Success Stories

Description

LITIGATION

Defended an Internet perfume retailer, Perfume Bay, accused by eBay of infringing its trademark and diluting its famous trademark. The Firm won victory for its client at trial, becoming the first competitor to successfully fight eBay's attempt to extend the protection of its mark to encompass the use of the word "bay" in a trademark on the Internet, while at the same time obtained a counter-injunction enjoining eBay from using Perfume Bay on eBay's banner ads. Perfumebay.com, Inc. v. eBay, Inc., Central District of California, Case No.: CV04-1358 WDK (SSx). Opposing Counsel: Cooley Godward, llp

Represented Z-Nix, a tiny computer mouse manufacturer, in successfully filing probably the first antitrust lawsuit against Microsoft.  This case was widely reported in all major media, and is mentioned in most of Bill Gates' biographies.  Since then, we have litigated against Microsoft in about 20 separate cases, probably more than any other law firm.  Microsoft, Inc. v. Z-Nix, United States District Court for the Central District of California, Case No CV 92-3711 KN(GHKx).  Opposing counsel: Arter & Hadden; Preston, Gates & Ellis.

Prosecuted copyright and trademark claims on behalf of one of the leading developers of educational software, School Zone Interactive against Star E Media, a company that had agreed to translate English language software into Spanish and Arabic. Result: Won temporary restraining order, preliminary injunction and summary judgment against Defendant and its principals, including a damages award in excess of $2.3 million and attorney fee award in excess of $200,000.   Multimedia Zone Inc. et al. v. Star E Media, et al., United States District Court for the Central District of California, Case No. SA CV 03-1151 JVS (ANx).

Defended a furniture importer accused of infringing a design patent for bedroom furniture. The Plaintiff had successfully prosecuted more than 15 such cases previously on the same or similar copyrights and patents. The Court granted our motion for summary judgment on the design patent claims and dismissed the action.   Amini Innovation Corporation v. Anthony California, Inc., et al., United States District Court for the Central District of California, Case No. CV 04-9369 SJO (SSx).

Defended an importer of a infrasonic massager accused of trademark infringement and unfair competition. After losing the motion for preliminary injunction, the client retained the Firm. The Plaintiff sought damages in excess of $1,000,000. The court granted our summary judgment motion on the bulk of the claims, leading to settlement requiring payment by the plaintiff to our client.   China Healthways v. East Health Development, Inc., et al., United States District Court for the Central District of California, Case No. CV 02-3137 LGB (JWJx).

Represented Turtle King against Wong's for copyright infringement over figurines.  Result: Won a temporary restraining order, contempt citation, and summary judgment, and obtained $400,000 in settlement and recaptured the market for client.  Jin Ching Industrial, Inc. v. Wong's International, 47 U.S.P.Q.2d 1509 (C.D. Cal. 1998).  

Defended Rever, a presentation laptop manufacturer, against a patent infringement lawsuit  by a U.S. patent holder in Virginia federal court.  Result: The plaintiff voluntarily dismissed the complaint and, in addition, paid our client Rever to settle Rever's counterclaim against the plaintiff for fraud on the USPTO.  nView Corporation v. Rever Computer, Inc., United States District Court for the Eastern District of Virginia, Case No. C95-264A.  Opposing counsel:  Pakis, Giotes, Beard & Page.

Defended GVC, the world's then largest modem manufacturer, in defending a patent litigation against Xircom.  Result: Client was so satisfied with the settlement, we became the client's exclusive counsel.  Xircom v. Chenel, United States District Court for the Central District of California, Case No. 95-0967 HLH.  Opposing counsel: Baker & Hostetler.

Defended Arthur Hsiao, Southern California Chinese Computer Association Chairman, in a trademark infringement action against Everview Corp over the EVERVIEW mark.  Result: Found fault in plaintiff's trademark ownership, bought trademark from real owner and filed a counter-complaint.  Plaintiff was forced to dismiss the lawsuit and paid Mr. Hsiao to settle his counterclaim.  Everview, Inc. v. Korea Data Systems, United States District Court for the Central District of California, Case No. CV 94-3776 ER (SHx).

Defended Archtek, a small modem manufacturer, before the U.S. Patent & Trademark Office against the leading modem company, Hayes, in a proceeding brought by Hayes to cancel Archtek's trademark.  Result: Won proceeding and obtained the registration of SmartLink.  Arktek America Corporation v. Hayes, Trademark Trial and Appeal Board, Opposition No. 92, 916.  Opposing counsel: Jones & Askew.

Prosecuted a counterfeit tea ring on behalf of one of the largest fine tea importers in the United States.  The Firm secured a seizure order, permanent injunction and judgment in the amount of approximately $850,000, including attorneys fees and costs.  Eastrise v. Kim Seng, United States District Court for the Central District of California, Case No. CV 97‑9313 DT (RNBx).

Prosecuted a company importing copyrighted sculptures and clocks and successfully convinced the court to grant a permanent injunction and recovery of money from the defendants and their insurance company.  Satis-5 v. Jin Ching Industrial, Inc., United States District Court for the Central District of California, Case No. CV 93 0086 AWT (JGx).

Succeeded in negotiating a reduction of debt owed by client in an international trading transaction on a claim for approximately $1,150,000.  The debt was compromised, requiring the client to pay out, over time, approximately $400,000.  International Collection Corporation v. Eastrise Trading Corporation, LASC Case No.  GC 017 053.

Defended a trademark claim filed in Atlanta, Georgia by a senior user of the trademark.  The firm's strategy of securing assignments from other users of the mark allowed the client to defeat the plaintiff's request for Preliminary Injunction and preserve the client's right to use its trademark.  Maximum Computers v. Maxtech, United States District Court for the Northern District of Georgia, Case No. 96-CV-3265.

Defended a trademark claim in Birmingham, Alabama regarding the claimed right to a design in dinnerware.  Prior to the retention of the firm, the court entered a preliminary injunction putting the client's business in jeopardy.  The firm convinced the Alabama court to vacate the preliminary injunction and then secured insurance coverage for the client.  The matter was ultimately settled with the dismissal of the action, without an injunction and with the insurance company paying the client's fees and costs.  Homer Laughlin v. Lynns Concepts, United States District Court for the Northern District of Alabama, Case No. CV 97‑P‑3222‑S.

Successfully moved for the dismissal of a criminal counterfeiting charge filed against individual officers of a client accused of selling unauthorized versions of computer software.  The firm successfully argued to the Court that the software sold was, at best, gray market software for which no counterfeiting charge could lie.  People v. Wu, Los Angeles Municipal Court, Case No. 8JM11321.

Defended a software distributor accused of, inter alia, selling gray market software in violation of the copyright laws.  Successfully moved for summary adjudication of the copyright claims, establishing that the first sale doctrine applied to the sale of software products.  Novell v. Cableware Technologies, Inc., United States District Court for the Central District of California, Case No. 99-05019 MRP (Mcx).  Opposing counsel:  Baker & Hostetler (local counsel).

Prosecuted a major retailer that had engaged in the sale of counterfeit ethnic sculptures. A motion for preliminary injunction was granted and the case ultimately settled with the defendants stipulating to a permanent injunction and payment of damages.  United Treasures v. Burlington Coat Factory, United States District Court for the Central District of California, Case No. CV 98‑9220 LGB (SHx).

Prosecuted a clothing retailer engaged in the resale of trademarked clothing on behalf of Mervyns.  A motion for preliminary injunction was granted and the case ultimately settled with the defendants stipulating to a permanent injunction and payment of damages.  Mervyns v. General Textiles, Inc., United States District Court for the Central District of California, Case No. CV 97 0832 KMW (RN Bx).  Opposing counsel: Luce Forward, Hamilton & Scripps llp

Prosecuted AST Computers on behalf of GVC Corp. and its subsidiary G-Tech, U.S.A. Inc. for breach of contract and common counts arising from the failure to pay for computers and computer manuals.  The action was tried before a jury and our clients were awarded the entirety of their claims:  in excess of $5,000,000.  G-Tech U.S.A., Inc. v. AST Computers, Los Angeles Superior Court, Case No. BC 225807.  Opposing Counsel:  Alschuler, Grossman, Stein & Kahan, llp

Prosecuted Trogon Computers and its principals on behalf of Maxtech, Inc.  for  breach of contract and common counts arising from the failure to pay for computers and computer manuals.  After the corporation filed for bankruptcy, the action against the principals was tried before a judge on claims of alter ego and a written guaranty and our client was awarded the entirety of its claims:  in excess of $2,000,000.  Maxtech, Inc. v. Trogon Computers, Los Angeles Superior Court, Case No. BC 225372.

Defended clients against Microsoft in a counterfeit action.  Successfully moved for an order finding that Microsoft had improperly seized materials contrary to the law.  The case ultimately settled, meeting the objectives of the client.   Microsoft Corporation vs. Unity Group Unlimited, 51 U.S.P.Q.2D (BNA) 1603 (C.D. Cal. 1999).  Opposing counsel:  McCutchen, Doyle, Brown & Enersen, llp.

Defended a shoe importer on counterfeiting claims and whose inventory was seized without notice by FILA.  After filing of the opposition to the order to show cause re preliminary injunction, the action settled with all of the shoes returned to the client, and neither the payment of money nor the entry of a permanent injunction.  Tact Sane adv. Fila, United States District Court for the Central District of California, Case No. CV 98‑56187 R (RNBx).

Successfully prosecuted a patent infringement action involving computer fans and heat sinks. The action was settled with the entry of a permanent injunction and the payment of damages.  Sunonwealth v. Adda, United States District Court for the Central District of California, Case No. CV 98-10484 RAP (BQRx).

Defended a company accused by White Consolidated Industries of wrongfully reselling reconditioned vacuums and rug cleaners.  After entry of a temporary restraining order, the client retained the firm which successfully defeated the application for preliminary injunction.  Eldan Electronics adv. White Consolidated Industries, United States District Court for the Central District of California, Case No. CV 98‑4655 RSWL (Mcx).  Opposing counsel:  Arter & Hadden.

Defended a start up tool importer accused of misappropriation of trade secrets.  Defeated a motion for preliminary injunction.  The case was ultimately settled with the plaintiff paying our client on its counter-claims, with no injunction or damages paid by our clients.  Link adv. Belwith, Los Angeles Superior Court, Case No. BC 131401.  Opposing counsel:  Baker & Hostetler.

Defended a bank and loan officer accused of misappropriation of trade secrets.  Plaintiff has sought damages of more than $500,000.  After a nine-day trial, the judge found in favor of our clients on all charges.  Preferred Bank v. East West Bank, et al. Los Angeles Superior Court, Case No. BC 253382.  Opposing counsel:  Grosberg & Benjamin.

STRATEGIC TRANSACTIONS

Represented UCLA professors Chi Ming Ho and C. J. Kim in a multimillion dollar sale and liscense back of a patent on micro machines that the firm successfully prosecuted before the US Patent & Trademark Office and around the world.

Lead negotiator and counsel in the first PC software joint venture in PRC.  This transaction was so important to China, it was reported on the front page of the China People's Daily. 

Represented GVC, a Taiwan Corporation, one of the largest computer component manufacturers in the world, in successfully obtaining U.S. government approval of its takeover of Maxtech corporation, an American distributor and OEM manufacturer of modems and computer peripherals and its takeover of BCM Advanced Research Incorporated, an American computer company.

United Business Computers, Inc., an office products distribution software company, in its stock merger with eCommerce Industries, Inc. valued at $3,000,000.

Represented PC Club in all aspects of its legal affairs, from formation to its growth to a 30 stores computer retail business.

Represented GAT, a financial software and consulting company, in an $18 million merger with publicly-held Barra. Result: successfully achieved closing and met client=s objectives .

Formed GCCapital LLC, a $20 million technology venture fund, now a diversified financial services company headquartered in Hong Kong.

Counseled the formation of MRT LLC and its $2.5 million private placement and guided MRT to become one of the premier DVD manufacturers of more than $300 million in revenue and subsequent re-domicile from California to Cayman Islands.

Represented American Electronic Ceramics, Inc., a chip manufacturer, in its formation and $3,570,000 private placement.

Represented PIC in a software development agreement with IBM funded by IBM and secured by copyright in the source code of the software.