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INTELLECTUAL PROPERTY & TECHNOLOGY |
Intellectual Property & Technology Attorneys:
- Karin Pagnanelli, Chair
- Robert H. Rotstein, Chair
- Matthew S. Beasley
- Patricia H. Benson
- Lucia E. Coyoca
- Amanda Wilson Denton
- Robert M. Dudnik
- Emily F. Evitt
- Russell J. Frackman
- Peter B. Gelblum
- Eric J. German
- Daniel M. Hayes
- Hayward J. Kaiser
- Carol M. Kaplan
- Evan M. Kent
- Elaine K. Kim
- Daniel A. Kohler
- Steven G. Krone
- Mary D. Lane
- Gilbert S. Lee
- Christine Lepera
- Alexa L. Lewis
- Paul V. LiCalsi
- Marc E. Mayer
- Patricia V. Mayer
- Adam R. Mehr
- Steven J. Metalitz
- Jeffrey M. Movit
- Bradley J. Mullins
- Kimberly P. Nguyen
- Gregory O. Olaniran
- Hector Andres Pacheco
- Alan L. Pepper
- Lucy Holmes Plovnick
- Susan Kohn Ross
- Michael N. Schlesinger
- Joel M. Schoenfeld
- Eric J. Schwartz
- Andrew C. Spitser
- David A. Steinberg
- Jane G. Stevens
- Naomi Straus
- Kim H. Swartz
- Aaron M. Wais
- Ariel D. Weindling
- Howard H. Weller
- Matthew Williams
The Intellectual Property & Technology Practice at Mitchell Silberberg & Knupp is at the forefront of the changing law as it relates to new and emerging technologies. We offer advice and counsel in the areas of anti-piracy, copyright, trademark, patent, intellectual property and technology agreements, and trade secrets, providing worldwide representation in the protection, enforcement and exploitation of intellectual property rights.
CORE SERVICES
Anti-Piracy: Development and implementation of domestic and international internet/P2P and physical goods anti-piracy programs primarily in the recording, motion picture, television and video game industries.
Copyright: Litigation in the federal courts, as well as transactional representation, including registration, recordation, title searches, opinions and licensing.
Trademark: A full-service domestic and international trademark practice, including: filing of trademark applications worldwide; trademark availability searches; trademark and unfair competition litigation throughout the U.S. in state and federal court; TTAB inter partes proceedings; licensing; and recordation of trademarks with the U.S. Customs Service.
Patent: Litigation in federal courts as well as preparing and prosecuting patent applications; handling Patent Office appeals, reexaminations and reissues; conducting patent litigation in the federal courts and the ITC; counseling and rendering opinions on patentability, infringement, validity, and enforceability; and formulating patent portfolio development strategies.
Right of Publicity/Right of Privacy: Litigation and counseling with respect to rights of publicity and privacy and related agreements.
Trade Secret/Unfair Competition: Litigation in the federal and state courts and counseling with respect to trade secret protection and related agreements.
Intellectual Property and Technology Agreements: Negotiation and preparation of intellectual property licenses and high technology transfer and development agreements.
Representative Anti-Piracy Matters 
Successful representation of 23 Recording Industry Association of America (RIAA) members in a copyright infringement action against a CD manufacturing plant, resulting in the largest copyright award in U.S. history of approximately $136 million in damages. This decision was upheld on appeal and protected from discharge in later bankruptcy proceedings. Atlantic Recording Corp. v. Media Group (C.D. Cal. 2003).
Represented RIAA member companies in landmark copyright enforcement actions against P2P file sharing systems Napster, Aimster, Grokster and KaZaA.
Developed, implemented and coordinated national litigation campaign on behalf of RIAA member companies against individual users of P2P file sharing systems.
Developed and are currently implementing an anti-piracy and intellectual property enforcement program for major video game publishers.
Represented major record companies in litigation against owners and operators of flea markets/swap meets in California, Texas and New Jersey where vendors repeatedly sold infringing CDs.
Obtained a multi-million dollar settlement on behalf of the RIAA in copyright infringement litigation brought against Amway. The settlement was the largest in RIAA history and our firm was awarded an Honorary Gold Record.
Obtained multi-million dollar judgment against online motion picture internet pirate.
Representative Copyright Matters 
Lead counsel for record company and music publisher clients in more than 100 related copyright infringement cases arising from the alleged unauthorized "sampling" of musical works in musical compositions and sound recordings.
Represent Sony in copyright infringement defense against CyberSitter, a Web software filtering vendor that filed a multi-billion dollar lawsuit against the Chinese government, two Chinese software makers and seven major computer manufacturers alleging that the Chinese makers of a controversial Web filtering package the Chinese government had mandated to be installed on computers sold there illegally copied thousands of lines of code from CyberSitter's filtering software, and distributed more than 56 million copies of the infringing software to customers in China and to Chinese speakers worldwide.
Represented prominent adult entertainment magazine and website in a high-profile suit against major online search engine Google, Inc., and obtained a preliminary injunction enjoining aspects of the display of thumbnail images owned by the client.
Represented the Motion Picture Association of America (MPAA) members in DMCA and copyright litigation against software maker 321 Studios. Obtained summary judgment and an injunction against 321 Studios, blocking further distribution of the company’s infringing software, capable of cracking copy protection on DVDs.
Represented the MPAA in DMCA litigation filed by InternetMovies.com Inc. Set important case law precedent relating to the take-down provisions of the DMCA. Rossi v. Motion Picture Association of America Inc., (9th Cir. 2004).
Represent motion picture studio in copyright infringement claims over music composition and performance rights in a feature film.
On behalf of MPAA members, obtained permanent injunction prohibiting defendant company from falsely claiming distribution rights in Korea.
Represented producers of a Top 10 hit reality TV program in claims involving copyright infringement and idea submission.
Represented four stars from the original cast of the Broadway production of "Jersey Boys" in a litigation involving claims of trademark and copyright infringement by Franki Valli and the producers of the show.
Successfully defended at trial copyright infringement claims involving the motion pictures Twister and Sister Act.
Represented UMG Recordings, Inc., in litigation brought against Mazda and its advertising agency for the unauthorized use of plaintiff’s sound recording and musical composition in a television advertisement. Obtained a favorable settlement.
Defended MCA Records against accounting and copyright claims brought by the owner and licensor of country music recordings arising from dissolution of the parties’ 15-year licensing and distribution relationship.
Representative Trademark Matters 
Represent AOL in a trademark infringement action against Advertise.com. In the suit, AOL claims that the domain name Advertise.com, formerly ABCsearch.com, could cause confusion among people who think that Advertise.com is affiliated with or endorsed by AOL's Advertising.com and Ad.com trademarks.
Successfully represented Take2 Interactive and Rockstar Games in trademark litigation in U.S. District Court involving their best selling title, "Grand Theft Auto San Andreas." Obtained dismissal of case on First Amendment grounds.
Represent UMG Recordings, Inc., before the Trademark Trial and Appeal Board (TTAB) against Mattel, Inc. involving the famous "Motown" trademark.
Represent numerous artists and record companies in copyright and trademark matters including Jay-Z, Mary J. Blige, Outkast, Ludacris, Kanye West, Blondie, Wyclef Jean, Santi Gold, Timbaland, and others.
Represent a large number of national and international clients, including Ocean Spray, Farmer Brothers Coffee, Rickenbacker Guitars, and others, in a full range of intellectual property matters.
Ongoing representation of Stussy, Inc., a successful clothing manufacturer and distributor, in trademark and related claims against both domestic and international infringers of the Stussy mark.
Obtained a preliminary injunction preventing further infringement and dilution of our client’s apparel trademarks and trade dress despite the fact the mark had been denied registration on the Principal Register. Further procured a contempt citation against the defendant for violation of the preliminary injunction with an award of attorneys’ fees and costs and an accounting of profits.
Successfully represented MCA Records in trial court and on appeal, defending a claim of trademark infringement and unfair competition brought by Mattel, Inc., seeking to enjoin the hit recording Barbie Girl. Mattel, Inc. v. MCA Records (9th Cir. 2002).
Represent Ferrari in ongoing trademark infringement actions against replica car manufacturers.
Represented adult model in litigation involving intellectual property issues, including a dispute over model’s trade name.
On behalf of the producer of a major motion picture, successfully opposed the registration of several trademark applications. Also registered trademarks for the film and related merchandising.
Formulated and implemented a global trademark registration strategy for major musical group known for their 40-year career at the top of the charts.
Representative Patent Matters 
Current representation of a client in a patent infringement case against Oracle involving a system for transforming and exchanging data between distributed heterogeneous computer systems.
Currently represent toy company in litigation concerning patent, trademark and trade dress claims regarding major patented toy.
Ongoing representation of international computer technology company in patent prosecution matters.
Obtained a series of patents covering an artificial intelligence system for designing large-scale integration circuit chips.
Evaluated an extensive patent portfolio relating to the electronic gaming industry in connection with a corporate acquisition.
Instituted a patent program for a major services company, including preparing related documentation, educating in-house counsel and technical staff, and preparing and prosecuting initial patent filings.
Represent major apparel manufacturer in patent litigation brought by competitor.
Representative Trade Secret/Unfair Competition Matters 
Obtained temporary restraining order in a trade secret and unfair competition case against a labor union that misappropriated our client’s customer list and sent union literature to client customers. We overcame the union’s contention that the customer list was not a trade secret and that an injunction would violate the First Amendment and federal labor laws.
Obtained a temporary restraining order against former employees of an internet technology company preventing them from using customer lists and other trade secrets they had misappropriated and taken to a new employer.
Represented a major software development company in litigation arising out of a multi-billion-dollar hostile takeover attempt launched by Computer Associates.
Representative Right of Publicity/Right of Privacy Matters 
Represented adult content provider in right of privacy and invasion of privacy action brought by three adult models seeking to set aside releases by alleging misappropriation of name and likeness, among other claims.
Represent recording company before the Ninth Circuit Court of Appeals in issue of first impression concerning the right to use vocal samples.
Advised adult entertainment website in a right of privacy lawsuit brought by a model.
Representative Intellectual Property and Technology Agreements Matters 
Represent the American Society of Composers, Authors and Publishers (ASCAP) in proceedings to establish fair and reasonable rates to license the public performance of musical compositions which are streamed over the internet by YouTube, LLC.
Represented the County of Los Angeles Department of Social Services in the negotiation of a $154-million contract for the procurement of computer equipment, software and computer management services. This computer system is now the largest single-purpose computer network in the country.
Represented a software development company in its negotiations to purchase certain Linux technology rights from California Institute of Technology.
Ongoing representation of a major picture studio in a range of technology licensing agreements.
Related Practice Areas
News
- Four MS&K Attorneys Named to Southern California's Super Lawyers' Rising Stars List (June 2013)
Four MS&K attorneys were selected as 2013 Southern California Rising Stars by Super Lawyers. MS&K attorneys who were recognized include: Felicia Chang, Elaine Kim, Jolene Konnersman, and Nahla Rajan.
- MS&K Attorneys and Practice Groups Recognized by Chambers USA 2013 (May 2013)
MS&K's Labor & Employment and Entertainment & Media Litigation Practices were ranked among the best in California by Chambers USA 2013. In addition, Chambers recognized 11 Partners from MS&K's Los Angeles, New York, and Washington, D.C. offices among the top attorneys in the U.S., in their respective areas of practice.
- Russell Frackman Chosen Among The National Law Journal's "100 Most Influential Lawyers in America"
Russell Frackman, a Partner in MS&K's Entertainment & New Media, Intellectual Property & Technology and Litigation practice groups, has been selected as one of the "100 Most Influential Lawyers in America," by The National Law Journal.
- » All Related News
MS&K Alerts
- Copyright Office Reopens the Debate Over Federal Resale Rights for Visual Artists, MS&K Intellectual Property & Technology Alert (October 2012)
By Amanda Wilson Denton
Twenty years ago, the U.S. Copyright Office issued a study recommending against changing U.S. Copyright Law to establish a federal right for visual artists to receive resale royalties from U.S. sales of original works. - Author, Analyzing the Duties Owed by an Artist's Executive Team (September 2012)
MS&K Intellectual Property partner Christine Lepera, assisted by associates Amanda Denton and Christina Djordevich, presents many of the disputes that arise between artists and their representatives in a September 10, 2012 New York Law Journal article, outlining the legal duties owed by particular representatives, how they may be breached, and what recent court rulings portend.
- For Louboutin and Yves Saint Laurent, Both See Red, MS&K Fashion Industry Alert (September 2012)
By Howard H. Weller and Bradley J. Mullins
With impeccable timing coinciding with the opening night of New York City's Fashion Week, the United States Court of Appeals for the Second Circuit has determined that a single color can serve as a trademark in the fashion industry. - » All Related MS&K Alerts
Publications
- Amendments to COPPA and Protecting Children's Privacy, Children's Technology Review (April 2013)
- All's Fair in University Copying Case, Intellectual Property Magazine (November 2012)
- The Trial of Joel Tenenbaum, Intellectual Property Magazine (September 2012)
- » All Related Publications










