Experience
  • General Experience
    • Represented Walt Disney Company in multiple trademark actions

      We have represented The Walt Disney Company in multiple trademark actions in the Middle District of Tennessee, including claims against unauthorized purveyors of Disney-licensed products (in which we obtained a $2.2 million default judgment, injunction, and an award of attorney's fees against the defendants for destroying evidence and other discovery abuses) and defending the company and one of its record labels in a claim brought by another record company (which we resolved favorably).

      Microsoft copyright infringement litigation

      We have successfully represented Microsoft in bringing copyright infringement litigation involving software piracy. We have also represented the company in a series of suits alleging unfair monopolization of the software market.

      Intel Corporation patent case

      The firm represented Intel Corporation in one of the largest patent cases ever brought in the Southeast (Intergraph v. Intel). Intel faced allegations of infringement regarding some of its microprocessors. The plaintiff also raised antitrust concerns against Intel for alleged attempts to monopolize the computer chip market. As a result of our efforts, the district court granted summary judgment in favor of Intel on the antitrust claims, a decision that was affirmed by the appeals court. The case settled while our motions for summary judgment on the remaining infringement claims were still pending.

      Russell Corporation patent infringement case

      We represented Russell Corporation and Brooks Sports in the Eastern District of Texas in a patent infringement case. Russell, Brooks, and other leading sporting shoe manufacturers defended a series of complex patent infringement claims related to the construction of shoes. In 2008, we successfully settled the patent claims for our clients.

      Alabama Space Science Exhibit Commission dba U.S. Space and Rocket Center

      The U.S. Space and Rocket Center is state governmental entity, and the operator of the famous SPACE CAMP, AVIATION CHALLENGE, and other educational programs. It is also the operator of one of the world’s largest museums of Space exploration history and artifacts, and of the papers of Werner Von Braun. Our services for the U.S. Space and Rocket Center include domestic and international trademark prosecution and portfolio maintenance, Opposition Proceedings, and trademark policing activities. We also provide assistance in the licensing of its SPACE CAMP mark all over the world, including licensees in Turkey, Belgium, Japan, Italy, Canada, Korea. Our firm assists in all of its domestic and international trademark work, licensing activity, and other IP contractual matters. We have handled opposition proceedings, conduct regular policing activities, and have helped to create a strategy for selecting the marks and countries for protection. The firm assists in all licensing activity and IP contractual matters, as well as book deals and licensing with well-known national and international partners, including NASA, Kraft Foods, the Smithsonian, Chick-fil-A, Arby’s, and movie and music producers.

      Baron Services, Inc.

      Baron Services is a worldwide provider of real-time, site-specific weather information, Doppler weather radars, satellite radio weather information and geographic depiction. The firm handles patent prosecution of software and radar applications, trademark prosecution and filings, licensing and technology development agreements, and related portfolio management.

      Represented Gibson Guitar Corp. in multiple trademark, trade dress, and trade secret actions

      We have represented Gibson Guitar Corp. in multiple trademark, trade dress, and trade secret actions in the Middle District of Tennessee seeking to protect the company’s famous trademark and trademarked guitar designs and instrument features from infringement by domestic and international instrument makers. We obtained injunctions or favorable settlements in each.

      $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.

      Represented Exxon Mobil Corporation in a trademark infringement case

      We represented Exxon Mobil Corporation in the Eastern District of Tennessee in a trademark infringement case arising from a terminated dealer's refusal to remove the company's trademarks and alter store trade dress and obtained a permanent injunction.

      Wolverine Tube Inc (WLV)

      Wolverine Tube is a worldwide provider of copper and other metal tubing to the HVAC industry. Our services to Wolverine Tube include domestic and international patent prosecution and portfolio management. We also provide domestic and international trademark prosecution and portfolio management, general intellectual property strategy, licensing, and technology transactions.

      Russell Corporation

      Russell Corporation is a leading manufacturer of athletic apparel and sporting equipment, including under various of its brands such as SPALDING, MOSSY OAK, JERZEES, RUSSELL ATHLETIC, and BROOKS. Our firm has a long term relationship that includes the range of services including trademark prosecution and portfolio maintenance.

      United States Pipe and Foundry Company, LLC

      U.S. Pipe is an international manufacturer of ductile iron pipe and related technologies. Our services to U.S. Pipe include domestic patent prosecution and portfolio maintenance. We also provide U.S. Pipe trademark prosecution and portfolio management, licensing, and import advice.

      Qualitest Pharmaceuticals and Vintage Pharmaceuticals

      We have served this client, a major manufacturer and distributor of pharmaceutical preparations, as its long-term IP counsel, assisting with patent prosecution, analysis and opinion, trademark prosecution and opposition proceedings.

      Represented Southern Living in a case involving copyright infringement claims

      We represented Southern Living, Inc., publisher of Southern Living magazine and Southern Living House Plans, in the Northern District of Alabama in a four-year-long case involving dozens of copyright infringement claims.

      Representing Bike Athletics in a patent infringement case

      We are currently representing Bike Athletics in the District of Kansas in a patent infringement case relating to football shoulder pads.

      Represented a computer hardware and software company

      We acted on behalf of a computer hardware and software company that developed and sold a sophisticated CAD/CAM system to an architectural/engineering firm in Florida. We secured a judgment for our client of $400,000, as well as attorneys’ fees and costs.

      Represented Big Lots in multiple intellectual property matters

      We have represented Big Lots in multiple intellectual property matters in the Middle District of Tennessee, including the defense of claims for trademark infringement and copyright infringement arising from the sale of goods, resolving each favorably for our client.

      Represented Crye-Leike Realtors in a copyright action

      We represented Crye-Leike Realtors, one of the nation's largest residential real estate brokerage firms, in a copyright action brought by a magazine publisher in the Middle District of Tennessee, in which we obtained the complete dismissal of the action.

      Represented Men's Wearhouse, Inc. in multiple trademark infringement actions

      We have represented Men's Wearhouse, Inc. in multiple trademark infringement actions, both in enforcing the company's trademarks and defending trademark claims brought by others, obtaining favorable resolutions.

      BellSouth Intellectual Property Corp. v. Expetel Communications, Inc. (S.D. MS 2002-3)

      Successfully represented local telephone carrier in defending injunction claims for trademark infringement by established carrier. Settled after injunction hearings and further discovery.

      Prime Table Games LLC v. Shuffle Master Corp (SD MS 2008-present)

      Represented plaintiff on antitrust claims based upon misuse of patents on casino table games. Successfully settled claims and obtained relief after challenges to claims and venue.

      Central Admixture Pharmacy Services v. Advanced Cardiac Solutions. (N.D. Ala. 2005)

      Represented plaintiff in patent infringement case involving cardiopelegic solutions. Obtained summary judgment on all claims.

      Teltech Systems, Inc. v. Itellas, LLC, Case No. 1:11-CV-01711-WHP (S.D.N.Y.) 2011

      Defending telecommunications software and services provider in this ongoing patent litigation.

      Domain Name Disputes

      Successfully defended a UDRP action brought by the University of Arkansas against the owner of the URL, www.razorbacks.com, resulting in the continued ownership and use of the URL.

      Domestic and Worldwide Trademark Protection and Licensing Programs

      Responsible for trademark portfolio work for a number of public and private corporations and other entities, including domestic and foreign filings, Opposition Proceedings, licensing efforts and negotiations.

      Negotiation and Advice to Client

      Negotiation and advice to client after receipt of cease and desist demand by party using similar mark, and negotiation of settlement of dispute.

      Baron Services v. Media Weather Innovation, LLC

      Representation of industry leading weather products and services company asserting claims of patent infringement in United State District Court.

      AbbottPoint of Care, Inc. v. Epocal, Inc.

      Representation of medical device manufacturer defendant in two separate lawsuits in United States District Court, where the plaintiff asserted claims of patent infringement related to four separate patents, interference with non-compete agreements with former plaintiff employees, and ownership over client patents.  Jury verdict for defendant on all counts.

      Attorney General Jim Hood, ex rel State of Mississippi v. Microsoft Corp. (Chancery Court of Hinds Co., Miss. 2004-2009)

      Represented Microsoft in Attorney General’s antitrust and consumer protection suit alleging monopolization and overcharge for software.

      Hygia Health Services, Inc. v. Masimo Corp. (N.D. Ala. 2009)

      Representation of declaratory judgement plaintiff/counterclaim defendant in a patent infringement and trademark infringement case involving medical products in United State District Court. Case was successfully resolved before trial.

      Trade Secret Misappropriation and Copyright Infringement

      Representation of plaintiff software developer asserting claims of copyright infringement and trade secret misappropriation in United States District Court, related to software sold by former employee. Case was successfully resolved prior to trial.

      Quadrus Corp. v. Cohesion Force, Inc.

      Representation of government contractor, defendant in a lawsuit where the plaintiff asserted claims of trade secret misappropriation related to a software product developed by a former employee. Case was successfully resolved prior to trial.

      SABHI, Inc. v. Becton Dickinson and Company and DIFCO Laboratories, Inc. (S.D. MS 2003-5)

      Successfully represented manufacturer in defense of trademark infringement suit over use of name applied to biological medium.

      Sigma-Aldrich, Inc. v. Open Biosystems, Inc. (E.D. Missouri)

      Representation of biotech company in a patent infringement case related to viral vectors in United States District Court. Case was successfully resolved prior to trial.

      Confidentiality Agreement for Computer Software Development

      Drafted employee confidentiality, non-disclosure and copyright assignment agreement for computer software development.

      Confidentiality and Non-Competition Agreement

      Draft confidentiality and non-competition agreement for client's alternative energy small engine invention.

      Copyright Infringement Dispute on the Construction of Corporate Buildings

      Copyright infringement dispute concerning the construction of corporate buildings based on an architect's design initially drafted for another related building and client of the architect.

      Copyright Infringement Dispute regarding Photographs

      Copyright infringement dispute concerning the publication of a photographer's photographs beyond the scope of the license agreement between the parties.  Negotiated and achieved settlement on behalf of the client.

      Copyright Issues Regarding Book Based on the Civil War

      Advised author of book based on diaries written during the Civil War concerning copyright issues and attribution issues related both to the Civil War and the book based on those diaries.

      Multi-Use Clothing Invention

      Prior art search and analysis for multi-use clothing invention.

      Negotiation of Acquisition of Trademark from Physician Group and Licenses

      Negotiation of acquisition of trademark from physician group and licenses required to allow usage of similar mark for new regional health network including hospitals, doctor offices, etc.

      Non-Provisional Patent Application for Coating Invention

      Perform prior art search and analysis.  Draft and prosecute non-provisional patent application for client's electronics coating invention.

      Preparation and Negotiation of Patent and Trademark License Agreement

      Preparation and negotiation of patent, trademark and trade secret license agreement for fishing lures.

      Trademark and Trade Name for Sports/Energy Drink

      Assisted clients in dispute over rights to the trademark and trade name of a new sports and energy drink.

      Trademark License Agreement for Leggings

      Drafted and negotiated trademark license agreement for socks/leggings and other related apparel.

      Trademark Registration Application with the USPTO

      Drafting and filing of a trademark registration application with the USPTO for the color blue as it is associated with the client's agricultural machinery.

      Anchor Mortgage Services, Inc. v. W.R. Starkey Mortgage, LLP, Case No. 03-V-2011-901672 (currently pending in the Circuit Court of Montgomery County, Alabama)

      The firm is representing W.R. Starkey Mortgage, Inc., which is being sued by a competitor, Anchor Mortgage Services, Inc. in the Circuit Court of Montgomery County, Alabama. The action concerns several employees who left Anchor Mortgage and began to work for W.R. Starker. Anchor has asserted several claims against W.R. Starkey, including violation of the Alabama Trade Secrets Act, conversion and trespass to chattels, breach of contract/breach of fiduciary duty, negligence or wantonness, unjust enrichment, civil conspiracy, intentional interference with business relations, and injunctive relief. The case was recently filed, and W.R. Starkey has not yet answered the complaint. A current issue includes which tort claims may be asserted in conjunction with a claim under the Alabama Trade Secrets Act.

      Attorney General Jim Hood, ex rel State of Mississippi v. Microsoft Corp. (Chancery Court of Hinds Co., Miss. 2004-2009)

      Represented Microsoft in Attorney General’s antitrust and consumer protection suit alleging monopolization and overcharge for software.

      BellSouth Intellectual Property Corp. v. Expetel Communications, Inc. (S.D. MS 2002-3)

      Successfully represented local telephone carrier in defending injunction claims for trademark infringement by established carrier. Settled after injunction hearings and further discovery.

      Bios Agrosystems, S.A. v. D&PL Technology Corp. (U.S. D.C. Delaware 1999-2001)

      Represented seed distributor in suit and preliminary injunction hearing for termination of distributorship in Greece; defeated claim for preliminary injunction and obtained order enjoining similar suits in Greece.

      Movie Gallery US, LLC v. Mark W. Greenshields, Associated Sourcing, and Associated Sourcing Holdings, Inc. d/b/a Video Library; 648 F.Supp.2d 1252(M.D. Ala. 2009).

      A start-up company was sued by Movie Gallery in a lawsuit alleging for violation of the Lanham Act, trademark infringement, unfair competition, violation of the Deceptive Trade Practices Act and breach of contract. After a failed effort by Movie Gallery to sell a portion of its business to Associated Sourcing, our client, set out to create a competing business. Movie Gallery claimed that our client had wrongfully stolen its confidential trade secrets and then used them to successfully compete against them. The case was tried to a verdict in the Middle District of Alabama, resulting in a defense verdict on all claims.

      Prime Table Games LLC v. Shuffle Master Corp (SD MS 2008-2010)

      Represented plaintiff on antitrust claims based upon misuse of patents on casino table games. Successfully settled claims and obtained relief after challenges to claims and venue.

      SABHI, Inc. v. Becton Dickinson and Company and DIFCO Laboratories, Inc. (S.D. MS 2003-5)

      Successfully represented manufacturer in defense of trademark infringement suit over use of name applied to biological medium.

      Licensing Agreement

      Drafted exclusive licensing agreement for the copyrights in a children’s book—both the literary work and the illustrations—with reversion provisions dependent on publication. The license deal included representations and warranties to protect client and establish rights locally where the copyright may have been assigned to other entities in foreign territories and in other foreign-language translations. Drafted copyright assignment agreement for local nonprofit.

      Musical Copyrights License Agreement

      The firm is structuring an exclusive license agreement of musical copyrights for the use and benefit of third party beneficiaries, where the copyright holders have taken ownership of the copyright through Alabama’s laws of intestate succession.

      Obtained a Family of Patents Protecting Polymeric Compound

      We obtained a family of patents protecting an important polymeric compound with tethered nanoparticles for the client. We obtained one patent for the method of producing the polymer, three additional patents for different uses of the polymer, and we have other patents pending. We also obtained a Japanese patent on the method of production, and we are pursuing additional patent protection in other countries.

      Trade Secret Licensing

      The client developed propriety technology, but determined the technology could not be patented. The client did not have the equipment to market the technology itself, but a third party was willing to commercially manufacture product under a license. Bradley Arant Boult Cummings developed and negotiated a license where the third party manufacturer was obligated to maintain the trade secret. The license has is effective for an extended period, so the client was able to establish long term benefits for its proprietary technology despite the fact that there was no patent protection.

      William E. Poole Designs, Inc. v. Southern Living, Inc., CV-05-BE-65-S (N.D. Ala. 2008)

      We defended Southern Living against alleged copyright infringement of numerous house plans and artists renderings, in which plaintiff house designer’s damages claim exceeded $100 million. We also asserted counterclaims for trademark infringement arising from the plaintiff’s use of the Southern Living trademark in internet keyword advertising, Sponsored Ads, and as website metatags. A favorable settlement was reached after oral argument on our Daubert motion to exclude plaintiff’s expert witnesses and our motion for discovery sanctions.

      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.

      Arthur Young, Inc. v. Arthur Young & Co., 579 F. Supp. 384 (N.D. Ala. 1983)

      The firm 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.

      Citibank, N.A. v. Citibanc Group, Inc., reh. den. 724 F.2d 1540 (11th Cir. 1984)

      We 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.

      EBSCO Industries, Inc. v. Belco Services, Inc., et al., CV-03-BE-3253-S (N.D. Ala. 2004)

      We 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.

      EBSCO Industries, Inc. v. Jerry H. White, et al., CV-03-HS-2404-S (N.D. Ala.)

      We represented EBSCO Industries, Inc. in enforcing non-compete agreements signed by two of its former employees in Oklahoma and to enforce its trade secret rights from misappropriation by the former employees and a third individual who had not previously worked for EBSCO. The Court granted our motions for TRO and later for preliminary injunctions against the former employees. Ultimately, permanent injunctions by consent were entered that ordered the defendants to comply with the terms of the noncompete and confidentiality provisions of their agreements and that otherwise protected EBSCO’s trade secrets.

      Grand Slam Club/Ovis v. International Sheep Hunters Association, CV 2:06cv4643-SLB (N.D. Ala. 2010)

      We successfully represented Grand Slam/Ovis on its claims of copyright and trademark infringement as well as intentional tortious interference with business and in defending against claims 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 $1,650,000 to our client from defendants’ cash bond.

      Hardware Resources, Inc. v. HGH Hardware Supply, Inc., et al., Case No. 5:06cv764 (W.D. La. 2006)

      We 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.

      Huggins v. Beacon Communications, LLC, CV-01-HGD-2919 (N.D. Ala. 2003); In re Huggins, 305 BR 63 (Bankr. N.D. Ala. 2003)

      We 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.

      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)

      The firm 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 United States 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.

      Mark Lilly and Maxwell Marketing v. Smartmarketing & Syndications, Inc., arbitration award November 21, 1995

      We 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.

      MidSouth Companies, Inc. v. Southern Living, Inc., 2:03CV56-SAA (N.D. Miss. 2003)

      We 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.

      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.

      Pizitz, Inc. v. Pizitz Mercantile Co. of Tuscaloosa, 467 F. Supp. 1089 (N.D. Ala. 1979)

      We 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.

      Rainmaker Systems, Inc. v. Randall-Reilly Publishing Company, LLC, Opposition No. 911773754 (TTAB 2008)

      We 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.

      Ramada Inns v. Gadsden Motel Co. 904 F.2d 1562 (11th Cir. 1986), reh. den. (1987)

      The firm 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.

      Tidmore Oil Co. v. BP Oil Co., 932 F.2d 1384 (11th Cir. 1991)

      We 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 motions for summary judgment on all claims and the judgment was affirmed on appeal.

      Traditional Living, Inc. v. Energy Log Homes, Inc., 464 F. Supp. 1024 (N.D. Ala. 1978)

      We 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.

      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.

      Wallace International Silversmiths, Inc. v. Wallace Companies, Inc., 7 U.S.P.Q. 2d 1723 (N.D. Ala. 1988)

      The firm 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.

      Wellborn Cabinet, Inc. v. Purple Bucquet, 2010 WL 5646327 (UDRP-ARB 2010)

      We 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.

      CUSO for large credit union

      Advised credit union regarding regulatory issues for establishment of non-credit union finance company/credit union service organization, and regarding ASP, SAS and other vendor contracts for implementation of financial services retail locations.

      Hopkins v. BP Oil, Inc., 81 F.3d 1070 (11th Cir. 1996)

      We 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.

      Moore-Handley, Inc. v. Handy Hardware (N.D. Ala.2009)

      We successfully represented Moore-Handley, a hardware distributor, in an action to enforce non-compete agreements. The Court entered preliminary and permanent injunctions ordering the competitor and former employees to honor the employees’ non-compete agreements.

      Advised Redstone Federal Credit Union Regarding Regulatory Issues

      Advised Redstone Federal Credit Union regarding regulatory issues for establishment of credit union service organization and regarding ASP, SAS and other vendor contracts for implementation of retail financial services locations.

      Herring's Air Conditioning Service, Inc., v. Service Tech Inc., U.S. District Court for the Northern District of Alabama, 2:09-CV-2440-RDP

      The firm successfully resolved a trademark infringement lawsuit brought against our client for the use of the plaintiff's trade name in software code used to create an internet video advertisement.  Through the hidden use of the plaintiff's trade name, the vendor that created the advertisement and uploaded it onto the internet caused internet users who were searching for plaintiff to be directed to links to our client's advertisement. Plaintiff sued for the misuse of Plaintiff's trade name.

      Ram Tool & Supply Co., Inc. v. HD Supply Construction, LTD d/b/a White Cap Construction Supply, et al., 2:11-cv-2010-LSC, U.S. District Court for the Northern District of Alabama

      Following evidentiary hearing, defeated motion for preliminary injunctive relief filed against client by competitor in commercial construction supply business. Competitor claimed that former employees conspired with client to open competing branch using trade secrets. Competitor, which had obtained ex parte TRO temporarily blocking client’s branch from operating, sued for violations of state law trade secrets act, interference with business relations, breach fiduciary duties, and conspiracy.

      Trademark Portfolio Maintenance

      Successfully oversaw the maintenance of the trademark portfolio for clients in the entertainment industry.

      Fitzgibbons v. Mayer Electric (N.D. Ala. 2014)

      Represented defendant in copyright infringement case.

      Harbar Homes v. Harris & Doyle (N.D. Ala. 2012)

      Represented defendant in architectural works copyright infringement case.

      Milo’s Franchise Company v. Milo’s Tea Company (Jefferson County, Alabama 2013)

      Represented declaratory judgment plaintiff in trademark dispute.

      Molex Company, LLC v. Andress, 887 F. Supp. 2d 1189 (N.D. Ala. 2012) (denying opponent’s motion to dismiss in trade secrets lawsuit).

      Swift Fly Fishing v. Pure Fishing (TTAB 2014)

      Represented registrant in trademark cancellation proceeding. Obtained involuntary dismissal.

      In re Literary Works in Electronic Databases Copyright Infringement Litigation (S.D.N.Y.)

      Represent defendant in class action; settlement approved by court.

      Intellectual Property Litigation

      • Obtained summary judgment and a permanent injunction in the U.S. District Court for the Southern District of Texas, Houston Division, in favor of a video-marketing firm for infringement of its intellectual property. Cynthia Hunt Prods., Ltd. v. Evolution of Fitness Houston Inc., No. H-07-0170, 2007 U.S. Dist. LEXIS 77630 (S.D. Tex. Oct. 18, 2007); Cynthia Hunt Prods., Ltd. v. Evolution of Fitness Houston Inc., No. H-07-0170, 2007 U.S. Dist. LEXIS 60098 (S.D. Tex. Aug. 16, 2007).
      • Represented a self-storage company in a trademark, copyright and trade-dress action brought in U.S. District Court for the Southern District of Texas, Houston Division, against a competitor and its architect.
      • Obtained favorable resolutions for multiple pharmaceutical companies in false marking actions brought in the U.S. District Court for the Eastern District of Texas.
      • Secured a favorable settlement representing a software company against a licensor relating to breach of a computer software license agreement brought in Travis County, Texas.
      • Represented multiple clients in patent infringement actions pending in the U.S. District Court for the Eastern District of Texas.

      NON-COMPETITION/RESTRICTIVE COVENANTS

      EBSCO Industries, Inc. v. Jerry H. White, et al., CV-03-HS-2404-S (N.D. Ala.)

      We represented EBSCO Industries, Inc. in enforcing non-compete agreements signed by two of its former employees in Oklahoma and to enforce its trade secret rights from misappropriation by the former employees and a third individual who had not previously worked for EBSCO. The Court granted our motions for TRO and later for preliminary injunctions against the former employees. Ultimately, permanent injunctions by consent were entered that ordered the defendants to comply with the terms of the non-compete and confidentiality provisions of their agreements and that otherwise protected EBSCO’s trade secrets.

      Ormco v. Johns, Jefferson County, Alabama Circuit Court, Alabama Supreme Court

      Created positive precedent for companies in Alabama Supreme Court relating to non-competition enforcement.

      Trade Secrets/Intellectual Property, Business Torts and Executive Liability

      • Defended Danish construction company in litigation brought by a U.S. company asserting breach of license agreements governing sewer rehabilitation work in several European countries, fraud for alleged failure to pay royalties under those agreements, misappropriation of trade secrets in connection with the client’s manufacture of sewer liners in Denmark, and related business torts (obtained dismissal of all fraud claims, and case thereafter settled on mutually agreeable terms during trial)
      • Successfully defended a senior restaurant executive in non-compete litigation brought by former employer (secured dismissal of all claims)
      • Successfully defended sales managers in lawsuit filed by large nursing home company alleging unfair completion and violation of non-solicitation obligations (defeated application for temporary injunction and case thereafter dismissed)
      • Successfully defended litigation brought by national insurance company against two former exclusive insurance agencies alleging various business torts and that retention of policyholder information constituted misappropriation of trade secrets and breach of fiduciary duty (defeated application for temporary injunction and all claims subsequently dismissed)
      • Successfully defended former sales manager of company that sold Medicare Advantage plans in case asserting unfair competition and misappropriation of trade secrets (defeated two applications for temporary injunction and all claims later dismissed)
      • Obtained judgment on behalf of a company that provides diagnostic laboratory services in a lawsuit against a former sales account executive and his new employer arising from the executive’s attempt to divert business to the competitor
      • Represented Danish manufacturer of industrial machinery in successful resolution of patent infringement dispute with a U.S. company