Belinda J. Scrimenti

Phone: 312-554-7935

Email: bscrimenti@pattishall.com

Bio

Education

  • Ohio State University College of Law (J.D., with honors, 1981); Note and Comment Editor Ohio State Law Journal
  • Ohio University (B.S., Journalism, summa cum laude, 1978)

Bar Admissions

Illinois
District of Columbia
Virginia
Ohio

Court Admissions

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Industry Expertise

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Honors & Awards

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Representative Trials, Appeals & Litigation

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Professional Activities

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Representative Publications

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Representative Presentations

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Belinda J. Scrimenti

Even if it looks like a duck, walks like a duck, and quacks like a duck, it might really be a motion mark.

Pattishall partner Belinda Scrimenti obtained a service mark registration for the famous "Duck March" held at The Peabody Hotels' historic Memphis Hotel --in which Mallard ducks parade from the rooftop, down the elevator, across a red carpet and into each hotel lobby's marble fountain daily. "While there are a handful of other motion marks on the trademark register, the Duck March truly is one of a kind," she explains.

Scrimenti focuses on protecting her clients' intellectual property rights throughout a brand's life stages--from counseling and clearance, to registration and enforcement, with over 30 years of experience litigating trade identity disputes.

Her national litigation experience has encompassed cases in more than 40 federal court districts and divisions and before the Trademark Trial and Appeal Board. She has litigated over 100 cases in federal courts involving trademark, trade dress, product configuration, unfair competition, dilution, domain name, copyright, counterfeiting, generic products, false advertising, and product disparagement claims.

Her trial experience includes cases in the Eastern District of Virginia's notorious "rocket docket" (where many domain name cases can be brought), a jurisdiction where cases go to trial within six to nine months. She has also litigated numerous ex parte motions for seizure and impoundment orders, and motions for temporary restraining orders and preliminary injunctions.

Her litigation experience is diverse. For example, she prevailed in a published preliminary injunction decision that served as a hallmark for a national enforcement program for the "Power Rangers" property. She served as lead counsel in a suit brought by one of the largest national casual dining restaurant chains against a competitor over trademark infringement of plaintiff's multi-million dollar signature dining promotion. Recently, she brought suit to stop a competitor of The Peabody Hotel from using a "Ducks in a Row" ad.

In addition to hotel and restaurant businesses, Scrimenti has represented clients in the fields of merchandised character and sports properties, toys and giftware, personal care products, cosmetics, apparel, luxury goods, computer and semiconductor technology, vehicle parts, and publishing, as well as real estate development, construction, security, trade association, and managed health care services.

Scrimenti has counseled on and registered many nontraditional trademarks, including color, building design, configuration, sound, motion, and lengthy narrative marks. With respect to color, she has assisted an internationally-known manufacturer of insulation products in expanding its protection of a single color mark from the United States through jurisdictions internationally - often in countries where protection of single colors is a novel and emerging legal concept. She is a frequent speaker on topics relating to color and other nontraditional marks.

She's resolved Internet and domain name problems involving the removal of pornographic, political, and defamatory material from websites, through enforcement and Uniform Domain Name Dispute Resolution (UDRP) actions. She also supervised an international enforcement program to halt infringement of two internationally famous comic strip characters in over 50 countries.

Scrimenti's extensive litigation experience helps clients at all stages of the branding process. "My job is to be the 'worrier,'" Scrimenti says. "My motto is 'plan for the best, but prepare for the worst.' I always consider the potential ramifications of decisions made in the early stages of branding, to minimize the likelihood of disputes and litigation later; but at the same time, help clients be best prepared should litigation become necessary."

Scrimenti came to Pattishall laterally, previously practicing in Washington, D.C. Of her Pattishall experience, she says, "While I already knew the firm by its premier reputation in our field, I now know first-hand how much more we offer clients. The firm has immense depth and breadth of talent and experience, led by nationally-recognized experts, that is second to none."

Industry Expertise

  • Consumer Durables & Apparel
  • Hotels, Restaurants & Leisure
  • Media
  • Retailing
  • Food & Drug Retailing
  • Food, Beverage & Tobacco
  • Household & Personal Products
  • Real Estate
  • Health Care Equipment & Services
  • Pharmaceuticals & Biotechnology
  • Commercial Services & Supplies
  • Transportation
  • Software & Services
  • Technology Hardware & Equipment

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Honors & Awards

  • 2017 Illinois Super Lawyers : An Illinois "Super Lawyer"
  • 2016 Expert Guides : A leading practitioner in Trade Marks
  • 2016 Who's Who Legal: Trademarks 2016 : One of the world's leading Trademark lawyers
  • 2016 Illinois Super Lawyers : An Illinois "Super Lawyer" in Intellectual Property Litigation
  • 2015 Who's Who Legal: Trademarks 2015 : One of the world's leading Trademark lawyers
  • 2015 Illinois Super Lawyers : An Illinois "Super Lawyer" in Intellectual Property and Intellectual Property Litigation
  • 2014 Chicago Magazine : Recognized as one of "the Top Women Attorneys in Illinois"
  • 2014 Who's Who Legal: Trademarks 2014 and Who's Who Legal 2015 : One of the world's leading Trademark lawyers
  • 2014 Illinois Super Lawyers : An Illinois "Super Lawyer" in Intellectual Property and Intellectual Property Litigation
  • 2013 The International Who's Who of Trademark Lawyers 2013 : One of the world's leading Trademark lawyers
  • 2013 The International Who's Who of Business Lawyers : Recognized
  • 2012 The International Who's Who of Trademark Lawyers 2012 : One of the world's leading Trademark lawyers

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Representative Trials, Appeals & Litigation

  • Peabody Management, Inc. v. Raheem Harris, Claim Number: FA1702001717584 (Forum 2017) (UDRP re: peabodylittlerock.com; Domain transferred to client) (UDRP Proceeding)
  • ATI Technologies ULC v. Entegra Technologies, Inc., TTAB Opposition No. 91222680 (TTAB 2016) (CROSSFIRE and ENTEGRA CROSSFIRE marks) (Settled, obtained withdrawal of opposed trademark application and agreement to halt use phase out of all use of offending CROSSFIRE mark alone) (Trademark)
  • Meda Consumer Healthcare, Inc. v. Almirall Hermal GmbH, TTAB Opposition No. 91220055 (TTAB 2015) (Dispute over marks BALNEOL and BALNEUM for alleged related goods; settled) (Trademark)
  • Advanced Micro Devices, Inc. v. Elan Microelectronics Corp., TTAB Opposition No. 91220285 (TTAB 2015) (Trademark opposition over mark ELAN, settled) (Trademark)
  • E. I. du Pont de Nemours and Company v. The Middleby Corporation, et al., Case No. 2:14-cv-07846 (C.D. Cal. 2015) (Judge O'Connell)(voluntary dismissal with prejudice of claims against defendant clients) (Trademark Infringement, Counterfeiting, Unfair Competition)
  • ATI Technologies ULC v. Neowiz Games Co., Ltd. and Smilegate, Inc., Opposition No. 91201338 (TTAB 2014) (CROSSFIRE v. CROSS FIRE; settled, Applicant?s application amended) (Trademark)
  • Darden Concepts, Inc. v. Kristine Huang, Opposition No. 91212047 (TTAB 2014) (RED LOBSTER & Design v. RED CRAWFISH & Design; Settled, obtained withdrawal of opposed application and agreement to phase out all use of offending word and design mark) (Trademark)
  • Darden Concepts, Inc. v. Aqua-Leisure Industries, Inc., Opposition No. 91200559 (TTAB 2014) (BAHAMA BREEZE v. BAHAMA BREEZE; Settled, obtained withdrawal of opposed application) (Trademark)
  • Advanced Micro Devices, Inc. v. Ciena Corporation, Opposition No. 91199482 (TTAB 2013) (OPTERON v. OPTERA; settled withdrawal of opposition with consent) (Trademark)
  • Peabody Management, Inc. v. LQ Management, LLC, Case No. 6:12-cv--1458 (M.D. Fla. 2013, Judge Sharp) (Settled, defendant allowed a limited phase-out period to run La Quinta Hotel's Ducks in A Row ad campaign) (Trademark Infringement, Unfair Competition, Trademark Dilution)
  • Robert Bosch LLC v. A.B.S. Power Brake, Inc., Case No. 09-14468 (E.D. Mich. 2012, Judge Duggan) (After three years of litigation, Bosch awarded judgment of over $13 Million, injunction, and destruction order by default on claims for counterfeit and infringing hydraulic brakes, and for false advertising of refurbished brakes as new, genuine Bosch products) (Counterfeiting, Trademark Infringement, Unfair Competition)
  • Peabody Management, Inc. v. TNK (2009) Limited, Opposition No. 91206700 (TTAB 2012) (Defendant expressly abandoned opposed application, resulting judgment for Peabody) (Trademark Infringement)
  • Bosch Security Systems, Inc. v. Seaguard Electronics, L.L.C. et al., Case No.: 2:11-cv-356 (D. Nev. 2011, Judge Hicks) (Defendants withdrew infringing trademark application, took down infringing website, and abandoned domain name at issue) (Trademark Infringement, Unfair Competition, Cybersquatting)
  • Darden Concepts, Inc., et al. v. Briad Restaurant Group, L.L.C., et. al., Case No.: 10 CV 2077 IEG (S.D. Cal. 2010) (permanent injunction on consent; confidential settlement) (Trademark Infringement, Unfair Competition, Trademark Dilution)
  • Darden Concepts, Inc. v. Kamal Kumar, Opposition No. 91197054 (TTAB 2011) (BAHAMA BREEZE v. BAHAMA BREEZE; Judgment for Darden for its Bahama Breeze restaurants) (Trademark)
  • Barbeque Integrated, Inc. v. Michael Stone, Opposition No. 91190935 (TTAB 2011) (SMOKEY BONES v. STONEY BONES; judgment for operator of Smokey Bones restaurant) (Trademark)
  • ATI Technologies ULC v. Agere Systems Inc. , Opposition Nos. 91181441 (TTAB 2010) (FIRE and CROSSFIRE v. TRUEFIRE, settled with amendment to application) (Trademark)
  • Peabody Management, Inc. (plaintiff in multiple cases for domain name infringement), NAF Case Nos. FA1009001349529, FA1009001349525, FA1010001349833 (NAF 2010) (Domain names transferred to client) (Internet, E-Commerce and Computer Technology)
  • Darden Concepts, Inc. v. Bradford M. Kimball, Opposition Nos. 91169729-731 (TTAB 2009) (RED LOBSTER v. BLUE LOBSTER; abandonment of applications) (Trademark)
  • Darden Concepts, Inc. v. Pennant Foods Company, Opposition No. 91188582 (TTAB 2009) (Opposition by owner of Red Lobster's "ENDLESS SHRIMP" mark; abandonment of application) (Trademark)
  • Peabody Management, Inc. v. Peabody Painting & Waterproofing, Inc., C.A. No. 2:2007-cv-02675-dkv (W.D. Tenn. 2007) (Judge Donald) (on behalf of Plaintiff, obtained permanent injunction on consent; confidential settlement) (Trademark Infringement)
  • Slazengers Ltd. v. The Sports Authority, Inc., Case No. 1:2007-cv-01024 (E.D. Va. 2008, Judge O'Grady) (gray market golf ball case) (Trademark)
  • Advanced Micro Devices, Inc. v. BANKSYS, societe anonyme, Opposition No. 91181545 (TTAB 2008) (XENTURION v. TURION, Judgment for Opposer) (Trademark)
  • Darden Concepts, Inc. v. G.S. Color Import, Ltd. , Opposition No. 91178515 (TTAB 2007) (BAHAMA BREEZE v. BAHAMA BREEZE; Judgment for Darden for its Bahama Breeze restaurants) (Trademark)
  • Spansion LLC v. Esalk LLC, Case No. D2007-1237 (WIPO 2007) (domain transferred) (ADR, arbitration, Mediation, and Expert Witnesses)
  • Singletary, et al v. GMRI, Inc., Case No. 1:2004-cv-20517 (S.D. Fla. 2005, Judge Martinez) (General)
  • Darden Corp. et al (Olive Garden) v. IHOP Corp., Case No. 6:2004-cv-00149 (M.D. Fla. 2005, Judge Sharp) (on behalf of Plaintiff, use of offending mark halted; confidential settlement) (Trademark Infringement)
  • GMRI and Darden Corp. v. Seasons Restaurant, Inc. , Opposition No. 91158488 (TTAB 2004) (SEASONS v. SEASONS, Judgment for Darden, operator of Seasons 52 restaurants) (Trademark)
  • Eugene Singletary and Restaurant at the Falls, Inc. v. GMRI, Inc., Case No. 04-20517-CIV- (S.D. Fla. 2004, Judge Martinez) (confidential settlement) (Trademark Infringement, Dilution)
  • Peabody Management v. Sunburst Hospitality, et al, Case No. 8:2003-cv-00509 (D. Md. 2003, Judge Chasanow) (confidential settlement) (Trademark Infringement)
  • Match.com, Inc. v. Justdate.com, Inc., Case No. 1:2002-cv-00297 (D. Md. 2002, Judge Davis) (General)
  • Nike, Inc. v. NIKESHOPS.COM, Case No. 02-1546 (E.D. Va. 2002, Judge Lee) (action under Federal Anti-Cybersquatting Consumer Protection Act, successfully obtained transfer of domain from cybersquatter, notwithstanding prior counsel's loss of UDRP proceeding) (Cybersquatting, Trademark Infringement)
  • Shack Foods of America v. GMRI, Inc., Case No. 03-11458 (D. Mass. 2003, Judge Wolf) (on behalf of Defendant, obtained dismissal of action) (Trademark Infringement, Unfair Competition)
  • Daniel H. Shooster v. BT Orlando, LP, Case No. 1:1999-cv-02048 (S.D. Fla. 2001, Judge Huck) and Opposition No. 91119471 (TTAB 2002) (Trademark Infringement)
  • Adrien Arpel, Inc. v. California Fragrance Company, Cancellation No. 92025508 (TTAB 1998) (on behalf of Plaintiff, settled) (Trademark Infringement)
  • Healthcare Compare v. United Payors, et al, Case No. 1:1996-cv-02518 (N.D. Ill. 2000, Judge Moran) (on behalf of key non-party witness) (Unfair Competition)
  • In Re: First Health Group, et al v. United Payors, Case No. 8:1999mc00019 (M.D. Fla. 1999, Judge Bucklew) (on behalf of key non-party witness) (Unfair Competition)
  • Darden Restaurants, Inc. v. Jeno F. Paulucci (D. Minn. 1998) (on behalf of Olive Garden restaurants against founder/owner of Jeno's Pizza Roll product, settled successfully) (Declaratory Judgment, Trademark Infringement)
  • Saban Entertainment, et al v. Rubie's Costume Co., Case No. 1:1994-cv-03592 (E.D.N.Y. 1997, Judge Trager) (action involving infringing Power Rangers costumes, settled successfully) (Copyright Infringement, Unfair Competition)
  • Bob DeGabrielle & Associates, Inc. v. Florez & Florez, Case No. 2:1997-cv-00012 (E.D.N.C. 1997, Judge Howard) (action related to alleged copying of architectural drawings and works, settled) (Copyright Infringement, Unfair Competition)
  • Saban Entertainment, et al v. 222 World Corp., et al, 865 F. Supp. 1047 (S.D.N.Y. 1994, Judge Chin) (preliminary injunction obtained on behalf of plaintiff against infringing Power Rangers toy figures) (Copyright Infringement)
  • Control Risks Group, et al v. Corporate Risk Intl, et al, Case No. 1:1993-cv-01494 (E.D. Va. 1994, Judge Ellis) (jury trial on behalf of Plaintiff, settled during trial) (Trademark Infringement, Unfair Competition)
  • Ganz Bros. Toys v. Midwest Importers, et al, Case No. 1:1993-cv-00549 (E.D. Va. 1993, Judge Ellis) (jury trial on behalf of Plaintiff toy manufacturer, damages over $1 Million awarded) (Copyright Infringement, Unfair Competition)
  • NEXxUS Products Co. v. Gentle Concepts Inc., 28 U.S.P.Q.2d 1257 (M.D. Fla. 1993, Judge Duggan) (bench trial on behalf of Plaintiff; $171,000 in damages, attorneys fees and pre-judgment interest awarded) (Trademark Infringement, Trade Dress Infringement)
  • Caterpillar, Inc., et al v. Kat-Parts, et al, Case No. 4:1991-cv-00444 (S.D. Tex. 1993, Judge Black) (jury trial on behalf of Plaintiff relating to counterfeit tractor parts, successfully settled at conclusion of Plaintiff's case) (Trademark Infringement, Counterfeiting, Trade Dress Infringement)
  • National Rural Electric Cooperative Ass'n v. National Agricultural Chemical Ass'n, 26 U.S.P.Q.2d 1294 (D.D.C. 1992, Judge Greene) (preliminary injunction obtained on behalf of Plaintiff) (Trademark Infringement, Unfair Competition)
  • Extensive Counterfeiting, Piracy and Infringement Litigation (1981-2001) (throughout the United States, litigation of voluminous merchandising infringement actions on behalf of numerous rights holders including United Feature Syndicate (then-owner of "Peanuts" and "Garfield" comic strips), Major League Baseball Properties, NEXxUS hair care products, adidas, Coca Cola, General Motors, "Power Rangers," Rolex, Vuitton, Warner Brothers (e.g., "Looney Tunes"), Universal Studios ("Jurassic Park"), the U.S. Olympic Committee, and Collegiate Licensing Company schools.) (Trademark, Counterfeiting, Copyright)

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Professional Activities

  • International Trademark Association : 2016-2017 Famous and Well-Known Marks Committee
  • International Trademark Association : 2014-2015 Emerging Issues Committee, Issues Identification Subcommittee
  • Women's Bar Association of Illinois : Co-Chair of October 29, 2013 Reception Honoring Illinois' New Women Chief Jurists
  • Women's Bar Association of Illinois : Director, 2012-2014
  • International Trademark Association : 2012-2013 Emerging Issues Committee, Issues Identification Subcommittee, Database Review Group Leader
  • Women's Bar Association of Illinois : Election to Nominating Committee (2013) (Committee responsible for selecting all officers and directors of the Association)
  • Women's Bar Association of Illinois : Director, 2010-2012
  • Women's Bar Association of Illinois : Chair, Corporate Committee, 2011-2014
  • Women's Bar Association of Illinois : Co-Chair, Bylaws Committee, 2011-2014
  • International Trademark Association : 2010-2011 Non-Traditional Marks Committee, U.S.P.T.O. Non-traditional mark analysis project and non-traditional mark decisions court monitoring project (7th Circuit)
  • Women's Bar Association of Illinois : Co-chair, Joint Professional Dinner, 2010
  • Women's Bar Association of Illinois : Co-chair, Corporate Counsel and Programming Committees, 2010-2011
  • International Trademark Association : 2008-09 Non-Traditional Marks Committee, and Non-traditional mark decisions court monitoring project (7th Circuit)
  • International Trademark Association : 2007 Annual Meeting Committee Project Team Group Leader
  • International Anti-Counterfeiting Coalition : Lobbied passage of Maryland state anti-counterfeiting statute
  • International Trademark Association : 2005 Anti-Counterfeiting Seminar Forum Project Team
  • International Trademark Association : 2003 Madrid 101 Distance Learning Seminar Project Team
  • International Trademark Association : Programs, Public Relations and Legislation Committees
  • International Anti-Counterfeiting Coalition : Former Biannual Meeting Co-Chair
  • American Intellectual Property Law Association : Member
  • Intellectual Property Law Association of Chicago : Member, Domestic and International Trademark Committees
  • American Bar Association : Intellectual Property and Litigation Sections; Entertainment and Sports Industry Forum
  • District of Columbia Bar Association; Sections of Patent, Trademark and Copyright Law : Arts, Entertainment and Sports Law
  • Women's Bar Association of Washington, D.C. : Member, Intellectual Property Law Committee
  • Virginia State Bar Association : Member, Intellectual Property Section
  • Ohio State Bar Association : Member
  • Illinois State Bar Association : Member
  • Chicago Bar Association : Member, Intellectual Property Section
  • Women's Bar Association of Illinois : Member, Joint Professional Dinner and Annual Meeting Dinner Committees

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Representative Publications

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Representative Presentations

  • Moderator, "The TTAB and Genericness - Are Recent Rulings an Evolution or Revolution?" Table Topic, INTA Annual Meeting, Orlando, FL (May 2016)
  • Moderator, "Could Color Alone be a Meaningful Marketing Tool? What Conditions Are Required and In Which Situations?" INTA Annual Meeting, San Diego, CA (May 2015)
  • Panelist, "Do You Hear What I Hear?: Advising Clients on the Registration of Non-Traditional Trademark Sounds," ABA Webinar (March 2015)
  • "The Best Defense is a Good Offense: Tactical Use of Offensive Counterclaims in IP Litigation," Intellectual Property Law Association of Chicago, Chicago, IL (February 2015)
  • "The Blonde, the Red Shoe, the Round-Cornered Rectangles: Debating the Frontiers of Trade Dress Law," ABA 28th Annual Intellectual Property Law Conference, Arlington, VA (April 2013)
  • 100 Years of Seeing RED - A Historical Perspective on the Second Circuit's "Red-Sole Shoe" Mark Decision in Louboutin v. Yves Saint Laurent, JurisDiction Blog Podcast Interview
  • "Commercial and IP Law Department - Trademarks" practice segment, Fortune 500 company's Law Firm Summit (January 2013)
  • "The Color of Love (and Other Things) - Trademarks and Aesthetic Functionality," Pattishall CLE presentation (June 2012)
  • "The Rise and Fall of Aesthetic Functionality," ABA 27th Annual Intellectual Property Law Conference, Arlington, VA (March 2012).
  • "How Do Small Women-Owned Businesses Protect Intellectual Property?," Women's Business Development Center's "Connection Points," Chicago, IL (December 2011).
  • "It's Not Your Grandfather's Trademark - It's a Theme, It's Colorful, It's Noisy, It Moves, It's Shapely, It Lights Up, etc. ("The Creative World of Trade Dress and Non-Traditional Marks")," Texas Bar CLE Program, Austin, Texas (October 2011).
  • "Clearance of Chinese Character Trademarks," Pattishall presentation (January 2010)
  • "It's Noisy, It Smells, It Moves, It's Your Color, It's Shapely, It's Flavorful, It Lights Up, It's Got Texture - It Might Just Be a Non-Traditional Trademark!" Pattishall CLE presentation (July 2009)
  • "Your Association is a Brand -- Protect it Like One: Hot Topics on Protection of Trade and Professional Association Intellectual Property Rights," Chicago Bar Association (December 2008).
  • "The Foundation Of International Enforcement Against Counterfeiting - International Trademark Registration And Border Control Registration Protections," IQPC Seminar (September 2007).
  • "Worldwide Registration to Protect Brands," IQPC/Legal IQ Workshop (October 2006).
  • "The Borders Beyond - Using U.S. and Foreign Customs Agencies To Halt Exportation and Importation of Counterfeits Worldwide," INTA Anti-Counterfeiting Forum (February 2005).
  • "Filing and Prosecution Strategies," INTA Madrid 101 Distance Learning Seminar (December 2003).
  • "Navigating Copyright and Trademark Basics," IACC Meeting Enforcement Seminar & Handbook (October 2000).
  • "Damages in Trademark Cases," IACC Meeting (October 1998).
  • "Success in Trade Dress Litigation Can Mean More Than An Injunction - The Tools Plaintiffs Need To Improve Prospects For Monetary Relief," INTA Spring Forum on Trade Dress (February 1997).
  • "Defending Copyright Infringement Claims Involving the 'Total Look and Feel' of Literary or Artistic Works," AIPLA Annual Meeting (1995).
  • "Annual Trends in Anticounterfeiting: 1994-1995," IACC Meeting (1995).
  • "Fundamentals of Copyright" and "Protection of Copyrights in Judicial Reports - From the 19th Century to West Publishing Co. v. Mead Data Central, Inc. to Feist Publications, Inc. v. Rural Telephone Service Co.," Association of Judicial Court Reporters Annual Meeting (1991).

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Court Admissions

  • U.S. Court of Appeals for the Second Circuit
  • U.S. Court of Appeals for the Third Circuit
  • U.S. Court of Appeals for the Sixth Circuit
  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the District of Columbia
  • U.S. District Court for the Eastern District of Michigan
  • U.S. District Court for the Eastern District of Virginia
  • U.S. District Court for the Northern District of Ohio

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