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Our global copyright and trademark litigation practice has secured substantial victories in multiple bet-the-company litigation matters of national interest. We have represented plaintiffs and defendants in high stakes litigation for clients across a diverse range of businesses and industries.
Over the past two decades, Covington lawyers have brought or supervised hundreds of civil and criminal copyright-related actions against thousands of infringers throughout the United States and in over 60 countries. These actions range from traditional litigation over substantially similar and counterfeit works to actions against Internet, satellite and broadcast pirates. We have litigated copyright infringement cases in US district and appellate courts and have drafted and submitted amicus briefs on important copyright issues.
Covington has also conceived and implemented copyright-based enforcement campaigns against distributors of gray market products and packaging. We generally deploy small teams of lawyers, utilizing the firm's expertise in copyright law along with its reservoir of knowledge in substantive areas such as new technology, software, sports, media and communications, and luxury goods.
As part of these various efforts, Covington has built and trained a far-reaching network of local counsel and investigators, and has also developed important relationships with public authorities worldwide, including government officials, police, prosecutors, and customs authorities with responsibility for copyright enforcement.
Covington has litigated trademark infringement, trademark dilution, counterfeiting, cyberpiracy, unfair competition, gray market, and rights of publicity cases in courts throughout the United States on behalf of numerous clients, including American Automobile Association (AAA), American Express, Armani, Atari, Bacardi, Cartier, Coty, MasterCard, Microsoft, Montblanc, National Basketball Association (NBA) and its member teams, National Geographic Society (NGS), Public Broadcasting Service (PBS), SPI Group, Sun Life of Canada and Yahoo!.
We also have recovered hundreds of domain names registered by cybersquatters, utilizing enforcement programs featuring court actions, including in rem actions, under the Anticybersquatting Consumer Protection Act, as well as UDRP proceedings under the arbitration rules adopted by ICANN. We have litigated numerous opposition and cancellation proceedings before the United States Trademark Trial and Appeal Board. In addition to many important litigation victories, we have achieved significant favorable outcomes for our clients through mediation, arbitration, and negotiated settlements.
Representing SPI Group in a trademark dispute with a designee of the Russian Federation concerning rights to sell Stolichnaya vodka in the United States.
Won a $3.6 million jury verdict in California federal court after a jury found that apparel giant Quiksilver, Inc. willfully infringed World Marketing, Inc.’s longstanding federally registered “VISITOR” brand. Following a six-day jury trial, the eight-member jury unanimously found that Quiksilver willfully infringed World Marketing’s brand after launching its clothing and apparel brand VSTR, which it pronounced “visitor.” World Marketing, a family-owned company based in New York, has been selling clothing and apparel under its registered VISITOR trademark for more than 20 years, including at stores like Saks Fifth Avenue, Macy’s, and Men’s Wearhouse.
Secured a sweeping victory for our clients BMS and Eli Lilly. In 2006, BMS/Lilly hired Consumer Health Information Corporation (“CHIC”) to develop patient education materials for their injectable diabetes drug BYETTA. The contract expressly designated these as works made for hire and assigned CHIC’s interest in these materials to BMS/Lilly. BMS/Lilly later terminated CHIC, and CHIC sued for copyright infringement in D.C. district court in 2008, but voluntarily dismissed the action in 2009. Last July, CHIC sued again in the Southern District of Indiana. In an attempt to avoid the contractual ownership provisions, CHIC alleged “economic duress” and sought rescission. CHIC's infringement claim sought to recover our clients' profits, allegedly “in excess of several billions of dollars.” Judge Pratt dismissed the complaint with prejudice, ruling that two separate statutes of limitation barred CHIC’s infringement claim. First, the Court held that the claim was barred by the Copyright Act’s three-year statute of limitations. The Court accepted Covington’s argument that, because the case turned on ownership, not use, the continuing violation doctrine did not apply. The Court pointedly noted the inequity of allowing CHIC to wait while BMS/Lilly developed a market only to “pounce on the prize” years later. Separately, the Court held that the ownership provisions expressly assigned ownership to BMS/Lilly, and that CHIC’s attempted rescission was barred by California’s four-year statute of limitations. The Court also rejected CHIC’s outrageous attempt to invoke equitable tolling by arguing that its own (former) attorneys had dismissed its 2008 action without its consent and subsequently concealed the dismissal from CHIC.
Representation of Samsung Electronics Co. Ltd., Samsung Electronics America, Inc., and Samsung Networks, Inc. against claims brought by CCP Systems alleging copyright and patent infringement filed in the District of New Jersey.
Representation of The American Automobile Association, Inc. (AAA) in numerous federal and state court actions and arbitration proceedings against third party infringers of AAA’s famous marks.
Representation of Danish company ROCKWOOL Group in trademark infringement litigation in China involving its claim to the “ROCKWOOL” trademark and trade name.
Represented hair brush company in obtaining preliminary injunction against rival based on trade dress and design patent.
Representation of MasterCard in trademark litigation in the United States District Court for the District of Utah against a bank that was using a MASTER CARD mark for various banking services offered to account holders.
Representation of International Dairy Foods Association against a class action in Virginia state court alleging deceptive marketing of the potential weight-loss benefits of consuming milk.
Representation of InterMune against a false advertising claim brought under Section 17200 of the California Business & Professions Code in the Northern District of California.
Representation of Kentucky Fried Chicken (KFC) against false advertising claims based on a KFC promotion that were asserted as a class action in the Western District of Virginia.
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 (1st Cir. 2013), and claim to Austrian expressionist painting, Museum of Fine Arts, Boston v. Seger-Thomschitz (1st Cir. 2010).
Defeated defamation claims at pleading stage under California Anti-SLAPP statute. Troy Group, Inc. v. Tilson, 364 F. Supp. 2d 1149 (C.D. Cal. 2005).
Advised Cartier in an in rem action in the United States District Court for the Eastern District of Virginia to recover more than 100 infringing CARTIER domain names.
Representation of Corbis Corporation in numerous copyright enforcement actions to enforce rights in images licensed by Corbis.
Representation of Ringling Bros. in a petition for certiorari to the United States Supreme Court in an important trademark dilution case involving the mark THE GREATEST SNOW ON EARTH.
Represented international video game publisher in copyright infringement claims by major record labels and publishing companies regarding licensing of sound recordings and compositions. Successfully resolved all claims without litigation.
Representation of sanofi aventis in a trademark infringement and false advertising suit involving its FERRLECIT product and Watson Pharmaceutical’s use and advertising of NULECIT.
Representation of Rosie O’Donnell in an action in the United States District Court for the District of Oregon asserting trademark and right of publicity claims based on the ROSIE name and logo against a radio station using ROSIE as the station name and a very similar logo.
Representing Samsung in defending copyright and patent claims concerning printer software.
Represented Samsung in defeating right of publicity action brought by Olympic athletes.
Represented the National Football League in a copyright infringement action against a satellite carrier, successfully obtaining statutory damages and a permanent injunction prohibiting satellite retransmission of game telecasts originating in the United States to locations outside the United States.
Defending NFL in class action and direct antitrust challenges to its trademark licensing arrangements (American Needle v. NFL and Dang v. NFL).
Representation of the National Football League in multiple federal court cases to enjoin the unauthorized retransmission and public performance of NFL game telecasts across U.S. borders via satellite and the Internet and within U.S. borders where games are locally blacked-out, or otherwise unauthorized.
Obtained dismissal with prejudice of two cases against pharmaceutical companies alleging false advertising, unfair competition, and fraud claims. Jarrett v. InterMune (9th Cir. 2011); Ostergard v. Adams Respiratory Therapeutics, Inc. (C.D. Cal. 2008).
Representation of Microsoft in defeating copyright infringement claims concerning Bing search engine at pleading stage. Blues Destiny v. Microsoft Corp. (N.D. Fla. 2010).
Representation of numerous clients, including Microsoft, Verizon, New Skies Satellites, LIN Television, American Automobile Association and Ourisman Dodge in UDRP domain name proceedings.
Representation of Microsoft as a defendant in trademark infringement suits challenging keyword advertising practices and alleging reverse confusion.
Representation of McGraw-Hill and other major textbook publishers in gray goods trademark and copyright litigation in the United States District Court for the Eastern District of New York to prevent the illegal importation and sale over the Internet of textbooks published abroad and not intended for sale in the United States.
Representation of numerous clients, including Merck, Verizon, Spirits International, National Geographic Society, Public Broadcasting Services, M Financial, Promontory Financial Group, U.S. Soccer Federation, Lewis Brothers Bakeries and Rosie O’Donnell in opposition and cancellation proceedings before the United States Trademark Trial and Appeal Board.
Representation of National Geographic Society in the United States District Court for the District of Massachusetts against claims of infringement of an alleged family of ZONE marks asserted by the author of a series of ZONE books on health and nutrition; and in an opposition proceeding before the U.S. Trademark Trial and Appeal Board, claiming that applicant's EXPLORE CHANNEL mark is likely to cause confusion with National Geographic's EXPLORER marks.
Representation of NBA Properties and the NBA member teams in trademark litigation concerning the DREAM TEAM mark in the United States District Court for the Eastern District of Missouri, and also in anti-counterfeiting litigation concerning other NBA marks brought in the United States District Court for the District of Columbia against purveyors of counterfeit NBA merchandise in connection with an NBA All-Star game.
Representation of luxury goods makers Montblanc and Coty in trademark infringement litigation in federal district and appellate courts resulting in injunctive relief against unauthorized sellers of imported gray market goods.
Represented plaintiff in successful rehearing in Toney v. L'Oreal USA, Inc., 406 F.3d 905 (7th Cir. 2005), concerning Copyright Act preemption of state rights of publicity.
Representation of Out RAGE, LLC in a trademark infringement action against Barnett Outdoors, LLC in U.S. District Court in the Northern District of Georgia in connection with Barnett’s use of the RAGE trademark for a crossbow.
Representation of Parfums Givenchy in federal court litigation to enjoin over 40 wholesalers and retailers from distributing gray market perfume products bearing copyrighted designs not authorized for importation into the United States.
Representation of Public Broadcasting Services (PBS) in trademark litigation to recover the PBS.COM domain name in the United States District Court for the Eastern District of Virginia; and in an opposition proceeding before the U.S. Trademark Trial and Appeal Board, claiming that applicant's mark BE MORE RESPONSIBLE is likely to cause confusion with PBS's BE MORE mark.
Representation of Public Broadcasting Service (PBS) in a trial of false advertising claims brought by PBS challenging a video marketer’s use of the phrase “public television presents” in the Eastern District of Virginia.
Representation of Public Broadcasting Service in multi-party litigation before the Copyright Royalty Board seeking to recover public television's share of more than $750 million in royalties paid by cable operators for the distant retransmission of broadcast programming.
Representation of American Institute of Physics and the American Physical Society against false advertising claims based on their comparative surveys of scientific journals that were tried in the Southern District of New York.
Representation of American Express in the United States District Court for the Northern District of California against claims by Visa that Advanta, in conjunction with American Express, used Visa marks beyond the scope of a trademark license and contrary to the Lanham Act.
Representation of ASM Modular in false advertising litigation against a competitor in the modular flooring business in the District of Maryland.
Representation of Armani in trademark litigation in the United States District Court for the Eastern District of Virginia to recover the ARMANI.COM domain name from a man whose initials and last name are A.R. Mani.
Representation of American Petroleum Institute against false advertising claims based on its protocol for certification of branded motor oils that were tried in a preliminary injunction proceeding in the Southern District of New York.
Representation of Adams Laboratories in a false advertising action challenging pharmaceutical advertisements by Carolina Pharmaceuticals in the Southern District of New York.
Representation of Chloé in trademark litigation in the United States District Court for the Middle District of Florida concerning defendant’s use of the CHLOÉ mark for women’s clothing offered for sale on its website and for a women’s clothing store.
Representation of AT&T in a trial in the District of Maryland concerning claims by a competitor that AT&T’s advertisements for telephone calling cards were misleading.
Representation of Bacardi in its defense of a false advertising lawsuit concerning HAVANA CLUB rum in the District Court of Delaware.
Representation of Atari Games in litigation involving home video game trademarks in the United States District Court for the Northern District of California.
Representation of Cartier in an in rem action in the United States District Court for the Eastern District of Virginia to recover more than 100 infringing CARTIER domain names.
Representation of Bradley Pharmaceuticals in trademark litigation, including a preliminary injunction hearing, involving the KERALAC mark in the United States District Court for the Eastern District of Pennsylvania.
Representation of Business Software Alliance and software publishers in preparation of amicus briefs filed in appellate and Supreme Court cases involving seminal copyright issues, including the Napster, AOL and Grokster cases.
Representation of Yahoo! in a trademark infringement suit in the United States District Court for the Central District of California in which Yahoo! was accused of infringing the mark “Street Buzz” by using the term on its website in connection with web-based video segments.
Representation of Washington National Cathedral in a copyright action in the United States District Court for the Eastern District of Virginia to enjoin a major movie studio from its unauthorized use of a Cathedral sculpture in a popular feature film.
Representation of Wells Fargo Bank in numerous consumer class actions brought in state and federal courts in California invoking the state’s false advertising statutes with respect to the bank’s sales of products and services.
Represented Chloé in trademark litigation in the United States District Court for the Middle District of Florida concerning defendant’s use of the CHLOÉ mark for women’s clothing offered for sale on its website and for a women’s clothing store.
Successfully defended 20th Century Fox Film Corporation and Chernin Entertainment in a federal copyright infringement lawsuit filed in the Central District of California. After extensive litigation, the case settled, with a complete walkaway and limit on future suits.
June 17, 2016
LONDON—Euromoney Legal Media Group has selected four Covington lawyers for its annual “Europe Women in Business Law Awards.” The awards honor women in the legal sector across Europe.
The Covington lawyers recognized are:
Louise Nash, Best in Mergers & Acquisitions. Ms. Nash focuses on M&A and other transactional matters for clients in the consumer brands, ...
May 12, 2016, Webinar
May 11, 2016, Covington Alert
On Wednesday, May 11, 2016, President Barack Obama signed into law the Defend Trade Secrets Act of 2016 (“DTSA”), which creates a federal civil cause of action for trade secret misappropriation. The Senate passed the DTSA on April 4, 2016 by a unanimous vote of 87-0. The Senate bill (S. 1890) was passed by the House of Representatives without amendment on ...
April 14, 2016, BNA’s Patent, Trademark & Copyright Journal
February 2, 2016
February 26, 2015, The Hill
Congressman Howard Berman has co-authored this op-ed on what a 21st century copyright office needs:
"Copyright legislation is rarely partisan, but it can often become as heated and controversial among industry participants as any partisan issue. But whatever position one has on copyright policy, the copyright laws ‒ and the books, movies, music, photographs, ...
April 11, 2014
SAN FRANCISCO, April 11, 2014 — Covington & Burling partners Robert Haslam and Clara Shin were named to the Daily Journal’s annual list of “Top Intellectual Property Attorneys” in California. The list recognizes 75 litigators and 25 patent managers and patent prosecutors from around the state.
Ms. Shin was recognized for work representing clothing company ...
August 5, 2013
WASHINGTON, DC, August 5, 2013 — SPI, owners of the famous STOLICHNAYA brand, secured a significant victory today, defeating the Russian Federation’s nine-year battle to take SPI’s rights in the U.S. STOLICHNAYA trademark. STOLICHNAYA is one of the bestselling vodkas in the world.
The U.S. Court of Appeals for the Second Circuit affirmed complete dismissal of ...
SAN FRANCISCO, July 22, 2013 — A Covington trial team on Friday won a $3.6 million jury verdict in California federal court after a jury found that apparel giant Quiksilver Inc. willfully infringed World Marketing, Inc.’s longstanding federally registered “VISITOR” brand.
Following a six-day trial before U.S. District Judge David O. Carter in Santa Ana, ...
June 21, 2013
LONDON, 21 June, 2013 — Euromoney LMG awarded Covington partners Lisa Peets and Hilary Prescott the "Best in Copyright" and "Best in Investment Funds" awards at its Europe Women in Business Law Awards 2013 ceremony in London. The awards honour firms that set “the standard in terms of female-friendly work practices, and women leading the field in the legal sector ...
March 19, 2013, Intellectual Property Magazine
February 21, 2013, Law360
September 11, 2012, Covington E-Alert
June 20, 2011, Covington E-Alert
June 9, 2011
WASHINGTON, DC, June 10, 2011 — Covington & Burling LLP received 92 individual mentions and 32 practice mentions in the Legal 500 US 2011 edition. Legal 500 reviews the strengths and strategies of law firms in more than 90 countries in Europe, the Middle East, Asia, North and South America, and the Caribbean. Here are the Covington lawyers and practices ...
October 8, 2010
WASHINGTON, DC, October 8, 2010 — The U.S. Court of Appeals for the Second Circuit issued an opinion and summary order today in the case of Federal Treasury Enterprise Sojuzplodoimport (“FTE”), et al. v. Spirits International N.V. (“SPI”), et al., Case No. 06-3532-cv. At stake in the lawsuit are, among other things, the U.S. rights to the famous STOLICHNAYA ...
June 23, 2010
WASHINGTON, DC, June 23, 2010 — Covington & Burling LLP received 85 individual mentions and 23 practice mentions in the Legal 500 US 2010 edition. Legal 500 reviews the strengths and strategies of law firms in more than 90 countries in Europe, the Middle East, Asia, North and South America, and the Caribbean.
Here are the Covington lawyers and practices ...
WASHINGTON, DC, May 1, 2009 — The U.S. Court of Appeals for the Federal Circuit has issued an important decision in favor of Spirits International B.V. (SPI), the owner of the STOLICHNAYA vodka brand, in a trademark case involving its MOSKOVSKAYA vodka brand. Covington & Burling LLP represented SPI in the appeal.
The Court vacated a decision by the Trademark ...
WASHINGTON, DC, November 16, 2007 — Covington & Burling LLP was awarded the WORLDleaders International IP Award for trademark excellence at an awards dinner held at the Grosvenor House in London last night. The WORLDleaders IP Awards are presented annually by the publishers of Trademark World, Patent World, and Copyright World, the world’s leading titles for ...
WASHINGTON, DC, September 28, 2007 — In its inaugural year, The Legal 500 US has recognized Covington & Burling LLP’s practice excellence in 23 fields. Compiled in four volumes published in 2007, the Legal 500 US singles out the following practices:
Broadcasting and Digital
Copyright - regional
Copyright Litigation - regional
November 2006, Trademark World
April 7, 2006
WASHINGTON, D.C., April 7, 2006 - The STOLICHNAYA trademark decision handed down last Friday by the U.S. District Court for the Southern District of New York represents an important victory for defendant Spirits International N.V. ("SPI"), represented by Covington & Burling, and a major setback for the plaintiff, an agency of the government of Russia. At stake ...
October 7, 2005, Covington E-Alert
April 22, 2005
WASHINGTON, D.C., April 22, 2005 - Covington & Burling announced today that George Pappas, and Jeffrey Elikan have joined the firm as partners, and Kevin Collins has joined as of counsel. All three will be resident in the Washington, D.C., office. Messrs. Pappas, Elikan, and Collins, previously at Venable LLP, will join Covington's national patent and ...
December 2003, Pharmaceutical & Medical Packaging News
October/November 2003, Trademark World
November 2002, Covington E-Alert
May 8, 2002
May 8, 2002 - WASHINGTON, NEW YORK, LONDON & SAN FRANCISCO - Covington & Burling has promoted seven attorneys to counsel positions effective April 1, 2002. The new counsel are Dennis B. Auerbach, Wendy L. Feng, Marie A. Lavalleye, John B. Maclay, Lucinda Osborne, Lisa Peets and Elaine W. Stone.
Mr. Auerbach is Of Counsel in the Washington office. His ...
February 28, 2002
February 2002, Trademark World
11/21/2001, World eBusiness Law Report
September 5, 2001, Covington Report
May 21, 2001, Covington Report
April 1997, Intellectual Property
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