Michel Keck v. Alibaba.com, Inc., Case No. 17-cv-5672-BLF, U.S. District Court for the Northern District of California
Representing plaintiff on behalf of a class of visual copyright holders (e.g., artists) against Alibaba companies for contributory and vicarious copyright infringement. Alibaba is a Chinese company that operates a number of e-commerce web platforms similar to Amazon. The Alibaba IPO was the largest in history, and it is one of the top 10 most valuable companies in the world. Hundreds of thousands of counterfeit products, including artwork, are sold over the Alibaba platforms. The case involves counterfeit goods originating in China, which touches on significant U.S. trade issues and addresses whether companies like Alibaba can hide behind the Digital Millennium Copyright Act’s safe harbor while knowingly providing platforms for and facilitating the sale of counterfeit goods. The case addresses the use of class action litigation to enforce copyrights, and class-wide damages claims could total hundreds of millions, if not billions, of dollars.
Madison Oslin v. Interstate Resources, et al., MJG-12-3041 (D. Md. 2015)
As lead counsel for company president and another employee, Linda successfully defended claim of trade secret misappropriation and related claims. After removing case to federal court in Birmingham, Linda’s team secured dismissal of numerous claims and transfer to the U.S. District Court for the District of Maryland. Following extensive discovery and motions for summary judgment, the court granted summary judgment for all defendants on all remaining claims, and ruled that defendants were entitled to an award of attorneys’ fees under the state trade secret statute.
Grand Slam Club/Ovis v. International Sheep Hunters Association, CV 2:06cv4643-SLB (N.D. Ala. 2010)
As co-lead counsel, Linda successfully represented Grand Slam/Ovis on its claims of copyright and trademark infringement as well as intentional tortious interference with business and defended against counterclaims of tortious interference and breach of contract. After a two-week jury trial in January 2008, the jury rendered verdicts for our client on all counts, and awarded our client damages totaling $1.9 million. The court denied defendants’ numerous post-trial motions and entered a permanent injunction in favor of our client. Pursuant to a settlement agreement that avoided an appeal, the court entered a modified injunction in December 2010 and released $1.65 million to our client from defendants’ cash bond.
Wellborn Cabinet, Inc. v. Purple Bucquet, 2010 WL 5646327 (UDRP-ARB 2010)
Successfully challenged a domain name that infringed our client’s federally registered and common law WELLBORN trademarks and trade name in an arbitration proceeding pursuant to the Uniform Dispute Resolution Procedure. The arbitrator ruled in favor of our client and ordered that the challenged domain name be transferred to our client.
Moore-Handley, Inc. v. Handy Hardware (N.D. Ala. 2009)
Preliminary and permanent injunction secured for client ordering client’s competitor and former employees to honor non-compete agreements.
William E. Poole Designs, Inc. v. Southern Living, Inc., CV-05-B-65-S (N.D. Ala. 2008)
Defended Southern Living against copyright infringement claims in which the plaintiff sought damages in excess of $100 million based upon the alleged infringement of numerous house plans and artist renderings. On behalf of Southern Living, we also asserted counterclaims of trademark infringement in which we claimed that the plaintiff and its principal owner infringed the SOUTHERN LIVING mark by using the term in Google and Yahoo key word advertising campaigns, in its website metadata and in other ways on its website.
Rainmaker Systems, Inc. v. Randall-Reilly Publishing Company, LLC, Opposition No. 911773754 (TTAB 2008)
Prosecuted a trademark application for our client which was opposed by a company that owned federal registrations of similar marks. We defended the opposition and negotiated a settlement that was acceptable to our client and avoided infringement liability for the client.
Ace Hardware Corporation v. Charles M. Earnest, d/b/a Case Knife Outlet, 6:06cv4866, (N.D. Ala. 2007)
The firm successfully represented Ace Hardware in its suit against a hardware store owner who continued to display Ace trademarks after termination of his membership agreement with Ace. We sought and secured a preliminary injunction, which was entered by consent and after some discovery and a mediation, the case was favorably resolved by entry of a final judgment and permanent injunction in favor of Ace Hardware.
Hardware Resources, Inc. v. HGH Hardware Supply, Inc., et al., Case No. 5:06cv764 (W.D. La. 2006)
Represented a hardware supply company that sold corbels whose designs were alleged to infringe plaintiff’s copyrights. We negotiated a settlement involving a consent judgment and release, with each side to pay its own costs and attorneys’ fees.
EBSCO Industries, Inc. v. Belco Services, Inc., et al., CV-03-BE-3253-S (N.D. Ala. 2004)
Successfully represented a business unit of EBSCO Industries to enforce non-disclosure agreements and to protect trade secrets in an action against former employees and their newly formed company. Following two days of testimony, the court entered a preliminary injunction. We then negotiated a settlement that resulted in entry of a permanent injunction against all defendants. Other terms of the settlement are confidential.
Huggins v. Beacon Communications, LLC, CV-01-HGD-2919 (N.D. Ala. 2003); In re Huggins, 305 BR 63 (Bankr. N.D. Ala. 2003)
Defended movie companies against claims of copyright infringement by an author who claimed the 1999 Arnold Schwarzenegger movie “End of Days,” produced by our clients, infringed the copyright in the author’s novel “Cain.” We succeeded in transferring the case to California where our clients are located, and established that the author’s failure to list his copyright as an asset in his bankruptcy deprived him of standing to pursue the infringement claim.
MidSouth Companies, Inc. v. Southern Living, Inc., 2:03CV56-SAA (N.D. Miss. 2003)
Represented Southern Living, Inc. in a declaratory judgment action filed to resolve Southern Living’s claim of trademark infringement against the magazine MidSouth Living. After discovery, MidSouth agreed to discontinue use of “MidSouth Living” as part of a settlement, the terms of which are otherwise confidential.
Hopkins v. BP Oil, Inc., 81 F.3d 1070 (11th Cir. 1996)
Successfully defended BP against claims by three operators of BP gas stations of fraud and breach of contract. The plaintiffs claimed that they were shorted on gasoline they purchased when the gasoline lost volume, due to temperature change, after the gas was dispensed at BP’s terminal and before it was delivered to their stations. After a trial, the jury rendered verdicts against BP for breach of contract and fraud. We successfully appealed. The court on appeal held that the district court erred in denying BP’s motion for judgment as a matter of law on all claims against it, and therefore the court reversed the judgment below and rendered judgment in favor of BP.
Mark Lilly and Maxwell Marketing v. Smartmarketing & Syndications, Inc., arbitration award (1995)
Successfully defended an advertising agency against a copyright infringement claim by a former employee and successfully pursued a counterclaim for intentional tortious interference with business arising from the former employee’s notices to our client’s customers who were told that the advertising campaign was infringing. The claims were presented in an arbitration proceeding resulting in an award in favor of our client on all claims, including the counterclaim.
Tidmore Oil Co. v. BP Oil Co., 932 F.2d 1384 (11th Cir. 1991)
Successfully defended BP Oil Company against antitrust and breach of contract claims by one of its distributors which also operated retail stations under BP’s Gulf brand. The dispute arose when BP rejected Tidmore’s request to build a Gulf brand station at a location that was 2.6 miles away from a Gulf station operated directly by BP. The district court granted our motion for summary judgment on all claims and the judgment was affirmed on appeal.
Pamela Privett v. American Greetings Corp. (N.D. Ala. 1989)
We successfully represented American Greetings against a claim of copyright infringement by Ms. Privett that her poem had been printed in a greeting card. After discovery, we secured a summary judgment in favor of our client.
Wallace International Silversmiths, Inc. v. Wallace Companies, Inc., 7 U.S.P.Q. 2d 1723 (N.D. Ala. 1988)
Successfully represented Wallace International Silversmiths, owner of the federally registered marks “Wallace” and “International” for flatware and related goods, in its suit against an Alabama company that produced articles for use in customer promotions at supermarkets. We sought to enjoin the defendant from using “Wallace International,” a mark it had used since 1971. The defendant counterclaimed for infringement and the court entered summary judgment for our client on the counterclaim. Final judgment was later entered in our client’s favor.
Ramada Inns v. Gadsden Motel Co., 904 F.2d 1562 (11th Cir. 1986), reh. den. (1987)
Represented Ramada Inns in an action against a terminated licensee and its owners who continued to operate their motel as a Ramada Inns motel after the license had been terminated due to poor ratings and failure to pay franchise fees. After a bench trial, the district court awarded damages for trademark infringement and breach of contract. The final judgment included past due license fees of nearly $18,000, liquated damages under the contract of nearly $95,000, $20,000 in attorneys’ fees, and infringement damages trebled from $47,165 to $141,995. The infringement damages were based on lost franchise fees during a six-month hold-over period, interest on the lost fees, $5,000 to develop a new franchise in the area, and $15,000 for advertising to restore Ramada’s good reputation. On appeal, the court upheld all awards rejecting arguments that the damages were speculative and duplicative.
Citibank, N.A. v. Citibanc Group, Inc., reh. den. 724 F.2d 1540 (11th Cir. 1984)
Represented an Alabama bank holding company and its subsidiaries which operated eight banks against infringement claims of Citibank, N.A. The Alabama banks, which used “Citibanc” as part of their names, traced their names to the use of “City Bank of Tuskegee” since 1933 and other uses of “City Bank” in later years. The Alabama banks changed their names to “Citibanc of (name of city)” in 1977, following the holding company’s incorporation as Citibanc Group in 1972. The infringement claims were aggressively defended in a five-week bench trial at which Eugene McCarthy and other nationally prominent trademark authorities testified as expert witnesses. Unfortunately, the district court ruled in favor of Citibank, N.A. On appeal, a divided court upheld the district court’s ruling, holding, inter alia, that the Alabama banks did not have the right to change the spelling of their names from “City Bank” to “Citibanc” after 1960, when a federal registration of “Citibank” was issued to Citibank, N.A.
Arthur Young, Inc. v. Arthur Young & Co., 579 F. Supp. 384 (N.D. Ala. 1983)
Successfully represented Arthur Young, Inc., a national “big eight” accounting firm that was also engaged in the business of executive search and recruitment, in this declaratory judgment filed against it by an executive search firm whose president and sole shareholder was named Arthur Young. We filed a counterclaim seeking a declaration that plaintiff’s use of “Arthur Young” infringed as well as diluted our client’s trademark rights under federal and Alabama law. After a bench trial, the court entered a judgment and permanent injunction in favor of our client.
Jefferson County Pharmaceutical Association v. Abbott Labs, (N.D. Ala. 1978); affirmed, 656 F.2d 92 (5th Cir. 1981); reversed, 460 U.S. 150; reh. denied, 460 U.S. 1105 (1983)
Successfully defended the Board of Trustees of the University of Alabama which operates pharmacies in its hospitals against claims by retail pharmacies of alleged Robinson-Patman Act violations. The university pharmacies purchased pharmaceuticals at lower prices than were charged to the plaintiffs, and allegedly resold the pharmaceuticals in competition with the plaintiffs. The district court granted defendants’ motions to dismiss for failure to state a claim and the dismissal was affirmed on appeal. On writ of certiorari, the U.S. Supreme Court reversed the dismissal, but on remand, the university was ultimately dismissed upon demonstrating that its purchases were within the Nonprofit Institutions Act exemption under Section 13c of the Act, 15 U.S.C. § 13c.
VISA USA, Inc. v. Birmingham Trust National Bank, 212 U.S.P.Q. 115 (TTAB 1981); reversed, 216 U.S.P.Q. 649 (Fed. Cir. 1982)
VISA USA, Inc. and our client BTNB each sought to register similar marks for their check cashing services. In consolidated opposition proceedings filed by the parties, the TTAB ruled in favor of BTNB, based on a finding that VISA had acquired its mark by an invalid assignment. However, the ruling was reversed on appeal.
Campbell v. Seabury Press, 614 F.2d 395 (5th Cir. 1980)
Secured summary judgment, affirmed on appeal, on libel claims against client, book publisher.
Traditional Living, Inc. v. Energy Log Homes, Inc., 464 F. Supp. 1024 (N.D. Ala. 1978)
Successfully represented companies which produce catalogs depicting log home packages with sample home plans to protect them from copyright infringement and unfair competition from defendants, which had copied our clients’ catalogs and log home designs. We secured a preliminary injunction on behalf of our clients.
Pizitz, Inc. v. Pizitz Mercantile Co. of Tuscaloosa, 467 F. Supp. 1089 (N.D. Ala. 1979)
Successfully represented Pizitz, Inc., operator of several Alabama Pizitz department stores, which sought to establish a Pizitz store in Tuscaloosa, Alabama, where an unrelated Pizitz store had operated for over 60 years. After unsuccessful attempts by our client to avoid litigation through negotiations with the Tuscaloosa store, the multi-store Pizitz engaged our firm to pursue an action for declaratory judgment. As a result of evidence presented at a bench trial, we secured a favorable ruling that permitted our client to establish its Pizitz store in Tuscaloosa. The case was one of the first cases in Alabama involving a dispute of common law trademarks brought pursuant to Section 43(a) of the Lanham Act. The case was also novel for the court’s creative order that specified conditions for our client’s entry into Tuscaloosa, conditions the court devised as a means to avoid confusion.