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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. He has represented clients in the media, software, pharmaceutical, biotechnology, financial services, and other industries on a broad range of matters.
Mr. Frankel’s extensive intellectual property litigation work includes copyright, patent, trademark, anti-counterfeiting, and right of publicity matters. His numerous copyright and trademark infringement matters include 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 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. He has been counsel for plaintiffs and defendants in numerous patent infringement cases involving biotechnology, consumer appliances, and semiconductor technology. 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 a wide range of licensing disputes and consumer class actions, including unfair competition and false advertising claims under California Business and Professions Code Section 17200 and 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. He has represented numerous law firms in professional responsibility and conflict of interest matters. 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.
Mr. Frankel is also a recognized authority in the field of art law, where he has broad experience in disputes involving cultural property claims, title disputes, moral rights claims, and resale royalties. On behalf of the Museum of Fine Arts, Boston, he recently obtained summary judgement in a dispute over ownership of a valuable Austrian Expressionist painting. Museum of Fine Arts, Boston v. Seger-Thomschitz (D. Mass. 2009).
Representative Matters
- Representation of Samsung in defending copyright and patent claims concerning printer software.
- Representation of Yahoo! and Navigon, Inc. in trademark actions.
- 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 internet service provider against claims under Computer Fraud and Abuse Act and Electronic Communications Privacy Act.
- 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 against Iran.
- Representation of artist in suit under California Resale Royalties Act.
Honors and Rankings
- Euromoney's Benchmark Litigation, State Star, CA (2010)
- Northern California Super Lawyers, Intellectual Property Litigation (2007-2009)
- 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
- University of San Francisco School of Law, Adjunct Professor - Art Law (1999-present)
- Legal Aid Society-Employment Law Center, Board of Directors (2008-present)
- American Law Institute, Member
- Copyright Society of USA, Member (Chair, Northern California Chapter, 2009-2011)
- 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
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