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Simon Frankel, a partner in the firm's San Francisco office, has broad litigation experience and specializes in Intellectual Property Litigation.
Mr. Frankel has represented clients in the media, software, pharmaceutical, biotechnology, financial services and other industries on a broad range of matters. His extensive IP litigation experience includes trademark, copyright, patent, counterfeiting, and trade secret matters. He has also handled numerous defamation actions for defendants, and has extensive experience with legal issues related to visual art and professional liability matters, as well as work with U.S. Customs and Border Protection on anti-counterfeiting issues. In addition, he has been involved in a wide range of commercial litigation matters, including contract matters, securities actions, licensing disputes, and consumer class actions. He has worked on over a dozen appeals in federal and state court and has argued cases in the United States Court of Appeals for the Ninth Circuit and the California Court of Appeal. He has also represented numerous law firms in professional responsibility and conflict of interest matters.
His intellectual property work includes cases such as Mattel v. Walking Mountain Productions, 353 F.3d 792 (9th Cir. 2003), in which he represented an artist sued by Mattel for trademark and copyright infringement for the use of Barbie dolls in his photographs, sold at galleries and art fairs. The artist obtained summary judgment and ultimately recovered over $2 million in attorney's fees and costs. Mr. Frankel also represented the plaintiff on rehearing in the Seventh Circuit in Toney v. L'Oreal USA, Inc., 406 F.3d 905 (7th Cir. 2005), concerning Copyright Act preemption of state rights of publicity. He has been counsel for plaintiffs and defendants in numerous patent infringement cases involving biotechnology, consumer appliances, and other devices. His defamation experience includes cases under the California Anti-SLAPP statute, such as Troy Group, Inc. v. Tilson, 364 F. Supp. 2d 1149 (C.D. Cal. 2005), in which the complaint against his client was stricken at the pleading stage.
Representative Matters
- Representation of trademark holder in Nav N Go, KFT v. Navigon, Inc. (N.D. Ill.)
- Representation of Yahoo! in trademark action.
- Representation of numerous pharmaceutical and consumer product companies against claims of false advertising, unfair competition, antitrust violations, and fraud in California state court and federal court.
- Representation of the Museum of Fine Arts (Boston) in litigation concerning ownership of an Oskar Kokoschka painting sold in Vienna in 1939, and in litigation brought by parties seeking to enforce a judgment against Iran on antiquities held by the MFA.
- Representation of Corbis Corporation in copyright enforcement matters concerning unauthorized use of visual images.
- Representation of artist in suit under California Resale Royalties Act.
Honors and Rankings
- Northern California Super Lawyers, Intellectual Property Litigation (2008, 2007)
- Legal 500, Trade secrets - Integrated Service, Advice and Litigation (2007)
- Daily Journal, Top 30 Intellectual Property Lawyers in California (2005)
- Artistic Freedom Award, American Civil Liberties Union Foundation of Southern California (2002)
Pro Bono
- Represented artist sued by Mattel for using Barbie doll in artistic photographs. Artist prevailed on summary judgment (affirmed by the Ninth Circuit) and ultimately recovered over $2 million in fees and costs. Mattel v. Walking Mountain Productions, 353 F.3d 792 (9th Cir. 2003).
- State of California v. L.T.: represented defendant in criminal misdemeanor trial; acquitted on all charges.
- Represented historical society in copyright action concerning enforceability of contractual restrictions on public domain works; case settled favorably for society.
- Advised traditional letter press on copyright and trademark issues.
Memberships and Affiliations
- Legal Aid Society-Employment Law Center, Board of Directors
- University of San Francisco School of Law, Adjunct Professor - Art Law (1999-present)
- American Law Institute, Member
- Copyright Society of USA, Member
- New Langton Arts, San Francisco, Board of Directors, Member (1996-2005); Secretary of Board (1998-2005)
- Intellectual Property Section of Barrister’s Club, Bar Association of San Francisco, President (1999-2000)
- American Bar Association
- State Bar of California
Publications and Speeches
- "Control of Public Domain Images, and Other Intersections of Copyright and Contract," Los Angeles Copyright Society (May 2008)
- "Nine Unanswered Questions After In re Seagate Technology LLC," Intellectual Property & Technology Law Journal (April 2008), Co-Author
- "Music to Their Ears," Copyright World (February 2008), Author
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