Kate is a partner in the litigation, intellectual property and privacy groups, and recently completed a 12 year term as the firm’s managing partner.
Kate’s practice concentrates on business and IP litigation, with an emphasis on trademark, right of publicity and copyright, especially as applied to new technology areas. She has litigated cases in federal and state courts throughout the country and through alternative dispute mechanisms. She has represented and advised software publishers, computer hardware manufacturers, gaming and digital media companies, entertainment companies, traditional media publishers and consumer products companies on a wide variety of commercial and IP issues, including copyright, defamation, trademark, trade dress, advertising, right of publicity, trade secret and unfair competition matters.
REPRESENTATIVE ENGAGEMENTS AND LITIGATION
- Alibaba Group (represented Alibaba.com in several litigations alleging liability for trademark infringement by third party postings).
- Tata Sons (represented Tata Sons in several litigations concerning violations of the TATA trademark in domain names).
- Altera Corp. v. Alternative Living Services, Inc., U.S.D.C., N.D. Cal. (defended trademark infringement action relating to use of ALTERA name and successfully defeated application for temporary restraining order and motion for preliminary injunction, which was affirmed on appeal).
- David White Instruments Ltd. v. TLZ, Inc., U.S.D.C., N.D. Ill. (defended trade dress infringement action and successfully defeated application for temporary restraining order).
- Medic Alert, Inc. v. Corel Corp., 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, Inc. v. Corel Corporation, 43 F.Supp.2d 933 (N.D. Ill. 1999) (granting motion for summary judgment and dismissing case against defendant).
- The Republic of Tea, Inc. v. Golden Moon Tea Ltd., U.S.D.C., N.D. Cal. (defended trade dress infringement action; plaintiff dismissed after defendant filed summary judgment motion).
- Kaplan v. The Chronicle Publishing Co., 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).
- Silicon Image, Inc. v. Schrank (prevailed in ICANN proceeding and federal court action to obtain domain name www.siliconimage.com).
- Microsystems, Inc. v. Astro-Med, Inc., U.S.D.C., N.D. Cal. (prosecuted trademark infringement action over use of SUNDANCE on printer product). Decision at Sun Microsystems, Inc. v. Astro-Med, Inc., 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, Inc. v. SunRiver Corp., et al. U.S.D.C., N.D. Cal. (prosecuted trademark infringement action over use of SUNRIVER). Decision at Sun Microsystems, Inc. v. SunRiver Corp., et al., 36 U.S.P.Q.2d (BNA) 1266 (N.D. Cal. 1995) (granting motion for preliminary injunction, enjoining defendants’ use of SUNRIVER as trademark or trade name).
RIGHT OF PUBLICITY
- Jones v. Corbis Corp., U.S.D.C., C.D. Cal. (successfully defended right of publicity action relating to licensing of copyrights to digital images). Decision at Jones v. Corbis Corp., 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 Corp., U.S.D.C., C.D. Cal. (successfully defended right of publicity action relating to licensing of copyrights to digital images). Decisions at Alberghetti v Corbis Corp., 263 F.R.D. 571 (C.D. Cal. 2010) (defeated motion for class certification), at Alberghetti v. Corbis Corp., 713 F. Supp. 2d 971 (C.D. Cal. 2010) (obtained summary judgment), 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 Corp., Superior Court, San Diego County (defended right of publicity action against software publisher over inclusion of photograph in software clip-art product).
- Bridgeman Art Library v. Corel Corp., 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, Ltd. v. Corel Corp., 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, Inc. v. Corel Corp., 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 Corp., 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 Corp., 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).
- Berlinger v. Corel Corp., 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 Corp. 2000 U.S. App. LEXIS 8061 (9th Cir. 2000).
- Borland Int’l, Inc. v. Symantec Corp., Superior Court, Santa Cruz County (defended trade secret misappropriation action against former employee and his new employer, claiming that trade secrets misappropriated through electronic mail).
PRESENTATIONS AND PUBLICATIONS
- May and July 2015, The Cybersecure Practice of Law: Legal Ethics and the Use of Information Technology (PLI 16th Annual Institute on Privacy and Data Security Law).
- May and July 2014, Ethics and Information Security in the Law Office (PLI 15th Annual Institute on Privacy and Data Security Law).
- July 2013, How is Copyright Law Coping with Disruptive Technologies (PLI Fundamentals of Copyright Law in the Data Era 2013)
- May and July 2013, Privacy and Security Ethics and Risk Management (PLI 14th Annual Institute on Privacy and Data Security Law).
- April 2013, Lawyering 2.0: Shifting to a “customer”-focused model (Thomson Reuters Legal Current Podcast).
- March 2013, How Fenwick Prices its Legal Services (Bloomberg Law Interview).
- January 2013, Fenwick & West Annual LLP 8th Annual IP and Technology Litigation MCLE Event, speaker on Professional Responsibility in the Cloud.
- June and July 2012, Ethics and Risk Management for Privacy Lawyers (PLI 13th Annual Institute on Privacy and Security Law).
- March 2012, Trademark Law (U.S. Dist. Court, C.D. Cal., Magistrate Judges).
- June 2011, Breaking the Mold: New Ideas Impact Direction of Law Firm Design (NeoCon World’s Trade Fair 2011).
- May 2011, Should I Friend the Judge and Other Current Ethical Challenges for Lawyers (PLI 12th Annual Institute on Privacy and Security Law).
- August 2010, Dangerous Liaisons for IP Lawyers: The Ethics of Investigations and Interactive Media (ABA Annual Meeting).
- June 2010, Current Ethical Issues in Privacy and Information Security for Lawyers (PLI 11th Annual Institute on Privacy and Security Law).
- February 2010, Protecting Your Company’s Reputation on the Internet (ABA Section of Litigation 2010 Committee on Corporate Counsel CLE Seminar).
- June 2009, Ethical Aspects of Privacy and Information Security for Lawyers (PLI 10th Annual Institute on Privacy and Security Law).
- March 2008, Practicing What We Preach: Current Issues In Information Management, Legal Practice And Legal Ethics, (PLI 9th Annual Institute on Privacy and Security Law).
- June 2007, Information Ethics for Lawyers (PLI 8th Annual Institute on Privacy and Security Law).
- January 2005, Trademark Issues in Advertising (Lorman Education).
- May 2001, Ethics Issues in Attorney Web Sites (Computer Law Association).
- March 2001, Napster (Hastings Computer Law Symposium).
- October 1999, Advanced Course of Study: Intellectual Property Litigation (Continuing Education of the Bar).
- Use of Likeness of Former Dictator in Video Game Held Transformative Use by California Supreme Court, The Licensing Journal (Feb. 2015).
- Hana Financial v. Hana Bank—The Supreme Court Reaffirms the Power of the Jury to Decide Issues of Commercial Impression in a Trademark Tacking Decision, Fenwick & West Litigation Alert (Jan. 23, 2015).
- Right of Publicity? First, Let Me Take a Selfie, The Daily Journal (April 16, 2014).
- Ninth Circuit Finds Fair Use of Street Art in Concert Backdrop, Fenwick & West Litigation Alert (Aug. 12, 2013).
- Ninth Circuit Assesses Use of Player Likenesses in Video Games, Fenwick & West Litigation Alert (Aug. 6, 2013).
PROFESSIONAL ACTIVITES AND RECOGNITION
Kate is a member of the Litigation and Intellectual Property Sections of the California Bar Association and the American Bar Association, and the Association of the Bar of the City of New York. She has been a member of the Board of Trustees of the Santa Clara County Bar Association and the Board of Directors of the Bar Association of San Francisco. She is an active speaker on issues relating to law firm management and change, and is active in diversity initiatives in the profession, including serving as Chair of the Santa Clara County Bar Association’s Diversity Committee and speaking on diversity issues before numerous organizations and groups including the Minority Corporate Counsel Association, the Project for Attorney Retention, and the Hastings Women’s Leadership Academy.
She writes and speaks regularly on intellectual property 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. She was named to The National Law Journal’s 75 Outstanding Women Lawyers; has been named to The Recorder’s list of Top 50 Women Leaders in Tech Law and, in 2015, was additionally designated as one of 10 “Power Players.” She has been repeatedly selected as a “Northern California Super Lawyer” in the area of Intellectual Property Litigation, and is AV Peer Review Rated as "Preeminent" by LexisNexis Martindale-Hubbell.
PRO BONO INVOLEMENT
Kate has been actively involved in work on behalf of pro bono clients. She has represented documentary filmmakers on intellectual property 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.
In addition to her pro bono client representation, Kate has been active in the greater pro bono community. She has co-chaired the Bar Association of San Francisco’s Pro Bono Committee, is a member of the Pro Bono Institute’s Law Firm Advisory Board, and was a member of the Legal Service Corporation’s Pro Bono Task Force and co-chair of the Subcommittee on Technology Best Practices in Pro Bono. She was recently honored by OneJustice for her pro bono leadership.
Education & Admissions
J.D., cum laude
Georgetown University Law Center
Research Editor of the American Criminal Law Review
B.A., magna cum laude, Political Science
University of California, Santa Barbara
Phi Beta Kappa and University of California Regents' Scholar
Admitted to practice in New York and California
Admitted to practice before the U.S. District Court for the Southern and Eastern Districts of New York, and the Northern, Eastern, Central and Southern Districts of California
Admitted to practice before the U.S. Courts of Appeal for the Second, Fifth and Ninth Circuits