Trade secrets
- Trade dress
- Unfair competition
- Internet law
Including in the areas of:
- Social media
- Online piracy
- Digital licensing
- Brand protection
- Mergers & acquisitions
Prosecuted hundreds of trademark applications in the U.S. Patent and Trademark Office for companies in all types of industries, including telecommunications, computing products and services, information technology, health, broadcasting, financial services, 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.
Authored hundreds of agreements involving the licensing, assignment, and/or sale of intellectual property assets.
Electronic Discovery and Information Technology:
- Technology-assisted review
- Data processing
- Guidance on e-discovery protocols, including preservation and reasonable collection