Carl C. Butzer
Carl C. Butzer is an intellectual property trial lawyer who, during his 33 years at Jackson Walker, has developed nationally recognized skills litigating disputes about trademarks, copyrights, trade secrets, social media, online piracy, domain names, technology, disparagement, and false advertising. He serves as the Chair of Jackson Walker’s Intellectual Property Group in Dallas and leads the firm’s E-Discovery Practice.
Carl has represented clients’ interests in the courts of New York, Delaware, California, Illinois, Virginia, Michigan, Colorado, 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, Fox News Network, CNN, ORIX USA, and Wells Fargo. Carl also has represented the interests of creative entrepreneurs – authors, photographers, artists, musicians, architects, and arts and crafts designers.
Carl is dedicated and accessible 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 federal court, 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 federal court, successfully represented Oprah Winfrey in a copyright trial over photographs published 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 real estate developer in a copyright infringement suit involving architectural plans.
B.A., The University of Chicago, with Special Honors
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
United States District Court for the District of Colorado
- 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
Representative Intellectual Property Matters
- 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 brought by 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 lawsuits brought in Michigan and Texas federal courts.
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.
- Helped develop 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.
- Lawdragon 500 Leading Litigators in America, 2022
- 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,” Jackson Walker Insights (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,” Jackson Walker Insights (June 20, 2017)
- Co-Author, “Upon Further Review: Supreme Court Ruling Means ‘Redskins’ Trademark Registrations Are Still In Play,” Jackson Walker Insights (June 19, 2017)
- Co-Author, “Managing Your Online Content and Website,” Jackson Walker Insights (November 12, 2014)
- Co-Author, “An Update on the Legal Implications of User-Generated Content: Facebook, YouTube, Twitter, and Instagram,” Jackson Walker Insights (November 11, 2014)
- Co-Author, “The Best of Bilski,” Jackson Walker Insights (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,” Jackson Walker Insights (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)
- International Trademark Association (INTA)
- Dallas Bar Association – Intellectual Property Section
October 7, 2022Attorney News
Jackson Walker Congratulates 36 Attorneys Named Among the Lawdragon 500 Leading Litigators in America
Jackson Walker announces the selection of 36 attorneys to Lawdragon’s inaugural list of the 500 leading litigators in America.
February 8, 2022Client Results
Jackson Walker Advises Innovative Risk Management in Acquisition by Boston Specialty Insurance Broker
Boston-based specialty insurance broker One80 Intermediaries has announced the acquisition of Jackson Walker client Innovative Risk Management (IRM) and its underwriting affiliate Programs Plus.
December 18, 2020Client Results
Jackson Walker Obtains Dismissal in Class Action Suit Regarding Dr. Oz Weight Loss Supplement Shows
A Jackson Walker team led by Houston partners Chip Babcock, John Edwards, and Trey McDonald obtained a complete dismissal of a high-stakes 2016 class action suit filed against clients Dr. Mehmet Oz, his production company ZoCo Productions, Harpo Productions, and Sony Pictures Television.
March 25, 2020Insights
U.S. Supreme Court Allows States to be “Digital Blackbeards” – For Now
Yesterday, in a unanimous decision, the Supreme Court held that Congress lacked authority to abrogate the States’ immunity from copyright infringement suits in the Copyright Remedy Clarification Act of 1990.
June 20, 2017Insights
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
Yesterday’s unanimous ruling by the U.S. Supreme Court in Packingham v. North Carolina is one of the first decisions in which the Court has addressed broadly the relationship between the First Amendment and social media, modern society’s “most important place . . . for the exchange of views.”
June 19, 2017Insights
Upon Further Review: Supreme Court Ruling Means “Redskins” Trademark Registrations Are Still In Play
Today the U.S. Supreme Court held the “disparagement clause” – a federal trademark provision that prohibits the registration of a trademark “which may disparage” . . . persons, . . . , institutions, . . . beliefs, or national symbols, . . .” – violates the First Amendment.
November 29, 2016Client Results
Jackson Walker Successfully Defends Oprah Winfrey in ‘Own Your Power’ Trademark Appeal
In October, the Second Circuit affirmed a March 5, 2015, summary judgment ruling in favor of Oprah Winfrey, company Harpo Productions Inc., and the Hearst Corp. regarding their use of the phrase “Own Your Power.”
March 18, 2015Client Results
Jackson Walker Successfully Defends Oprah in Trademark Suit Over ‘Own Your Power’
On March 5, 2015, the U.S. District Court for the Southern District of New York dismissed, for the second time, a trademark infringement lawsuit brought against Oprah Winfrey, her company Harpo Productions Inc., and the Hearst Corp. over the use of the phrase “Own Your Power” in the defendants’ magazine, events, and other communications.
November 12, 2014Attorney News
Carl Butzer, Bob Latham, and Jason Reinsch Speak on Online and User-Generated Content
Jackson Walker partners Carl Butzer, Bob Latham, and Jason Reinsch spoke at the 24th Annual Entertainment Law Institute on November 7, 2014, in Dallas.
November 12, 2014Insights
Managing Your Online Content and Website
By Shannon Zmud Teicher & Carl C. Butzer | Today, even Elvis has a Facebook page, Instagram and Google+ accounts, a Twitter handle, a Pinterest Board, and a mobile app. The Internet and the mobile electronic world have become the primary tools that entertainers, and artists of every kind, use to share and promote their works.