Keats Gatien represents clients in trial and appellate courts throughout California and in Federal Civil Courts across the United States. We specialize in prosecuting and defending actions based on trademark infringement, copyright infringement, trade dress infringement, domain name infringement, commercial business disputes, and unfair competition matters. In addition, we have successfully coordinated enforcement actions and civil lawsuits around the globe through our extensive network of foreign counsel.
Our attorneys have litigated the following representative matters:
Represented the Commissioner’s Office for Major League Baseball in obtaining temporary restraining and seizure orders for San Francisco and Oakland baseball venues during the conference playoffs and World Series.
Defended Viacom, Inc. in a trademark infringement action filed by M2 Software for the alleged unauthorized use by Viacom of its M2:MUSIC TELEVISION mark. We successfully resisted M2’s request for a preliminary injunction to halt the launch of MTV’s second broadcasting network, and over $1 billion in damages, notwithstanding the court’s initial finding that the plaintiff was likely to succeed on the merits. After extensive discovery, including depositions across the country, we moved for and obtained summary judgment against all of the plaintiff’s claims. The published and often cited decision was upheld on appeal by the Ninth Circuit.
Represented the International Anticounterfeiting Coalition, Inc. (IACC) in the Ninth Circuit Court of Appeals. We filed an Amicus Brief on behalf of numerous intellectual property rights owners seeking to overturn a lower court’s decision that flea market owners could not be liable for the infringing acts of flea market vendors. The Ninth Circuit, relying on our brief, held that flea market owners can be found liable for contributory and vicarious copyright infringement resulting from the sale by its vendors of counterfeit merchandise. The Ninth Circuit further stated that a flea market owner “cannot disregard its vendors’ blatant trademark infringements with impunity,” and that a flea market owner can be held liable for contributory trademark infringement. The published decision has been well-cited precedent for decades to support the expansion of liability for real and on-line property owners who knowingly allow trademark infringement to take place on their property or on their internet sites.
Represented Philips in a trademark infringement case brought against manufacturers of infringing DVD recorders. We obtained a $120 million judgment and permanent injunction. In addition, we obtained contempt sanctions of millions of dollars, incarceration of the defendant’s U.S. based executive, seizures at various locations, and an order to freeze all of the defendant’s assets and repatriate millions of dollars transferred overseas.
Represented Louis Vuitton in an action for copyright infringement and trademark counterfeiting against a cosmetics company and its retail customers who were manufacturing and selling cosmetic kits infringing the Louis Vuitton Multicolor artwork and trademark. The matter was resolved favorably for our client including a permanent injunction against the defendants.
Represented Polo in a thirteen-year investigation and litigation matter involving multinational manufacturing and trafficking in counterfeit Polo apparel involving $14 million in illicit revenue. The counterfeit apparel was made in the US and the goods were shipped to Japan for sale. At trial, the defendant agreed to the payment of an 8.8 million dollar settlement, then filed for bankruptcy to attempt to avoid payment. The Court determined the defendant had sheltered his illegal revenue in European and Israeli bank accounts and issued an asset freeze order. The defendant ignored the order and was incarcerated briefly for civil contempt. The US Dept. of Justice then incarcerated the defendant for bankruptcy fraud. Our attorneys executed writs of attachment against the defendant and recovered millions for Polo.
Represented the computer company in a right of publicity dispute over use of the term “Sagan” for an internal company work project.
Defended Michael Kors in a trademark infringement matter in which the plaintiff, the estate of a famed Hollywood interior designer, alleged that our client had infringed its copyrights in, and trade dress for, a green malachite rock pattern to sell apparel. The court dismissed the copyright claim and the matter was resolved favorably for our client.
Represented Lucasfilm in the protection of its STAR WARS intellectual property rights against vendors and manufacturers of collectable postage stamps of a foreign nation bearing unauthorized reproductions of Lucasfilm’s copyrighted works and trademarks. We successfully obtained a temporary restraining order against the defendants and later settled with the defendants on terms favorable to our client.
Represented the owner of the film rights and the film producer of THE LORD OF THE RINGS films and THE HOBBIT in a copyright infringement case against a website operator selling an extensive line of Tolkien-related character accessories and merchandise, and for domain name infringement. We obtained a favorable settlement.
Represented Fossil, Inc. and Macy’s Merchandising Group, Inc. against allegations that the plaintiff owned trademark rights in its founder’s surname-YOUNGBLOOD- for use on watches, and that Fossil and Macy’s infringed its rights by using the term “Youngblood” to identify a line of DIESEL-branded watches. After conducting extensive fact discovery on a severely compacted schedule, including taking and defending over 15 depositions in two months, and conducting expert discovery on the secondary meaning of surnames in the context of the fashion industry, we obtained summary judgment on behalf of Macy’s and successfully settled the case for Fossil.
Represented Gucci in a trademark counterfeiting case involving the sale of counterfeit handbags in the downtown Los Angeles apparel district. After obtaining a temporary restraining and seizure order against the defendant’s counterfeiting activities, we obtained a permanent injunction for Gucci.
Represented Sony in a breach of contract case for the defendant’s unauthorized manufacturing of GODZILLA merchandise. We obtained a favorable judgment for Sony.
Represented Saban Entertainment, Inc. against a complaint for copyright infringement, breach of contract and various associated law claims against the owners and broadcasters of the Mighty Morphin Power Rangers, alleging that the Power Rangers infringed a property which the plaintiff allegedly owned. The plaintiff sought $1 billion and injunctive relief. We successfully dismissed all of the plaintiff’s claims.
Represented Paramount Pictures Corporation just weeks before the release of its holiday blockbuster motion picture, Varsity Blues, in an action against the registrant of the domain name VARSITBLUES.COM, who threatened and launched a website depicting partial birth abortions. We successfully obtained an injunction against the website owner, and the court ordered the defendant to immediately transfer the domain name to Paramount.
Represented Stanley Black & Decker in a multinational investigation and enforcement litigation against the on-line and brick and mortar sales of counterfeit DEWALT brand batteries for power tools. We obtained an ex parte seizure order against a group of companies importing and selling the batteries. Through investigative follow-up we were able to locate a factory producing the counterfeit batteries in a remote part of China and with the assistance of local Chinese law enforcement shut down the counterfeiting operation. We were also able to obtain an order freezing assets of the US defendants to prevent them from moving the assets out of the US.
Defended a producer of a documentary against a right of publicity and trademark claim by performer 50 Cent. Our client had created a documentary entitled “The Original 50 Cent,” which was based on the life of the namesake of the more well-known 50 Cent. We successfully defeated a motion for a preliminary injunction, and the case settled favorably for our client.
Defended Burberry Group, PLC Burberry Limited (NY) and Burberry Limited (UK) against right of publicity and trademark infringement claims brought by the Estate of Humphrey Bogart. Our client had created an historical timeline depicting the evolution of Burberry’s culture, products, and people, which Burberry published on Facebook. The timeline included an image of Humphrey Bogart from 1942 wearing a Burberry trench coat from the final scene of the motion picture, Casablanca. A few hours before Bogart LLC filed its action in California, we filed a declaratory relief action in the Southern District of New York. After litigating two cases on opposite coasts, the cases were settled on terms favorable to our clients.
Represented Givenchy against BCBG for infringement of a Givenchy handbag trade dress by BCBG’s “fast fashion” handbags. We successfully defeated BCBG’s summary judgment motion, which argued Givenchy’s handbag trade dress was not protectable. The case settled favorably for our client.
Represented Warner Bros. to remove counterfeit Looney Tunes products from retail sales areas around the country to support the holiday sales performance of Warner Bros.’ licensees and retailers. We sought and obtained a multidistrict temporary restraining order and seizure and impoundment order, which was executed under our attorneys’ supervision by U.S. Marshals and local law enforcement agencies in California, Colorado, Florida, Illinois, Maryland, New Jersey, New York, Pennsylvania, Texas, and Washington, D.C. The Court granted our client unprecedented relief allowing simultaneous and repetitive seizures across multi-districts (prior precedent cases only permitted successive seizures around venues during a single artist’s tour).
Represented the personal care products company in this and approximately 100 civil litigation matters related to the counterfeiting and trafficking of hair care products throughout the United States under the first US anti-counterfeiting statute. Supported contemporaneous US prosecutors’ investigation and prosecution of Mr. Snyder for which he was imprisoned.
Represented the US Organizing Committee in the protection of their trademarked logo and rights to the mark World Cup USA in numerous matters including the use of an infringing mark by an Italian apparel manufacturer. The Organizing Committee was able to enjoin the infringing use by the apparel maker.
