Trademark

The typical Williams & Connolly approach to litigation – an aggressive discovery and motions practice, careful selection and use of experts and a constant focus on preparing a case for trial – are highly effective in legal conflicts involving trademarks, trade dress, false advertising and unfair competition.

The firm’s representation in trademark and unfair competition matters ranges from expedited preliminary injunction proceedings through trial and appeal.  The firm has represented clients in a wide variety of industries, including motion pictures, television, radio, telecommunications, consumer goods, industrial products, real estate, hotels, financial services and e-commerce.

In addition to prosecuting and defending contested claims, Williams & Connolly attorneys provide counseling on trademark and trade dress issues, including advice on clearance of proposed trademarks.  They also prosecute trademark registration applications, and represent clients before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office.

Williams & Connolly also has extensive experience litigating and advising clients about claims of false or deceptive advertising, including consumer fraud class actions, claims asserted by government enforcement agencies and Lanham Act claims between business competitors.  The firm's lawyers have litigated numerous false advertising claims in fields such as motion pictures, consumer goods, software, books, standardized test preparation and rental car services.

• United States Patent & Trademark Office v. Booking.com, 591 U.S. ___ (2020) – 8-1 ruling by U.S. Supreme Court holding that the addition by an online business of a generic top-level domain (".com") to an otherwise generic term can create a protectable trademark. 
• Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. ___ (2020) – Unanimous ruling by U.S. Supreme Court holding that plaintiffs in trademark infringement suits are not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award.
• FLIR Systems v. Fluke Corp. – Obtained a $4.1 million verdict on trademark infringement and false advertising counterclaims against competing maker of thermal imaging cameras.
• Vermont v. R.J. Reynolds – Defended a tobacco company in five-week bench trial of false advertising action.  The court ruled that most of the contested advertising claims were not false or misleading.
• Six Continents Hotels v. Holiday Inn Independent – In bench trial, successfully defended independent hotel company’s ownership of “Holiday Inn” trademark within Myrtle Beach, South Carolina against challenge by national chain.
• E-Cards v. King - Obtained a $4 million plaintiff's verdict involving similar domain names used by two e-commerce businesses.
• Talking Rain Beverage Co. v. DS Services Of America, Inc. – Represented beverage company asserting trademark and trade dress claims against competitor.
• ITT Corp. and Xylem Inc. v. Xylem Group – Trademark and trade name infringement case growing out of the naming of a newly independent public company.
• AOL v. NameMedia – Represented media company trademark owners in anti-cybersquatting and infringement action involving thousands of domain names.
• Verizon Wireless v. Nextel – Represented Nextel in trademark infringement and false advertising case.
• Clear Channel Communications v. Infinity Radio – Represented CBS Radio in a case against one of its principal competitors.
• Maljack Productions v. MPAA - A claim concerning the certification marks used to rate motion pictures.

Copyright

Williams & Connolly's copyright practice is broad and deep, and includes both litigation and counseling. Over the years, Williams & Connolly lawyers have handled everything from representing copyright holders in anti-piracy suits against various Napster-like services to litigating copyright issues involving the re-transmission of broadcast television over cable systems and to other countries by satellite. The firm has also handled numerous claims of infringement of photographs and writings in periodicals, and ideas and scripts for motion pictures.  Recently the firm has been involved in multiple plaintiff-side suits involving commercial real estate photographs and data, both in the U.S. and, as coordinating counsel, multiple jurisdictions abroad.

Many of the hallmarks of Williams & Connolly's commercial litigation experience transfer smoothly to legal conflicts involving copyright litigation: an aggressive and creative approach to discovery and motions practice, careful selection and use of experts, and a never-ending focus on preparing the case for trial.

The firm's copyright counseling includes pre-publication review of periodical publications and pre-production review of television shows and motion pictures. Williams & Connolly's lawyers also advise and negotiate matters allocating copyright ownership to the many authors, athletes, former government officials and television personalities the firm represents.

• Representation of major technology company in current U.S. Supreme Court case concerning whether copyright protection extends to a software interface and whether use of Java interfaces in creating an operating system constitutes fair use.
• Successful representation of an international commercial real estate data firm, in copyright and unfair competition litigation in federal court in Missouri and Pennsylvania, and the coordination of related copyright lawsuits abroad, including obtaining ex parte civil search and seizure orders against the defendant’s agents in The Philippines and India.  The developments in this litigation have been reported on by The Wall Street Journal, The American Lawyer, Bisnow, The Telegraph, The Business Journal, and Law360.
• Representation of major motion picture studios in successfully resolved copyright litigation against providers of peer-to-peer file-sharing software, including the landmark MGM v. Grokster case, in which the studios won summary judgment on liability and obtained permanent injunctions.
• Representation of a major television broadcaster plaintiff in successfully resolved breach of contract and copyright-infringement litigation arising from a satellite television provider’s service for making unauthorized copies of the broadcaster’s primetime programming for commercial-free playback.
• Representation of Recording Industry Association of America member record companies in a copyright lawsuit against the operators of the now-defunct Megaupload website and service, once one of the world’s largest facilitators of online piracy of sound recordings and other copyrighted entertainment content. 
• Representation of an international commercial real estate data firm in a copyright and unfair competition case in Los Angeles. The district court entered a permanent injunction, mandating the defendant’s use of a copyright filter, and requiring the payment of $10,000 per day, per photograph if further copyright infringement occurs. In addition, the defendant agreed to pay $10,000 per stolen real estate listing and $10,000 per infringed image. 
• Representation of a leading newspaper publisher in an online copyright-infringement case; the court’s grant of summary judgment included rejection of the plaintiff’s $30-million statutory damages theory.