A litigator with first-chair trial and appellate experience, Clara J. Shin advises clients in complex technology, trademark and copyright, unfair competition, and other commercial disputes. Ms. Shin has helped to define the law in emerging areas by litigating landmark cases, including winning an important ruling defining the scope of software licensing and the first sale doctrine under copyright law. She has been recognized as a leading intellectual property lawyer by several publications, including Legal 500 US and Super Lawyers.
Most recently, Ms. Shin was lead counsel for the defendant and counterclaimant in one of the Daily Journal’s “Top Verdicts” of 2013, Quiksilver v. World Marketing, Inc., in which Covington & Burling secured a unanimous jury verdict in favor of World Marketing, Inc. on all causes of action—including willful federal trademark infringement, common law trademark infringement, and federal unfair competition—and punitive damages.
Ms. Shin’s practice includes expertise in securities litigation. She has represented defendants in securities class actions, derivative litigation, and investigations and proceedings commenced by government and regulatory agencies including the Securities and Exchange Commission, the Department of Justice, and FINRA.
Representing World Marketing, Inc. in securing a unanimous jury verdict on all of its causes of action, including willful federal trademark infringement, common law trademark infringement, and federal unfair competition; a permanent injunction barring Quiksilver from using any marks confusingly or deceptively similar to World Marketing’s VISITOR mark; punitive damages; and attorney’s fees and costs on the ground that Quiksilver’s infringement was malicious, fraudulent, deliberate, or willful. QS Wholesale, Inc. v. World Marketing, Inc. (C.D. Cal.).
- Representing Microsoft in asserting breach of contract and copyright infringement claims. Microsoft v. TRG Customer Solutions (D.D.C.) and Microsoft v. Ebix, Inc. (N.D. Ga.).
- Representing Scottish Equity Partners in asserting breach of contract claims related to earn-out payments due under a Share Purchase Agreement. Riverbed v. Scottish Equity Partners (San Francisco Superior Ct.).
- Representing directors in defending against a derivative shareholder and class action suit. Edwards v. Benson et al. (D. Utah).
- Representing broker-dealers and registered representatives in FINRA audits.
- Representing Abbott Diabetes Care Inc. and Abbott Laboratories in opposing a fees appeal to the Federal Circuit and in remand proceedings applying Therasense v. Becton, Dickinson, 649 F.3d 1276 (Fed. Cir. 2011). Therasense, Inc. v. Becton, Dickinson (N.D. Cal.).
- Represented Autodesk in a Ninth Circuit appeal of an adverse ruling regarding the Copyright Act's first sale and essential step doctrines. The Ninth Circuit ruled in favor of Autodesk, and denied a petition for en banc hearing of the decision. The Supreme Court denied Vernor's petition for a writ of certiorari. Vernor v. Autodesk, 621 F.3d 1102 (9th Cir. 2010).
- Represented Thomas Weisel Partners in asserting breach of fiduciary duty, trade secret, and Computer Fraud and Abuse Act claims with parties in India, France, and Hong Kong. After arguing and winning a summary judgment ruling of fiduciary duty liability, defendants settled the case. Thomas Weisel Partners LLC v. BNP Paribas (N.D. Cal.).
- Lead arbitration counsel for an investment advisor in defending against breach of fiduciary duty and suitability claims. All claims against the investment advisor were dismissed.
- Ms. Shin served as a White House Fellow and Special Assistant in the White House Office of the Chief of Staff. She also helped to start up AmeriCorps, a national service program launched under President Bill Clinton. Ms. Shin’s international experiences include working for the United States Agency for International Development in South Africa.
Honors and Rankings
- Legal 500 US, Intellectual Property - Copyright (2013)
- Northern California Super Lawyers, Intellectual Property Litigation (2013)
- Ms. Shin’s pro bono representations focus on the defense of constitutional rights, including federal campaign finance reform cases and challenges to the constitutionality of medical care provided by the California prison system.
Memberships and Affiliations
- State Bar of California
- American Bar Association
- Bar Association of San Francisco
- Smithsonian Institution National Portrait Gallery, Commissioner
- National Partnership for Women and Families, Director
- Rosenberg Foundation, Trustee (Vice-Chairperson)
- United States District Court Northern District of California Historical Society, Director
- White House Fellowship Regional Selection Panel, Co-Chairperson