Freeman, Freeman & Smiley LLP

Service Details

Intellectual Property

Our Intellectual Property practice group concentrates on trademark, copyright, design patent and trade secret disputes across many different industries with a focus on fashion, apparel, music, automotive products, technology and art.  We handle all forms of dispute resolution, and our professionals have widespread experience in trial and appellate courts in California and around the country.  That includes, among many others, trial and appellate work concerning design patent and trademark litigation implicating national brands, the Digital Millennium Copyright Act, trade dress and unfair competition, digital technology, and myriad forms of false advertising and royalty disputes.  We additionally provide trademark and copyright prosecution services, as well as licensing, for our clients.

Our clientele reflects the depth of the Firm’s practice, and includes institutions and individuals ranging from record companies to apparel manufacturers.  But our emphasis remains the same, regardless of the client – protecting the valuable assets that embody intellectual property in all its forms.  In fact, we attempt to shelter our clients from expensive litigation through such tools as early mediation and neutral evaluation.  Where litigation is unavoidable, we tackle the process with transparency concerning cost and risk, providing clients with budgeting, forecasting and case evaluations identifying the potential expense of a pending litigation balanced against the risks the dispute poses for a client.  By updating that case analysis on an ongoing basis, we ensure that our clients are fully informed of all aspects of a litigation, and with our counsel are able to make sound business decisions to protect their assets.

Representative Clients and Matters

  • Represented trademark owner in dispute, before the USPTO and the District Court, with national manufacturer and distributor over purportedly abandoned trademark and trade dress rights to an entertainment property.  Successfully defeated abandonment defense despite over two decades  of non-use by the owner.  
  • Defended complex copyright infringement dispute involving previously un-decided issues concerning the Digital Millennium Copyright Act, and the extent to which a foreign-based copyright owner must establish appropriate chain of title not withstanding the presumption of validity.  
  • Represented a longstanding Southern California restaurant chain in a Ninth Circuit appellate proceeding where the Court held  that the chain's menu design and decor constitute protectable trade dress, and awarded  disgorgement of defendant's profits during the infringement period.
  • Represented national retailers in design patent and trade dress disputes concerning leading international footwear brand, entailing among other things sophisticated issues concerning the application of principles of patent invalidity to design patents.
  • Represented one of the largest performing rights organizations and its affiliates in prosecuting copyright infringement actions arising from the unlicensed performance of musical compositions and their sound recordings.
  • Represented an internationally-recognized bridal designer and manufacturer in litigation for damages and to enjoin the infringement of its copyrighted design for a wedding gown.  The case was ultimately settled on very favorable terms for the client.
  • Represented Tyrrell, a former Formula One racing team, and Chaparral Cars, Inc., the designer and builder of  iconic road racing cars, in establishing that the physical appearance of their race car designs was protectable trade dress.  
  • Represented a podcaster in a dispute involving the allegedly fraudulent assignment and licensing of copyrighted material, resulting in favorable terms for the client.
  • Represented JH Design Group, a Los Angeles based garment manufacturer, against the Walt Disney Company in a lawsuit concerning licensing rights to Disney’s five original characters.
  • Defended infringement claims on behalf of national retailers relating to textile designs that implicated esoteric issues of the Copyright Act.
  • Represented numerous national retailers and apparel manufacturers in  copyright infringement cases involving esoteric issues concerning the efficacy of collective work registrations, the minimum original contribution necessary to afford copyright protection, and issues of thin copyright.
  • Represented cosmetics manufacturer in trademark dispute concerning competing interests in virtually identical marks and the priority of use arising out of  pre-sale activities.  
  • Defended contemporary copyright infringement dispute concerning Jackie Chan videos filmed in Hong Kong.
  • Represented Chameleon Chairs, LLC, the manufacturer of unique special event rental chairs, in a dispute with a Chinese manufacturer of “copycat” chairs violating client’s trade dress rights.
  • Represented a non-profit, independent organization for the evaluation and certification of physicians in a copyright infringement action involving the unauthorized use of copyrighted testing materials.  Judgment was awarded as a sanction for discovery abuses.
  • Arbitrated companion cases before Independent Film & Television Association (IFTA) concerning the foreign distribution rights of an American motion picture, including the shifting risk of loss where the film was not released theatrically in the United States.

Presentations & Publications