Intellectual Property Litigation

Our IP Litigation Group regularly counsels clients regarding truth-in-advertising and claim-substantiation matters, both in the context of disputes and when companies are preparing their own marketing campaigns, including for nationally known businesses offering consumer products and services. We have decades of experience prosecuting and defending false/misleading advertising claims brought under Section 43(a) of the Lanham Act and related state laws; defending against Federal Trade Commission, Food and Drug Administration and other regulatory investigations; arguing matters before the National Advertising Division; defending consumer class actions and arbitrations regarding allegations of deceptive marketing and practices, data privacy and related issues; and working in the field of consumer and marketing research. Recent representations have included:

• Matthew Bender & Company in securing the dismissal of a putative consumer class action asserting consumer deception, fraud and breach of warranty concerning the company’s Tanbook publication, and obtaining unanimous affirmance of that dismissal on appeal, including a victory on the merits in the New York Court of Appeals.
• Fresh Del Monte Produce, Inc. in obtaining a multimillion-dollar jury verdict and injunctive relief in connection with willful false advertising of processed fruit products by Del Monte Corporation.
•  Intuitive Surgical, Inc. in pursuing and resolving counterclaims in multiple federal lawsuits in connection with false advertising and unfair competition claims by companies that market so-called “repair” services for the company’s robotic surgical instruments.
• A major insurance company in an arbitration against another large insurance company concerning claims and counterclaims for false advertising, unfair competition and violation of rights of publicity.
• MCS Advantage, Inc. and MCS Healthcare Holdings LLC in litigating claims and counterclaims arising out of a competitor’s advertising regarding eligibility for new supplemental benefits available through Medicare.
• Red Bull North America, Inc. and its corporate parent in defending and favorably settling multiple putative nationwide consumer class actions alleging consumer deception about the effectiveness of the company’s beverages.
• A major international pharmaceuticals company in providing legal and strategic advice concerning competitors’ marketing and promotional claims for pharmaceutical products.
• Estee Lauder Inc. and related entities in multiple consumer class action lawsuits involving advertising for skincare and cosmetic products.
• Anheuser-Busch, Inc. in several National Advertising Division investigations involving MillerCoors.
• Sirius XM in successfully defending state and federal putative consumer class actions pertaining to the company’s auto-renewal policy.
• A major medical device manufacturer in pre-litigation counseling concerning allegations of false advertising.
• Jackson Hewitt Tax Service as plaintiff in a false advertising lawsuit against H&R Block that was favorably settled on the eve of trial.
• Pfizer, Inc. in National Advertising Division challenges to promotional claims made by Bayer Corp. for nutritional supplements.
• The International Trademark Association in numerous amicus briefs to the U.S. Supreme Court and U.S. Circuit Courts of Appeals.

Copyright law is changing rapidly and dramatically, particularly in connection with the use of works on the internet and the rapid rise of artificial intelligence. We stay on top of new developments in the field and apply that knowledge not only to all phases of copyright disputes and litigations, but also when advising and representing our clients in connection with the creation, acquisition, enforcement and licensing of copyrighted materials, and use of generative and nongenerative AI models. Recent representations have included:

• Numerous companies, including a major music label, a global social media platform and professional sports organizations, in connection with copyright risk analyses, and content protection strategies, regarding generative and nongenerative artificial intelligence models.
• ZeniMax Media Inc. and its subsidiary Id Software in securing a $500 million jury verdict against Oculus VR Inc. and Facebook following a three-week trial. The case involved claims of copyright infringement, trademark infringement, trade secret misappropriation and theft of proprietary information (hardware and source code) by Oculus in order to develop its Rift virtual reality headset.
• Aboitiz Equity Ventures in securing quick resolution of copyright infringement claims asserted against the company.
• A major technology company in connection with copyright, trademark and trade dress analysis of virtual reality graphical user interfaces.
• Dell Inc. and EMC Corporation in a copyright infringement and breach of software license case in the District of Massachusetts.
• Youku Tudou Inc. in securing the dismissal of copyright infringement claims based on works uploaded to Youku’s server, and affirmance of that dismissal on appeal.
• The National Football League in numerous copyright enforcement matters, as well as in resolving a federal litigation brought by professional photographers alleging copyright infringement and antitrust violations.
• Major League Soccer, the National Hockey League and other professional sports organizations and teams in a variety of copyright enforcement matters.
• Extreme Networks, Inc. in defending against a federal lawsuit concerning alleged source code infringement.
• Several video game developers in connection with strategic advice concerning foreign and domestic copyright and trademark issues.
• MGA Entertainment in victories in federal district and appeals courts defending against copyright infringement and related claims involving the company’s “Bratz” dolls.
• The National Football League, the PGA Tour and the Office of the Commissioner of Baseball as amici in copyright infringement cases in multiple Circuit Courts of Appeals concerning the unauthorized retransmission of copyrighted content over the internet in violation of the public performance right under the Copyright Act.
• The Walt Disney Company, Netflix and Embracer Group in providing copyright analysis and advice in connection with major acquisitions of literary properties.

Skadden’s IP attorneys possess the legal experience, technical training and academic credentials critical to developing creative, forceful strategies for companies embroiled in patent disputes. Recent representations have included:

• Char-Griller in defending against patent infringement and trademark infringement claims brought by North Atlantic Imports, LLC concerning outdoor griddle products.
• Hyundai in securing an early, favorable resolution of patent litigation in the Eastern District of Texas before Honorable Chief Judge Rodney Gilstrap.
• Unified Patents in several ex parte reexamination requests filed in the U.S. Patent and Trademark Office to challenge the validity of certain patents.
• Alkar-RapidPak, Inc. in multiple patent matters, including recently securing summary dismissal of patent notification and unfair competition claims in Wisconsin state court.
• Combustion Emissions Reduction Technologies and Alistar Enterprises in a District of Delaware patent infringement suit relating to reduced emissions coal refining processes.
• Fortinet, Inc. in securing the dismissal of a patent infringement lawsuit brought by Realtime Data, LLC on the grounds that the asserted patents were directed to patent-ineligible subject matter, and affirmance of that dismissal on appeal.
• Tower Semiconductor Ltd. in defense of trade secret misappropriation, patent inventorship and unfair competition claims, and in pursuit of anti-SLAAP claims in the Central District of California and the U.S. Court of Appeals for the Federal Circuit.
• FTC Solar, Inc. in securing the transfer of patent infringement claims from the Western District of Texas to the Southern District of New York, and the dismissal of companion breach of license agreement claims.
• Endurance Specialty Holdings, Ltd. in securing the dismissal of a federal patent infringement lawsuit brought by SnowCast Solutions LLC alleging infringement of two of its patents and claims for deceptive trade practices.
• JPMorgan Chase in multiple litigations, including securing summary judgment dismissal of a patent infringement action brought by Pi-Net International, and securing affirmance of that decision at the Federal Circuit.
• Hexcel in a patent infringement suit in the District of Delaware concerning composite fiber material used in the manufacture of power generation windmill blades.
• FHE USA LLC as national trial counsel in a multidistrict patent enforcement campaign against competitors in the oil well pressure control equipment market.
• Inside Secure Corp. in defense of patent infringement claims by Pace Anti-Piracy, Inc. concerning its anti-piracy and security software.

We routinely are engaged by clients to enforce and provide counsel in connection with brands and source identifiers, including word marks, design marks and trade dress protection for product design and packaging. Our attorneys have extensive experience not only in connection with infringement and related litigation, but also day-to-day trademark enforcement matters, opposition and cancellation proceedings in the Trademark Trial and Appeal Board, consumer survey research, counterfeiting, and domain name and other internet-related disputes. Among several other industry representations, our team has secured successful enforcement results for a variety of sports industry clients, including professional sports leagues. We’ve also done extensive work on appellate matters and on behalf of the International Trademark Association. Recent representations have included:

• Peet’s Coffee, Inc. in litigating and settling disputes in federal court and the Trademark Trial and Appeal Board against Nespresso USA, Inc. and Société des Produits Nestlé S.A. concerning trademark rights including alleged trade dress rights in the product design of single-serve espresso capsules.
• Metacapital Management, L.P. in a federal lawsuit filed against Meta Platforms Inc. (Facebook) arising out of Meta Platforms’ adoption of “Meta” trademarks in connection with financial services.
• Numerous companies, including a major music label and a global social media platform, in connection with trademark and publicity rights risk analyses, and content protection strategies, regarding generative and nongenerative artificial intelligence models.
• A worldwide cryptocurrency payment infrastructure company in connection with both enforcing and defending the company’s U.S. trademark rights in the blockchain industry.
• The National Hockey League in litigating and securing favorable outcomes in federal litigations enforcing trademarks and trade dress rights against the sale of (i) shirts featuring trademarks of the Seattle Kraken hockey club and (ii) beer steins replicating the design of the Stanley Cup trophy.
• Char-Griller in defending against trademark infringement and patent infringement claims brought by North Atlantic Imports, LLC concerning outdoor griddle products.
• A major technology company in connection with copyright, trademark and trade dress analysis of virtual reality graphical user interfaces.
• Telegram Messenger, Inc. in obtaining a preliminary injunction against use of the company’s trademark by another party in connection with proposed cryptocurrency, and securing affirmance of that injunction on appeal.
• Pinduoduo Inc. and its affiliates in securing the dismissal of claims for contributory trademark infringement based on alleged unauthorized sales of products on its China-based e-commerce platform, and winning an award of nearly $400,000 in attorneys’ fees.
• Halewood Artisanal Spirits in securing the denial of a preliminary injunction in a case asserting trademark infringement, false advertising and unfair competition claims under the Lanham Act and California state law.
• The National Football League and Major League Soccer in numerous trademark and trade dress enforcement matters, including in regard to the use of club names and color combinations on websites and social media, and in connection with counterfeit and/or derivative products by retailers.
• Citigroup Inc. in numerous federal lawsuits and opposition proceedings concerning protection and enforcement of the “Citi” family of marks.
• The PGA Tour in securing a complete dismissal of Lanham Act and right of publicity claims brought on behalf of a putative class of Tour caddies.
• The International Trademark Association in numerous amicus briefs to the U.S. Supreme Court and U.S. Circuit Courts of Appeals.

With increasing employee mobility and the proliferation of available methods for viewing, sharing and storing data, trade secret disputes are on the rise. We combine our technical know-how and broad experience to assist clients in protecting their trade secrets and defending against misappropriation claims. Recent representations have included:

• Universal Alloy Corporation in securing a defense verdict rejecting trade secret misappropriation claims concerning high-strength aluminum alloy aircraft components following a jury trial in the Northern District of Georgia.
• Accutar Biotechnology Inc. and its chief discovery officer in the District of Connecticut in defense of trade secret, contract and unfair competition claims relating to cancer treatments, and in counterclaims alleging unclean hands and wrongful manipulation of inventorship.
• Aspen Technology in securing a favorable verdict, including substantial actual and punitive damages for trade secret misappropriation and copyright infringement, following a three-week jury trial against M3 Technology.
• Fujian Jinhua Integrated Circuit in a federal criminal trade secret case alleging economic espionage and the theft of trade secrets relating to technology involving the design and manufacture of DRAM.
• International Flavors and Fragrances Inc. in defeating a motion for a preliminary injunction and favorably settling claims for trade secret misappropriation and breach of contract related to a spray-drying technology.
• Tower Semiconductor Ltd. in defense of trade secret misappropriation, patent inventorship and unfair competition claims, and in pursuit of anti-SLAAP claims in the Central District of California and the U.S. Court of Appeals for the Federal Circuit.
• Valeant Pharmaceuticals International in an arbitration with Anacor Pharmaceuticals concerning trade secret and contract claims related to a treatment for onychomycosis.
• Walmart, Inc. against a multibillion-dollar claim by Zest Labs, Inc. for breach of contract and misappropriation of trade secrets relating to technology for forecasting produce spoilage and reducing fresh food waste.

We regularly counsel clients in resolving disputes specifically arising out of patent, copyright and trademark licenses; settlements; distribution agreements; development agreements; sponsorship/endorsement agreements; broadcasting agreements; nondisclosure agreements; and other technology-related documents. Adjudicated in federal and state courts, as well as in arbitrations, these disputes can require a deep understanding of the underlying technical subject matter and nature of the businesses at hand. Recent representations have included:

• Cellectar Biosciences, Inc. in litigating and favorably resolving a federal lawsuit (also involving the Wisconsin Research Alumni Foundation) seeking relief for misappropriation of the company’s biopharmaceutical intellectual property and putative assignment of that intellectual property by former Cellectar personnel.
• JPMorgan Chase in securing a $69 million judgment against DataTreasury for breach of contract involving a “most favored licensee” refund for a check-processing patent, and affirmance of that judgment on appeal.
• Fresh Del Monte Produce, Inc. in (i) securing a favorable jury verdict and substantial monetary damages against Del Monte Corporation concerning the scope of Fresh Del Monte’s contractual rights to use the DEL MONTE trademark on fruit, vegetable and produce products; and (ii) successfully defending against claims in a separate arbitration concerning exclusive rights to use the DEL MONTE trademark in connection with retail operations in the Middle East.
• Array Biopharma, Inc. in favorably resolving a New York state court action asserting that AstraZeneca breached a licensing agreement and underpaid Array in connection with AstraZeneca’s sublicensing of intellectual property rights in compounds for treatment of neurofibromatosis.
• The Ladies Professional Golf Association in commencing and successfully resolving a federal litigation and parallel international arbitration proceeding concerning a licensing dispute with its South Korean broadcasting partner.
• The Pan American Health Organization — a regional office for the World Health Organization — in securing a favorable settlement of an arbitration brought against Uniting for Health Innovation asserting breach of an affiliation agreement between the parties.
• Professional golfer Rory McIlroy in successfully defending against a federal lawsuit by Oakley, Inc. alleging breach of a product endorsement agreement.
• Mount Sinai School of Medicine in securing the successful resolution of a state breach of contract action relating to the alleged unauthorized use and sale of influenza vaccines.
• INSIDE Secure in obtaining the dismissal of a breach of contract claim stemming from a license for anti-piracy and security software brought by Pace Anti-Piracy, Inc. in both state and federal court.

In addition to our litigation docket, our IP litigators regularly utilize their knowledge about complex issues to advise companies on best practices in emerging fields — such as artificial intelligence — and support IP aspects of complex transactions. For example, we regularly assess IP assets, provide risk assessments on anticipated business activities, study freedom to operate and manage diligence. Our IP litigators also regularly provide opinions and strategic advice on patent, copyright and trademark infringement; validity and enforceability issues; portfolio management strategies; trade secret protection programs; and licensing. Some recent representations have included:

• The Walt Disney Company, Netflix and Embracer Group in providing copyright analysis and advice in connection with major acquisitions of literary properties.
• Numerous companies — including a leading music label and a global social media platform — in connection with trademark and publicity rights risk analyses, content protection strategies and licensing practices regarding generative and nongenerative artificial intelligence models.
• Numerous clients in patent freedom to operate and portfolio management, including in fields such as outdoor cooking products, renewable energy, pharmaceuticals, medical devices, construction equipment, agricultural products, telecommunications, and computer hardware and software.
• Trade secret clean room procedures for various clients, including in personal care products, aircraft design and life sciences.
• A major technology company in connection with copyright, trademark and trade dress analysis of virtual reality graphical user interfaces.
• Sports leagues and teams in connection with a host of trademark, copyright and advertising issues, including acquisitions, licensing, risk analysis, enforcement considerations and strategies for addressing ambush marketing.
• Patent and IP licensing for medical devices and pharmaceutical clients, including COVID-19 related licensing issues.