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Simon Frankel, a partner in the firm’s San Francisco office, has broad civil litigation experience. His practice focuses on copyright and trademark litigation, technology and Internet privacy disputes, and legal issues related to visual art.
Mr. Frankel’s extensive intellectual property litigation work includes copyright, patent, trademark, anti-counterfeiting, and right of publicity matters. Mr. Frankel successfully 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. In the anti-counterfeiting area, Mr. Frankel has worked extensively with U.S. Customs and Border Protection in protecting clients’ intellectual property rights.
His other civil litigation work includes numerous licensing disputes and consumer class actions, including unfair competition and false advertising claims under California Business and Professions Code Section 17200, and Internet privacy claims under the Electronic Communications Privacy Act and the Computer Fraud and Abuse Act. 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. In the Internet privacy area, he recently obtained dismissal of a complaint against LinkedIn asserting claims under the Stored Communications Act and other statutes. Low v. LinkedIn Corp. (N.D. Cal. Nov. 11, 2011).
Mr. Frankel is also a recognized authority in the field of art law, where he has handled disputes involving cultural property claims, title disputes, moral rights claims, and resale royalties. On behalf of the Museum of Fine Arts, Boston, he recently won affirmance of summary judgment in a dispute over ownership of a valuable Austrian Expressionist painting. Museum of Fine Arts, Boston v. Seger-Thomschitz (1st Cir. 2010).
Representative Matters
- Obtained dismissal with prejudice of two cases against pharmaceutical companies alleging false advertising, unfair competition, and fraud claims. Jarrett v. InterMune (N.D. Cal. Sept 1, 2010) (appeal pending); Ostergard v. Adams Respiratory Therapeutics, Inc. (C.D. Cal. Aug. 6, 2008).
- On behalf of an Internet service provider, obtained dismissal in two jurisdictions of putative class action asserting claims concerning online behavioral advertising technology under CFAA and ECPA.
- Representation of public broadcasting company against putative class action asserting electronic privacy claims related to downloaded mobile applications.
- Representation of Samsung in defending copyright and patent claims concerning printer software.
- Representation of Microsoft in defending copyright infringement claims concerning Bing search engine.
- Representation of Yahoo! and Navigon, Inc. in trademark actions.
- Representation of Corbis Corporation in copyright enforcement matters concerning unauthorized use of visual images.
- 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 attach antiquities held by the MFA in efforts to enforce a judgment.
Honors and Rankings
- Best Lawyers in America, Recognized for Litigation - Intellectual Property (2012)
- Euromoney's Benchmark Litigation, State Star, CA (2010-2011)
- Northern California Super Lawyers, Intellectual Property Litigation (2007-2010)
- Legal 500 US, Recognized for Trademarks - Litigation (2010)
- 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
- California State Bar Commission on Judicial Nominee Evaluation, Commissioner (2011-present)
- University of San Francisco School of Law, Adjunct Professor - Art Law (1999-present)
- Legal Aid Society-Employment Law Center, Board of Directors (2008-present); Chair, External Relations Committee (2010-present)
- American Law Institute, Member
- Copyright Society of USA, Member (Chair, Northern California Chapter, 2009-2012)
- 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
- "The Evolving Nature of Privacy 'Harm'," International Association of Privacy Professionals Web Conference (12/16/2011)
- "Barbie, Copyrights, Nazi Era Art, and the Public Domain: Some Tales of Art in Law," Colorado Bar Association's Intellectual Property Section (9/28/2011)
- "Legality of Search Engine Keywords Gets Personal," Daily Journal (9/15/2011), Co-Author
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