Thor Y. Urness

American Bar Foundation, Fellow Tennessee Bar Foundation, Fellow Nashville Bar Foundation, Fellow Listed in The Best Lawyers in America® Commercial Litigation, 2007-2024 Litigation – Intellectual Property, 2011-2024 Trade Secrets Law, 2017-2024 Intellectual Property Law, 2005-2010 Martindale-Hubbell® AV Preeminent Rated Listed in Benchmark Litigation "Local Litigation Star," Tennessee, 2008-2021 "Case of the Year," Tennessee, 2012 (American National Property and Casualty Insurance trade secrets case) "Litigation Star", 2023-2024 Listed in Chambers USA Litigation: General Commercial, 2005-2012, 2014-2022 Intellectual Property, 2021-2023 Listed in Managing Intellectual Property "IP Star," Tennessee, 2014 Listed in Mid-South Super Lawyers Business Litigation, 2007-2023 Intellectual Property Litigation, 2006 "Top 100," Tennessee, 2006, 2008, 2018 Listed in Super Lawyers Corporate Counsel Edition, Business Litigation, 2008-2011 Listed in Nashville Business Journal, “Best of the Bar” Litigation, 2012 Intellectual Property Law, 2003, 2006, 2011-2012 Large Firm, 2015 Listed in VerdictSearch "100 Top Jury Verdicts," $26.5 million verdict against HCA subsidiary, 2004 Honored as an "Attorney for Justice" by the Tennessee Supreme Court Access to Justice Commission, 2018 $18.8 million jury verdict in tortious interference case We obtained a jury verdict and awards of attorney’s fees totaling nearly $19 million, including $16 million in punitive damages, for healthcare client SpecialtyCare IOM Services, LLC on its business tort claims against Medsurant, a competitor provider of intraoperative neuromonitoring (IOM) services.  SpecialtyCare acquired substantially all the assets of IOM competitor ProNerve, which Medsurant also wanted to acquire.  SpecialtyCare claimed that Medsurant procured breaches of agreements between ProNerve and its employees and hospital customers and that Medsurant tortiously interfered with existing and prospective business relationships between ProNerve and its employees and hospital customers, resulting in substantial business of ProNerve being taken by Medsurant before SpecialtyCare closed on its acquisition of ProNerve.  In discovery, a motion to compel filed by SpecialtyCare was granted after many lengthy hearings, but Medsurant did not produce all requested documents.  SpecialtyCare then filed a motion for sanctions, and after many more lengthy hearings and after Medsurant’s initial counsel were replaced by a second set of lawyers, the Court entered a default judgment as to liability due to Medsurant’s continuing failures to obey the orders of the Court as to discovery.  Medsurant then engaged a third set of lawyers and shortly before trial produced in excess of 160,000 pages of documents, which included key documents we used at trial to demonstrate that Medsurant engaged in a concerted effort to move employees and business from ProNerve to Medsurant that included the wrongful copying and use of information brought to Medsurant by a ProNerve employee with the knowledge of Medsurant’s principals.  Press articles on the verdict appear in the Nashville Business Journal, Nashville Post and Law360. Summary judgment granted, expansive trade secrets preemption test upheld by Tennessee Court of Appeals We obtained summary judgment for our client based on the argument that the plaintiff’s business tort claims were preempted by the Tennessee Uniform Trade Secrets Act (adopted in 2000 after Thor Urness of the firm led the initiative for its adoption).  The plaintiff alleged a host of common law business tort claims, including at one time or another conversion of confidential customer information and proprietary business information, breach of fiduciary duty and duty of loyalty and aiding and abetting the same, unfair competition, intentional interference with business relations, trespass, and civil conspiracy.  The Tennessee Court of Appeals upheld the trial court’s adoption, on summary judgment in favor of our client, of the expansive “same proof” standard of Hauck Manuf. v. ASTEC Indus., Inc., 375 F. Supp. 2d 649 (E.D. Tenn. 2004), under which a claim will be preempted when it necessarily rises or falls based on whether the defendant is found to have “misappropriated” a “trade secret” under the Act.  Ram Tool & Supply Co. v. HD Supply Construction Supply, Ltd., No. M2013-02264-COA-R3-CV, 2014 WL 4102418 (Tenn. Ct. App. Aug. 19, 2014). Successful defense and prosecution of false advertising claims We represented a pet food producer in a false advertising case brought by its market-leading competitor. We were hired to replace lead and local counsel and amended our client’s pleadings to bring vigorous false advertising and other business tort counterclaims against the plaintiff. We successfully employed a strategy of aggressive discovery and thwarted the plaintiff’s voluminous motion practice, leading to a confidential settlement of our client’s counterclaim within six months of our engagement. We were also successful in curtailing broad discovery sought by the plaintiff, thereby saving our client hundreds of thousands of dollars in legal and eDiscovery vendor fees, the court finding that it would not permit the discovery “fishing expedition” sought by the plaintiff. $26.5 million jury verdict in trade secrets case The information technology subsidiary of HCA, Inc. sued our software developer clients for alleged trade secrets misappropriation. We filed a counterclaim for defamation and interference with prospective business relationships. Following a two-week jury trial, the jury returned a verdict in favor of our clients on the trade secret misappropriation claim and awarded them $1.5 million in compensatory damages and $25 million in punitive damages on their defamation counterclaims. The verdict was listed in The National Law Journal's Top 100 Verdicts of 2004. Successful resolution of bet-the-company business tort litigation We represented a startup health care company in a suit filed by a large competitor claiming misappropriation of trade secrets, violation of confidentiality and non-compete agreements and intentional interference with business relations. In this bet-the-company case, we obtained a favorable settlement for our clients after more than 500 court filings, approximately 50 court hearings before four judges, more than 60 depositions, and four days of mediation before a panel of three mediators. The confidential settlement included providing authority to our client to publicize the resolution of the case, including that it paid no money to its competitor and that there was no finding or admission of wrongdoing. Successful representation of appliance maker in insurance coverage dispute over false advertising claims We represented a manufacturer of household appliances in its dispute with its insurance carrier over coverage for false advertising and unfair competition claims brought by a competitor. We caused the carrier to provide a defense and the case was resolved successfully after pursuing an aggressive strategy that included arguing the carrier had waived policy defenses. Successful defense of Fortune 500 software company We defended a Fortune 500 software company in a suit brought by The Metropolitan Government of Nashville and Davidson County (Metro), which claimed that our client’s software did not meet the specifications of Metro’s request for proposal and that our client defrauded Metro. We engaged in a strategy of pressing Metro for an early expert witness report and learned in discovery that their expert rendered his opinions without reviewing the subject software, which enabled us to file a strong motion to exclude Metro's expert. We also developed proof of Metro's spoliation of evidence, a motion as to which was also pending at the time of settlement. Each of these motions contributed to the favorable settlement. We were also successful in limiting Metro's discovery of complaints by third parties about the subject software, which helped reduce our client's legal fees. The case was a high profile case for our client and Metro was seeking approximately $9 million, but we were able to settle the case favorably for a fraction of the amounts sought by Metro. Federal injunction of blogger We represented the plaintiff in a trade secrets and copyright action involving novel issues of law pertaining to the use of blogs aggregating consumer complaints and obtained a permanent injunction for our client after the company’s regular counsel advised the client that this relief could not be obtained. Federal injunction against insurance agent We represented the plaintiff insurance company in a trade secrets claim against a terminated agent, obtaining a TRO then a permanent injunction, enjoining the use of our client’s trade secrets. Arbitration award for household appliance maker In this contract claim for over $500,000 in alleged costs savings plan services, plus attorney’s fees, we obtained an award in our client’s favor and the plaintiff took nothing and was ordered to pay all arbitration fees, including the fees of the arbitrator for the three-day arbitration hearing. Arbitration award for health care company in software dispute In this software performance dispute we obtained an arbitration award after a three-day hearing for the return of all monies paid by our client (approximately $300,000) to a software company, including an award of our attorney’s fees and the arbitrator’s fees. Dismissal of Civil RICO claims The plaintiffs alleged that the defendants (our clients) committed retaliatory discharge, civil conspiracy and were engaged in a RICO conspiracy in connection with the corporate defendants’ truck driving school. We achieved dismissal of all counts of the complaint. Successful defense of major real estate broker in copyright action The plaintiff, a publishing company, sued our client, one of the nation’s largest real estate companies, for breach of a contract to produce customized real estate agent magazines, copyright infringement, unfair competition, intentional interference with business relationships, and violation of the Tennessee Consumer Protection Act, and aiding and abetting a breach of fiduciary duty, and seeking approximately $1 million in damages. We successfully achieved the dismissal of the entire complaint by filing a motion to dismiss, which was granted by the federal judge. Federal jury verdict for misappropriation of trade secrets We obtained a judgment for compensatory and punitive damages, attorneys' fees and an injunction in a federal jury trial in Georgia for our banking software client against its former chief software developer after the jury found misappropriation of our client's trade secrets and software. Reversal of jury verdict in breach of contract and business tort litigation against OEM We represented a Tier One automotive seat assembly manufacturer in a suit in Henderson County, Tennessee, filed by a metal coatings supplier for breach of contract and business tort claims, including failure to follow OEM hydrogen embrittlement relief specifications and PPAPs. We obtained a rare reversal of an adverse jury verdict based on juror misconduct. The case was resolved on favorable terms after dismissal of all business tort claims before a scheduled second trial. Favorable settlement in dispute involving software We obtained a favorable settlement of a dispute with an outsourced IT vendor in Chancery Court for Davidson County, Tennessee where our client complained of being sold expensive "vaporware" by Computer Associates. Representation of engineering firm in disputes with automotive suppliers and in economic espionage action We represented an engineering firm engaged in the design and manufacture of automated assembly equipment in various actions in Michigan and Tennessee, including disputes with automotive suppliers regarding assembly and stamping equipment and safety seal manufacturing equipment. We also represented this client in connection with an economic espionage action and assisted with the federal prosecution of a former employee who attempted to convey trade secrets of our client's customer to its competitors. Representation of technology company in litigation and arbitration We obtained a favorable settlement in state court litigation in Charlotte, North Carolina, in which our client, a provider of Internet connectivity and disaster recovery services, claimed that the defendant systems integrator sold it a far more expensive data storage and networking system than was appropriate. We also represented this client in a directors and officers insurance coverage dispute in arbitration arising from the indemnification of a former CEO of our client, which was resolved favorably. Litigation against OEM to prevent unilateral price reductions and negotiated continuation of business We represented a Tier One engine cradle and suspension assembly manufacturer in a suit against a major automotive OEM in an attempt to prevent further unilateral price reductions under long term supply agreements as part of the OEM's effort to cut costs and avoid bankruptcy. Our client filed suit in Warren County, Tennessee, and the OEM filed suit against our client four days later in Macomb County Circuit Court, Macomb County, Michigan. The Michigan court refused to dismiss the case, finding venue proper in Michigan. The Tennessee court found the OEM long term supply agreement venue provision vague and refused to dismiss the case, causing the OEM's CEO to instruct the OEM’s worldwide purchasing chief to settle the case, putting an end to the unilateral price reductions. The case resolved on favorable terms after four days of settlement negotiations with our client remaining as an OEM supplier. We also revised our client's terms and conditions of sale and purchase subsequent to settlement of the OEM litigation and continue to assisted this client on various matters in connection with its relationships with other OEMs. Judgments against keyword advertisers For our insurance agency client we sued seven web site operators who were engaging in diversion of web site traffic intended for our client through key word advertising and other search engine optimization means. We obtained judgments including payment of attorney's fees against five defendants and cessation of the offending practices as to all defendants. Judgment in federal infringement case for discovery abuse We represented a major entertainment company in trademark and copyright infringement against an individual and his company for making unauthorized use of our clients’ intellectual property and our client was awarded an injunction, a default judgment in excess of $2 million and attorney’s fees due to defendants’ concealment of records and other discovery misconduct. Defense jury verdict in trademark infringement case We obtained a unanimous jury verdict for our hotel franchisor client in an $11 million claim by the owner of federal trademark registrations, the plaintiff claiming that our client’s hotel brand was confusingly similar to its well-known brand. Confidential settlement for catastrophic brain injury in dram shop case We represented the family of a teenager who consumed beer illegally sold by a convenience store operator and suffered a catastrophic brain injury. We reached a multi-million dollar settlement with the convenience store operator paying its insurance policy limits and also contributing a seven-figure amount on top of such coverage. Judgment for famous mark client in federal bench trial in Philadelphia We tried a service mark infringement and dilution case in federal court in Philadelphia for a major international distributor of Bibles. We obtained a judgment for our client. Anti-Spamming Legislation Initiated first case in the country to apply Tennessee’s anti-spamming legislation, resulting in consent judgment Domain Name Dispute Policy Initiated first case in the country under second revised Domain Name Dispute Policy Economic Espionage Act Assisted federal prosecutors in first case prosecuted in Tennessee (third nationwide) under federal Economic Espionage Act, resulting in successful criminal prosecution related to attempted dissemination of trade secrets Uniform Trade Secrets Act Initiated successful drive for Tennessee’s passage of the Uniform Trade Secrets Act Litigation and Arbitration for an Internet Marketer Litigation and arbitration proceedings for an Internet marketer against a customer that misappropriated client’s trade secrets, resulting in favorable settlement Representation of Major Musical Instrument Maker Representation of major musical instrument maker in multiple trademark infringement actions Represented National Apparel Retail Chain Represented National Apparel Retail Chain against claims of trademark infringement involving “gray goods” Representation of Major Apparel Manufacturer Representation of Major Apparel Manufacturer in multiple trademark infringement actions in state and federal court Successful Jury Trial in Florida Successful jury trial in Florida involving claims of state law service mark infringement for a small hotel against a national hotel chain Representation of Numerous Start-Up Internet Companies Representation of numerous start-up Internet companies and advice on intellectual property issues Representation of Numerous Internet Companies Representation of numerous Internet companies in domain name disputes with cybersquatters Representation of a Health Care Startup with Internet Business Model Representation of a health care startup with Internet business model in corporate organization, merger, shareholders’ and consulting agreements, licensing and trademark registration, and employment, non-competition and confidentiality agreements Representation of Internet Company Representation of Internet company in connection with multiple rounds of private offerings Preparation of Web Site Access Agreements Preparation of web site access agreements, disclaimers, legal notices for numerous Internet companies Defending Copyright, Trademark and Service Mark Infringement Cases Defending copyright, trademark and service mark infringement cases for numerous Internet and new media clients Represented Engineering Company Represented engineering company in litigation regarding Internet publication of trade secrets, resulting in judgment against defendant Computer Software Performance Litigation Computer software performance litigation in Tennessee, Alabama, Georgia, Missouri, Pennsylvania and Wisconsin for both licensors and licensees of enterprise software systems Representation of food manufacturer in trade dress action    Representation of Major Entertainment Company Representation of major entertainment company in trademark infringement action involving record label Special Intellectual Property Counsel Retention by insurance company as special intellectual property counsel in representation of apparel company in defense of trademark and copyright infringement action Representation of Multiple Clients In Audits Representation of multiple clients in audits by industry software copyright compliance organizations Representation of Various Religious Publishers The firm represents several religious publishing companies based in Nashville on matters relating to intellectual property protection, publishing agreements and vendor agreements, as well as the publishing arm of a major denomination based in New York. For example, we serve as primary outside counsel for Church Publishing, Inc., the publishing arm of the Episcopal Church, and advise them on a wide variety of matters, including intellectual property protection, publishing contracts, multimedia, web site issues, vendor agreements, music publishing, and software development and licensing. The Methodist Church’s and the Southern Baptist Convention’s publishing operations are also based in Nashville, and we have long provided intellectual property advice to these organizations. We have also represented the United Methodist Publishing House, The General Board of Discipleship and the General Board of higher Education and Ministry for many years, including on intellectual property and First Amendment matters. Church Publishing Incorporated, Civil Action No. 4:11cv658 We represented the publishing arm of the Episcopal Church in this dispute with the Godly Play Foundation, the licensor of a leading curriculum for Christian education of young children. This was a sensitive matter for the Episcopal Church’s publishing house in that it involved a public rift that received attention from a group of bloggers. That we were asked to handle this sensitive matter for this New York-based client was an honor and a genuine compliment. We resolved the matter after two difficult mediation sessions, the second with a federal district judge. DMCA Take-Down Notice The firm filed DMCA take-down notices with an “app” developer who was infringing our client’s literary and musical copyrights. The firm also filed DMCA take-down notices with the webhost, Apple, Inc., as a potential contributory infringer. The offending app was removed from the Apple iStore.