Simon J. Frankel

Partner

sfrankel@cov.com
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Covington & Burling LLP
One Front Street
San Francisco, CA 94111-5356
Tel: 415.591.7052


 

Practices

Education

  • Yale Law School, J.D., 1991
    • Yale Law Journal, Book Review Editor
    • Coker Fellow, Constitutional Law
  • Cambridge University, M.Phil., 1988
    • History and Philosophy of Science, National Science Foundation Fellowship
  • Harvard University, B.A., 1986
    • summa cum laude

Judicial Clerkship

  • Hon. Pierre N. Leval, U.S. District Court, Southern District of New York, 1992-1993
  • Hon. Stephen G. Breyer, U.S. Court of Appeals, First Circuit, 1991-1992

Bar Admissions

  • California


A litigator with more than two decades of experience, Simon Frankel focuses his practice on copyright and trademark litigation, technology and Internet privacy disputes, and legal issues related to visual art. He is the chair of the firm’s Intellectual Property Rights practice group.

Beyond a wide range of copyright and trademark litigation, Mr. Frankel’s intellectual property work includes anti-counterfeiting measures with U.S. Customs and Border Protection, right of publicity matters, and policy work before the U.S. Copyright Office in rule-making and related proceedings.  He has been recognized as a leading intellectual property lawyer by several publications, including Best Lawyers and Benchmark Litigation.

Mr. Frankel's other civil litigation work includes numerous licensing and technology 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 Computer Fraud and Abuse Act.

Mr. Frankel is 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 won summary judgment in a dispute over ownership of a valuable Austrian Expressionist painting.  Museum of Fine Arts, Boston v. Seger-Thomschitz (1st Cir. 2010).

Mr. Frankel is also an experienced mediator and a member of the Northern District of California’s Alternative Dispute Resolution panel and the International Trademark Association’s Mediator Network.

Representative Matters

  • Obtained complete dismissal with prejudice of a complaint against LinkedIn asserting claims under the Stored Communications Act and other statutes.  Low v. LinkedIn Corp. (N.D. Cal., 2012).
  • 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.
  • Representing Samsung in defending copyright and patent claims concerning printer software.
  • Represented Samsung in defeating right of publicity action brought by Olympic athletes.
  • On behalf of the Museum of Fine Arts, Boston, defeated claims by parties seeking to attach Persian antiquities in efforts to enforce a judgment against Iran.  Rubin v. Museum of Fine Arts, Boston (D. Mass. 2011).
  • Representation of Microsoft in defeating copyright infringement claims concerning Bing search engine at pleading stage.  Blues Destiny v. Microsoft Corp. (N.D. Fla. 2010).

Honors and Rankings

  • Best Lawyers in America, Recognized for Litigation - Intellectual Property (2012-2015)
  • Legal 500 US, Recognized for Intellectual Property: Copyright; Trademarks: Non-Contentious (2013-2014) and Litigation; Media, Technology & Telecoms: Marketing & Advertising and Technology: Data Protection & Privacy (2013)
  • Euromoney's Benchmark Litigation, State Star, CA (2013-2014)
  • Northern California Super Lawyers, Intellectual Property Litigation (2007-2014)
  • Daily Journal, Top 30 Intellectual Property Lawyers in California (2005)

Pro Bono

  • Represented artist sued by Mattel for copyright and trademark infringement for using Barbie doll in artistic photographs—Defeated preliminary injunction motion, 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.
  • Represented non-profit in obtaining TRO preventing use of confusingly similar trademark in political campaign.

Memberships and Affiliations

  • Stanford Law School, Lecturer-in-Law (teaching Art and the Law) (2012-present)
  • San Francisco Arts Commission, Commissioner (2013-present)
  • California State Bar Commission on Judicial Nominee Evaluation, Commissioner (2012-present)
  • Legal Aid Society-Employment Law Center, Board of Directors (2008-present)
  • American Law Institute, Member
  • Copyright Society of USA, Member (Trustee, 2012-present; Chair, Northern California Chapter, 2009-2012)
  • American Bar Association
  • State Bar of California

Publications and Speeches

  • "The First Sale Doctrine and the World of Digital Media," Video Games & Digital Media Conference, ABA Forum on Sports & Entertainment Industries, San Francisco (4/17/2014)
  • "Trends in Defamation Cases Involving Online Reviews," Law360 (11/27/2013), Co-Author
  • "Conflicting Duties: When to Repatriate (and When Not To)," Restitution and Repatriation: The Return of Cultural Objects (DePaul University Center for Art, Museum & Cultural Heritage Law (November 2013)
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