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For more than four decades, Fenwick & West LLP has helped some of the world’s most recognized companies become, and remain, market leaders. From emerging enterprises to large public corporations, our clients are leaders in the technology, life sciences and cleantech sectors and are fundamentally changing the world through rapid innovation.  MORE >

Fenwick & West was founded in 1972 in the heart of Silicon Valley—before “Silicon Valley” existed—by four visionary lawyers who left a top-tier New York law firm to pursue their shared belief that technology would revolutionize the business world and to pioneer the legal work for those technological innovations. In order to be most effective, they decided they needed to move to a location close to primary research and technology development. These four attorneys opened their first office in downtown Palo Alto, and Fenwick became one of the first technology law firms in the world.  MORE >

From our founding in 1972, Fenwick has been committed to promoting diversity and inclusion both within our firm and throughout the legal profession. For almost four decades, the firm has actively promoted an open and inclusive work environment and committed significant resources towards improving our diversity efforts at every level.  MORE >

At Fenwick, we are proud of our commitment to the community and to our culture of making a difference in the lives of individuals and organizations in the communities where we live and work. We recognize that providing legal services is not only an essential part of our professional responsibility, but also an excellent opportunity for our attorneys to gain valuable practical experience, learn new areas of the law and contribute to the community.  MORE >

Year after year, Fenwick & West is honored for excellence in the legal profession. Many of our attorneys are recognized as leaders in their respective fields, and our Corporate, Tax, Litigation and Intellectual Property Practice Groups consistently receive top national and international rankings, including:

  • Nearly 15 percent of Fenwick partners named America's Leading Lawyers for Business by Chambers USA and Chambers Global
  • Selected as a "Go-To" law firm by in-house legal departments at Fortune 500 companies in Corporate Counsel magazine
  • Named to The National Law Journal's inaugural "Intellectual Property Hot List" for outstanding patent, copyright, trademark and IP litigation services

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We take sustainability very seriously at Fenwick. Like many of our clients, we are adopting policies that reduce consumption and waste, and improve efficiency. By using technologies developed by a number of our cleantech clients, we are at the forefront of implementing sustainable policies and practices that minimize environmental impact. In fact, Fenwick has earned recognition in several areas as one of the top US law firms for implementing sustainable business practices.  MORE >

At Fenwick, we have a passion for excellence and innovation that mirrors our client base. Our firm is making revolutionary changes to the practice of law through substantial investments in proprietary technology tools and processes—allowing us to deliver best-in-class legal services more effectively.   MORE >

Mountain View Office
Silicon Valley Center
801 California Street
Mountain View, CA 94041
650.988.8500

San Francisco Office
555 California Street
12th Floor
San Francisco, CA 94104
415.875.2300

Seattle Office
1191 Second Avenue
10th Floor
Seattle, WA 98101
206.389.4510

Jedediah Wakefield

Chair, Trademark Litigation

Partner, Litigation

icon partner 415.875.2331  

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Jedediah Wakefield focuses his practice on intellectual property litigation, with an emphasis on trademark, copyright, trade secret and right of publicity matters, as well as licensing, technology transfers, and other complex commercial disputes. Mr. Wakefield also represents technology companies in advertising, privacy, unfair competition and other consumer related issues, and he has successfully defended his clients in state and federal class action lawsuits.

Jed has litigated cases across the country. He has trial experience in state and federal court, and experience in mediation and arbitration. He has been named as one of the top 100 attorneys in Northern California by Super Lawyers and being among the top trademark lawyers in California by World Trademark Review 1000. He was also named an IP Star in the inaugural edition by Managing Intellectual Property.

Jed received his B.A. in English in 1992 with highest honors from the University of California, Santa Barbara, where he was elected Phi Beta Kappa. He received his J.D. cum laude from Santa Clara University in 1995. While in law school, Jed served on the Honors Moot Court Board and was admitted to the Order of Barristers. He also served as a Judicial Extern to the Honorable Judge James Ware, in the United States District Court for the Northern District of California.

Representative Engagements

Trademark Litigation

Jed 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

Jed 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

Jed 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.

 

About Jed