J. Michael Monahan
How can you help me protect my business?
In addition to my focus on intellectual property law, my background includes a great deal of experience as a general practitioner. I've counseled clients in transactions and litigation in many substantive areas, particularly those typically important to new and growing businesses. I continue to draw on that experience to augment and complement my advice on intellectual property law. My background helps me stay in touch with the big picture for emerging and established businesses and stay mindful of issues and concerns that clients, judges, and opposing counsel including those whose practice does not focus on intellectual property-bring to the table.
Which areas are your particular areas of expertise?
My practice focuses primarily on trademarks, copyrights, and trade secrets. I help clients establish, develop and protect their brand assets. I have helped with registration, policing, enforcement through litigation and ADR, and the commercial development of these assets through licensing, franchising and other transactions.
Can you describe some of the issues you've dealt with in your substantive areas?
I continue to work with clients in all aspects of software and information services, from video games to business software applications. I counsel software purchasers and users, developers, publishers and value-added-resellers. The range of my experience in this industry has given me the skills to work through complex and technical issues with sensitivity to the differing interests of the parties involved.
I've helped many media clients and other content creators and providers to navigate a broad array of legal issues. These include First Amendment matters, defamation and right of publicity issues, and defending against "Strategic Lawsuits Against Public Participation"--known as SLAPP--actions.
Because I have worn different hats in my legal career, I recognize the myriad issues and interests that emerge in software and technology matters. I embrace new technologies and approaches, along with the unexplored legal issues they bring.
How does Pattishall's practice differ from other law firms?
Our firm truly follows a team approach. We work together in an environment that cultivates conversation and collaboration. The knowledge and experience within this firm spans many intellectual property areas and dozens of industries. Pattishall's commitment to open discussion and teamwork allows all of our attorneys to draw on this depth of experience.
What personal and professional qualities do you have that benefit your clients?
While my legal career has exposed me to a variety of legal and business matters, my chief interest and focus always has been in intellectual property, which holds relevance in our everyday lives. The legal issues I face in my practice demonstrate their importance when I buy groceries, when I shop online, or when I watch television. At the end of the day, I am a consumer. This instills a real, tangible quality to the work I do in trademarks and copyrights. My experience as a consumer fuels my interest and passion for assisting clients.
Industry Expertise
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Media
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Online Gaming and Entertainment
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Software & Services
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Technology Hardware & Equipment
Trials, Appeals & Litigation
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Learning Resources, Inc. v. Williams Lea Inc., First Salem Services Group, Houghton Mifflin Harcourt, Inc., Steven Tracy and Theresa Parker, Case No. 1:12-cv-7831 (N.D. Ill. 2012, Judge Darrah)
(Trademark Infringement)
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Sweet Street Desserts, Inc. v. Chudleigh's Ltd., Case No. 5:12-cv-3363 (E.D. Pa. 2012, Judge Baylson)
(Trademark Infringement)
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Bennett v. Ritzenhoff AG, Case No. 1:11-cv-07545 (N.D. Ill. 2012) (case dismissed)
(Trademark Infringement)
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Opsitnik v. Medline Industries, Inc., Case No. 12-CH-29978 (Ill. 2012, Judge Allen)
(Right of Publicity, Breach of Contract)
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Weyerhaeuser NR Company v. Robert Bosch Tool Corporation, Case No. 2:12-cv-00793 (N.D. Ill. 2012, Judge Lee)
(Trademark Infringement, Unfair Competition)
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Eli Lilly and Company v. Yanchep Veterinary Clinic Pty Ltd et al., Case No. 1:11-cv-01469 (S.D. Ind. 2012, Judge Magnus-Stinson)
(Gray Market Enforcement, Trademark Infringement, Anti-Cybersquatting)
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PepsiCo, Inc. and Frito-Lay North America, Inc. v. U.S. Global Import, Inc., Case No. 2:12-cv-00119 (C.D. Cal. 2012, Judge King)
(Trademark Infringement, Unfair Competition, Trademark Dilution)
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PepsiCo, Inc. v. GFI Developers, LLC, Case No. 2:11-cv-09987 (C.D. Cal. 2012, Judge Nguyen)
(Trademark Infringement, Gray Market Goods)
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Weyerhaeuser NR Company v. Robert Bosch Tool Corporation, Case No. 2:11-cv-01793 (D. Nev. 2011, Judge Mahan) (case transferred to the U.S. District Court for the Northern District of Illinois)
(Trademark Infringement, Unfair Competition)
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Booz Allen Hamilton, Inc. v. Yukio Hatoyama (Arbitral Tribunal, New Delhi)
(Internet, E-Commerce and Computer Technology)
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More Cupcakes, LLC v. Lovemore LLC, Case No. 1:2009cv03555 (N.D. Ill. 2009, Judge Kocoras)
(Trademark Infringement)
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PepsiCo, Inc. v. JT Saniya, Inc., Case No. 2:2009cv00751 (C.D. Cal. 2009, Judge Pregerson)
(Trademark Infringement)
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PepsiCo, Inc. v. El Norteno's Distributor Corp., Case No. 1:2008cv23502 (S.D. Fla. 2009, Judge Martinez)
(Trademark Infringement)
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Georgia-Pacific Consumer Products, LP v. Nextep, Inc. and Samuel L. Paul, Case No. 1:2008-cv-00567 (S.D. Ohio 2009, Judge Barrett)
(Unfair Competition)
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Pepsico, Inc. et al v. Irie Motivations, Inc. et al, Case No. 2:2008cv02242 (C.D. Cal. 2008, Judge Lew) (Pepsico awarded $168,000 in damages plus attorneys' fees)
(Trademark Infringement)
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Ticketmaster Corporation (plaintiff in multiple cases for domain name infringement), Case Nos. D2008-0579, D2008-0578, D2008-0577, D2008-0439, D2008-0350, D2008-0349 (WIPO 2008) (Domain names transferred to client)
(Internet, E-Commerce and Computer Technology)
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PepsiCo, Inc. v. Los Potros Distribution Center, LLC, 2008 WL 2225752 (D. Ariz. 2008, Judge Campbell) (PepsiCo awarded $95,000 in damages and attorneys' fees)
(Trademark Infringement)
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Ticketmaster Corp. v. DeVane, Case No. 7:2007-cv-00196 (E.D.N.C. 2008, Judge Fox) (Recovered ticketmastgerevent.com and enjoined defendant)
(Cybersquatting)
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Ticketmaster Corp. v. Whiteman, Case No. 2:2007-cv-02422 (D. Ariz. 2008, Judge Bolton) (Recovered azticketmaster.com and enjoined defendant)
(Cybersquatting, Trademark)
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PepsiCo, Inc. v. Gotera, Inc., Case No. 4:2007cv03436 (S.D. Tex. 2008, Judge Gilmore)
(Trademark Infringement)
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Ticketmaster Corp. v. Chernow, Case No. 3:2007-cv-06075 (N.D. Cal. 2008, Judge Ware) (Recovered bigticketmaster.com and enjoined defendant)
(Cybersquatting)
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Santa Margherita v. Vintwood International, Case No. 1:2006cv05913 (N.D. Ill. 2007, Judge Gettleman)
(Trade Dress)
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Vanlines.com LLC v. Movers.com, Case No. 1:2006cv14250 (S.D.N.Y. 2007, Judge Chin) (Case dismissed)
(Trade Dress)
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PepsiCo, Inc. v. #1 Wholesale, LLC, Lime Lite Fashions Inc. and Sahni Enterprises Inc., 84 U.S.P.Q.2d 1040 (N.D. Ga. 2007, Judge Batten) (PepsiCo awarded temporary restraining order, injunction, recall and damages)
(Trademark Infringement)
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Pepsico, Inc. v. Distribuidora La Matagalpa, Inc., 510 F.Supp.2d 1110 (S.D. Fla. 2007, Judge Moore)
(Gray Market Enforcement, Trademark Infringement)
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Pepsico, Inc. v. Productos Nicaraguenses Corp., 2006 WL 3940591 (S.D. Fla. 2006, Judge Gold) (Gray Market)
(Trademark Infringement)
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300 Below v. Benelli USA Corp. (Beretta), Case No. 2:2006cv02056 (C.D. Ill. 2006, Judge McCuskey)
(Trademark Infringement)
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The Concentrate Manufacturing Company of Ireland v. ESPI Trading Inc., Opposition No. 91165916 (TTAB 2006)
(Trademark)
Professional Activities
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American Bar Foundation
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Fellow
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ABA's Intellectual Property Law Section: Chairs Committee 2007
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Franchising, Former Co-Editor of IPL Newsletter
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American Intellectual Property Law Association
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Member
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Louisiana State Bar Association
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Intellectual Property Committee
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New Orleans Bar Association
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Intellectual Property Committee
Publications
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Trademarks and Unfair Competition: Critical Issues in the Law, a book published by Law Journal Press (New York, 2012) (co-author).
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Co-authored The DMCA's Teeth: Court Awards Massive Statutory Damages for Access Control Circumvention Online, Pattishall Newsletter (Summer 2010)
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"Trademark Licenses and the New Franchise Rule," Pattishall Newsletter (Fall 2007)
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Co-author of Chapter 4 (Criminal Enforcement of State Anticounterfeiting Laws), TRADEMARK COUNTERFEITING, Apsen Law & Business, 2001 and 2002 Supplements
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Co-author of LOUISIANA LIMITED LIABILITY COMPANIES: FORMS AND PRACTICE MANUAL, 2nd Ed., Data Trace Publishing Company, (2001)
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Author of "Waiting By the Phone: Why Telephone Number Mnemonics Warrant Trademark Protection," a comment published in the Louisiana Law Review at 58 LA. LAW REV. 281
Presentations
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"Getting it Right From Start Up: A Discussion of the Legal Considerations for Company Formation and Advertising," a presentation for Built In Chicago Members (February 2013)
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"Clarifying the role of EULAs, Terms of Service and Codes of Conduct," Panelist, 2011 Login Conference, Bellevue, WA (May 2011)
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"Best Practices for Communication in Trademark Matters," Panelist, USPTO Roundtable, Washington, DC (March 2011)
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"Resales, Trolls and Violence - Ongoing Developments in Video Game Law," Chicago Bar Association's Cyberlaw and Data Privacy Committee, Chicago, Illinois (November 2010)
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"My Game, My Rules: the Power and Pitfalls of End User License Agreements in Games." 2008 Austin Game Developers Conference, Austin, Texas (September 2008)