Representative Engagements and Litigation

Trademark

• Kiva Health Foods, LLC v. Kiva Brands, Inc., N.D. Cal. (represented health food company against cannabis edibles company; successfully dismissed affirmative defenses and counterclaims on ground that cannabis companies cannot assert rights or claims under federal trademark law). Decisions at 402 F. Supp. 3d 877 (N.D. Cal. 2019), and 439 F. Supp. 3d 1185 (N.D. Cal. 2020).
• Medic Alert v. Corel, U.S.D.C., N.D. Ill. (defended trademark infringement action involving alleged inclusion of Medic Alert logo in software clip art product). Decision at Medic Alert Foundation v. Corel, 43 F.Supp.2d 933 (N.D. Ill. 1999) (granting motion for summary judgment and dismissing case against defendant).
• Kaplan v. The Chronicle Publishing, Superior Court, San Francisco County & U.S.D.C., N.D. Cal. (defended trade name and trademark infringement action arising from defendant’s use of GIFTWORKS as trademark and publishing division name; defeated preliminary injunction motion).
• Sun Microsystems v. Astro-Med, U.S.D.C., N.D. Cal. (prosecuted trademark infringement action over use of SUNDANCE on printer product). Decision at Sun Microsystems v. Astro-Med, 39 U.S.P.Q.2d (BNA) 1144 (N.D. Cal. 1996) (granting preliminary injunction motion and enjoining use of SUNDANCE on computer printer product).
• Sun Microsystems v. SunRiver, et al., U.S.D.C., N.D. Cal. (prosecuted trademark infringement action over use of SUNRIVER). Decision at Sun Microsystems v. SunRiver, et al., 36 U.S.P.Q.2d. 1266 (N.D. Cal. 1995).

Copyright

• Bridgeman Art Library v. Corel, U.S.D.C., S.D.N.Y. (defended copyright and trademark infringement action over use of images in CD-ROMs). Decision at Bridgeman Art Library v. Corel, 25 F.Supp.2d 421 (S.D.N.Y. 1998) (granting summary judgment for defendant on copyright and trademark claims), affirmed on reconsideration 36 F.Supp.2d 191 (S.D.N.Y. 1999).
• Micrografx v. Corel, U.S.D.C., N.D. Tex. (defended copyright infringement action; defeated preliminary injunction motion after evidentiary hearing).
• Dynamic Microprocessor Assocs. v. EKD Computer Sales & Supplies, U.S.D.C., E.D.N.Y. (prosecuted copyright and trademark infringement action against former software manufacturing licensee; obtained ex parte temporary restraining order and preliminary injunction, affirmed on appeal and prevailed on summary judgment motion). Decision at Dynamic Microprocessor Assocs. v. EKD Computer Sales & Supplies, 1997 U.S. Dist. LEXIS 6337 (E.D.N.Y. March 18, 1997), adopting 1997 U.S. Dist. LEXIS 6283 (E.D.N.Y. April 14, 1997) (granting summary judgment motion).

Right of Publicity

• Jones v. Corbis, U.S.D.C., C.D. Cal. (successfully defended right of publicity action relating to licensing of copyrights to digital images, and obtained award of attorneys fees). Decision at Jones v. Corbis, 815 F.Supp.2d 1108 (C.D. Cal. 2011) (granting summary judgment for defendant), affirmed 489 Fed. Appx. 155, 2012 U.S. App. LEXIS 14543 (9th Cir. July 16, 2012) (unpublished).
• Alberghetti v. Corbis, U.S.D.C., C.D. Cal. (successfully defended right of publicity action relating to licensing of copyrights to digital images, and obtained award of attorneys fees). Decisions at Alberghetti v. Corbis, 263 F.R.D. 571 (C.D. Cal. 2010) (defeated motion for class certification), at Alberghetti v. Corbis, 713 F. Supp. 2d 971 (C.D. Cal. 2010) (obtained summary judgment against individual plaintiffs), and at 476 Fed. Appx. 154; 2012 U.S. App. LEXIS 18145 (9th Cir. Aug. 27, 2012) (affirming summary judgment for Corbis and denial of class certification) (unpublished).
• Lyon v. Corel, Superior Court, San Diego County (defended right of publicity action against software publisher over inclusion of photograph in software clip-art product).

Defamation

• Berlinger v. Corel, U.S.D.C., C.D. Cal. (obtained summary judgment for defendant software publisher in defamation action involving inclusion of alleged defamatory material in software product, which was affirmed on appeal). Unpublished decision at Berlinger v. Corel 2000 U.S. App. LEXIS 8061 (9th Cir. 2000).

General Business Litigation

• Success Systems, Inc., et al. v. Excentus Corp., et al., U.S.D.C., D. Conn. (obtained dismissal with prejudice of complaint alleging violations of antitrust and unfair competition laws against competitor). Decision at Success Systems, Inc. v. Excentus Corp., Skupos, Inc., 439 F. Supp. 3d 31 (D. Conn. 2020).

Professional Activities and Recognition

Kate writes and speaks regularly on IP issues to groups that include the Federal Judicial Center and Practicing Law Institute, and since 1999 has taught an advanced trademark law seminar at UC Berkeley School of Law.

Kate is actively involved in pro bono, both in direct client representation and with pro bono organizations. She has represented documentary filmmakers on IP issues, including David Weissman in connection with his films We Were Here, which was short-listed for an Academy Award, and The Cockettes. For many years she was on the capital defense team for a client on California’s death row, ultimately achieving a reversal of his death sentence, and has assisted clients in obtaining political asylum. She currently serves as Vice Chair of the board of Equal Justice Works, and is a member of the board of directors of Bay Area Legal Aid. She also served on the Legal Service Corporation’s Pro Bono Task Force and was co-chair of the Subcommittee on Technology Best Practices in Pro Bono. She was recently recognized by OneJustice as a “Champion of Justice.”

Recent Publications

• Litigation Alert: Ninth Circuit Rules on Copyright Preemption of Right-of-Publicity Claims, Fenwick & West, April 2017
• Use of Likeness of Former Dictator in Video Game Held Transformative Use by California Supreme Court, The Licensing Journal, February 2015
• Right of Publicity? First, Let Me Take a Selfie, The Daily Journal, April 2014