Representative Engagements

Trademark Litigation

Mr. Wakefield has handled all variety of trademark disputes—from routine trademark enforcement matters to hard-fought litigation in federal court—for well-known brand owners such as Intel, Symantec, Google and Twitter.

• Defended Groupon in trademark infringement lawsuit brought by Groupion, LLC. Defeated preliminary injunction motion and ultimately won summary judgment of non-infringement on all of plaintiff’s claims.
• Represented Symantec in trademark infringement suit against Comodo concerning logos used for security and authentication services. Comodo dropped its use of the disputed logo and withdrew its trademark application.
• Represented Twitter in trademark lawsuit over third party trademark registration that infringed Twitter’s TWEET mark.
• Represented Google before the Trademark Trial and Appeal Board. Obtained summary judgment refusing registration of the applicant’s “FUNTOOGLE” mark.
• Represented online shopping site in trademark infringement lawsuit against competitor, securing a settlement in which the competitor changed its name, withdrew its trademark applications and transferred its domain names to our client.
• Represented international publisher Harlequin Enterprises in a trademark infringement, dilution and false advertising claim against a film production company in federal court in Los Angeles. After Mr. Wakefield filed a motion for a preliminary injunction, the defendant agreed to change its name.
• Represented defendant Critical Path, Inc., a provider of email outsourcing technology, in a trademark infringement suit. Defeated all of plaintiff's claims on summary judgment despite the similarity in company names.

Copyright Litigation

Mr. Wakefield has represented plaintiffs and defendants in copyright litigation across the country.

• Represented Chordiant Software, Inc. (now part of Pegasystems Inc.), Chordiant’s CEO, and its general counsel in a copyright infringement lawsuit in federal court in San Jose, California. Chordiant had admitted that it owed plaintiffs damages for use and distribution of plaintiffs’ software products, but disputed plaintiffs’ claim to tens of millions of dollars in damages and profits. Following a two week trial, the jury returned a verdict of approximately 5% of what plaintiffs had requested. Prior to trial, we secured a voluntary dismissal for the CEO, and won summary judgment in favor of Chordiant’s former general counsel. Also defeated plaintiffs’ claims for statutory damages and attorneys’ fees.
• Defended mobile game publisher ngmoco against claims of copyright infringement over a leading game for the iPhone. We quickly convinced the other side to drop its claims and acknowledge our client’s rights to continue distributing its game.
• Defeated copyright infringement claims brought by IBM against Compuware Corporation in a lawsuit in the Eastern District of Michigan. The Court agreed with Compuware that IBM's claims were barred by the doctrine of laches, and granted summary judgment in Compuware's favor.
• Represented Symantec Corporation, BindView Development Company, and BindView's former CEO in a copyright infringement case in federal court in San Francisco. Obtained summary judgment in favor of all defendants and defeated plaintiff's claims for fraud and breach of contract.
• Defended Sun Microsystems and Storage Technology Corporation in a software copyright lawsuit. The court granted summary judgment for all defendants, finding that their use of the allegedly infringed software was licensed. The Court also awarded our clients attorneys’ fees after we defeated plaintiffs’ effort to revive the copyright claims in a second lawsuit.
• Represented Brøderbund in the successful defense of a claim that an educational video game infringed plaintiff’s copyright in a children's educational television program.

Trade Secret Litigation

• Successfully defended Wyse Technology, Inc. in claim for breach of a nondisclosure agreement relating to “thin client” technology. After moving for summary judgment on the grounds that Plaintiff itself had publicly disclosed the allegedly confidential information, Plaintiff dismissed its case.
• Served as trial counsel for Compuware Corporation in a case involving copyright, trade secret and antitrust claims. After a 5-week jury trial, the case settled in Compuware's favor for $400 million.
• Represented plaintiff Flextronics in a trade secrets and breach of contract case involving fiber optic technology.
• Successfully defended a risk modeling technology company in a trade secrets case involving wildfire risk assessment technology.

Class Action Defense

• Successfully defended a major “daily deal” company in purported class action involving online advertising practices.
• Defended consumer class action claims against Internet travel site involving booking and cancellation fee disclosures.
• Defended digital stock photography company against purported right of publicity violations.

Complex Commercial Disputes

• Represented a global IT and business consultancy company in a claim for fraud and breach of the duty of loyalty against a medical technology company and its founder. Obtained a permanent injunction barring the defendants from using any of the disputed technology.
• Represented plaintiff Telos, a manufacturer of wireless telephone network technology, in an arbitration over a $2.4 million indemnity dispute and a lawsuit involving a $19 million “earnout” arising from an asset purchase agreement.
• Represented BroadLogic Network Technologies in a multi-million commercial dispute involving satellite networking technology.
• Represented the Computer Game Developers’ Conference in a dispute concerning shareholder rights with one of the company's early members.

Right of Publicity

Mr. Wakefield has handled numerous disputes involving right of publicity claims, including the successful defense of a class action case against a major publisher of stock photography.